Unified Patents Inc. v. Uniloc USA, Inc., IPR2017-00184, Paper 1 (Nov. 10, 2016)

IPR2017-00184 Petition
U.S. Patent 7,069,293

Filed on behalf of Unified Patents Inc.
By: Vincent J. Galluzzo, Reg. No. 67,830
Teresa Stanek Rea, Reg. No. 30,427
CROWELL & MORING LLP
1001 Pennsylvania Avenue, N.W.
Washington, D.C. 20004
Tel: (202) 624-2781
Email: vgalluzzo@crowell.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Avenue, N.W., Floor 10
Washington, D.C. 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
Patent Owners
IPR2017-00184
Patent 7,069,293
PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT 7,069,293
CHALLENGING CLAIMS 121
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
U.S. Patent 7,069,293
TABLE OF CONTENTS
I.
MANDATORY NOTICES .............................................................................1

A.
Real Party-in-Interest ...................................................................................1
B.
Related Matters ............................................................................................1
C.
Counsel ........................................................................................................3
D.
Service Information, Email, Hand Delivery, and Postal .............................3
II.
CERTIFICATION OF GROUNDS FOR STANDING ..................................3
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................3
A.
Prior Art Patents and Printed Publications ..................................................4
B.
Grounds for Challenge .................................................................................5
IV.
INTRODUCTION ...........................................................................................5
V.
TECHNOLOGY BACKGROUND.................................................................6
VI.
OVERVIEW OF THE 293 PATENT ............................................................9
A.
Summary of the Alleged Invention..............................................................9
B.
Level of Ordinary Skill in the Art .............................................................11
C.
Prosecution History....................................................................................12
VII. CLAIM CONSTRUCTION ..........................................................................13

VIII. SPECIFIC GROUNDS FOR PETITION ......................................................19
A.
Ground I: Claims 121 are obvious over Collins in view of On-Demand

Handbook ...................................................................................................20
1.
Overview of Collins .................................................................................20
2.
Overview of On-Demand Handbook .......................................................22
3.
Claim 1 is obvious over Collins in view of On-Demand Handbook .......24
4.
Claim 12 is obvious over Collins in view of On-Demand Handbook .....36
5.
Claim 17 is obvious over Collins in view of On-Demand Handbook .....38
6.
Claims 2, 13, and 18 are obvious over Collins in view of On-Demand

Handbook ................................................................................................41
7.

Handbook ................................................................................................42
8.
U.S. Patent 7,069,293
9.
10. Claims 6, 15, and 20 are obvious over Collins in view of On-Demand
Handbook ................................................................................................46
11. Claims 7, 16, and 21 are obvious over Collins in view of On-Demand
Handbook ................................................................................................48
12. Claim 8 is obvious over Collins in view of On-Demand Handbook .......49
13. Claim 9 is obvious over Collins in view of On-Demand Handbook .......49
14. Claim 10 is obvious over Collins in view of On-Demand Handbook .....50
15. Claim 11 is obvious over Collins in view of On-Demand Handbook .....52
B.
IX.
Ground II: Claims 1, 2, 6, 7, 12, 13, 1518, 20, and 21 are obvious over
Gupta in view of Hesse..............................................................................53
1.
Overview of Gupta...................................................................................53
2.
Overview of Hesse ...................................................................................55
3.
Claim 1 is obvious over Gupta in view of Hesse .....................................55
4.
Claim 12 is obvious over Gupta in view of Hesse ...................................63
5.
Claim 17 is obvious over Gupta in view of Hesse ...................................64
6.
Claims 2, 13, and 18 are obvious over Gupta in view of Hesse .............67
7.
8.
CONCLUSION..............................................................................................71
ii
U.S. Patent 7,069,293
I.
MANDATORY NOTICES
A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial. In this regard, Unified has submitted voluntary discovery. See
EX1028 (Petitioners Voluntary Interrogatory Responses).
B.
Related Matters
U.S. Patent 7,069,293 (the 293 Patent (EX1001)) is owned by Uniloc
Luxembourg S.A. and exclusively licensed to Uniloc USA, Inc. (collectively,

Uniloc or Patent Owners). See EX1029 (ADP Complaint), at 11.
On July 8, 2016, Uniloc filed several lawsuits in the Eastern District of
Texas alleging infringement of the 293 Patent in Uniloc USA, Inc. et al. v. ADP,
LLC, No. 2:16-cv-00741 (E.D. Tex. Filed July 8, 2016); Uniloc USA, Inc. et al. v.
Concur Technologies, Inc., No. 2:16-cv-00743 (E.D. Tex. Filed July 8, 2016);
Uniloc USA, Inc. et al. v. Salesforce.com, No. 2:16-cv-00744 (E.D. Tex. Filed July
8, 2016); Uniloc USA, Inc. et al. v. Ubisoft, Inc., No. 2:16-cv-00745 (E.D. Tex.
Filed July 8, 2016); and Uniloc USA, Inc. et al. v. Valve Corporation, No. 2:16-cv00746 (E.D. Tex. Filed July 8, 2016).
U.S. Patent 7,069,293
On August 2, 2016, Uniloc filed several additional lawsuits, also in the
Eastern District of Texas and also alleging infringement of the 293 Patent in
Uniloc USA, Inc. et al. v. Big Fish Games, Inc., No. 2:16-cv-00858 (E.D. Tex.
Filed Aug. 2, 2016); Uniloc USA, Inc. et al. v. Blackboard, Inc., No. 2:16-cv00859 (E.D. Tex. Filed Aug. 2, 2016); Uniloc USA, Inc. et al. v. Box, Inc., No.
2:16-cv-00860 (E.D. Tex. Filed Aug. 2, 2016); Uniloc USA, Inc. et al. v.
Carbonite, Inc., No. 2:16-cv-00861 (E.D. Tex. Filed Aug. 2, 2016); Uniloc USA,
Inc. et al. v. Netsuite, Inc., No. 2:16-cv-00862 (E.D. Tex. Filed Aug. 2, 2016); and
Uniloc USA, Inc. et al. v. Zendesk, Inc., No. 2:16-cv-00863 (E.D. Tex. Filed Aug.
2, 2016).
On August 7, 2016, Uniloc filed several additional lawsuits, again in the
Eastern District of Texas and again alleging infringement of the 293 Patent in
Uniloc USA, Inc. et al. v. Kaspersky Lab, Inc., No. 2:16-cv-00871 (E.D. Tex. Filed
Aug. 7, 2016); Uniloc USA, Inc. et al. v. Square Enix, Inc., No. 2:16-cv-00872
(E.D. Tex. Filed Aug. 7, 2016); and Uniloc USA, Inc. et al. v. Trend Micro
Incorporated, No. 2:16-cv-00873 (E.D. Tex. Filed Aug. 7, 2016).
Uniloc filed against, inter alia, ADP, LLC; Concur Technologies, Inc.;
Salesforce.com; Ubisoft, Inc.; Valve Corporation; Big Fish Games, Inc.;
Blackboard, Inc.; Box, Inc.; Carbonite, Inc.; Netsuite, Inc.; Zendesk, Inc.;
Kaspersky Lab, Inc.; Square Enix, Inc.; and Trend Micro Incorporated, claiming
U.S. Patent 7,069,293
that certain of these companies products or services infringe the 293 Patent.
These cases are in their early stages and no schedule or trial date has been set.
C.
Counsel
Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa
Stanek Rea (Reg. No. 30,427) and Jonathan Stroud (Reg. No. 72,518) will act as
back-up counsel.
D.
Service Information, Email, Hand Delivery, and Postal

Unified consents to electronic service at vgalluzzo@crowell.com and
jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring

LLP, 1001 Pennsylvania Avenue, N.W., Washington, DC 20004, Tel.: (202) 6242781, Fax: (202) 628-8844 and Unified Patents Inc., 1875 Connecticut Avenue,
N.W., Floor 10, Washington, D.C. 20009, Tel.: (650) 999-0899.
II.
CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges
claims 121 of the 293 Patent.
U.S. Patent 7,069,293
A.
Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability
explained below:1
1.
U.S. Patent 5,845,090 (filed on September 30, 1996, published on

December 1, 1998) (Collins) (EX1003), which is prior art under 35
U.S.C. 102(a).
2.
WorkSpace On-Demand Handbook (December 1, 1997) (OnDemand Handbook) (EX1004), which is prior art under 35 U.S.C.
102(b), as it was distributed to the public on December 1, 1997 as
evidenced by at least IBMs own legal disclosures to the U.S.
Copyright Office.
3.
U.S. Patent 6,446,109 (filed on June 29, 1998, published on

September 3, 2002) (Gupta) (EX1005), which is prior art under 35
U.S.C. 102(e).
4.
U.S. Patent 5,950,010 (filed on November 25, 1996, published on

September 7, 1999) (Hesse) (EX1006), which is prior art under 35
U.S.C. 102(e).
The 293 Patent issued from a patent application filed prior to enactment of the
America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.
U.S. Patent 7,069,293
B.
Grounds for Challenge

This Petition, supported by the Declaration of Leonard Laub (Laub
Declaration (EX1002)), requests cancellation of challenged claims 121 as

unpatentable under 35 U.S.C. 103. See 35 U.S.C. 314(a).
IV.
INTRODUCTION
The 293 Patent, which was originally assigned to IBM, represents no more
than a natural and obvious incremental development over IBMs (and others)
previous commercially available network management products. It covers the
distribution of application programs in a three-tier network architecture, both of
which those skilled in the art were well-acquainted in December 1998.
But IBM was not the only company developing in this art. Indeed there was
significant research and development in this art in the early- to mid-90s, as
enterprise computing grew more important and as companies began to push the
boundaries of the traditional client-server network architectures.
Naturally,
Microsoft, Sun Microsystems, and other industry giants made significant

contributions to the art well before the filing date of the 293 Patent, as did smaller
players.
The 293 Patent was not novel and was obvious as of December 14, 1998
over the various application distribution network schemes and architectures known
U.S. Patent 7,069,293
in the art. Claims 121 of the 293 Patent are therefore unpatentable in light of at
least the grounds presented herein.
V.
TECHNOLOGY BACKGROUND
Enterprise computer networks enable companies to provide a variety of
services and applications to distributed locations throughout the company.

Traditionally, end users would interact with the computer network in what is called
a client-server model. See, e.g., EX1002 (Laub Declaration), at 24. Also
known as the traditional mainframe model, this model allows a client device to
interact with applications that reside on a centralized server, or even for the server
to transmit application programs to a number of client devices across the network.
EX1001 (293 Patent), at 1:652:1, 2:5560. There were many benefits to this
approach, including that the centralized server could store more data and
applications than could a client device, that the server could be altered without the
need for changing user equipment, and that the server could serve a large number
of client devices. EX1002 (Laub Declaration), at 2527. The traditional clientserver model had scalability and portability problems, though, and over time
enterprise applications began to exceed the capabilities of the simple two-tier
client-server architecture. EX1007 (Eckerson), at 1.
More robust three-tier architectures evolved from the simple two-tier clientserver model and extended the previous two-tier model by placing intermediate
U.S. Patent 7,069,293
servers between the traditional client and server tiers. Id. This third tier was
critical for providing location and migration transparency of distributed
resources as well as services generally required to provide efficient distributed
computing. Id.
Under the three-tier architecture, the user device still presents the visual
aspects of the application to the user, and the back-end server still handles data
processing and management. Id. at 2. But the intermediate device now handles at
least some functional logic and services for the application that used to be run on
the client device. Id. The purpose of this intermediate device is to process these
services and functions that are shared by a number of user devices and
applications. Id. at 56. Instead of constantly rewriting the same function or
service in each new application that is distributed to the user devices, developers
can write the application once and place it on a server accessible by all
applications. Id. at 6. A company could then provide the client devices with
access to a number of applications and services running on a number of
intermediate devices across the network. Id. at 7.
Commercial products that adopted such a three-tier structure were available
well before the filing date of the 293 Patent. One option was developed by Tivoli
Systems, Inc., a company acquired by IBM (the original assignee of the 293
Patent) in 1996, more than two years before the filing date of the 293 Patent. That
U.S. Patent 7,069,293
system was called Tivoli Management Environment (TME) and allowed for a
server to transfer file packages to client and server stations on a network from a
central server.
EX1001 (293 Patent), at 2:1014.
This well-known system
provided software distribution capabilities from a central location. Id. at 3:34

35.
Other than commercial products, there was also significant research and
development in this area before December 1998, especially as it relates to the ondemand provision of application programs to client devices. See EX1008 (Shaw),
at 3:822, 3:5664, 6:1229, 9:2224, 9:3744; see also, e.g., EX1009 (Lucovsky);
EX1011 (Jia); EX1012 (Mishra); EX1013 (Breslau). This included research into
multi-tier software distribution architectures and schemes, see, e.g., EX1007
(Eckerson); EX1008 (Shaw); EX1014 (Horstmann), distribution of software
application packages, see, e.g., EX1009 (Lucovsky); EX1015 (Chen); EX1016
(Madany); EX1017 (Sadowsky); EX1018 (Veditz); EX1019 (Luu), and registration
methods for the application, see, e.g., EX1015 (Chen). Some solutions provided
client devices access to remote applications via a webtop, i.e., the web
equivalent of a desktop. EX1008 (Shaw), at 8:3841; see also, e.g., EX1018
(Veditz).
U.S. Patent 7,069,293
VI.
OVERVIEW OF THE 293 PATENT
A.
Summary of the Alleged Invention

The 293 Patent is the result of the integration of the IBM eNetwork and
the Tivoli Systems TME 10 network management products, both of which were
owned and sold by IBM well before the filing date of the 293 Patent. See EX1001
(293 Patent), at 7:1028, 3541. The 293 Patent also integrates the IBM OnDemand system, which was another IBM product that was part of the eNetwork
environment, also available well before the December 1998 critical date. See id. at
17:5254, 19:2734, 20:2629.
The 293 Patent purports to integrate these various IBM systems in order to
solve the challenges for a network administrator in maintaining proper licenses
for existing software and deploying new or updated applications programs in a
distributed network such as those used in large organizations with numerous
client stations and servers distributed widely geographically and utilized by a large
number of users. Id. at 1:5052, 5559. These problems, however, had already
been solved in the art well before the filing date of the 293 Patent. Those
solutions are discussed throughout this Petition.
In substance, the 293 Patent is directed to a well-known three-tiered
computer network architecture whereby applications are provided from a
centralized management server to a client device through an intermediary on-
U.S. Patent 7,069,293
demand server. Id. at Abstract. The three tiers of the network structure of the 293
Patent are illustrated in Figure 1 below:
Centralized Network
Management Server
On-Demand Servers
Client Devices
Id. at Fig. 1 (red annotations added).

The management server distributes application programs to on-demand
servers as file packages, also called packets in the 293 Patent. Id. at 4:1418.
Along with the application program, these packages also include information that
allows the on-demand servers to distribute the application program to the desired
10
U.S. Patent 7,069,293
user destination. Id. at 4:1825. The 293 Patent discusses that this information
gets into the package by manual user entry of data such as Source Path,
Package Name, Target Path, and other details as shown in the user interface
illustrated in Figure 10:
Id. at Fig. 10.

B.
Level of Ordinary Skill in the Art

A person of ordinary skill in the art (POSA) for the 293 Patent would
have a bachelors degree in electrical engineering or computer science and at least
11
U.S. Patent 7,069,293
three years of experience working with client-server computer systems and
distributed storage computer systems. EX1002 (Laub Declaration), at 20.
C.
Prosecution History
The 293 Patent issued from U.S. Patent Application 09/870,608 (the 608
Application), which was filed on May 31, 2001, EX1001 (293 Patent) at (21),
(22), and which is a continuation of U.S. Patent Application 09/211,528 (the 528
Application), which was filed December 14, 1998, and which issued as U.S.
Patent 6,510,466, id. at (62), 1:910. The 293 Patent states that it is related to
U.S. patent application Ser. No. 09/072,597 filed May 5, 1998 but makes no claim
of priority to that application. Id. at 1:1520.
During prosecution of the 528 Application, the Examiner issued a
restriction requirement, as the original claims of the 528 Application were
directed to two patentably distinct concepts:
distribution of application[s].
(3/28/2001)), at 2.
application management and
EX1020 (528 File History, Office Action
In response, Applicants cancelled the claims directed to
distribution of applications and filed those claims as the continuation application

that led to the 293 Patent. EX1021 (528 File History, Amendment (5/31/2001)),
at 1. Nevertheless, Applicants made representations during prosecution of the 528
Application that have bearing on the 293 Patent, as referenced in Section VII,
below.
12
U.S. Patent 7,069,293
VII. CLAIM CONSTRUCTION
Claim terms of a patent in inter partes review are normally given their
broadest reasonable construction in light of the specification.
37 C.F.R.
42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016).
The following discussion proposes constructions and support for those
constructions. Any claim terms not included in the following discussion should be
given their broadest reasonable construction in light of the specification.
on-demand server
The term on-demand server should be interpreted to mean a server
delivering applications as needed responsive to user requests as requests are
received, which is how the 293 Patent explicitly defines the term. See EX1001
(293 Patent), at 6:6567; see also EX1022 (528 File History, Amendment
(10/23/2001)), at 23; EX1023 (528 File History, Appeal Brief (5/16/2002)), at 3.
application program
The term application program should be interpreted to mean code
associated with underlying program functions, which is how the 293 Patent
explicitly defines the term. EX1001 (293 Patent), at 14:2729; see also EX1022
(528 File History, Amendment (10/23/2001)), at 2; EX1023 (528 File History,
Appeal Brief (5/16/2002)), at 23.
13
U.S. Patent 7,069,293
target directory
The term target directory should be interpreted to mean a directory path
on a receiving device. The 293 Patent describes that a target path destination
when a Tivoli server is used to implement a certain embodiment of the 293
Patent refers to a directory path on a receiving device which will be used for
software package delivery at each of the selected target on-demand servers 22, 22
receiving distribution of the custom file package.
EX1001 (293 Patent), at
18:5761.
source directory
The term source directory should be interpreted to mean a directory path
for the application program to be transferred. Cf. id.
registration operations
The term registration operations should be interpreted to mean operations
to make the application available for use locally. The 293 Patent describes that
the segment of the file packet is configured to initiate registration operations may
include an import data file and a call to an import program executing on the target
station. Id. at 5:4548. The 293 Patent goes on to describe that a JAVA
applet distributed in the 293 Patent can be registered based on a Universal
Resource Locator (URL) address and that the segment configured to initiate
registration operations includes a variable field into which the target station inserts
14
U.S. Patent 7,069,293
its identification during registration operations. Id. at 5:4956. Generally, the
293 Patent describes that registration operations are done to configure[] the
program to make it available for use at the client locally. Id. at 4:2225,
18:33.
The 293 Patent also provides more specificand narrowerfunctions of
registration operations that are consistent with the proposed construction. For
example, the 293 Patent discloses that an application may register licenses
through [the] client management server Id. at 9:1011, Fig. 7. Another detailed
disclosure is in relation to the IBM On-Demand Server. Id. at 20:1532. The
proposed construction is consistent with the specification.
import data file
The term import data file should be interpreted to mean a file containing
data used to install or register the application program. The 293 Patent describes
that file packages can contain:
an import text file containing the data required to properly install and
register the application program on the on-demand server and make it
available to authorized users. Settable on-demand server identifier
fields are included to allow a plurality of on-demand servers to
receive a common file packet and properly install and register the
program for use locally.
Id. at 4:1825. The 293 Patent also describes that server system 22 accepts
definitions of the application that describe the location and description of the
application and that such information may be provided by an import file
15
U.S. Patent 7,069,293
containing location information such as path directories and file name definitions.
Id. at 13:510. The import file may also define definitions of users and groups
that will access the system and the specific application. Id. at 13:1015. Finally,
the import file may set [l]icense policy and control specifications. Id. at 13:21
23.
means for providing to the network management server an application
program
The phrase means for providing to the network management server an
application program should be construed under pre-AIA 35 U.S.C. 112, 6 to
include the following corresponding structure recited in the specification:
1.
Application programs are installed at the server. Id. at 4:2932.
2.
Application programs are installed on a network drive accessible to

the server. Id.
3.
An administrator installs the applications on the server. Id. at 8:62

66.
means for specifying a source directory and a target directory

The phrase means for specifying a source directory and a target directory
should be construed under pre-AIA 35 U.S.C. 112, 6 to include the following
corresponding structure recited in the specification:
1.
Computer program instructions provided to a processor and executed

on the processor. Id. at Fig. 8, 9A, 12:317.
16
2.
U.S. Patent 7,069,293
Special purpose hardware-based systems which perform the specified
functions or steps, or combinations of special purpose hardware and
computer instructions. Id. at Figs. 8, 9A, 12:2227.
3.
User input screen to specify information. Id. at 18:4861, 19:4654.
means for preparing a file packet

The phrase means for preparing a file packet should be construed under
pre-AIA 35 U.S.C. 112, 6 to include the following corresponding structure
recited in the specification:
1.

2.

3.
User input screen to specify information. Id. at 18:3919:38.
computer readable program code means that prepares a file packet

The phrase computer readable program code means that prepares a file
packet should be construed under pre-AIA 35 U.S.C. 112, 6 to include the
following corresponding structure recited in the specification:
1.

17
2.
U.S. Patent 7,069,293
means for distributing the file packet to the target on-demand server
The phrase means for distributing the file packet to the target on-demand
server should be construed under pre-AIA 35 U.S.C. 112, 6 to include the
following corresponding structure recited in the specification:
1.
A Tivoli server. Id. at 7:2528, 19:3920:5.
2.
Other network management environments. Id at 7:4144.
3.

on the processor. Id. at Fig. 8, 9B, 12:317.
4.

computer instructions. Id. at Figs. 8, 9B, 12:2227.
computer readable program code means that distributes the file packet
to the target on-demand server
The phrase computer readable program code means that distributes the file
packet to the target on-demand server should be construed under pre-AIA 35
U.S.C. 112, 6 to include the following corresponding structure recited in the
specification:
18
1.
U.S. Patent 7,069,293
2.

means for distributing the file packet to a plurality of target ondemand servers
The phrase means for distributing the file packet to a plurality of target ondemand servers should be construed under pre-AIA 35 U.S.C. 112, 6 to
include the following corresponding structure recited in the specification:
1.
A Tivoli server. Id. at 7:2528, 19:3920:5.
2.
Other network management environments. Id at 7:4144.
3.

4.

VIII. SPECIFIC GROUNDS FOR PETITION

Pursuant to Rule 42.104(b)(4)(5), the following sections detail the grounds
of unpatentability, the limitations of the challenged claims of the 293 Patent, and
how these claims were therefore anticipated or obvious in view of the prior art.
19
A.
1.
U.S. Patent 7,069,293
Ground I: Claims 121 are obvious over Collins in view of On-Demand
Handbook
Overview of Collins
Collins discloses a software distribution scheme that uses a three-tiered
computer network to distribute that software. EX1003 (Collins), at Abstract, Fig.

1. The three-tier network structure of Collins was developed in response to the
same problem identified in the 293 Patent:
that each computer in a large
internetwork requires its own copy of software, and since a relatively few
administrators must install and update software on every computer in a network,
distributing software throughout a network by traditional techniques is timeconsuming, error-prone, and impractical. Id. at 1:1925.
The three tiers of the Collins network architecture are the Network
Management Server (NMS), the Hop Server, and Distribution Target (also
known as the Command Target). Id. at 2:563:26. The NMS is the central
repository for the software applications to be transferred through the Collins
software distribution scheme. Id. at 2:5660. The Hop Server (also called a
Remote Distribution Server) is an intermediary that stores the software
applications on their way from the NMS to their destination target. Id. at 3:1618,
4:4548.
Finally, the Distribution Target is the destination of the software
application via the Hop Server. Id. at 2:643:6.
20
U.S. Patent 7,069,293
Id. at Fig. 1.
21
U.S. Patent 7,069,293
The software applications in Collins are encapsulated in what Collins calls
Software Packages. Id. at 2:2328. Those Software Packages can either install
software and data, collect data, or accomplish a useful system administration
function on a digital computer. Id. at 1:5255.
2.
Overview of On-Demand Handbook

On-Demand Handbook is a technical publication by IBMs International
Technical Support Organization that was first published on December 1, 1997.

EX1027 (On-Demand Handbook Copyright Registration), at 1.
On-Demand
Handbook is intended to help an enterprise user install, configure and administer a

WorkSpace On-Demand environment by providing all manner of detail about the
IBM WorkSpace On-Demand commercial product.
EX1004 (On-Demand
Handbook), at xvxvii.
On-Demand Handbook describes that the WorkSpace On-Demand product
is a network operating system that is optimized for network computing in that it
allows you to access network applications, the intranet and the Internet using your
current PC hardware and server software infrastructure with centralized
installation and management of applications at the server.
Id. at 9.
The
WorkSpace On-Demand product builds on legacy network workstations to provide

multi-tier network functionality such as centralized, server-managed clients but
without losing the flexibility and power offered by traditional PCs. Id.
22
U.S. Patent 7,069,293
WorkSpace On-Demand is versatile enough to apply to both ends of the enduser computing spectrum, from the Host-Centric paradigm based on nonprogrammable terminals connected to a central computing facility to the fullfunction PC, or Fat Client computing paradigm, and everywhere between. Id.
at 10.
Thus the teachings of On-Demand Handbook, and the underlying
WorkSpace On-Demand product, are applicable to the range of emerging Intelbased (or compatible) hardware environments including NetPCs, Network PCs,
Managed PCs, and Thin Clients. Id. at 1011. The structure of WorkSpace OnDemand is relatively straightforward:
a client component and a manager
component. Id. at 13.

The client component is the client operating system and software that runs
on a client device. Id. It includes a user interface populated by system icons, and
allows a user to locate and successfully execute personal user files and userunique, network-public applications from any workstation from which the user is
logged on. Id. at 15. This is known as application roaming. Id. The manager
component is the set of server utilities used to install, configure and maintain the
network client hardware and software. Id. at 16.
On May 31, 2001, Applicant filed an Information Disclosure Statement,
which disclosed 34 prior art references, one of which included certain chapters of
On-Demand Handbook (Chapters 2.3.1, 6.2, 6.3, 6.3.1, 6.3.3, and 6.5). EX1030
23
U.S. Patent 7,069,293
(608 File History, Information Disclosure Statement (5/31/2001)), at 3. The
Examiner acknowledged receipt and consideration of these prior art references on
June 23, 2004. EX1031 (608 File History, List of Documents Cited by Applicant
(6/23/2004)), at 2.
3.
Claim 1 is obvious over Collins in view of On-Demand Handbook
a)
A method for distribution of application programs

Collins generally discloses a process of distributing software and data in a
digital computer network by combining the software and data, together with
programs and data known as methods, into single entities referred to as Packages,
and then by using specific techniques to transmit Packages from one computer to
another.
EX1003 (Collins), at Abstract; id. at 2:5054.
The Packages, or
Software Packages as they are also referred to in Collins, represent the

combination of digital computer programs and data that are operable on digital
computers to act on the software and data.
Id. at 1:4144.
The Software
Packages can either install software and data, collect data, or accomplish a useful
system administration function on a digital computer. Id. at 1:5255. Therefore,
the Software Packages include code associated with underlying program functions.
b)
to a target on-demand server on a network

The Hop Servers of Collins act as intermediaries in the computer network to
store a Software Package and forward it to one or more Distribution Targets in its
24
U.S. Patent 7,069,293
own Local Area Network. Id. at 3:1618, 2225. The Hop Servers receive
Software Packages from the Network Management Server through the Hop
Servers Package Transfer Agent. Id. at 5:5455, Fig. 2. The Package Transfer
Agent, also known as the Transfer Daemon takes a number of actions upon
receiving a Package. Id. at 6:5157, Fig. 4. After determining the package type, it
can message installation methods, message backout methods, message
system administration methods, message reverse system administration
methods, forward to package destination(s), and collect data, among other
things:
Id. at Fig. 4.
25
U.S. Patent 7,069,293
The Hop Servers can also act as a Staging Server, which stores Packages
for later distribution to Targets that are offline. Id. at 4:4548, 7:3945. In those
circumstances, the Target requests the Package from the Staging Server when it
comes back online, and the Staging Server transmits the queued Package to the
Target upon receiving the request. Id. at 7:4549, 8:33. This request/response
handoff is illustrated in Figure 5B of Collins:
Id. at Fig. 5B.
Therefore, the Hop Servers of Collins are servers delivering
applications as needed responsive to user requests as requests are received.

To the extent one could argue that Collins does not disclose this limitation,
this limitation was well known at the time the 293 Patent was filed. For example,
On-Demand Handbook discloses that the user device asks a file server to send it a
bootstrap program and, later, an operating system and application programs.
EX1004 (On-Demand Handbook), at 19. The 293 Patent explicitly recognizes the
26
U.S. Patent 7,069,293
applicability of the IBM Workspace On-Demand Serverand thus the OnDemand Handbookas being able to take the place of and run the operations on
the on-demand server and the centralized network management sever claimed in
the 293 Patent. See EX1001 (293 Patent), at 17:5254, 19:2734, 20:2629.
Given that the limitation was well known, it would have been obvious to a
POSA at the time the 293 Patent was filed to modify the network management
scheme and Hop Servers of Collins to include the functionality of on-demand
servers such as taught by On-Demand Handbook. EX1002 (Laub Declaration), at
7374. A POSA would have looked to both Collins and On-Demand Handbook
as related art in a known, limited field of storage and on-demand provision of
digital content by servers to user stations on a network. Id. at 72. Therefore, a
POSA would have been motivated to incorporate the on-demand server of OnDemand Handbook into the network management scheme and Hop Servers of
Collins to configure the Hop Servers to deliver applications as needed responsive
to user requests as requests are received. Id. at 7374.
Further, adding the functionality of on-demand servers of On-Demand
Handbook would have been based on well-known concepts and does not involve
modification of the novel portions of Collins. Id. at 78. Thus, to the extent
that Collins falls short, On-Demand Handbook discloses this limitation.
27
c)
U.S. Patent 7,069,293
comprising the following executed on a centralized network management
server coupled to the network: providing an application program to be
distributed to the network management server
The Network Management Server of Collins is a digital computer connected
to a network that acts as the central repository of Software Packages for the
network of Collins, acts as the central distribution point for Software Packages
for the network, and initiates transfers of those Software Packages throughout
the network. EX1003 (Collins), at 2:5661, 4:4245. This is because the Network
Management Server contains, among other things, a Central Package Archive. Id.
at 5:1416. Before distributing the Software Packages throughout the network, the
Transfer Tool of the Network Management Server calls up the desired Software
Package from the Central Package Archive. Id. at 5:2224. An illustration of the
contents of the Network Management Server is illustrated in an excerpt from
Figure 2 of Collins below:
28
U.S. Patent 7,069,293
Id. at Fig. 2.
The Software Packages that the Network Management Server distributes
throughout the network of Collins come in three flavors: Distribution Packages,
Collection Packages, and Command Packages.
Id. at 2:3236.
Distribution
Packages, in particular, contain application programs as discussed in Section

VIII(A)(3)(a), above. They contain methods and data for installing computer
programs and data on one or more Distribution Targets, otherwise known as
clients. Id.
d)
specifying a source directory and a target directory for distribution of the

application program
The Network Management Server of Collins distributes Software Packages
throughout the network to specific Distribution Targets.
These Distribution
Targets are digital computers that are connected to the Network Management
Server via the network of Collins and receive Software Packages from the Network
Management Server. Id. at 2:6467. Before the Network Management Server can
send a Software Package to a Distribution Target, however, the Transfer Tool of
the Network Management Server must first access the Central Package Archive to
ready a transfer. Id. at 5:2233. Much like the user input process of the 293
Patent illustrated in Figure 10 of the 293 Patent, the Transfer Tool of Collins
allows a user to specify various attributes of the transfer of the Software Packet.
29
U.S. Patent 7,069,293
Id. The Package also includes data files, binaries, text, executables, and other
information for transmission to the Target computer. Id. at 6:4850.
When the Software Package is ready to be distributed in the network, the
Network Management Server of Collins indicates the same in the Outbound
Package Queue. Id. at 5:3541. The Package Transfer Agent then acts to transfer
the Package from the Central Package Archive to the user device through a Hop
Server. Id. at 3:2225, 5:3541. Therefore, the Network Management Server of
Collins specifies a source directory and a target directory for distribution of the
application program. See also EX1002 (Laub Declaration), at 76.
On-Demand Handbook discloses that making an application available to user
devices requires an alias for the directory containing the application, assigning
the application to an end user, and setting user-specific application parameters.
EX1004 (On-Demand Handbook), at 109. On-Demand Handbook also discloses
that there are defined directories on the server to install an application, such as
d:OS2APPS and d:OS2APPSDLL and that some application programs in the
On-Demand Handbook scheme require a working directory on the user device
and will not start correctly unless one is assigned. Id. at 109, 115.
30
U.S. Patent 7,069,293
POSA at the time the 293 Patent was filed to modify the Network Management
Server and the Software Package of Collins to include the step of specifying a
source directory and a target directory for distribution of the Software Package
such as taught by On-Demand Handbook. EX1002 (Laub Declaration), at 73,
76; see also EX1024 (608 File History, Office Action (9/8/2004)), at 3 (It would
have been obvious to one with ordinary skill in the art at the time the invention was
made to incorporate [this feature] as taught by [one reference] in order to
determine if the file directories and file[] objects are valid and accessible on the
network.); EX1025 (608 File History, Office Action (4/22/2005)), at 3; EX1026
(608 File History, Office Action (9/22/2005)), at 3. A POSA would have looked
to both Collins and On-Demand Handbook as related art in a known, limited field
of storage and on-demand provision of digital content by servers to user stations on
a network. EX1002 (Laub Declaration), at 72. Therefore, a POSA would have
been motivated to incorporate the source directory and target directory of the
software program distribution package of On-Demand Handbook into the Software
Package of Collins to more efficiently transfer the software package from its
source to its destination in the network. Id. at 73, 76.
Further, adding the step of specifying a source directory and a target
directory for distribution of the software package of On-Demand Handbook would
31
U.S. Patent 7,069,293
have been based on well-known concepts of adding additional information to a
software package and does not involve modification of the novel portions of
Collins. Id. at 78. Thus, to the extent that Collins falls short, On-Demand
Handbook discloses this limitation.
e)
preparing a file packet associated with the application program

The Network Management Server of Collins construct[s] Packages which
contain some software and data which depends on the configuration of the Target
digital computer.
EX1003 (Collins), at Abstract; see also id. at 6:4245
(discussing that the Network Management Server collects files together when
building a Package at package Build time on the NMS). When the Network
Management Server constructs the final Software Package to be distributed in the
network of Collins, it utilizes the Transfer Tool to specify certain transfer
attributes, including source and destination of the Software Package. Id. at 5:22
34. A Package can also be fully constructed on the Network Management server.
For example, information can be kept in the Central Package Archive prior to
building the package for transfer each time it is transferred. Id. at 6:2124. This
includes what is called a Dynamic File Manifest, which specifies the files to
collect at package build time on the Network Management Server. Id. at 6:4245.
Alternatively, much like the user input process of the 293 Patent illustrated in
Figure 10 of the 293 Patent, the Package Tool of Collins allows a user to specify
32
U.S. Patent 7,069,293
certain attributes of a Package, including specific attributes of the methods and
the package contents, including data files and methods. Id. at 5:310.
f)
including a segment configured to initiate registration operations for the

application program at the target on-demand server
A Distribution Software Package contains methods that unpack data from
the Software Package and install the data, including application programs, on a
Distribution Target. Id. at 3:912. Collins calls these methods installation
methods. Id. at 6:2632. Collins also provides for other methods to accompany
such an installation method, such as pre-install methods, which execute on a
target computer prior to installing the Package, and post-install methods, which
execute on a target computer after successful installation on the target computer.
Id. Additionally, when the Network Management Server of Collins constructs a
Software Package, it constructs the Software Package in accordance with the
configuration of the Target digital computer, and only transfers that part of the
Package which is appropriate for each Target digital computers configuration.
Id. at Abstract.
A Distribution Software Package of Collins contains methods that unpack
data from the Software Package and install the Software Package on a Distribution
Target. Id. at 3:912. Software Packages can also include backout methods,
pre-install methods, and post-install methods. Id. at 6:2632.
Pre-install
methods are messaged on each target computer prior to installing the Package on
33
U.S. Patent 7,069,293
the target computer. Id. Post-install methods are messaged after the Package is
successfully installed on the target computer. Id.
Additionally, if a user specifies attributes about a Software Package before it
is built, the user can specify an assigned profile for the Package. Id. at 5:38.
Collins describes that a Profile is a set of Target computers, wherein each Target
can belong to at most one Profile, and each member of a Profile has identical
mission-critical software. Id. at 7:5355. Thus, a profile is a representation of
characteristics and information about desired Target computer devices. Software
Packages also contain information about the target for transfer (target computer,
group, or profile), more directly confirming this understanding of Collins. Id. at
5:3334.
The client devices of Collins also report characteristics called criteria
value[s] to the Network Management Server when the client device requests a
Software Package from the Network Management Server. Id. at 8:3336. Thus,
when the Network Management Server builds and sends a Software Package to the
client device, the Package contains several optional data files or methods, some
of which are appropriate for the requesting client device, some which are not.
Id. at 8:2238. When the Hop Server receives the Package, the Hop Servers
Transfer Daemon reviews the criteria values of the client device, removes
optional data files and methods which are inappropriate for that criteria value and
34
U.S. Patent 7,069,293
sends the modified package to the Target client device. Id. at 8:2938.
Therefore, at least one segment of the Software Package is configured to initiate
operations that process information about the Target, such as criteria values, and
based on that make the appropriate application available to the Target device. Id.
Finally, Hop Servers of Collins receive Software Packages from the Network
Management Server through the Hop Servers Package Transfer Agent. Id. at
5:5455, Fig. 2.
The Package Transfer Agent, also known as the Transfer
Daemon first determines the package type and then act[s] accordingly by in
some cases installing files on the Hop Server. Id. at 6:5864, 7:1619. The
Transfer Daemon then forwards the Package to the next Target device. Id. at 7:16
23.
g)
distributing the file packet to the target on-demand server to make the
application program available for use by a user at a client
When the Network Management Server of Collins is ready to distribute a
Software Package to one or more clients in the network, a placeholder for the
Network Management Server places the Software Package in the Outbound
Package Queue. Id. at 5:3541. The Package Transfer Agent of the Network
Management Server then transfers the actual Package from the Central Package
Archive of the Network Management Server to one or more Hop Servers. Id. at
3:2225, 5:3541. Distributing the Software Package to the Hop Server once
allows the Hop Server to in turn forward the Package to many Targets in the
35
U.S. Patent 7,069,293
network of Collins. Id. at 3:2225; see also id. at 2:3236. As discussed above,
the Software Packages make application programs available at the client. Id. at
8:2938.
4.
a)
An application program distribution system

For the same reasons discussed in Section VIII(A)(3)(a), the combination of
Collins and On-Demand Handbook teaches or suggests this limitation.

b)
for distributing application programs to a target on-demand server on a

network executing on a centralized network management server coupled to
the network
For the same reasons discussed in Sections VIII(A)(3)(a) through (c), the
combination of Collins and On-Demand Handbook teaches or suggests this

limitation.
c)
the system comprising: means for providing to the network management

server an application program to be distributed to remote servers
For the same reasons discussed in Sections VIII(A)(3)(c), the combination of

d)
means for specifying a source directory and a target directory for

distribution of the application program
For the same reasons discussed in Sections VIII(A)(3)(d), the combination
of Collins and On-Demand Handbook teaches or suggests this limitation.
36
e)
U.S. Patent 7,069,293
means for preparing a file packet associated with the application
program
The Network Management Server of Collins is a digital computer that is
electronically connected to the network of Collins and runs a variety of computer

programs to execute the scheme and methods described in Collins. See, e.g.,
EX1003 (Collins), at 1:1425, 1:5563, 2:69, 2:2932, 2:5563, 5:2224.
For the same reasons discussed in Sections VIII(A)(3)(e), the combination of
Collins and On-Demand Handbook teaches or suggests the remainder of this
limitation.
f)
the file packet including a segment configured to initiate registration

operations for the application program at the target on-demand server
For the same reasons discussed in Section VIII(A)(3)(f), the combination of

g)
means for distributing the file packet to the target on-demand server to
make the application program available for use by a user at a client
Each of the Network Management Server, Hop Server, and Distribution
Targets of Collins is a digital computer that is electronically connected to the

network of Collins and runs a variety of computer programs to execute the scheme
and methods described in Collins. See, e.g., id. at Abstract, 1:1425, 1:5563, 2:6
9, 2:2932, 2:5563, 5:2224. Further, the three-tier network of Collins is a
network management environment as is understood in the 293 Patent.
Compare, e.g., id. at 2:5563 with EX1001 (293 Patent), at 7:4144.
37
U.S. Patent 7,069,293
For the same reasons discussed in Sections VIII(A)(3)(g), the combination
of Collins and On-Demand Handbook teaches or suggests the remainder of this
limitation.
5.
a)
A computer program product for distributing application programs


9, 2:2932, 2:553:26, 5:2224.
For the same reasons discussed in Sections VIII(A)(3)(a), the combination of
limitation.
b)
to a target on-demand server on a network executing on a centralized

network management server coupled to the network
For the same reasons discussed in Sections VIII(A)(3)(b) and (c), the
combination of Collins and On-Demand Handbook teaches or suggests this

limitation.
38
c)
U.S. Patent 7,069,293
the computer program product comprising: a computer-readable storage
medium having computer-readable program code embodied in said
medium

programs to execute the scheme and methods described in Collins. See, e.g., id. at
1:1425, 1:5563, 2:69, 2:2932, 2:5563, 5:2224. A POSA would understand
that the digital computer will necessarily have a computer-readable storage
medium, with computer-readable program code in that medium, such as a hard
drive, Random Access Memory (RAM), and the like. EX1002 (Laub Declaration),
at 30.
d)
said computer-readable program code comprising: computer readable

program code that provides to the network management server an
application program to be distributed to remote servers

programs to execute the scheme and methods described in Collins. See, e.g.,
EX1003 (Collins), at 1:1425, 1:5563, 2:69, 2:2932, 2:5563, 5:2224.
For the same reasons discussed in Sections VIII(A)(3)(c), the combination of
limitation.
39
e)
U.S. Patent 7,069,293
computer readable program code that specifies a source directory and a
target directory for distribution of the application program

1:1425, 1:5563, 2:69, 2:2932, 2:5563, 5:2224.
For the same reasons discussed in Sections VIII(A)(3)(d), the combination
limitation.
f)

associated with the application program

1:1425, 1:5563, 2:69, 2:2932, 2:5563, 5:2224.
For the same reasons discussed in Sections VIII(A)(3)(e), the combination of
limitation.
g)

For the same reasons discussed in Section VIII(A)(3)(f), the combination of

40
h)
U.S. Patent 7,069,293
computer readable program code means that distributes the file packet to
the target on-demand server to make the application program available for
use by a user at a client

9, 2:2932, 2:5563, 5:2224.
For the same reasons discussed in Sections VIII(A)(3)(g), the combination
limitation.
6.

Handbook
wherein the network management server is a Tivoli server
The 293 Patent openly admits that Tivoli servers were well-known in the
art prior to the filing date of the 293 Patent, and that the Tivoli Management
Environment (TME) 10 system from Tivoli Systems, Inc. provides a software
distribution feature which may be used to transmit file packages to client and
server stations on a network from a central Tivoli server.
EX1001 (293
Patent), at 2:1014, 3:3436.

POSA at the time the 293 Patent was filed to modify the three-tier network
41
U.S. Patent 7,069,293
management system of Collins in combination with On-Demand Handbook to
specify that the network management server is a Tivoli server. EX1024 (608
File History, Office Action (9/8/2004)), at 3 (It would have been obvious to one
with ordinary skill in the art at the time the invention was made to incorporate [this
feature] as taught by [one reference] in the claimed invention of [other references]
in order to permit remote site management and operation.); EX1025 (608 File
History, Office Action (4/22/2005)), at 8; EX1026 (608 File History, Office
Action (9/22/2005)), at 45.
7.

Handbook
a)
wherein the segment configured to initiate registration operations

includes an import data file
A Software Package in Collins contains certain attributes and data that assist
with installation and registration of the application program contained in the

Software Package. EX1003 (Collins), at 5:310. Those attributes include: (1)
name, description and identifier for the package, (2) type of package (distribution,
collection, or command), (3) name of author, (4) specific attributes of the methods,
and (5) an optional assigned profile. Id.
Software Packages in the system of Collins also contain a Dynamic File
Manifest, which is a portion of the Package that specifies the files to collect at
package build time on the NMS [Network Management Server]. Id. at 6:4245.
42
U.S. Patent 7,069,293
This is because the Package contains a number of data files, as well as binaries,
text, executables, etc. Id. at 6:4850. Additionally, when Packages are created,
[f]iles, scripts, and data are drawn, or imported, from a Native Package digital
computer and can be transferred to a Central Package Archive on the Network
Management Server. Id. at 4:665:16.
this limitation was well known at the time the 293 Patent was filed, and it would
have been obvious to a POSA at the time the 293 Patent was filed to modify the
Network Management Server and the Software Package of Collins to include an
import data file related to the registration operations segment of the Software
Package such as was known to those skilled in the art. EX1025 (608 File History,
Office Action (4/22/2005)), at 8 (It would have been obvious to one with ordinary
skill in the art at the time of the invention to incorporate [this feature] . . . as taught
by [one reference] in the claimed invention of [other references] in order to ensure
that only users who are authorized by the provider can obtain updates for software
products.).
b)
and a call to an import program executing on the target on-demand

server to install and register the file packet associated with the application
program on the target on-demand server
Hop Servers of Collins receive Software Packages from the Network
Management Server through the Hop Servers Package Transfer Agent. EX1003
43
U.S. Patent 7,069,293
(Collins), at 5:5455, Fig. 2. The Package Transfer Agent, also known as the
Transfer Daemon first determines the package type and then act[s] accordingly
on the Package. Id. at 6:5864, 7:1619. One of the options available to the Hop
Server is to install the Package on the Hop Server; another is to import the Package
and place the Package on the Hop Servers Outbound Package Queue for further
distribution. Id. at 5:5063, 6:5864, 7:1619.
Additionally, the Target client devices in Collins receive a Software Package
through their Package Transfer Agent, which processes the Package by placing the
Package on the Targets Inbound Package Queue. Id. at 5:5965. A previously
offline Target can also request its packages from the Staging Server, which
draws queued packages and transmits them to the requesting Target device. Id.
at 7:3949.
c)
in a manner that makes it recognized and available to the user at the

client
After the Hop Server has completed installation, it can further distribute the
Package to a client Target device. Id. at 5:5063, 6:5864, 7:1623. For the same
reasons discussed in Sections VIII(A)(3)(g), the combination of Collins and OnDemand Handbook teaches or suggests the remainder of this limitation.
44
8.
a)
U.S. Patent 7,069,293
wherein registration operations include maintaining at the target ondemand server a profile management list identifying application programs
available for use by the user
On-Demand Handbook discloses that the on-demand server maintains user
accounts, including a User Accounts notebook that maintains user-specific

parameters. EX1004 (On-Demand Handbook), at 98. The on-demand server also
maintains a home directory for storing WorkSpace On-Demand user-specific
information and an application list, which stores all the applications an end-user
can access after logon. Id.
b)
wherein the method further comprises updating the profile management

list at the target on-demand server to make the application program
available for use by the user
In the application distribution scheme of On-Demand Handbook, after an
application is installed on the on-demand server, it must be assigned to an enduser before it can be used. Id. at 119. The on-demand server of On-Demand
Handbook can even set user-specific application parameters to make the
application available for use by the user in a specific manner. Id. at 12022.
9.

wherein the profile management list includes a designation of authorized
users for application programs identified in the profile management list
On-Demand Handbook discloses that the on-demand server maintains user
accounts, including a User Accounts notebook that maintains user-specific
45
U.S. Patent 7,069,293
parameters. Id. at 98. The on-demand server also maintains a home directory
for storing WorkSpace On-Demand user-specific information and an application
list, which stores all the applications an end-user can access after logon. Id. at 98,
119-22.
10.

Handbook
a)
wherein the application program is provided as a JAVA applet

In the application distribution scheme of On-Demand Handbook, a user can
receive a number of application types at a client machine, including Java

applications. Id. at 4, 7, 9, 57 (This application uses a Web browser to provide a
user interface that runs a 100% Pure Java application supplied from a remote
server.). This necessarily includes Java applets. Id. at 79, 138.
b)
wherein the application program is registered based on a Universal

Resource Locator (URL) address accessible to a browser application
The on-demand servers of On-Demand Handbook provide[] end-users with
a Web browser to be used as a user interface. Id. at 11, 14. It can also use a
web browser to provide a user interface that runs a 100% Pure Java application
supplied from a remote server. Id. at 57. Because the client devices can access an
application program from an on-demand server through a web browser, a POSA
would necessarily understand that the application programs of On-Demand
Handbook were registered based on a URL. EX1002 (Laub Declaration), at 57;
46
U.S. Patent 7,069,293
see also EX1024 (608 File History, Office Action (9/8/2004)), at 45 (It would
have been obvious to one with ordinary skill in the art at the time the invention was
made to incorporate [this feature] in order to simplify the enterprise burden by
limiting the client development side to screen layouts and data presentation tools
that use a common interface enabled by the web browser.); EX1025 (608 File
History, Office Action (4/22/2005)), at 910; EX1026 (608 File History, Office
Action (9/22/2005)), at 9.
c)

includes a variable field into which the target on-demand server inserts its
identification during registration operations
Hop Servers of Collins receive Software Packages from the Network
Management Server through the Hop Servers Package Transfer Agent. EX1003
(Collins), at 5:5455. The Package Transfer Agent, also known as the Transfer
Daemon first determines the package type and then act[s] accordingly. Id. at
6:5864. The Hop Server can thereafter place the Package on the Hop Servers
Outbound Package Queue for further distribution. Id. at 5:5063, 7:1623. After
distribution, the Hop Server continues to receive return notifications from the
Target device in its Inbound Package Queue, which are placed there by the
Package Transfer Agent. Id. at 5:5759, 5:676:4. A POSA would necessarily
read this as requiring that the Hop Server insert its identification information so
that the Target device can know with which Hop Server it is interacting during
47
U.S. Patent 7,069,293
installation and registration and can return notifications to that Hop Server that are
intended for the Network Management Server. EX1002 (Laub Declaration), at
5253.
11.

Handbook
a)
wherein the [step of distributing / means for distributing / computer

readable program code that distributes] comprises the [step of distributing
/ means for distributing / computer readable program code that distributes]
the file packet to a plurality of target on-demand servers

and methods described in Collins. See, e.g., EX1003 (Collins), at Abstract, 1:14
25, 1:5563, 2:69, 2:2932, 2:5563, 5:2224. Further, the three-tier network of
Collins is a network management environment as is understood in the 293
Patent. Compare, e.g., id. at 2:5563 with EX1001 (293 Patent), at 7:4144.
The Network Management Server of Collins can send a Software Package to
a plurality of Hop Servers on their way to a Target user device. EX1003 (Collins),
at 3:46; 4:5860, Fig. 1.
b)
each having an identification which may be inserted into the variable

field at the target on-demand server
For the same reasons discussed in Section VIII(A)(10)(c), the combination
of Collins and On-Demand Handbook teaches or suggests this limitation.

48
12.
U.S. Patent 7,069,293
wherein distributing the file packet is preceded by executing a predistribution program at the network management server
The Software Packages of Collins may contain a pre-build method that is
run prior to assembling the Software Package and before transferring the Software
Package. Id. at 6:1921. One example is that the Network Management Server
can extract information from a database and place that information into the Central
Package Archive. Id. at 6:2124.
13.

wherein executing a pre-distribution program includes determining an
environment for the application program that exists on the target ondemand server
When the Network Management Server of Collins builds a Software
Package, it includes software and data which depends on the configuration of the
Target digital computer.
Id. at Abstract.
The Network Management Server
further transfers only that part of the Package which is appropriate for each Target
digital computers configuration.
Id.
Collins calls this Profile-based
Distribution. Id. at 7:5051. The Network Management Server of Collins marks

certain Software Packages as authorized for transfer to specific Profiles at
creation-time. Id. at 7:5658. The Network Management Server must also
certify that the Package is error-free and can only certify the Package in a
specific order. Id. at 7:598:1.
49
U.S. Patent 7,069,293
Additionally, the Target devices of Collins also report characteristics called
criteria value[s] to the Network Management Server before the Network
Management Server sends the Package to a Hop Server or beyond. Id. at 8:3334.
Thus, when the Network Management Server builds and sends a Software Package
to the client device, the Package contains several optional data files or methods,
some of which are appropriate for the Target device, some which are not. Id. at
8:2238.
14.

wherein preparing a file packet includes including a selected version of
an application launcher in the file packet, the selected version being
selected based on the determined environment
The client devices of Collins also report characteristics called criteria
value[s] to the Network Management Server when the client device requests a
Software Package from the Network Management Server. Id. at 8:3334. Thus,
when the Network Management Server builds and sends a Software Package to the
client device, the Package contains several optional data files or methods, some
of which are appropriate for the requesting client device, some which are not.
Id. at 8:2238. When the Hop Server receives the Package, the Hop Servers
Transfer Daemon reviews the criteria values of the client device, removes
optional data files and methods which are inappropriate for that criteria value and
sends the modified package to the Target client device. Id. at 8:2938.
50
U.S. Patent 7,069,293
On-Demand Handbook discloses that [a]ll applications that run on WorkSpace
On-Demand clients require specific environment information and must be able to
change the environment on a per-application basis.
EX1004 (On-Demand
Handbook), at 98. On-Demand Handbook also supports three special parameters

that define the way an application is launched. Id. at 137.
POSA at the time the 293 Patent was filed to modify the network management
scheme and Network Management Server of Collins to deliver an application
launcher in the Software Package based on the clients determined environment
such as taught by On-Demand Handbook. EX1002 (Laub Declaration), at 73,
77; see also EX1025 (608 File History, Office Action (4/22/2005)), at 5 (It
would have been obvious to one with ordinary skill in the art at the time the
invention was made to incorporate [this feature] as taught by [one reference] in the
claimed invention of [other references] in order to download relevant update for
the software product.); EX1026 (608 File History, Office Action (9/22/2005)), at
56. A POSA would have looked to both Collins and On-Demand Handbook as
related art in a known, limited field of storage and on-demand provision of digital
content by servers to user stations on a network. EX1002 (Laub Declaration), at
51
72.
U.S. Patent 7,069,293
Therefore, a POSA would have been motivated to incorporate the on-
demand server of On-Demand Handbook into the network management scheme

and Hop Servers of Collins to configure the Hop Servers to deliver applications as
needed responsive to user requests as requests are received. Id. at 73, 77.
Further, adding the on-demand servers of On-Demand Handbook would
have been based on well-known concepts and does not involve modification of the
novel portions of Collins. Id. at 78. Thus, to the extent that Collins falls short,
On-Demand Handbook discloses this limitation.
15.

wherein distributing the file packet is followed by executing an afterdistribution program at the target on-demand server
The Software Package distribution scheme of Collins allows for what is
called a post-build method, which is messaged after the build of the Software
Package is complete each time a package is transferred. EX1003 (Collins), at
6:2426. It also allows for post-install methods, which are messaged after a
successful installation on the target computer. Id. at 6:3032. Finally, after
completing the necessary actions on a Software Package, which can include
distribution, the Transfer Daemon of the Hop Server re-scans its Inbound Package
Queue for additional work. Id. at 7:3033.
52
B.
1.
U.S. Patent 7,069,293
Ground II: Claims 1, 2, 6, 7, 12, 13, 1518, 20, and 21 are obvious over
Gupta in view of Hesse
Overview of Gupta
Gupta discloses a three-tier network management scheme where a remote
application server can distribute application code to a local server, and where the
local server becomes an intermediary local application server for a client device.
EX1005 (Gupta), at Abstract. The client device goes through a login process to
establish identity and credentials to access certain applications. Id. The client
device also requests an application, and if it does not exist on the local server, the
application server sends the application to the local server. Id. at 4:6365. The
local server then retains the application and passes a copy to the client device. Id.
at 4:6566. Once the application has been transferred from the application server
to the local server, the client device can access the application directly from the
local server. Id. at 4:665:2. An overview of the network architecture of Gupta is
illustrated in Figure 4A below:
53
Local Application Servers
U.S. Patent 7,069,293
Remote Application Servers
Id. at Fig. 4A (red annotations added).

A client device can also log in to the local application server whereby the
client device establishes its identity to the local application server, and the local
54
U.S. Patent 7,069,293
application server stores that identity for future use. Id. at 5:6367. The local
application server thereafter generates a credential for the client to be used to
access the application programs available to the client device at the local
application server. Id. at 5:676:2.
2.
Overview of Hesse
Hesse discloses a particular system for building application packages to be
used and transferred within a distributed computer network. EX1006 (Hesse), at

Abstract, 1:1720, 1:662:6, 2:1214. The server of Hesse creates application
packages by bundling a number of application modules or application executables
together and storing those application packages in the servers memory. Id. at
Abstract, 2:3444. The server of Hesse then assigns the application packages to
specific user devices and records that list of user devices in a master file. Id. at
2:5255. Those application packages are transferred to the specific user devices
listed on the master file, and installed there. Id. at Abstract, 2:5557.
3.
Claim 1 is obvious over Gupta in view of Hesse
a)
A method for distribution of application programs

Gupta discloses a network management and application distribution system
where application server code on a remote application server can be distributed to a

local server and, ultimately, a client device. EX1005 (Gupta), at Abstract. In this
three-tier architecture, application code is resident on a remote application server
55
U.S. Patent 7,069,293
but can be distributed to a local application server that services one or more client
devices. Id. at 4:3337. The local application server then serves those client
devices based on requests for application code and/or services. Id. at 4:3739.
b)
to a target on-demand server on a network

The local application server of Gupta can be configured dynamically (e.g.,
as needed) in response to requests. Id. at 4:4748. In other words, application

programs need not reside on the local application server, but when a client requests
an application program, the local application server can configure itself to handle
the request, either from its own data store or by reaching out to the remote
application server. Id. at 4:4863. Once the local application server obtains the
requested application program, the local application server retains a copy and
forwards a copy to the client. Id. at 4:6366.
In one embodiment of Gupta, a webtop server acts as the local application
server to a number of client devices. Id. at 8:918, 8:45. When a client device
requests access to an application for the first time, the remote application server
sends the application to the webtop server. Id. at 8:679:2. Thereafter, the webtop
server can provide the application to the client device on demand. Id. at 9:34.
Gupta also discusses that as part of its management duties, the remote
application server can alert the webtop server to any change in the software
applications housed on the application server. Id. at 11:5064. This is because the
56
U.S. Patent 7,069,293
remote application server of Gupta can keep track of all changes to application
software that it maintains. Id. at 11:6712:1. Thereafter, the remote application
server can send the updated application program to the webtop server if necessary.
Id. at 11:5962, 12:15.
c)
comprising the following executed on a centralized network management

server coupled to the network: providing an application program to be
distributed to the network management server
The application server of Gupta is located in a production data center, which
is remotely located from the client devices. Id. at 2:3435, 9:3235. These
application servers can be pre-configured with application programs to be used
and distributed to client devices in the Gupta network. Id. at 2:1920, 2:3537.
The application server also manages requests related to the applications stored
on the application server. Id. at 2:3839. This way of centrally manag[ing] the
applications allows updates to be standardized and made network-wide to disperse
clients connected to the application server via the Gupta network. Id. at 2:5765.
d)
specifying a source directory and a target directory for distribution of the

application program
Gupta discusses that programs to be distributed in the methods of Gupta can
be identified by a uniform resource locator (URL) designation. Id. at 3:1015.

The application locator program consults a directory to locate the desired
application program, and thus necessarily determines the location, or source
directory, of the application program to be transferred. Id. at 11:2030, 12:612.
57
U.S. Patent 7,069,293
Additionally, a centrally located directory service can locate an application
program by maintaining a store of information that contains an entry for each
service or application code that is registered with the directory service. Id. at
12:4562. The location of the application code can be expressed in the directory as
the name of the application program, a URL, or other source directory information.
Id. at 13:112.
Additionally, the communication between the client device and the remote
application server in Gupta includes the use of [p]arameters . . . for transmittal to
and from the client tier. Id. at 2:5153. Gupta also teaches that the client tier is
not necessarily located at the same site or proximately connected to the application
server and so transfer between a remote application server and client must
involve remote transmissions over the Internet. Id. at 2:6167; see also id. at
Abstract, 11:2123, 12:68, 12:4651, 12:5965, 14:3741.
A POSA would
necessarily read this as requiring that the transmitting device (the remote
application server) specify a target directory location for the client device.
EX1002 (Laub Declaration), at 6364; see also EX1024 (608 File History,
skill in the art at the time the invention was made to incorporate [this feature] as
taught by [one reference] in order to determine if the file directories and file[]
objects are valid and accessible on the network.); EX1025 (608 File History,
58
U.S. Patent 7,069,293
Office Action (4/22/2005)), at 3; EX1026 (608 File History, Office Action
(9/22/2005)), at 3.
e)
preparing a file packet associated with the application program


local server and, ultimately, a client device. EX1005 (Gupta), at Abstract. The
communication between client device and the remote application server can be
done with transfer of [p]arameters that are packaged (or marshalled [sic]) and
unpackaged (or unmarshalled [sic]) for transmittal to and from the client tier. Id.
at 2:5156. This packaging of parameters provides the ability for the client
device to invoke methods, or software modules, that reside on another computer
system, such as the remote application server. Id. at 2:4451.
To the extent one could argue that Gupta does not disclose this limitation,
Hesse teaches transferring applications by building application packages to be used
and transferred within a distributed computer network.
EX1006 (Hesse), at
Abstract, 1:1720, 1:662:6, 2:1214. The server of Hesse creates application

packages by bundling a number of application modules or application executables
together and then stores those application packages in the servers memory. Id. at
Abstract, 2:3444.
59
U.S. Patent 7,069,293
POSA at the time the 293 Patent was filed to modify the application transfer
protocol of Gupta to include a file packet associated with the application to be
transferred such as taught by Hesse. EX1002 (Laub Declaration), at 65, 83. A
POSA would have looked to both Gupta and Hesse as related art in a known,
limited field of storage and on-demand provision of digital content by servers to
user stations on a network. Id. at 79. Therefore, a POSA would have been
motivated to incorporate the application packet building protocol of Hesse into the
network management scheme and application transfer protocol of Gupta to provide
more flexibility and functionality as part of the application transfer protocol. Id. at
83.
Further, adding the application packet building protocol of Hesse would
have been based on well-known concepts and does not involve modification of the
novel portions of Gupta. Id. at 85.
f)
including a segment configured to initiate registration operations for the

application program at the target on-demand server
Gupta discusses that an applet, such as those that are distributed from the
on-demand server of Gupta to the client device, can be verified with digital
signatures using a public key/private key encryption technique. EX1005 (Gupta),
at 4:1317. The client does this by receiving along with the applet a public
keyas would be generated by Guptas on-demand server or the central
60
U.S. Patent 7,069,293
management serverto verify the digital signature and therefore the applet. Id. at
4:1720; see also EX1002 (Laub Declaration), at 66. Gupta elsewhere describes
that the remote application server provides the applet to the webtop server, which
becomes the applet-host.
EX1005 (Gupta), at 9:47.
When the applet is
eventually run on the requesting client device, the applet is designed to

communicate back to the webtop server as the host of that applet thereby
satisfying the sandbox security paradigm. Id. at 9:710.
Additionally, the client devices in Gupta must log in to verify the client
devices credentials and the local application servers provide the client devices
with a cookie to track the client session. Id. at 10:4352, 10:6511:19. The
login service of the webtop/local application server maintains login information
about the client. Id. at 10:5364.
g)
distributing the file packet to the target on-demand server to make the
application program available for use by a user at a client

local server and, ultimately, a client device. Id. at Abstract. In this three-tier
architecture, application code is resident on a remote application server but can
be distributed to a local application server that services one or more client devices.
Id. at 4:3337. The local application server then serves those client devices based
on requests for application code and/or services. Id. at 4:3739.
61
U.S. Patent 7,069,293
The local application server of Gupta can be configured dynamically (e.g.,
as needed) in response to requests. Id. at 4:4748. In other words, application
programs need not reside on the local application server, but when a client requests
an application program, the local application server can configure itself to handle
the request, either from its own data store or by reaching out to the remote
application server. Id. at 4:4863. Once the local application server obtains the
requested application program, the local application server retains a copy and
forwards a copy to the client. Id. at 4:6366.
In one embodiment of Gupta, a webtop server acts as the local application
server to a number of client devices. Id. at 8:918, 8:45. When a client device
requests access to an application for a first time, the remote application server
sends the application to the webtop server. Id. at 8:679:2. Thereafter, the webtop
server can provide the application to the client device on demand. Id. at 9:34.
Gupta also discusses that as part of its management duties, the remote
application server can alert the webtop server to any change in the software
applications housed on the application server. Id. at 11:5064. This is because the
remote application server of Gupta can keep track of all changes to application
software that it maintains. Id. at 11:6712:1. Thereafter, the remote application
server can send the updated application program to the webtop server if necessary.
Id. at 11:5962, 12:15.
62
U.S. Patent 7,069,293
4.
a)
An application program distribution system

For the same reasons discussed in Section VIII(B)(3)(a), the combination of
Gupta and Hesse teaches or suggests this limitation.

b)
for distributing application programs to a target on-demand server on a

network executing on a centralized network management server coupled to
the network
For the same reasons discussed in Section VIII(B)(3)(a) through (c), the
combination of Gupta and Hesse teaches or suggests this limitation.

c)
the system comprising: means for providing to the network management

server an application program to be distributed to remote servers
For the same reasons discussed in Section VIII(B)(3)(c), the combination of

d)
means for specifying a source directory and a target directory for

distribution of the application program
For the same reasons discussed in Section VIII(B)(3)(d), the combination of

e)
means for preparing a file packet associated with the application

program
Gupta can be implemented as computer software in the form of computer
readable program code executed on a general purpose computer. Id. at 6:4244,

7:6067.
63
U.S. Patent 7,069,293
For the same reasons discussed in Section VIII(B)(3)(e), the combination of
Gupta and Hesse teaches or suggests the remainder of this limitation.
f)

For the same reasons discussed in Section VIII(B)(3)(f), the combination of

g)
means for distributing the file packet to the target on-demand server to
make the application program available for use by a user at a client

7:6067. Further, the three-tier network of Gupta is a network management
environment as is understood in the 293 Patent. Compare, e.g., id. at Abstract,
4:3539 with EX1001 (293 Patent), at 7:4144.
For the same reasons discussed in Section VIII(B)(3)(g), the combination of
5.
a)
A computer program product for distributing application programs

readable program code executed on a general purpose computer.

(Gupta), at 6:4244, 7:6067.
64
EX1005
U.S. Patent 7,069,293
For the same reasons discussed in Section VIII(B)(3)(a), the combination of
b)
to a target on-demand server on a network executing on a centralized

network management server coupled to the network
For the same reasons discussed in Section VIII(B)(3)(b) and (c), the
combination of Gupta and Hesse teaches or suggests this limitation.

c)
the computer program product comprising: a computer-readable storage

medium having computer-readable program code embodied in said
medium

7:6067.
When implemented on such a computer program, the computer
executing the program includes various computer-readable storage media, which

maintain the computer-readable program code. Id.; see also id. at 6:547:15, 7:55
67.
d)
said computer-readable program code comprising: computer readable

program code that provides to the network management server an
application program to be distributed to remote servers

7:6067.
For the same reasons discussed in Section VIII(B)(3)(c), the combination of
65
e)
U.S. Patent 7,069,293
computer readable program code that specifies a source directory and a
target directory for distribution of the application program

7:6067.
For the same reasons discussed in Section VIII(B)(3)(d), the combination of
f)

associated with the application program

7:6067.
For the same reasons discussed in Section VIII(B)(3)(e), the combination of
g)

For the same reasons discussed in Section VIII(B)(3)(f), the combination of
66
h)
U.S. Patent 7,069,293
computer readable program code means that distributes the file packet to
the target on-demand server to make the application program available for
use by a user at a client

7:6067.
For the same reasons discussed in Section VIII(B)(3)(g), the combination of
6.
Claims 2, 13, and 18 are obvious over Gupta in view of Hesse

wherein the network management server is a Tivoli server
The 293 Patent openly admits that Tivoli servers were well-known in the
art prior to the filing date of the 293 Patent, and that the Tivoli Management
Environment (TME) 10 system from Tivoli Systems, Inc. provides a software
distribution feature which may be used to transmit file packages to client and
server stations on a network from a central Tivoli server.
EX1001 (293
Patent), at 2:1014, 3:3436.

POSA at the time the 293 Patent was filed to modify the three-tier network
management system of Gupta in combination with Hesse to specify that the
network management server is a Tivoli server. EX1024 (608 File History,
67
U.S. Patent 7,069,293
skill in the art at the time the invention was made to incorporate [this feature] as
taught by [one reference] in the claimed invention of [other references] in order to
permit remote site management and operation.); EX1025 (608 File History,
Office Action (4/22/2005)), at 8; EX1026 (608 File History, Office Action
(9/22/2005)), at 45.
7.
a)
wherein the application program is provided as a JAVA applet

A client in the application distribution system of Gupta can request a number
of different resources from the on-demand server, including an applet (i.e.,

executable program code) to be run inside the browser of the client device.
EX1005 (Gupta), at 3:1015.
Gupta makes clear that this applet can be a
program written using the Java programming language that runs when it is loaded
by the browser. Id. at 2:1618.
b)
wherein the application program is registered based on a Universal

Resource Locator (URL) address accessible to a browser application
When a client in the application distribution system of Gupta requests an
application program, the client can make that request by identifying a URL, which
in turn can identify the application program requested. Id. at 3:1015.
68
c)
U.S. Patent 7,069,293
includes a variable field into which the target on-demand server inserts its
identification during registration operations
In the application distribution system of Gupta, a webtop server becomes the
applet host for the client device after the webtop server distributes the applet to the
client device. Id. at 8:669:7. This is so that when the client device executes the
applet, the applet communicates back to the webtop server. Id. at 9:710. The
same scheme applies for servlets running on the webtop. When an applet running
on the client device needs to invoke a servlet, it requests the handle for a servlet,
such as a URL, from the webtop server. Id. at 9:1721. Because the processes
running on the client device that were previously distributed to the client device
call the webtop server directly, the webtop server must necessarily pass along its
identification information to the client device. EX1002 (Laub Declaration), at
67.
8.
a)
wherein the [step of distributing / means for distributing / computer

readable program code that distributes] comprises the [step of distributing
/ means for distributing / computer readable program code that distributes]
the file packet to a plurality of target on-demand servers
readable program code executed on a general purpose computer.

(Gupta), at 6:4244, 7:6067.
EX1005
Further, the three-tier network of Gupta is a
69
U.S. Patent 7,069,293
network management environment as is understood in the 293 Patent.
Compare, e.g., id. at Abstract, 4:3539 with EX1001 (293 Patent), at 7:4144.
The network architecture and software distribution scheme of Gupta is set
up so that a remote application server can distribute file packets to a plurality of
webtop servers. EX1005 (Gupta), at Figs. 4A, 4B.
b)
each having an identification which may be inserted into the variable

field at the target on-demand server
In the application distribution system of Gupta, a webtop server becomes the
applet host for the client device after the webtop server distributes the applet to the
client device. Id. at 8:669:7. This is so that when the client device executes the
applet, the applet communicates back to the webtop server. Id. at 9:710. The
same scheme applies for servlets running on the webtop. When an applet running
on the client device needs to invoke a servlet, it requests the handle for a servlet,
such as a URL, from the webtop server. Id. at 9:1721. Because the processes
running on the client device that were previously distributed to the client device
call the webtop server directly, each webtop server must necessarily pass along its
identification information to the client device. EX1002 (Laub Declaration), at
6768.
70
U.S. Patent 7,069,293
IX.
CONCLUSION
Based on the foregoing, the challenged claims of the 293 Patent recite
subject matter that is unpatentable. Petitioner respectfully requests institution of

inter partes review to cancel these claims.
Respectfully submitted,
/Vincent J. Galluzzo/
Vincent J. Galluzzo
Registration No. 67,830
Teresa Stanek Rea
Jonathan Stroud
71
U.S. Patent 7,069,293
Table of Exhibits for Patent 7,069,293 Petition for Inter Partes Review
Exhibit
Description
1001
U.S. Patent 7,069,293 (the 293 Patent)
1002
Declaration of Leonard Laub (Laub Declaration)
1003
U.S. Patent 5,845,090 to Collins et al. (Collins) (filed on September

30, 1996; published on December 1, 1998)
1004
IBM International Technical Support Organization Austin Center,

WorkSpace On-Demand Handbook, First Edition (On-Demand
Handbook) (published on December 1, 1997)
1005
U.S. Patent 6,446,109 to Gupta (Gupta) (filed on June 29, 1998;

published on September 3, 2002)
1006
U.S. Patent 5,950,010 to Hesse et al. (Hesse) (filed on November 25,

1996; published on September 7, 1999)
1007
Wayne W. Eckerson, Three-Tier Client Server Architecture:

Achieving Scalability, Performance, and Efficiency in Client Server
Applications, Open Information Systems (published in January 1995)
1008
U.S. Patent 6,104,392 to Shaw et al. (Shaw) (filed on November 12,

1998; published on August 15, 2000)
1009
U.S. Patent 6,836,794 to Lucovsky et al. (Lucovsky) (filed on

September 21, 1998; published on December 28, 2004)
1010
Reserved
1011
U.S. Patent 5,991,402 to Jia et al. (Jia) (filed on September 23, 1997;
published on November 23, 1999)
1012
U.S. Patent 6,523,166 to Mishra et al. (Mishra) (filed on September

21, 1998; published on February 18,2003)
1013
U.S. Patent 5,765,205 to Breslau et al. (Breslau) (filed on December

27, 1995; published on June 9, 1998)
a
U.S. Patent 7,069,293
Exhibit
Description
1014
U.S. Patent 6,009,525 to Horstmann (Horstmann) (filed on August

29, 1997; published on December 28, 1999)
1015
U.S. Patent 6,496,979 to Chen et al. (Chen) (filed on April 10, 1998;
published on December 17, 2002)
1016
U.S. Patent 6,493,870 to Madany et al. (Madany) (filed on March 20,

1998; published on December 10, 2002)
1017
U.S. Patent 6,123,737 to Sadowsky (Sadowsky) (filed on May 21,

1997; published on September 26, 2000)
1018
U.S. Patent 7,478,142 to Veditz (Veditz) (filed on September 29,

1998; published on January 13, 2009)
1019
U.S. Patent 5,860,012 to Luu (Luu) (filed on May 19, 1997;

published on January 12, 1999)
1020
528 File History, Office Action (3/28/2001)
1021
528 File History, Amendment (5/31/2001)
1022
528 File History, Amendment (10/23/2001)
1023
528 File History, Appeal Brief (5/16/2002)
1024
1025
1026
1027
WorkSpace On-Demand Handbook Copyright Registration (OnDemand Handbook Copyright Registration)
1028
Petitioners Voluntary Interrogatory Responses
1029
Original Complaint for Patent Infringement in Uniloc USA, Inc., et al.

v. ADP, LLC, No. 2:16-cv-741 (E.D. Tex. July 8, 2016) (ADP
Complaint)
U.S. Patent 7,069,293
Exhibit
Description
1030
608 File History, Information Disclosure Statement (5/31/2001)
1031
608 File History, List of Documents Cited by Applicant (6/23/2004)
U.S. Patent 7,069,293
CERTIFICATE OF COMPLIANCE
Pursuant to 37 C.F.R. 42.24(d), I hereby certify that this Petition complies
with the type-volume limitation of 37 C.F.R. 42.24(a)(1)(i) because it contains
13,993 words as determined by the Microsoft Office Word 2010 word-processing
system used to prepare the brief, excluding the parts of the brief exempted by 37
C.F.R. 42.24(a)(1).
Vincent J. Galluzzo
U.S. Patent 7,069,293
CERTIFICATE OF SERVICE
I hereby certify that on November 10, 2016, I caused a true and correct copy
of the foregoing materials:
Petition for Inter Partes Review of U.S. Patent 7,069,293 Challenging
Claims 121 under 35 U.S.C. 312 and 37 C.F.R. 42.104
Exhibits to Petition for Inter Partes Review of U.S. Patent 7,069,293
(EX1001EX1031)
to be served via Federal Express on the following correspondent of record as listed
on PAIR:
RSW and SVL IP Law
IBM CORPORATION
555 Bailey Ave
Dept 9UVA
San Jose CA 95141
Vincent J. Galluzzo

Unified Patents Inc. v. Uniloc USA, Inc., IPR2017-00184, Paper 1 (Nov. 10, 2016)

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Unified Patents Inc. v. Uniloc USA, Inc., IPR2017-00184, Paper 1 (Nov. 10, 2016)

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IPR2017-00184 Petition

U.S. Patent 7,069,293

MANDATORY NOTICES .............................................................................1

Real Party-in-Interest ...................................................................................1

Related Matters ............................................................................................1

Service Information, Email, Hand Delivery, and Postal .............................3

CERTIFICATION OF GROUNDS FOR STANDING ..................................3

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................3

Prior Art Patents and Printed Publications ..................................................4

Grounds for Challenge .................................................................................5

OVERVIEW OF THE 293 PATENT ............................................................9

Summary of the Alleged Invention..............................................................9

Level of Ordinary Skill in the Art .............................................................11

VII. CLAIM CONSTRUCTION ..........................................................................13

Ground I: Claims 121 are obvious over Collins in view of On-Demand

Overview of Collins .................................................................................20

Overview of On-Demand Handbook .......................................................22

Claim 1 is obvious over Collins in view of On-Demand Handbook .......24

Claim 12 is obvious over Collins in view of On-Demand Handbook .....36

Claim 17 is obvious over Collins in view of On-Demand Handbook .....38

Claims 2, 13, and 18 are obvious over Collins in view of On-Demand

Claims 3, 14, and 19 are obvious over Collins in view of On-Demand

Claim 5 is obvious over Collins in view of On-Demand Handbook .......45

Overview of Hesse ...................................................................................55

Claim 1 is obvious over Gupta in view of Hesse .....................................55

Claim 12 is obvious over Gupta in view of Hesse ...................................63

Claim 17 is obvious over Gupta in view of Hesse ...................................64

Luxembourg S.A. and exclusively licensed to Uniloc USA, Inc. (collectively,

Service Information, Email, Hand Delivery, and Postal

jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring

CERTIFICATION OF GROUNDS FOR STANDING

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

claims 121 of the 293 Patent.

Prior Art Patents and Printed Publications

U.S. Patent 5,845,090 (filed on September 30, 1996, published on

U.S. Patent 6,446,109 (filed on June 29, 1998, published on

U.S. Patent 5,950,010 (filed on November 25, 1996, published on

America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.

Grounds for Challenge

Declaration (EX1002)), requests cancellation of challenged claims 121 as

Microsoft, Sun Microsystems, and other industry giants made significant

services and applications to distributed locations throughout the company.

EX1001 (293 Patent), at 2:1014.

This well-known system

provided software distribution capabilities from a central location. Id. at 3:34

OVERVIEW OF THE 293 PATENT

Summary of the Alleged Invention

Id. at Fig. 1 (red annotations added).

Id. at Fig. 10.

Level of Ordinary Skill in the Art

have a bachelors degree in electrical engineering or computer science and at least

application management and

EX1020 (528 File History, Office Action

In response, Applicants cancelled the claims directed to

distribution of applications and filed those claims as the continuation application

EX1001 (293 Patent), at

Application programs are installed at the server. Id. at 4:2932.

Application programs are installed on a network drive accessible to

An administrator installs the applications on the server. Id. at 8:62

means for specifying a source directory and a target directory

Computer program instructions provided to a processor and executed

User input screen to specify information. Id. at 18:4861, 19:4654.

means for preparing a file packet

Computer program instructions provided to a processor and executed