IPA Technologies Inc., which is a wholly owned subsidiary of Wi-LAN Technologies Inc., which is a wholly owned subsidiary of Wi-LAN Inc., which is a wholly owned subsidiary of Quarterhill Inc.

Patent Trials and Appeals Board

Oct 22, 2020

IPR2019-00836 (P.T.A.B. Oct. 22, 2020)

Trials@uspto.gov Paper 42
571-272-7822 Date: October 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MICROSOFT CORPORATION,
Petitioner,
v.
IPA TECHNOLOGIES INC.,
Patent Owner.

IPR2019-00836
Patent 7,069,560 B1

Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
Administrative Patent Judges.
PETTIGREW, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
Denying in Part and Dismissing in Part Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64

I. INTRODUCTION
In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
Microsoft Corporation (“Petitioner”) challenges claims 1, 5–13, 22–25, and
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2
50–55 of U.S. Patent No. 7,069,560 B1 (Ex. 1001, “the ’560 patent”), owned
by IPA Technologies Inc. (“Patent Owner”). This Final Written Decision is
entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons discussed below, Petitioner has shown by a preponderance of the
evidence that claims 1, 5–9, 12, 13, 22–25, and 52 of the ’560 patent are
unpatentable, but has not shown by a preponderance of the evidence that
claims 10, 11, 50, 51, and 53–55 of the ’560 patent are unpatentable.
A. Procedural History
Petitioner filed a Petition for inter partes review of claims 1, 5–13,
22–25, and 50–55 of the ’560 patent. Paper 1 (“Pet.”). Patent Owner filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying the standard set
forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable
likelihood that Petitioner would prevail with respect to at least one
challenged claim, we instituted an inter partes review of the challenged
claims. Paper 9 (“Inst. Dec.”).
Following institution, Patent Owner filed a Patent Owner Response
(Paper 19, “PO Resp.”), Petitioner filed a Reply (Paper 27, “Pet. Reply”),
and Patent Owner filed a Corrected Sur-reply (Paper 38, “PO Sur-reply”).
Patent Owner filed a Motion to Exclude (Paper 33, “PO Mot.”), Petitioner
filed an Opposition to Patent Owner’s Motion to Exclude (Paper 34, “Pet.
Opp. to Mot.”), and Patent Owner filed a Reply in Further Support of Its
Motion to Exclude (Paper 36, “PO Mot. Reply”). An oral hearing was held
on July 27 and 28, 2020, and a copy of the hearing transcript has been
entered into the record.1 Paper 41 (“Tr.”).

1 A single hearing was held for eight related cases—IPR2019-00810,
IPR2019-00811, IPR2019-00812, IPR2019-00813, and IPR2019-00814,
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B. Real Parties in Interest
Petitioner identifies Microsoft Corporation as the real party in interest
for the Petition. Pet. 3. Patent Owner names as the real party in interest IPA
Technologies Inc., which is a wholly owned subsidiary of Wi-LAN
Technologies Inc., which is a wholly owned subsidiary of Wi-LAN Inc.,
which is a wholly owned subsidiary of Quarterhill Inc. Paper 3, 2.
C. Related Matters
The parties inform us that the ’560 patent is the subject of the
following district court proceedings: IPA Technologies Inc. v. Microsoft
Corp., 1:18-cv-00001 (D. Del.); IPA Technologies Inc. v. Google LLC,
1:18-cv-00318 (D. Del.); IPA Technologies Inc. v. Amazon.com,
1:16-cv-1266 (D. Del.). Pet. 3; Paper 3, 2.
In addition to the present proceeding, we instituted two other inter
partes reviews based on petitions filed by Petitioner challenging claims of
the ’560 patent. In IPR2019-00835, the Board determined that claims 1, 20,
21, 26, 27, 28–35, and 45–49 of the ’560 patent had been shown to be
unpatentable and that claim 28 had not been shown to be unpatentable.
Microsoft Corp. v. IPA Techs. Inc., IPR2019-00835, Paper 42 (PTAB
Oct. 15, 2020) (Final Written Decision). In IPR2019-00837, in a decision
issued concurrently with this one, we determine that Petitioner has shown
claims 1–4, 14–19, 26, and 36–44 of the ’560 patent to be unpatentable.
The ’560 patent was the subject of two inter partes reviews in which
the Board determined that claims of the ’560 patent had not been shown to
be unpatentable: Google LLC v. IPA Technologies Inc., IPR2019-00730,
Paper 72 (PTAB Sept. 16, 2020) (Final Written Decision); Google LLC v.

challenging claims of U.S. Patent No. 6,851,115 B1; and IPR2019-00835,
IPR2019-00836, and IPR2019-00837, challenging claims of the ’560 patent.
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Patent 7,069,560 B1
4
IPA Technologies Inc., IPR2019-00731, Paper 73 (PTAB Sept. 16, 2020)
(Final Written Decision).
The ’560 patent is a continuation of U.S. Patent No. 6,851,115 B1
(Ex. 1122, “the ’115 patent”), which is the subject of other inter partes
reviews (IPR2019-00810, IPR2019-00811, IPR2019-00812, IPR2019-
00813, and IPR2019-00814) involving the same parties as this proceeding.
See Ex. 1001, code (63).
D. Overview of the ’560 Patent
The ’560 patent describes “software-based architectures for
communication and cooperation among distributed electronic agents” using
“interagent communication languages enabling client agents to make
requests in the form of arbitrarily complex goal expressions that are solved
through facilitation by a facilitator agent.” Ex. 1001, 1:20–25. Figure 4 of
the ’560 patent is reproduced below.

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Figure 4 depicts the structure of an exemplary distributed agent system of
the ’560 patent. Id. at 6:38–44. Figure 4 shows that system 400 includes
facilitator agent 402, user interface agents 408, application agents 404, and
meta-agents 406. Id. The ’560 patent discloses that system 400 is organized
“as a community of peers by their common relationship” to facilitator
agent 402, which is “a specialized server agent that is responsible for
coordinating agent communications and cooperative problem-solving.”
Id. at 6:41–43, 6:46–48.
The ’560 patent discloses that cooperation among agents is structured
around the following three-part approach: (1) providers of services register
their capabilities specifications with a facilitator; (2) requesters of services
construct goals and relay them to the facilitator; and (3) the facilitator
coordinates the efforts of the appropriate service providers in satisfying
these goals. Id. at 10:53–61. Such cooperation among agents is achieved
via messages expressed in a common language, referred to as the Interagent
Communication Language (“ICL”). Id. at 10:61–11:7.
Referencing Figure 3 (not reproduced herein) and Figure 4, the
’560 patent describes a preferred embodiment for the operation of a
distributed agent system. Id. at 7:24–50. The ’560 patent describes that,
when invoked, a client agent makes a connection to a facilitator, e.g.,
facilitator agent 402, and registers with the facilitator a specification of the
capabilities and services it can provide. Id. at 7:26–32. For example, a
natural language agent may register the characteristics of its available
natural language vocabulary. Id. at 7:32–34. When facilitator agent 402
receives a service request and determines that registered services 416 of one
of its client agents will help satisfy a goal of the request, the facilitator sends
that client a request expressed in ICL 418. Id. at 7:36–40. The client agent
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parses this request, processes it, and returns answers or status reports to the
facilitator. Id. at 7:41–43.
Referencing Figures 5 and 6 (not reproduced herein), the ’560 patent
describes an exemplary embodiment in which user interface agent 408 runs
on a user’s laptop, accepting user input, sending requests to facilitator
agent 402 for delegation to appropriate agents, and displaying the results of
the distributed computation. Id. at 7:64–8:14. For instance, when the
question “What is my schedule?” is entered on user interface (UI) 408,
UI 408 sends the request to facilitator agent 402, which in turn asks natural
language (NL) agent 426 to translate the query into ICL. Id. at 8:15–25.
The translated ICL expression then is routed by facilitator agent 402 to
appropriate agents, e.g., calendar agent 434, to execute the request.
Id. at 8:25–27. Finally, results are sent back to UI agent 408 for display.
Id. at 8:27–28.
E. Challenged Claims
Of the claims challenged in the Petition, claims 1, 22, 50, 52, and 53
are independent. Claims 5–13 depend directly or indirectly from claim 1;
claims 23–25 depend directly from claim 22; claim 51 depends directly from
claim 50; and claims 54 and 55 depend directly claim 53. Claim 1 is
illustrative and reproduced below.
1. A software-based, flexible computer architecture for
communication and cooperation among distributed electronic
agents, the architecture contemplating a distributed computing
system comprising:
a plurality of service-providing electronic agents;
a distributed facilitator agent functionally distributed across at
least two computer processes, the facilitator agent capable of
bi-directional communications with the plurality of service-
providing electronic agents, the facilitator agent including:
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an agent registry that declares capabilities for each of the
plurality of service-providing electronic agents currently
active within the distributed computing environment; and
a facilitating engine operable to interpret a service request as a
base goal, the facilitating engine further operable for
generating a goal satisfaction plan associated with the base
goal, wherein the goal satisfaction plan involves:
using reasoning to determine sub-goal requests based on
non-syntactic decomposition of the base goal and
using said reasoning to co-ordinate and schedule
efforts by the service-providing electronic agents for
fulfilling the sub-goal requests in a cooperative
completion of the base goal; and
wherein the plurality of service-providing electronic agents and
the distributed facilitator agent communicate using an
interagent Communication Language (ICL), wherein the ICL
includes:
a layer of conversational protocol defined by event types
and parameter lists associated with one or more of the
events, wherein the parameter lists further refine the
one or more events.
Ex. 1001, 29:56–30:23.
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F. Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are unpatentable based on
the following ground (Pet. 4):
Claim(s) Challenged 35 U.S.C. § References
1, 5–13, 22–25, 50–55 103(a)2 Kiss,3 FIPA974

G. Testimonial Evidence
In support of the unpatentability contentions in its Petition, Petitioner
relies on a declaration of Dr. Henry Lieberman (Ex. 1050, “Lieberman
Decl.”) and a declaration of Dr. Timothy Finin (Ex. 1049, “Finin Decl.”).
Patent Owner cross-examined Dr. Lieberman and Dr. Finin via deposition.
See Ex. 2069 (“Lieberman Dep.”); Ex. 2068 (“Finin Dep.”).
In support of its Patent Owner Response, Patent Owner relies on a
declaration of Dr. Nenad Medvidovic (Ex. 2032, “Medvidovic Decl.”) and a
Declaration of Dr. Philip R. Cohen (Ex. 2033, “Cohen Decl.”). Petitioner
cross-examined Dr. Medvidovic via deposition. See Ex. 1129 (“Medvidovic
Dep.”).

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
’560 patent has an effective filing date prior to the effective date of the
applicable AIA amendments, we refer to the pre-AIA versions of §§ 102 and
103.
3 U.S. Patent No. 6,484,155 B1, issued Nov. 19, 2002, filed July 21, 1999
(Ex. 1005, “Kiss”).
4 Foundation for Intelligent Physical Agents, FIPA 97 Specification
Version 1.0, published Oct. 10, 1997 (Exs. 1006–1012, collectively
“FIPA97”).
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II. DISCUSSION
A. Legal Principles
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are “such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) when in evidence, objective indicia of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
To prevail on its challenges to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC. v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
B. Level of Ordinary Skill in the Art
We begin our analysis by addressing the level of ordinary skill in the
art. Petitioner’s declarant, Dr. Lieberman, opines that a person of ordinary
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skill in the art at the time of the invention of the ’560 patent would have
been someone familiar with the principles and conventions of computer
science and computer networking, and also with multi-agent systems and
inter-agent communication languages as documented in agent-centered
literature by 1999. Ex. 1050 ¶ 32; see Pet. 4–5 (citing Ex. 1050 ¶ 32).
Dr. Lieberman also testifies that a person of ordinary skill in the art may
have been a graduate student in mathematics, engineering, or computer
science, and may have had an advanced degree in one of these disciplines,
and would also have had at least two years of experience working in the
field of computer science, or a related field, and may have worked in
academia, either as a professor or a graduate student, for a technology
company, or for a government. Ex. 1050 ¶ 32.
Citing the testimony of its declarant, Dr. Medvidovic, Patent Owner
asserts that a person of ordinary skill in the art at the time of the
’560 patent’s effective filing date would have had “a Bachelor’s degree in
Computer Science or equivalent field and at least two years of work
experience in design and development of distributed systems, software
specification languages, or a related area.” PO Resp. 28 (citing Ex. 2032
¶ 41). Patent Owner criticizes Petitioner’s articulation of the level of
ordinary skill in the art as being “vague and uncertain” due to Petitioner’s
and Dr. Lieberman’s use of the word “may” in their proposed definition.
Id. at 28–29. Patent Owner contends that Petitioner’s proposed definition
“leav[es] every aspect of the level of skill ‘fluid,’” which is “particularly
problematic here, where Petitioner claims that it would have been obvious to
create an agent system that is very complex and advanced in its facilitation,
goal processing, and inter-agent communication capacities.” Id. at 29 (citing
Ex. 2032 ¶ 44).
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Petitioner responds that its proposal “realistically expresses
alternatives—i.e., that a Skilled Artisan would have been at least a graduate
student in several relevant fields, and would have had at least two years of
work experience in those fields.” Pet. Reply 12; see Pet. 5. Petitioner also
argues that Patent Owner does not articulate how any differences between
the parties’ proposals that would alter or even affect the outcome of this
proceeding. Pet. Reply 12.
Patent Owner asserts that it has “identified how the difference
between the proposals would affect this proceeding” because Patent Owner
has pointed out that “it is Petitioner’s burden under the law to address each
Graham factor and Petitioner has failed to proffer a coherent level of
ordinary skill in the art, [and] Petitioner’s obviousness assertion fails for that
reason alone.” PO Sur-reply 16–17 (citing PO Resp. 29).
But Patent Owner does not identify any “meaningful differences”
between the parties’ proposed definitions or how “the outcome of [this
proceeding] would have been different” if we adopted Patent Owner’s
proposed definition, as opposed to Petitioner’s proposal. See ESIP Series 2,
LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1385 (Fed. Cir. 2020) (citing
Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d
1360, 1371–72 (Fed. Cir. 2016)). For example, Patent Owner does not argue
the challenged claims are not unpatentable under Patent Owner’s proposed
definition of the level of ordinary skill in the art, nor does it identify any
claim limitation that would have been taught by the asserted prior art under
Petitioner’s proposed definition, but not under Patent Owner’s proposal. See
PO Resp. 28–29; PO Sur-reply 16–17.
In our view, the parties’ proposals are not materially different despite
the differences in wording between them (e.g., the education level of a
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Bachelor’s degree in Computer Science or equivalent field under Patent
Owner’s proposal, as opposed to a graduate student’s level of education with
or without a Bachelor’s degree under Petitioner’s proposed definition). See
Pet. 4–5; Pet. Reply 12; PO Resp. 28. For purposes of this Final Written
Decision, we find no meaningful differences between the parties’ respective
definitions that would materially alter the outcome of this Decision. These
proposals are similar for all purposes relevant to this Final Written Decision,
and both are consistent with the level of ordinary skill in the art reflected in
the disclosure of the ’560 patent and the prior art of record. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995).
Nonetheless, for this Final Written Decision, we adopt Patent Owner’s
definition of a person of ordinary skill in the art at the time of the claimed
invention. That is, a person of ordinary skill in the art at the time of the
claimed invention would have had “a Bachelor’s degree in Computer
Science or equivalent field and at least two years of work experience in
design and development of distributed systems, software specification
languages, or a related area.” Our analysis and conclusions in this Final
Written Decision would be the same regardless of whether Petitioner’s or
Patent Owner’s definition of the level of ordinary skill in the art is adopted.
C. Claim Construction
In an inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b),
following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying such
standard, claim terms are generally given their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art, at
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the time of the invention and in the context of the entire patent disclosure.
Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
claim limitation, we look principally to the intrinsic evidence of record,
examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17).
In our Decision on Institution, we preliminarily interpreted several
claim terms as follows:
Term Construction
“event” “a message or goal communicated between agents”
“event type” “a type of an event”
“goal” “a request for service”
“compound goal” “a single goal expression that specifies multiple
sub-goals to be performed”
“non-syntactic
decomposition of the
base goal”
“generation of a sub-request (sub-goal/sub-
delegation) based on factors other than the syntax
of how the goal was received or made”

Inst. Dec. 28–35.
The parties do not dispute the constructions of these five terms in the
Patent Owner Response or Petitioner Reply. See PO Resp. 30–31, 43; Pet.
Reply 1. Upon considering the complete record, we see no reason to deviate
from our preliminary constructions and, therefore, adopt the constructions of
the claim terms “event,” “event type,” “goal,” “compound goal,” and “non-
syntactic decomposition of the base goal” as set forth above for this Final
Written Decision.
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In the Petition, Petitioner discusses constructions for several
additional claim terms: “goal satisfaction plan,” “layer of conversational
protocol,” “arbitrarily complex goal expression,” “single process facilitator
agent,” “trigger,” “symbolic name,” “parameter lists further refine the one or
more events,” “solvable,” “procedure solvable,” and “data solvable.” Pet. 8–
16. In addition, Petitioner discusses the construction of “computer
process(es)” in the Reply. Pet. Reply 11–12. Patent Owner disputes
constructions for the following terms: “goal satisfaction plan” and
“computer process(es).” PO Resp. 32–47; PO Sur-reply 2–11, 15–16. We
discuss constructions for the disputed terms below.
No other disputed claim terms need to be construed expressly for
purposes of this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that
are in controversy need to be construed, and “only to the extent necessary to
resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
Technologies in the context of an inter partes review). To the extent it is
necessary for us to consider the meaning of any other claim term, we do so
in the context of our unpatentability analysis.
1. “goal satisfaction plan”
The claim term “goal satisfaction plan” is recited in challenged
independent claims 1 and 50 of the ’560 patent. Ex. 1001, 30:7–15
(claim 1), 35:1–10 (claim 50). It is also recited in independent claim 26 of
the ’560 patent, not challenged in this proceeding. Id. at 32:43–51.
Petitioner contends that a “goal satisfaction plan” is a “procedure for sending
one or more requests for service to one or more agents in order to satisfy a
goal.” Pet. 9. Patent Owner disagrees and asserts that the claim term “goal
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satisfaction plan” should be construed to mean “a plan for the satisfaction of
a complex goal expression in an optimal or near-optimal manner that is
consistent with any advice parameters or constraints.” PO Resp. 32.
a. Claim Language
We begin our claim construction analysis by considering the language
of the claims themselves. Phillips, 415 F.3d at 1314. Addressing the claim
language of the disputed term, we note that the claim language “a goal
satisfaction plan” indicates that the term’s plain meaning is “a plan for
satisfying a goal.”
In independent claims 1 and 50, the recited “goal satisfaction plan” is
further constrained by specific limitations recited in the claims. Claim 1
recites:
a facilitating engine . . . further operable for generating a goal
satisfaction plan associated with the base goal, wherein the
goal satisfaction plan involves:
using reasoning to determine sub-goal requests based on non-
syntactic decomposition of the base goal and using said
reasoning to co-ordinate and schedule efforts by the
service-providing electronic agents for fulfilling the sub-
goal requests in a cooperative completion of the base goal.
Ex. 1001, 30:5–15 (emphasis added). Claim 50 recites similar language:
determining a goal satisfaction plan that is associated with the
base goal;
wherein the goal satisfaction plan involves:
using reasoning to determine sub-goal requests based on non-
syntactic decomposition of the base goal and using said
reasoning to co-ordinate and schedule efforts by the
service-providing electronic agents for fulfilling the sub-
goal requests in a cooperative completion of the base goal;
and
implementing the base goal satisfaction plan.
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Id. at 35:1–10 (emphasis added).
Patent Owner argues that additional claim limitations specify that the
goal satisfaction plan is designed for optimal goal satisfaction and takes into
account advice parameters. PO Resp. 34–35 (citing Ex. 2032 ¶ 50). Patent
Owner, however, only identifies limitations that do not appear in the claims
of the ’560 patent. Id. (erroneously citing claim 1 as reciting “a suitable
delegation,” “dispatching . . . based on a match,” and “domain-independent
coordination strategies, domain-specific reasoning, and application-specific
reasoning comprising rules and learning algorithms; and . . . a match
between the subgoal being dispatched and the registered functional
capabilities”). Therefore, Patent Owner does not show persuasively that any
claim language in the ’560 patent requires the narrow construction it
proposes.
Thus, at least based on the claim language, it is not appropriate to
limit “goal satisfaction plan” as Patent Owner contends. As discussed
above, the meaning and the scope of “goal satisfaction plan” is clear on the
face of each claim because claims 1 and 50 each recite specifically what a
“goal satisfaction plan” includes or comprises. Therefore, absent compelling
evidence to the contrary, it is neither necessary nor appropriate to limit the
meaning of the term “goal satisfaction plan” beyond the plain meaning
indicated by the claim language—i.e., “a plan for satisfying a goal.”
b. Written Description
Patent Owner cites the following statement in the “Summary of the
Invention” section:
[e]xtreme flexibility is achieved through an architecture
organized around the declaration of capabilities by service-
providing agents, the construction of arbitrarily complex goals
by users and service-requesting agents, and the role of
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facilitators in delegating and coordinating the satisfaction of
these goals, subject to advice and constraints that may
accompany them.
PO Resp. 35–36 (quoting Ex. 1001, 4:67–5:6). The very first sentence of the
paragraph cited by Patent Owner states, however, “[a] first embodiment of
the present invention discloses a highly flexible, software-based architecture
for constructing distributed systems.” Ex. 1001, 4:55–57 (emphasis added).
Indeed, all of the portions of the Specification cited by Patent Owner,
including the passage reproduced above, describe various embodiments of
the ’560 patent. See PO Resp. 35–38 (citing Ex. 1001, 4:67–5:6, 5:48–49,
15:60–62, 16:22–24, 16:34–44, 16:62–17:2, 18:60–19:6, 29:25–33, Fig. 11).
In general, “a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, challenged
independent claims 1 and 50 do not recite all of the limiting features
required by Patent Owner’s proposed construction of “goal satisfaction
plan.” Thus, unless one of the established exceptions, such as lexicography
or disavowal, applies, the challenged claims are not restricted as Patent
Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight, Inc., 750
F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history
only compel departure from the plain meaning in two instances:
lexicography and disavowal”) (citation omitted). Here, Patent Owner does
not argue lexicography or disavowal. Nor does Patent Owner explain any
other reason why the Specification limits “goal satisfaction plan” as it
contends. Thus, claim construction in this case is governed by the general
principle that “a particular embodiment appearing in the written description
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may not be read into a claim when the claim language is broader than the
embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v.
ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well
established that claims are not limited to preferred embodiments, unless the
specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly
cautioned against limiting claims to a preferred embodiment.”))).
Accordingly, none of the embodiments in the Specification cited by Patent
Owner limits “goal satisfaction plan” as Patent Owner contends.
c. Prosecution History
Turning next to the prosecution history, Patent Owner asserts that
“examples in the file history confirm the elements of ‘goal satisfaction plan’
reflected in Patent Owner’s proposed construction.” PO Resp. 40. Patent
Owner argues that, during the prosecution of the application for the ’115
patent (i.e., the parent of the ’560 patent),
[a]pplicant further stated that “the facilitating engine is able to
use reasoning to delegate the sub-goals to service providing
agents in such a way as ‘to best complete the requested service
request.’…The facilitating engine is able to use reasoning to
delegate the sub-goal task of roasting coffee to the service-
providing agent that can roast beans in the least amount of time
because the facilitating engine has reasoned that the least amount
of time taken to make coffee is the best way to accomplish the
base goal of making coffee.” Applicant concluded that “the base
goal is carried out not by merely parsing the request into sub-
goals” but rather “the facilitating engine used reasoning to decide
upon using competing message transfer agents to reminding Bob
of lunch, in lieu of delegating the task to just one message
transfer agent.”
Id. (citing Ex. 1002, 172–73). Patent Owner argues that similar language
appears in Applicant’s remarks during prosecution of the ’560 patent. Id.
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(citing Ex. 1120, 171–72); see Ex. 1120, 172 (“The reasoning includes ‘one
or more of domain-independent coordination strategies, domain-specific
reasoning, and application-specific reasoning comprising rules and learning
algorithms.”).
Similar to its arguments based on the language of the claims, Patent
Owner’s contentions regarding the prosecution history refer to claim
language that does not appear in the claims of the ’560 patent (e.g., “to best
complete the requested service request” and “one or more of domain-
independent coordination strategies, domain-specific reasoning, and
application-specific reasoning comprising rules and learning algorithms”).
Patent Owner does not explain persuasively why prosecution statements
directed to language not in the claims of the ’560 patent should limit the
construction of “goal satisfaction plan” as Patent Owner contends.
d. Extrinsic Evidence
Patent Owner also cites the testimony of its declarant,
Dr. Medvidovic, in support of Patent Owner’s proposed construction of
“goal satisfaction plan.” PO Resp. 40–41 (citing Ex. 2032 ¶¶ 55–56, 58–63,
200). We have reviewed the cited testimony from Dr. Medvidovic, but do
not find anything in his testimony that would change our analysis based on
intrinsic record discussed above. See Phillips, 415 F.3d at 1318 (authorizing
the consideration of extrinsic evidence in determining the meaning of claims
but noting that it is “in general . . . less reliable than the patent and its
prosecution history in determining how to read claim terms”).
e. Other Arguments
The parties dispute whether Petitioner’s use of “procedure” (in place
of a “plan”) and “sending one or more requests for service” in Petitioner’s
proposed construction is appropriate. See PO Resp. 41–43; Pet. Reply 2, 5–
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6; PO Sur-reply 3, 10. We need not address these arguments in detail
because, for the reasons discussed above, we see no reason to depart from
the plain meaning of the term “goal satisfaction plan.”
f. Conclusion
Based on the complete record and after examining the claims as a
whole, the written description, and the prosecution history, we construe the
term “a goal satisfaction plan” according to its plain meaning—“a plan for
satisfying a goal.”
2. “computer process”
The claim term “computer processes” is recited in independent
claim 1 in the limitation “a distributed facilitator agent functionally
distributed across at least two computer processes.” Ex. 1001, 29:63–64. It
is also recited in independent claim 50 in the limitation “the plurality of
synchronized agent registries each resident within a separate computer
process” and in a similar limitation in independent claim 53. Id. at 34:57–59
(claim 50), 36:11–12. Petitioner contends that a “computer process” is “a
program, a part of a program, or a list of steps to be completed by the
computer.” Pet. 34 (citing Ex. 1034, 383 (computer dictionary defining
“process” as “[a] program or part of a program; a coherent sequence of steps
undertaken by a program”)). Patent Owner disagrees and asserts that a
“computer process” is “an operating system process within a computer’s
architecture that represents one or more running programs and their
activities.” PO Resp. 44; see Ex. 2032 ¶ 69. In its Reply, Petitioner argues
that because Patent Owner does not assert any different outcome based on its
proposed construction, and Petitioner shows how the prior art discloses
“computer processes” under either party’s construction, the term need not be
construed to resolve any controversy. Pet. Reply 11–12. Patent Owner
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disagrees, asserting that the construction of the term affects the merits of
Petitioner’s arguments. PO Sur-reply 16.
The terms “computer process” and “computer processes” are recited
repeatedly in the claims of the ’560 patent, and many of Patent Owner’s
arguments responding to Petitioner’s unpatentability contentions relate to
claim limitations involving “computer processes.” Accordingly, we
construe the term “computer process” to assist us in resolving the parties’
dispute regarding unpatentability.
a. Claim Language
We begin our claim construction analysis by considering the language
of the claims themselves. Phillips, 415 F.3d at 1314. Patent Owner notes
that the term “computer process” appears in the claims in the context of “at
least two” or “separate” computer processes relating to a distributed
facilitator agent. PO Resp. 44–45 (citing claims 1, 2, 20, and 21). Patent
Owner argues that in the context of those claims, having a distributed
facilitator agent as a separate “program” (under Petitioner’s construction)
does not necessarily allow for the degree of separation contemplated by the
claims because multiple programs may be run on the same processes. Id. at
45 (citing Ex. 2032 ¶ 71). Petitioner does not reply to this argument. See
Pet. Reply 11–12.
Patent Owner essentially argues, with the support of Dr. Medvidovic,
that a “process” is not limited to a “program” because multiple programs
may be executed in the same computer process. Ex. 2032 ¶ 71. Patent
Owner does not explain persuasively how claim language involving the
distributed facilitator agent and separate computer processes necessarily
suggests that a process is not a program.
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The same paragraph in Dr. Medvidovic’s declaration also states that
“[a] process is not [a] program because a program is a static notion . . . while
a process is what actually occurs in a computer when a program is
executed.” Id. The claim language does provide some support for the
concept that a computer process involves running or executing a program,
which is part of Patent Owner’s proposed construction. For instance,
claim 20 requires “a planning component executing within a first computer
process and an execution component executing within a second computer
process.” Ex. 1001, 31:50–53 (emphases added).
b. Written Description
As Patent Owner points out, the written description of the ’560 patent
does not use the term “computer process.” PO Resp. 45. Instead, it
describes a facilitator agent with functionality “distributed across several
different computing platforms.” Id. (quoting Ex. 1001, 6:31–33). Patent
Owner cites a passage describing an embodiment allegedly corresponding to
dependent claims 20 and 21 that explains some benefits of separating the
facilitator agent’s planning and execution components. Id at 45–46 (quoting
Ex. 1001, 29:8–38). As with the claim language, Patent Owner does not
persuasively show how this description informs the construction of
“computer process.”
c. Extrinsic Evidence
Petitioner’s proposed construction is based directly on a computer
dictionary definition of a “process” as “[a] program or part of a program; a
coherent sequence of steps undertaken by a program.” Ex. 1034, 383.
Patent Owner and Dr. Medvidovic cite an electronics dictionary providing
one definition of a “process” as “[t]he basic unit of computation within an
operating system.” Ex. 2070, 590; see PO Resp. 46; Ex. 2032 ¶ 69. They
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also cite a general purpose dictionary defining “process” in the context of
computers as “to carry out operations on (data or programs).” Ex. 2071,
1542; see PO Resp. 46; Ex. 2032 ¶ 69. Dr. Medvidovic explains that a
process is not the same thing as a program because, for example, a process
can run many programs or parts of programs. Ex. 2032 ¶¶ 71–72.
d. Analysis
In the context of the claim language, the only intrinsic evidence that
sheds light on the meaning of “computer process,” we find Patent Owner’s
extrinsic evidence in the form of Dr. Medvidovic’s testimony and dictionary
definitions to be more persuasive than Petitioner’s proffered dictionary
definition. Thus, we agree with Patent Owner that a “computer process” is a
process that runs or executes one or more computer programs. We are not
persuaded that the other portions of Patent Owner’s proposed construction
are necessary or materially affect the meaning of the claim term.
For these reasons, based on the complete record, including the
intrinsic and extrinsic evidence of record, we construe the term “computer
process” as “a process that runs or executes one or more computer
programs.”
D. Prior Art Overview
We provide an overview of Kiss and FIPA97, the main prior art
references asserted against the challenged claims, to provide context for the
discussion that follows.
1. Kiss (Ex. 1005)
Kiss describes “a knowledge management system that supports
inquiries of distributed knowledge resources,” in which “[i]nteraction
between a user and the knowledge resources is mediated by a collection of
cooperative intelligent agents.” Ex. 1005, 2:44–45, 2:46–48. Figure 1,
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reproduced below, is a conceptual overview of one embodiment of a
knowledge management system described in Kiss:

Id. at 5:1–3. As shown in Figure 1 above, Kiss’s knowledge management
system 100 includes presentation layer 103, user interface layer 105, meta
agent layer 107, knowledge agent layer 109, knowledge module layer 111,
and agent service layer 113. Id. at 5:3–7. Each of user interface layer 105,
meta agent layer 107, and knowledge agent layer 109 in Kiss’s hierarchical
knowledge management system includes one or more intelligent agents
responsible for one portion of the distributed problem-solving inferencing
process. Id. at 3:17–22.
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Meta agent layer 107 includes one or more meta agents 119 that are
responsible for analyzing queries or problem formulations provided by user
interface layer 105 and constructing a plan for finding a solution to the
problem. Id. at 5:20–24. Each meta agent 119 contains knowledge of
problem solving methodologies and distributed inferencing procedures. Id.
at 5:24–26. More specifically, “meta agent 119 is responsible for
formulating a dynamic ‘solution plan’ for the distributed inferencing to be
performed by the system 100, and allocates tasks to the knowledge agent
layer 109 in furtherance of the solution plan.” Id. at 5:33–37. “The meta
agent dynamically assesses the problem and its solution states (between
users and the knowledge agents 121), divides the problem, and assigns the
appropriate knowledge agents 121 to work on the solution.” Id. at 8:37–40.
Knowledge agent layer 109 includes multiple knowledge agents 121,
each of which may be associated with one or more knowledge modules 123
in knowledge module layer 111. Id. at 6:31–35. Each knowledge agent 121
is configured to accept from meta agent 119 a problem statement and
convert that problem statement into a format appropriate for the knowledge
module 123 associated with the knowledge agent 121. Id. at 6:35–38.
Knowledge agents register their capabilities and interests with registry 114
in agent service layer 113. Id. at 3:37–42, 12:18–20.
Kiss describes various distributed inferencing schemes that may be
used to address problems to be solved. Id. at 7:20–8:19. One scheme uses a
“planner-based dynamic inferencing approach.” Id. at 7:29–30. In this
scheme, “inferencing proceeds within an agent until an intermediate goal is
achieved.” Id. at 7:30–32. The next step of the inferencing process begins
after the intermediate goal is achieved, and inferencing continues in a
stepwise manner until the initial problem is solved. Id. at 7:35–37. “[M]eta
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agent 119 manages the dynamic distributed inferencing scheme, using an
agenda mechanism or commitment table to assign and schedule portions of
the inferencing procedures to the participating agents during execution.” Id.
at 7:37–41.
Other distributed inferencing schemes disclosed by Kiss include a
“problem-specific rule network,” as well as “linear,” “partitioned,”
“replicated,” “real time,” “preemptive,” and “qualitative” inferencing modes.
Id. at 7:23–28, 7:47–8:16. In the partitioned inference scheme, for example,
the “user query or problem domain is easily divided into distinct subfields,
phases or sub-problems that share limited initial data.” Id. at 7:53–55.
Figures 8–20 of Kiss (not reproduced herein) illustrate an example of
using distributed inferencing to solve the problem “what is the effect of
increasing sales by 20%?” Id. at 12:21–14:30. As shown in Figure 9, the
meta agent begins formulating a solution plan by asking the agent service
layer to identify a knowledge agent that has registered a capability to answer
a question related to “sales.” Id. at 12:29–32. Once the service layer
identifies a sales agent, the meta agent pushes a task onto an agenda to query
the sales agent for the effect of increasing sales by 20% and then issues that
query. Id. at 12:32–36. Distributed inferencing proceeds with the meta
agent pushing tasks associated with agent queries onto the agenda and
removing them after they are completed, until the sales agent has enough
information to address the user’s original query. Id. at 12:37–14:30.
2. FIPA97 (Exs. 1006–1012)
FIPA97 (Exs. 1006–1012) is a specification created by the Foundation
for Intelligent Physical Agents (FIPA) beginning in 1996 with an official
release date in October 1997. Ex. 1006, Cover, iv (identifying specification
as FIPA 97 Version 1.0 issued on October 10, 1997). FIPA97 is a
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“specification of basic agent technologies that can be integrated by agent
systems developers to make complex systems with a high degree of
interoperability.” Id. at v. The specification comprises seven parts: three
parts for basic agent technologies (Parts 1–3 relating to agent management,
agent communication language, and agent/software integration) and four
informative applications providing examples of how the technologies can be
applied (Parts 4–7 describing personal travel assistance, personal assistant,
audio-visual entertainment, and broadcasting and network management and
provisioning applications). Id. at v–vii; see generally Exs. 1006–1008
(Parts 1–3); Exs. 1009–1012 (Parts 4–7).
Part 1 of FIPA97, the FIPA Agent Management specification (FIPA
AMS) “provides a normative framework within which FIPA compliant
agents can exist, operate and be managed.” Ex. 1006, vi. The FIPA AMS
model is defined through the intersection of Agent Platforms (APs) and
Agent Domains (ADs), as illustrated in Figure 2 below. Id. at 10, Fig. 2.

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Each AD in Figure 2 of FIPA Part 1, above, is defined by a Directory
Facilitator (DF). Id. at 6. Agents register their services with DFs. Id. For
example, agents A and B have registered their services with DFx, agents B,
C, and D have registered their services with DFy, and agents D and E have
registered their services with DFz. Id. at 10.
Part 2 of FIPA97 describes an “Agent Communication Language
(ACL)” that “is based on speech act theory: messages are actions, or
communicative acts, as they are intended to perform some action by virtue
of being sent.” Ex. 1007, ix. The ACL specification “consists of a set of
message types and the description of their pragmatics, [i.e.,] the effects on
the mental attitudes of the sender and receiver agents.” Id. The ACL
specification “also provides the normative description of a set of high-level
interaction protocols, including requesting an action, contract net and several
kinds of auctions.” Id.
Part 2 of FIPA97 discloses a “simple abstract model of inter-agent
communication” including ACL messages having components as illustrated
in Figure 1 below. Id. at 7, 12.

Figure 1, above, illustrates the main structural elements of an ACL message
in FIPA97. Id. at 12. “The first element of the message is a word which
identifies the communicative act being communicated, which defines the
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principal meaning of the message.” Id. Each ACL message contains a set of
one or more parameters, including a mandatory “:receiver” parameter that
identifies the intended recipient of the message. Id. at 13.
Petitioner asserts that FIPA97 was made publicly available as a single
document and relies on FIPA97 as a single printed publication for purposes
of 35 U.S.C. § 102(a). See Pet. 22–23; Pet. Reply 26. As discussed below
in the section addressing the status of FIPA97 as a printed publication, FIPA
approved and released FIPA 97 Version 1.0 as a single specification. See
infra § II.F; Ex. 1026, 5; Ex. 1050 ¶ 165. Thus, although sometimes the
seven parts are referred to as “documents,” a person of ordinary skill in the
art would have considered FIPA97 to be a single reference. See Ex. 1050
¶¶ 164–165. Patent Owner does not dispute that FIPA97 is one reference for
purposes of §§ 102 and 103. See PO Resp. 138–140.5 Because FIPA and
skilled artisans considered FIPA97 to be a single specification, we agree that
FIPA97 constitutes a single prior art reference, and we treat it as such for
purposes of our unpatentability analysis.
E. Prior Art Status of Kiss
Before reaching the merits of Petitioner’s obviousness contentions, we
address as a threshold issue whether Kiss (Ex. 1005) qualifies as prior art in
this proceeding. Petitioner has the burden of persuasion to prove
unpatentability by a preponderance of the evidence. Dynamic Drinkware,
800 F.3d at 1378. Petitioner has the initial burden of production to show

5 Contrary to Patent Owner’s argument (PO Resp. 138–140), Petitioner did
not argue in another case, and the Board did not find, that FIPA97 is seven
separate prior art references. See Microsoft Corp. v. IPA Techs. Inc.,
IPR2019-00838, Paper 13 at 3–5 (PTAB Apr. 3, 2020) (Decision Denying
Petitioner Request for Rehearing), Paper 10 at 4–9 (Petitioner’s Request for
Rehearing, filed Dec. 6, 2019).
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that a reference is prior art to the challenged claims under a relevant section
of 35 U.S.C. § 102. See id. at 1379. Once Petitioner has met that initial
burden, the burden of production shifts to Patent Owner to argue or produce
evidence that the asserted reference is not prior art to the claims. Id. at 1380.
Once Patent Owner has met that burden of production, the burden of
production returns to Petitioner. Id.
The effective filing date of the ’560 patent is January 5, 1999, the
filing date of the ’115 patent, which is the parent of the ’560 patent.
Ex. 1001, code (63). Kiss is a United States patent that arose from an
application filed July 21, 1999, claiming the benefit of priority to a
provisional application filed July 21, 1998. Ex. 1005, codes (22), (60).
Petitioner asserts that Kiss is prior art to the ’560 patent under
35 U.S.C. § 102(e) because Kiss is entitled to the benefit of priority to the
filing date of its provisional application (Ex. 1036, “Kiss Provisional
Application”). Pet. 16–20. “A reference patent is only entitled to claim the
benefit of the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at
1381.
In Ex parte Mann, the Board determined that “under Dynamic
Drinkware, a non-provisional child [application] can be entitled to the
benefit of a provisional application’s filing date if the provisional application
provides sufficient support for at least one claim in the child.” 2016 WL
7487271, at *6 (PTAB Dec. 21, 2016) (emphasis added) (discussing whether
Dynamic Drinkware requires “support in the provisional . . . for all claims,
any claim, or something in between”). In addition, the Board determined
that a “subject matter test” is also required—that is, “the [party claiming
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priority] also must show that the subject matter relied upon in the non-
provisional is sufficiently supported in the provisional application [and that
t]his subject matter test is in addition to the comparison of claims required
by Dynamic Drinkware.” Id. at *5.
Recognizing these requirements, Petitioner asserts that “each element
of [claim 1 of Kiss] has written description support in the Kiss Provisional,”
providing detailed citations to the supporting disclosures from the Kiss
Provisional Application for each limitation of claim 1 of Kiss. Pet. 16–18.
Addressing the “subject matter test,” Petitioner asserts that “the teachings
that Petitioner relies upon were carried forward from the Kiss Provisional to
Kiss” and provides a detailed mapping of the relied-upon portions of Kiss to
the corresponding portions of the Kiss Provisional Application. Id. at 18–
20.
In its Preliminary Response, Patent Owner asserted that Kiss is not
entitled to the priority date of its provisional application. Prelim. Resp. 67.
In the Institution Decision, we determined, based on the preliminary record,
the argument and evidence presented by Patent Owner were insufficient to
shift the burden of production back to Petitioner. Inst. Dec. 24–25. We
noted, however, that a final determination on this particular issue would be
made based on a full record developed during the course of trial. Id. at 25.
During the trial, Patent Owner did not present any argument or
evidence on this issue, nor did it dispute that Kiss qualifies as prior art in this
proceeding. See generally PO Resp.
Based on the complete record, we determine that Petitioner has
established by a preponderance of the evidence that Kiss is prior art to the
’560 patent under 35 U.S.C. § 102(e) because Kiss is entitled to the benefit
of priority to the filing date of its provisional application.
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F. Status of FIPA97 as a Prior Art Printed Publication
We also must determine as a threshold matter whether FIPA97
(Exs. 1006–1012) is a prior art printed publication under 35 U.S.C. § 102(a)
or § 102(b). See Pet. 22–24; PO Resp. 59–78. Petitioner bears the burden of
establishing by a preponderance of the evidence that FIPA97 is a printed
publication. See 35 U.S.C. § 316(e); Nobel Biocare Servs. AG v. Instradent
USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018); Hulu, LLC v. Sound View
Innovations, LLC, IPR2018-01039, Paper 29 at 11 (PTAB Dec. 20, 2019)
(precedential) (citing Nobel Biocare, 903 F.3d at 1375). For purposes of
instituting an inter partes review we accepted Petitioner’s contention,
unchallenged in Patent Owner’s Preliminary Response, that FIPA97 was
available as prior art as of October 1997, more than one year before
January 5, 1999, the effective filing date of the ’560 patent. Inst. Dec. 8 n.3
(citing Pet. 22–24 (citing Ex. 1049 ¶¶ 6, 11, 12, 20–34; Ex. 1050 ¶¶ 143,
146–149)). Patent Owner, however, challenges that contention in its Patent
Owner Response, and the parties further address the issue in Petitioner’s
Reply and Patent Owner’s Sur-reply. See PO Resp. 59–78; Pet. Reply 15–
21; PO Sur-reply 20–31.
The determination of whether a document is a “printed publication”
under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
“Because there are many ways in which a reference may be disseminated to
the interested public, ‘public accessibility’ has been called the touchstone in
determining whether a reference constitutes a ‘printed publication’ . . . .”
Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir.
2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A
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reference is considered publicly accessible if it was “disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable diligence, can
locate it.’” Id. at 1355–56 (quoting In re Wyer, 655 F.2d 221, 226 (CCPA
1981)).
In the discussion below, we begin with background information
regarding FIPA and an overview of the evidence submitted by Petitioner in
support of its contention that FIPA97 was publicly accessible in October
1997. The evidence includes extensive testimony from Dr. Finin, a
professor who has personal knowledge of FIPA’s activities and the
development process of FIPA97. See Ex. 1049 ¶¶ 1–55 (Finin Decl.).
Dr. Finin was one of the first two FIPA Fellows invited to provide “high
quality and independent advice to FIPA.” Id. ¶ 18 (quoting Ex. 1076, 1);
Ex. 1025, 1; Ex. 1062, 1. The evidence also includes testimony from
Petitioner’s expert witness, Dr. Lieberman, and more than sixty
documentary exhibits on which Petitioner relies to show that FIPA97 was
publicly accessible in late 1997 and early 1998. See Ex. 1050 ¶¶ 142–149
(Lieberman Decl.); Exs. 1021–33, 1047, 1051–1105.
After providing an overview of the evidence, we consider the parties’
arguments as to whether FIPA97 was publicly accessible before the
January 5, 1999, critical date. For the reasons explained below, we
determine that Petitioner has met its burden to show that FIPA97 was
publicly accessible before the critical date.
1. FIPA
FIPA was a non-profit association based in Geneva, Switzerland,
created to promote agent-based technology and develop open standards.
Ex. 1006, iv (FIPA 97 Specification Version 1.0, Part 1, Foreword);
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Ex. 1049 ¶ 3. Founded in 1996, FIPA’s membership included numerous
technology companies, educational institutions, and governmental entities.
Ex. 1049 ¶ 3. As of October 1997, FIPA had thirty-five corporate members
representing twelve countries.6 Ex. 1006, iv. According to FIPA
documentation, membership was “open to any corporation and individual
firm, partnership, governmental body or international organi[z]ation without
restriction.” Id. FIPA stated its intent “to make the results of its activities
available to all interested parties.” Id. Throughout its tenure, FIPA
produced standards designed to promote and advance agent-based
technology. Ex. 1049 ¶ 3. In 2005, FIPA was incorporated into the Institute
of Electrical and Electronics Engineers (IEEE) as one of its standards
committees. Id.
2. Development of FIPA97
The process of drafting the FIPA 97 specification began with FIPA’s
first meeting in London in April 1996. Ex. 1049 ¶ 6; Ex. 1058 (Main results
of London meeting); Ex. 1066 (Resolutions of London meeting).
Representatives from twenty-six companies and organizations attended.
Ex. 1066, 1. At the meeting, the members agreed on FIPA’s mission,
drafted statutes and operational principles, and produced a work plan for a
specification that would become FIPA 97. Ex. 1058, 1; Ex. 1066, 1–3;
Ex. 1049 ¶ 6. The work plan set a December 1997 target for producing a
first completed specification. Ex. 1066, 2–3; Ex. 1049 ¶ 7.
FIPA subsequently held several meetings in 1996 and 1997. At the
second meeting in June 1996 in Yorktown Heights, NY, FIPA approved

6 The corporate members included Alcatel, British Telecommunications,
Deutsche Telekom, France Telecom, Hitachi, Hewlett-Packard, IBM, NEC,
NTT, Nortel, Siemens, and Toshiba. See Ex. 1095, 22.
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several documents, including a framework for FIPA activity and a list of
requirements for FIPA-specified agent capabilities. Ex. 1067, 1
(Resolutions of Yorktown meeting); Ex. 1060, 1 (Results of Yorktown
meeting); Ex. 1049 ¶ 9. At the third meeting in October 1996 in Tokyo,
FIPA approved a final work plan calling for production of a FIPA
specification in October 1997. Ex. 1049 ¶ 11; Ex. 1070, 1 (work plan);
Ex. 1023 (Results of Tokyo meeting). Also at the Tokyo meeting, FIPA
produced its First Call for Proposals, which outlined in detail three
technology parts (corresponding to Parts 1–3 of FIPA 97) and four
application parts (corresponding to Parts 4–7 of FIPA 97). Ex. 1069, 1–27
(First Call for Proposals); Ex. 1049 ¶ 12.
In 1997, FIPA began to produce draft specifications. At the fourth
meeting in January 1997 in Turin, Italy, FIPA publicly released drafts of
Parts 1–4 and posted them on the FIPA home page
(http://drogo.cselt.stet.it/fipa). Ex. 1021, 1 (Results of Turin meeting);
Ex. 1049 ¶ 13. Additionally, FIPA released a Second Call for Proposals at
the Turin meeting. Ex. 1071, 1–3 (Second Call for Proposals); Ex. 1049
¶ 13. At the fifth meeting in April 1997 in Reston, VA, FIPA produced
drafts of Parts 1–7, which were publicly released and posted on the FIPA
home page. Ex. 1024 (Results of Reston meeting); Ex. 1061 (Resolutions of
Reston meeting); Ex. 1049 ¶ 17. At the sixth meeting in June 1997 in Cheju
Island, South Korea, FIPA publicly released revised drafts of Parts 1–7 and
posted them on the FIPA home page. Ex. 1025, 1 (Results of Cheju
meeting); Ex. 1062, 5 (Resolutions of Cheju meeting); Ex. 1049 ¶ 19.
According to Dr. Finin, the Reston Draft and Cheju Draft were substantially
complete versions of what would become FIPA 97. Ex. 1049 ¶¶ 17, 19.
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Dr. Finin testifies that news of FIPA and its standardization efforts
“spread quickly throughout the relatively small community of software agent
researchers.” Ex. 1049 ¶ 8. For instance, the AgentWeb website, “a
meeting place for researchers in agent-based technology from 1995–2000,”
was home to a “Software Agents” mailing list and a newsletter that had more
than 1,300 subscribers in 1996. Id.; Ex. 1089, 5. Dr. Finin was “the
founder, author, and a subscriber” of the AgentWeb newsletter. Ex. 1049
¶ 8. The widely distributed AgentWeb newsletters announced upcoming
FIPA meetings, reported results of previous meetings, including calls for
proposals, and provided links to the specification drafts posted on the FIPA
home page. See id. ¶¶ 8, 10, 12, 14, 17, 19.
For example, the AgentWeb newsletter dated May 11, 1996,
announced the upcoming FIPA June 1996 Yorktown meeting, described as
the “FIPA Opening Forum.” Ex. 1090, 5; Ex. 1049 ¶ 8. The purpose of the
meeting, as stated in the newsletter, was to “refine the list of basic agent
capabilities candidate for FIPA specification; compile a first list of agent
capabilities intended for specification by end 1997; and establish the first
working groups.” Ex. 1090, 5. Likewise, the AgentWeb newsletter dated
August 12, 1996, advertised the FIPA October 1996 Tokyo meeting.
Ex. 1088, 1; Ex. 1049 ¶ 10. Thereafter, the AgentWeb newsletter dated
October 14, 1996, publicized the Call for Proposals issued at the
October 1996 Tokyo meeting and provided the deadline for submission of
proposals to be considered at the Turin meeting in January 1997. Ex. 1087,
1; Ex. 1049 ¶ 12. FIPA had decided that respondents who submitted
proposals would be invited to the January 1997 meeting to present their
proposals even if they were not FIPA members. Ex. 1023, 1; see Ex. 1069,
27.
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Once FIPA began to produce drafts of the specification, AgentWeb
newsletters announced those drafts and provided links to access them. The
AgentWeb newsletter dated February 2, 1997, reported that “[i]nitial
specifications for three technology parts (Agent Management, Agent
Communication and Agent/Software Interaction) and one application part
(Personal Travel Assistance) have been produced” at the recent Turin
meeting. Ex. 1091, 1; Ex. 1049 ¶ 14. The newsletter included a freely
accessible and public link to access the draft. Ex. 1049 ¶ 14 (citing
Ex. 1091, 1–2). It also indicated that drafts of the remaining three
specification parts would be generated at the FIPA meeting to be held in
April 1997 in Reston. Ex. 1091, 1–2. A subsequent AgentWeb newsletter
dated April 13, 1997, advertised the upcoming Reston meeting and
contained links to information about the meeting on the FIPA website.
Ex. 1092, 3; Ex. 1049 ¶ 17.
On May 5, 1997, following the Reston meeting, an AgentWeb
newsletter reported that attendees of that meeting produced a revised draft
including all seven parts of the specification. Ex. 1093, 2; Ex. 1049 ¶ 17.
The newsletter contained individual public links to the seven parts and
invited “both members and non-members” to comment, providing an email
address for submission. Ex. 1093, 2; Ex. 1049 ¶ 17. Additionally, the
newsletter announced the dates and locations of the next two meetings—the
June 1997 Cheju meeting and the seventh meeting to take place in Munich
on October 6–10, 1997. Ex. 1093, 2; Ex. 1049 ¶ 17. Similarly, the
AgentWeb newsletter dated June 30, 1997, announced that the Cheju
meeting resulted in revised versions of the FIPA specification documents
and provided direct links to the seven parts. Ex. 1094, 1–2; Ex. 1049 ¶ 19.
Again, the newsletter stated that FIPA invited comments and that non-
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members making substantial comments would be invited to attend the
October 1997 Munich meeting. Ex. 1094, 2. Dr. Finin was among those
who submitted comments on the Cheju draft. Ex. 1073; Ex. 1049 ¶ 20.
Meanwhile, the AgentWeb Software Agents mailing list also provided
information regarding FIPA’s efforts to the community of software agent
researchers. See Ex. 1049 ¶ 8. Dr. Finin was an organizer of and
contributor to the Software Agents mailing list. Id. On May 2, 1996, a
posting to the mailing list referenced the upcoming June 1996 FIPA meeting
in Yorktown Heights, New York. Ex. 1079, 1; Ex. 1049 ¶ 8. Members of
the Software Agents mailing list posted comments regarding the Turin draft
after it was released publicly. Exs. 1078, 1081, 1082; see Ex. 1049 ¶¶ 14–
15. Dr. Finin was among those who shared their thoughts. See Ex. 1082;
Ex. 1049 ¶ 15. A posting after the Reston meeting included a public and
open link to access the Reston draft and invited comments from the mailing
list. Ex. 1083, 1; Ex. 1049 ¶ 17.
3. Public Release of FIPA97
FIPA’s seventh meeting took place in Munich on October 6–10, 1997.
Ex. 1026 (Resolution of Munich meeting); Ex. 1049 ¶ 20. At this meeting,
FIPA incorporated final edits and comments and approved the FIPA 97
specification for publication. Ex. 1026, 1, 5; Ex. 1049 ¶ 20. The
specification as approved at the meeting was called “FIPA 97 ver. 1.0,” or
FIPA 97 Version 1.0. Ex. 1026, 5. Working groups for various parts of the
specification were given about one month to check for consistency and make
minor edits. Id. at 2; Ex. 1049 ¶ 20.
An “initial” version of FIPA 97 Version 1.0, approved at the Munich
meeting and dated October 10, 1997, was posted to the FIPA website,
housed at the time at http://drogo.cselt.stet.it/fipa. Ex. 1049 ¶¶ 20–21.
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According to Dr. Finin, the specification documents were available online
and free for anybody to access by sometime in October 1997. Id. ¶ 21. On
November 18, 1997, an AgentWeb newsletter announced completion of
FIPA 97 Version 1.0 and its publication on the FIPA website. Ex. 1086, 1–
2; Ex. 1049 ¶ 21. The newsletter provided individual, direct links to the
seven parts of the specification on the FIPA website. Ex. 1086, 1–2. The
links were not password protected and were open to the public without a
requirement for secrecy or confidentiality. Ex. 1049 ¶ 21. As with the
earlier AgentWeb newsletters, the newsletter containing links to FIPA 97
Version 1.0 was sent to more than 1,300 subscribers. Id.
Dr. Finin testifies that in late 1997, “a few weeks after the Munich
meeting,” he accessed the approved FIPA 97 Version 1.0 posted on the
FIPA website. Id. ¶¶ 20–21. He specifically recalls accessing the
documents in late 1997 to review the first major work product of FIPA and
to prepare for FIPA’s upcoming January 1998 meeting in Palo Alto, which
he attended. Id. ¶ 21 (citing Ex. 1074). Dr. Lieberman also testifies that he
recalls FIPA 97 Version 1.0 being publicly available on the FIPA website
throughout late 1997 and early 1998 and that he accessed it in late 1997 as a
member of the interested public. Ex. 1050 ¶ 146.
The release of FIPA 97 Version 1.0 was well publicized in the weeks
after the Munich meeting. Ex. 1049 ¶ 22. For example, on October 20,
1997, the EETimes featured an article reporting FIPA’s approval of the
FIPA 97 specification. Ex. 1095, 22; see Ex. 1049 ¶ 22. The article was
based on an interview with Leonardo Chiariglione, the president of FIPA.
Ex. 1095, 22. The article described the seven parts of the specification:
“The first three parts cover different aspects of agent behavior: agent
management; agent communication; and agent-software interaction. The
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four remaining parts, which cover application areas, . . . are: personal travel
assistance; personal assistant; audio-visual entertainment and broadcast; and
network provision and management.” Id. After describing FIPA’s plans for
1998, including testing of FIPA 97 Version 1.0 to provide input for a further
round of standardization, the article referred readers to the FIPA website for
information regarding the released specification: “CSELT[7] maintains
extensive information on FIPA’s activities at www.cselt.stet.it/fipa.”8 Id.
(emphasis omitted). It concluded with a quote from Dr. Chiariglione
regarding the specification’s public availability: “‘It is our policy to make
the standard freely available over the Internet,’ Chiariglione said. ‘FIPA
will retain the copyright but it will be free for others to use.’” Id.
The November-December 1997 issue of IEEE Internet Computing
also announced the release of the FIPA 97 specification: “The Foundation
for Intelligent Physical Agents, a non-profit organization established to
promote emerging agent-based applications, has released its first
specification. Named FIPA 97, the specification will provide a benchmark
for interoperable products.” Ex. 1096, 93; Ex. 1049 ¶ 22. The news brief
directed readers to the FIPA website for the text of the specification.
Ex. 1096, 93 (“The text is available at http://drogo.cselt.stet.it.fipa/.”9);
Ex. 1049 ¶ 22.

7 Centro Studi e Laboratori Telecommunicazioni, Dr. Chiariglione’s
employer at the time. See Ex. 1095, 22.
8 The record suggests this website (http://www.cselt.stet.it/fipa) was a mirror
of the FIPA website (http://drogo.cselt.stet.it/fipa) in 1997. See Ex. 1049
¶ 22; Ex. 1095, 22; Tr. 94:11–14.
9 The URL provided in the article contains a typographical error. See
Ex. 1049 ¶ 22 (correcting the URL to http://drogo.cselt.stet.it[/]fipa/).
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Sometime after the Munich meeting, FIPA also produced a hardcopy
book version of the FIPA 97 Version 1.0 specification to be sent to FIPA
members and various institutions and standards groups. Ex. 1049 ¶ 24; see
Ex. 1026, 1; Ex. 1063, 1 (Resolution of the Palo Alto meeting, Jan. 29,
1998). At least two copies of the book were available in libraries in
January 2019. Ex. 1049 ¶ 24; Ex. 1057, 1 (WorldCat catalog entry for “Fipa
specification : Version 1.0”); Ex. 1055 (cover page and table of contents of
each part in copy at library in Italy); Ex. 1056 (cover page and table of
contents of Part 1 in copy at library in Switzerland). Dr. Finin testifies that
the books contain the November 28, 1997, edited version of FIPA 97
Version 1.0, which “only made minor edits (mostly spelling and formatting)
over the October 10, 1997 version.” Ex. 1049 ¶ 25 (citing Ex. 1055, 5
(Part 2 “publication date” of November 28, 1997); Ex. 1056).
4. Publications and Patents Referring to FIPA97 and FIPA Activities
In late 1997 and 1998, several papers reviewing and outlining the
FIPA 97 specification were published and presented at meetings. See
Ex. 1049 ¶¶ 26–30. A paper dated December 1997 memorializes a
presentation made to a meeting on Intelligent Agent Technology organized
by the EPSRC10 Community Club in Advanced Computing Techniques.
Ex. 1097, Cover (“Dickinson”);11 see Ex. 1049 ¶ 26. This paper outlines the
background and rationale for the creation of an agent interoperability
standard. Ex. 1097, 1–3. It also describes the development history of the

10 “The Engineering and Physical Sciences Research Council (EPSRC) is the
main funding body for engineering and physical sciences research in the
UK.” Engineering and Physical Sciences Research Council,
epsrc.ukri.org/about (last visited Sept. 28, 2020).
11 Ian J. Dickinson, Agent Standards, HP Laboratories Bristol, HPL-97-156
(Dec. 1997).
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FIPA 97 specification, noting that FIPA’s work program “culminated in the
publication of an initial draft standard, FIPA 97, at the Munich meeting on
October 1997.” Id. at 3. Dickinson further provides that “[a]ll FIPA
documents and meeting outputs are publicly available on the web” at
“http://drogo.cselt.stet.it/fipa/,” and “comments and review have been sought
at each stage of the process.” Id. at 3, 7 n.9. The paper then describes the
features of the specification’s three substantive technical sections, Parts 1–3.
Id. at 3–6.
Similarly, a 1998 paper titled “Industrial Applications of Multi-Agent
Technology” summarizes FIPA’s background and presents an overview of
the three technical parts (i.e., Parts 1–3) of FIPA 97 Version 1.0 released in
October 1997. Ex. 1099, 12–13 (“Steiner”);12 see Ex. 1049 ¶ 28. The
Steiner paper provides the FIPA website address and explains that the four
application parts (i.e., Parts 4–7) will be used in field trials to gather
information to be incorporated into a revised version of FIPA 97. Ex. 1099,
13 & n.1.
Likewise, a paper titled “FIPA — towards a standard for software
agents” appearing in the July 1998 issue of the BT Technology Journal
explains the motivation for an agent standard and provides an overview of
FIPA’s background and activities. Ex. 1100, 51–52 (“O’Brien”);13 see
Ex. 1049 ¶ 29. It then describes the different parts of the FIPA 97
Version 1.0 specification issued in October 1997. Ex. 1100, 51–52.14

12 Donald Steiner, Siemens AG, Industrial Applications of Multi-Agent
Technology (IEEE 1998).
13 P.D. O’Brien & R.C. Nicol, FIPA — towards a standard for software
agents, BT Tech. J. Vol. 16, No. 3 (July 1998).
14 Dr. Finin testifies that O’Brien provides public links to FIPA97. Ex. 1049
¶ 29. The copy of O’Brien entered into the record, however, appears to be
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Dr. Finin cites several other publications that reference FIPA’s
development of an agent communication standard in the 1997–98 timeframe.
Ex. 1049 ¶ 31 (citing Exs. 1027–29). Dr. Finin also identifies several patent
applications in the same timeframe that refer to FIPA’s agent
communication language. Id. ¶ 32 (citing Exs. 1030–33).
5. The FIPA Website and Exhibits 1006–1012
Sometime in 1998, the FIPA website migrated from its original site
(http://drogo.cselt.stet.it/fipa) to fipa.org. Ex. 1049 ¶ 23; see also Ex. 1026
(Resolution of Munich meeting indicating FIPA’s plans for the “redesign of
a new FIPA home page”); Ex. 1065, 4 (Resolutions of the Durham meeting
in October 1998 indicating the website will be transferred to www.fipa.org).
The fipa.org website still exists today even though FIPA is no longer active
as a standalone organization. See Ex. 1049 ¶¶ 23, 48–49. The current FIPA
website maintains a repository of past FIPA documents, including meeting
notes, press releases, FIPA resolutions, and different versions of the FIPA
specification. Id. ¶ 49.
Dr. Finin testifies that the “initial” version of FIPA 97 Version 1.0
(i.e., the specification posted on the FIPA website on October 10, 1997)
“remained publicly accessible during all of FIPA’s future activities and is
still available on FIPA’s home page today.” Id. ¶ 21. According to
Dr. Finin, Exhibits 1006–1012 (collectively referred to as FIPA97) are
Parts 1–7 of FIPA 97 Version 1.0 as found on the current fipa.org website.
Id. Based on his personal knowledge, Dr. Finin further testifies that

missing several pages, including one containing endnotes 10–12 that might
provide links to the FIPA website. See Ex. 1100, 52 (“FIPA97 (issued in
October 1997) [10–12] is the first output from FIPA covering part of the
requirements for an agent standard.”).
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Exhibits 1006–1012 are the “same version” and contain “the same
disclosures, content and information” as Parts 1–7 of FIPA 97 Version 1.0
that were publicly available on the FIPA website
(http://drogo.cselt.stet.it/fipa) on October 10, 1997, and which Dr. Finin
himself accessed in late 1997. Id. ¶¶ 21, 34. He also notes that although
Exhibit 1006 has a typographical error relating to the version number in the
header of its odd pages,15 Exhibit 1006 is identical to the version of Part 1 of
FIPA 97 Version 1.0 that was released on October 10, 1007. Id. ¶ 21.
Additionally, as evidence that FIPA 97 Version 1.0 has been continuously
available on fipa.org since the website migration, Dr. Finin cites a set of
Internet Archive records beginning in 2000 showing where each part of that
version of the specification could be accessed. Id. (citing Ex. 1054).
Dr. Finin testifies that the original FIPA website,
http://drogo.cselt.stet.it/fipa, remained live for several years after the website
transitioned to fipa.org. Ex. 1049 ¶ 23. The Internet Archive Wayback
Machine contains an archived screen capture of the website
http://drogo.cselt.stet.it/fipa from December 1, 1998. See Ex. 1051;
Ex. 1049 ¶¶ 23, 54. According to Dr. Finin, the archived page shows that
the FIPA 97 specification was live and freely available on the FIPA website
home page at that time. Ex. 1049 ¶ 23; Ex. 1051, 1 (“FIPA has already
developed a seven-part specification called FIPA 97. Implementations of
FIPA 97 are undergoing field trials that will last until October 1998 when
version 2 of FIPA 97 will be produced.”); Ex. 1049 ¶ 23. The home page
provided links (i.e., “FIPA 97”) to actual specification documents, but those

15 The header on odd pages reads “FIPA 1997 Part 1: Version 2.4.” E.g.,
Ex. 1006, 3.
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links have not been maintained in the archive. Ex. 1049 ¶ 23. Dr. Finin
testifies that the screen capture from the Internet Archive is consistent with
the mirror of the former FIPA site hosted by Leonardo Chiariglione. Id. ¶ 51
(citing Ex. 1103 (http://leonardo.chiariglione.or/standards/fipa/)).
Dr. Chiariglione’s mirror is still available, and documents hosted on the
mirror are “accurate and complete copies of FIPA documents that were
available to FIPA members.” Id.
6. Analysis
Petitioner argues that FIPA97 was a publicly accessible printed
publication as of October 10, 1997, when it was posted on the FIPA website.
Pet. 23; Pet. Reply 15–21. More specifically, Petitioner argues that
(1) FIPA 97 Version 1.0 was publicly accessible on October 10, 1997, and
(2) the version of the FIPA specification found in Exhibits 1006–1012,
referred to herein as FIPA97, is the same specification that was posted on
the FIPA website on October 10, 1997, and named FIPA 97 Version 1.0.
See, e.g., Pet. 23 (arguing FIPA 97 Version 1.0 was publicly accessible in
late 1997); Pet. Reply 15–17 (arguing that Exhibits 1006–1012 are the same
documents that were made public as FIPA 97 Version 1.0). Patent Owner
addresses the first contention when it argues the evidence does not show any
version of FIPA 97 Version 1.0 was available on the FIPA website. See,
e.g., PO Resp. 69. It also challenges the second contention when it argues
Petitioner has failed to show that Exhibits 1006–1012 are identical to the
version of the FIPA specification that allegedly was publicly accessible
before the critical date. See, e.g., id. at 62–63. In our analysis below, we
address the two questions in turn.
Considering all the facts and circumstances surrounding the
development of FIPA 97 Version 1.0 and its publication on the FIPA
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website, we find that FIPA 97 Version 1.0 was disseminated or otherwise
made available to the extent that persons interested and ordinarily skilled in
the art, exercising reasonable diligence, could locate it. See Jazz Pharm.,
895 F.3d at 1355–56. First, the uncontested evidence shows that members
of the relevant public (i.e., persons of ordinary skill in the field of software
agent-based technology) knew of the release of FIPA 97 Version 1.0 in late
1997, prior to the critical date. As detailed above, FIPA was open to
corporations and educational and governmental organizations without
restriction. Ex. 1006, iv. FIPA’s members included many industry leaders
whose employees attended FIPA meetings, including the October 1997
meeting in Munich where FIPA 97 Version 1.0 was approved for
publication. See id.; Ex. 1095, 22. FIPA meetings and activities were
publicized among the larger community of software agent researchers via
the AgentWeb website and its associated Software Agents mailing list and
AgentWeb newsletter, which had more than 1,300 subscribers. Ex. 1090, 5;
Ex. 1088, 1; Ex. 1087, 1; Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094,
1–2; Ex. 1086, 1–2; see Ex. 1049 ¶¶ 8, 10, 12, 14, 17, 19. The newsletter in
particular informed subscribers of the development of the FIPA specification
during 1996 and 1997 and provided detailed information regarding the
release of FIPA 97 Version 1.0 in a November issue. Ex. 1086, 1–2. News
articles in periodicals published in late 1997 also announced that FIPA had
released and published FIPA 97 Version 1.0. Ex. 1095, 22; Ex. 1096, 93;
see Ex. 1049 ¶ 22. In addition, the record contains several papers published
in late 1997 and 1998, prior to the critical date, describing FIPA 97
Version 1.0 and its release in October 1997. See Ex. 1097, 1–7; Ex. 1099,
12–13; Ex. 1100, 51–52; Ex. 1049 ¶¶ 26–30; see also Ex. 1049 ¶¶ 31–32
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(citing Exs. 1027–33 (other publications and patents referring to FIPA
specification)).
The evidence of record also demonstrates that members of the
relevant public, exercising reasonable diligence, could have located FIPA 97
Version 1.0 in late 1997 on the FIPA website, housed at the time at
http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its
website at the conclusion of the Munich meeting on October 10, 1997, or
shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to
the Munich meeting, persons of ordinary skill in the art would have known
about the FIPA website through the widely distributed AgentWeb
newsletters and the Software Agents mailing list, which provided website
information or direct links to drafts of the specification and meeting
announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2;
Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field
would have been sufficiently familiar with FIPA’s activities and its website
to look for FIPA 97 Version 1.0 on the FIPA website when it was posted
after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with
FIPA, and Dr. Lieberman, who worked in the software agent field, testify
that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997.
Ex. 1049 ¶ 21; Ex. 1050 ¶ 146.
Moreover, the AgentWeb newsletter dated November 18, 1997,
provided a link to the FIPA website and individual links to the seven parts of
FIPA 97 Version 1.0 published on the website. Ex. 1086, 1–2; see Ex. 1049
¶ 21. Thus, that issue of the newsletter provided more than 1,300 interested
members of the public with direct access to FIPA 97 Version 1.0 at least as
of November 18, 1997.
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News articles and papers published in late 1997 also provided readers
with the website address where FIPA 97 Version 1.0 could be found. See
Ex. 1095, 22; Ex. 1096, 93; Ex. 1097, 7 n.9. The news articles in particular
likely reached a very wide audience because they appeared in publications
directed to subject matter broader than agent-based technology. See
Ex. 1095 (EETimes); Ex. 1096 (IEEE Internet Computing). The EETimes
article was dated October 20, 1997, suggesting that FIPA 97 Version 1.0 was
available on the FIPA website at least as of that date.
The undisputed evidence also demonstrates that FIPA 97 Version 1.0
was freely available on the FIPA website without a password or any other
restrictions and access was not subject to any requirement or expectation of
secrecy or confidentiality. See Ex. 1049 ¶ 21; Ex. 1095, 22; see also
Ex. 1006, iv (stating FIPA intended to make its results available to all
interested parties). This evidence further supports our finding that FIPA 97
Version 1.0 was publicly accessible in late 1997. See Jazz Pharm., 895 F.3d
at 1358–59; Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d
1374, 1380–81 (Fed. Cir. 2012); MIT v. AB Fortia, 774 F.2d 1104, 1109
(Fed. Cir. 1985).
Patent Owner’s arguments, many of which attack pieces of evidence
individually, do not persuade us that Petitioner has failed to show that
FIPA 97 Version 1.0 was publicly accessible. First, Patent Owner argues
that no evidence shows the original FIPA website
(http://drogo.cselt.stet.it/fipa) existed prior to a December 1, 1998, Internet
Archive capture. PO Resp. 68 (citing Ex. 1051). To the contrary, much of
the documentary evidence from late 1997 and testimonial evidence identifies
that website or its mirror as the FIPA website during the relevant time
period. See Ex. 1049 ¶ ¶ 20–23; Ex. 1092, 3; Ex. 1093, 2; Ex. 1095, 22;
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Ex. 1096, 93; Ex. 1097, 7 n.9. Notwithstanding the absence of an Internet
Archive capture for the website from a date prior to December 1998, we find
that, based on the totality of evidence in the record, the original FIPA
website existed in late 1997.
Patent Owner also argues that none of the documents cited by
Petitioner provide active links to FIPA 97 Version 1.0 and therefore are
insufficient proof of public accessibility. PO Resp. 69; PO Sur-reply 30.
Again, based on the totality of evidence in the record, including but not
limited to the testimony of Dr. Finin that he accessed FIPA 97 Version 1.0
on the FIPA website in late 1997, we find that FIPA 97 Version 1.0 was
available on the FIPA website at that time, notwithstanding the lack of active
links today, more than twenty years later. Patent Owner finds fault with
Dr. Finin’s testimony on this point because he does not claim to have used
any of the links in the AgentWeb newsletters to access FIPA 97 Version 1.0.
PO Sur-reply 30 (citing Ex. 1049 ¶ 21). Patent Owner, however, overlooks
Dr. Finin’s testimony that he was the founder and author of the AgentWeb
newsletter, implying that he created the links in the newsletter. See Ex. 1049
¶ 8. Therefore, based on Dr. Finin’s personal knowledge regarding the links
in the AgentWeb newsletter dated November 18, 1997, and the other
evidence corroborating his testimony, we find that FIPA 97 Version 1.0 was
available on the FIPA website in late 1997.
Patent Owner further asserts that, to the extent the Internet Archive
capture from December 1998 provides an operable download link, it links to
Version 2.0 of the FIPA 97 specification. PO Resp. 69 (citing Ex. 1051). It
is not surprising, however, that FIPA’s website in December 1998 provided
links to FIPA 97 Version 2.0, which FIPA released in October 1998 to
provide minor updates to two parts of the specification. See Ex. 1049 ¶ 35;
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Ex. 1053, vi. In any event, the December 1998 Internet Archive capture at
least shows that the FIPA website was live at that time, which was prior to
the critical date. See Ex. 1049 ¶ 23 (citing Ex. 1051, 1).
In its Sur-reply, Patent Owner argues for the first time that Petitioner
has not demonstrated that a person of ordinary skill in the art in 1997 could
have found FIPA 97 Version 1.0 using search tools or that the FIPA website
was indexed so the specification could be located. PO Sur-reply 27–28.
Further, Patent Owner argues that the existence of different FIPA websites at
various times would have made it even more difficult to find the correct
version of the FIPA specification without sufficient indexing or search tools.
Id. at 29.
Even if we consider this late argument, we find it unpersuasive. As
detailed above, the uncontested evidence shows that the address of the FIPA
website itself was widely known among those skilled in the art and that
FIPA routinely provided links to the FIPA specification on the website’s
home page. See Ex. 1095, 22; Ex. 1096, 93; Ex. 1097, 7 n.9; Ex. 1051, 1;
Ex. 1021, 1; Ex. 1025, 1. The November 1997 AgentWeb newsletter also
provided direct links to FIPA 97 Version 1.0. Ex. 1086, 1–2. Under these
circumstances, we find that a member of the interested public could have
found FIPA 97 Version 1.0 without search tools or indexing by using the
links in the AgentWeb newsletter or navigating to the well-known FIPA
website home page. We also find that the record, including Dr. Finin’s
testimony, satisfactorily explains the various FIPA websites and website
addresses over time and clearly identifies the FIPA website that was being
used in late 1997. See Ex. 1049 ¶¶ 22–23, 48–49, 51.
Having determined that FIPA 97 Version 1.0 was publicly accessible
on the FIPA website in late 1997, as early as October 10 and no later than
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November 18, we turn to whether Exhibits 1006–1012 (collectively referred
to as FIPA97) contain the same version of the FIPA specification that was
available on the FIPA website during that timeframe. Dr. Finin testifies that
Exhibits 1006–1012, documents available on the current FIPA website
(fipa.org) and identified as FIPA 97 Version 1.0, are the same version with
the same content as Parts 1–7 of FIPA 97 Version 1.0 that were released at
the FIPA Munich meeting on October 10, 1997, and were publicly available
on the FIPA website (http://drogo.cselt.stet.it/fipa) in late 1997. Ex. 1049
¶¶ 21, 34.
As an initial matter, the October 10, 1997, date on the cover pages of
several parts of FIPA97 supports Dr. Finin’s testimony that FIPA97 is the
same as FIPA 97 Version 1.0 as published on the FIPA website in late 1997.
See Ex. 1006, Cover; Ex. 1007, Cover; Ex. 1008, Cover; Ex. 1010, Cover;
Ex. 1012, Cover; see also Ex. 1009, Cover (Part 4 identifying a 1997
copyright date); Ex. 1011, Cover (Part 6 identifying a 1997 copyright date).
Patent Owner contends that Petitioner cannot rely on the date stamps or
copyright notices on Exhibits 1006–1012 to establish public accessibility
because they are hearsay. PO Resp. 61; PO Sur-reply 22–24. We agree with
Petitioner that Patent Owner has waived this argument because it did not
raise an objection on evidentiary grounds pursuant to 37 C.F.R.
§ 42.64(b)(1). See Pet. Reply 15–16. Furthermore, we agree with Petitioner
that the dates on the cover pages are not hearsay because they are evidence
tending to show that FIPA97 is identical to FIPA 97 Version 1.0, not
statements offered to show Exhibits 1006–1012 were published on a certain
date. See id. at 16 (citing Apple Inc. v. VirnetX Inc., IPR2016-01585,
Paper 32 at 58 (PTAB Feb. 20, 2018)).
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Patent Owner also argues that Petitioner cannot rely on the cover page
dates alone as proof of the documents’ public accessibility. PO Sur-
reply 23. The date stamps, however, are only part of the totality of evidence
offered by Petitioner to establish public accessibility. As such, they are
relevant evidence supporting a finding that FIPA97 was publicly accessible.
See Hulu, Paper 29 at 17–18 (citing Nobel Biocare, 903 F.3d at 1377).
Patent Owner argues that the existence of multiple versions of
FIPA 97 Version 1.0 undercuts Petitioner’s position and Dr. Finin’s
testimony that Exhibits 1006–1012 are the version of FIPA 97 Version 1.0
that was publicly accessible in late 1997. See PO Resp. 62–65; PO Sur-
reply 25. For example, Patent Owner points to Dr. Finin’s description of the
version released on October 10, 1997, as an “initial” version, after which
final minor edits were to be made. PO Resp. 63–64 (citing Ex. 2068, 86:11–
15, 88:9–89:25); see Ex. 1049 ¶ 21. Patent Owner cites an Internet Archive
capture in the record referring to “FIPA 97 specification ver. 1.0 (Reston
meeting).” PO Resp. 64–65 (citing Ex. 1105, 27). Patent Owner also cites
evidence, including Dr. Finin’s testimony, that a different version of
FIPA 97 Version 1.0 was published in hardcopy books. Id. at 65 (citing
Exs. 1055, 1056; Ex. 1049 ¶ 25 (stating that “FIPA printed the
November 28, 1997, edited version of the specification” in the books)).
Patent Owner argues that because these various versions of FIPA 97
Version 1.0 have not been substantively introduced into evidence so that the
differences can be ascertained, Petitioner has not shown that Exhibits 1006–
1012 are the version that was publicly accessible on the FIPA website in
late 1997. See PO Resp. 66–67. We disagree. Dr. Finin testifies that
Exhibits 1006–1012 are the same documents that were released at the
conclusion of the FIPA meeting in Munich on October 10, 1997, and were
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made publicly available at the time. Ex. 1049 ¶¶ 21, 34. Other evidence of
record corroborates Dr. Finin’s testimony and adequately explains the
multiple versions of the specification. See Pet. Reply 17–18. As set forth in
detail above, FIPA released a version of FIPA 97 Version 1.0 on October 10,
1997, and made it available on the FIPA website soon thereafter. See
Ex. 1049 ¶ 21; Ex. 1086, 1–2; Ex. 1095, 22; Ex. 1096, 93. It is clear from
the record that any earlier versions of the specification, such as the version
made available after the Reston meeting six months before FIPA 97
Version 1.0, were drafts made available for public comment. See Pet.
Reply 17; Ex. 1049 ¶¶ 16–18; Ex. 1024; Ex. 1061.
The record also shows that the version published in book form is a
later version, dated November 28, 1997, containing minor formatting and
clerical edits. See Ex. 1049 ¶ 25; Ex. 1055, 5. Petitioner does not rely on
the book version as a prior art reference or assert that it was publicly
accessible. See Pet. 23; Pet. Reply 17–18. The hardcopy book excerpts in
the record merely corroborate Dr. Finin’s testimony that FIPA’s activities
and release of the FIPA specification were known in the art. See Ex. 1049
¶ 24.
Patent Owner also points to the erroneous header on odd pages in
Exhibit 1006 as calling into question which version of the specification is in
Exhibits 1006–1012. PO Resp. 66. We credit Dr. Finin’s unrebutted
testimony that the header on some pages in Exhibit 1006 is a typographical
error. See Ex. 1049 ¶ 21. Patent Owner has not cited, nor do we see,
evidence in the record suggesting a FIPA 97 Version 2.4 was made publicly
available. See PO Resp. 66.
Patent Owner finds fault with Exhibits 1006–1012 because they were
obtained after the critical date and could not have been obtained from a
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website prior to the critical date. See PO Resp. 61–62; PO Sur-reply 21. In
his declaration, Dr. Finin testifies that Exhibits 1006–1012 are available on
the FIPA website today (i.e., fipa.org), and the earliest Internet Archive
record of the relevant website pages shows the documents were posted in
2000. Ex. 1049 ¶ 21 (citing Ex. 1054). Patent Owner contends that in his
deposition Dr. Finin acknowledged that Exhibits 1006–1012 could have
been obtained from files saved in the Internet Archive between 2003 and
2004. PO Resp. 61–62 (citing Ex. 2068, 93:12–94:2, 96:7–20). In either
case, Patent Owner argues, the dates are after the critical date of the
’560 patent. Id. at 62; PO Sur-reply 21. We agree with Petitioner, however,
that the date Exhibits 1006–1012 were obtained is immaterial if they are
digital copies of documents that are shown to have been publicly accessible
before the critical date. See Pet. Reply 16 (citing In re Wyer, 655 F.2d at
226–27).
Finally, Patent Owner argues that the testimony of Dr. Finin and
Dr. Lieberman is conclusory, unreliable, and uncorroborated and therefore
insufficient to establish public accessibility. PO Resp. 71–74; PO Sur-
reply 20–22. “[C]orroboration is required of any witness whose testimony
alone is asserted to invalidate a patent, regardless of his or her level of
interest.” Nobel Biocare, 903 F.3d at 1377–78 (quoting Finnigan Corp. v.
ITC, 180 F.3d 1354, 1369 (Fed. Cir. 1999)). This corroboration requirement
applies when relying on witness testimony to establish public accessibility of
a prior art reference. See id. at 1377–81; Typeright Keyboard Corp. v.
Microsoft Corp., 374 F.3d 1151, 1158–60 (Fed. Cir. 2004). Corroborating
evidence may include documentary or testimonial evidence, and
circumstantial evidence may provide sufficient corroboration. Nobel
Biocare, 903 F.3d at 1378. Determining whether testimony has been
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corroborated “involves an assessment of the totality of the circumstances
including an evaluation of all pertinent evidence.” Id.
We are not persuaded by Patent Owner’s argument regarding the
testimony of Dr. Finin and Dr. Lieberman. Dr. Finin’s testimony is based on
his personal knowledge as someone who was directly involved in FIPA’s
activities by submitting comments on draft specifications and attending
meetings, for example, and providing independent advice as a FIPA Fellow.
His testimony that FIPA approved FIPA 97 Version 1.0 at the Munich
meeting on October 10, 1997, and posted it to the FIPA website so that it
was publicly accessible is corroborated by the evidence in the record of the
facts and circumstances surrounding the development and release of the
specification as analyzed above. Dr. Lieberman’s testimony that as a
member of the interested public he accessed FIPA 97 Version 1.0 in late
1997 is corroborated by the same evidence.
As for Dr. Finin’s testimony, based on his personal knowledge, that
Exhibits 1006–1012 are the same as the version of FIPA 97 Version 1.0 that
was publicly accessible on the FIPA website in late 1997, we find it to be
credible and corroborated by other evidence of record. We are not
persuaded that Dr. Finin’s inability to recall many of the details of a
300-page specification more than twenty years after it was created
undermines his testimony. See PO Resp. 72–73. Furthermore, we find that
the evidence discussed above, including the identification of Exhibits 1006–
1012 on their cover pages or elsewhere as FIPA 97 Version 1.0 with a date
of October 10, 1997, corroborates Dr. Finin’s testimony that the version of
the specification in Exhibits 1006–1012 is the version that was publicly
accessible on the FIPA website in late 1997, and not some other version of
the FIPA specification.
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For these reasons, we find that a preponderance of the evidence shows
that Exhibits 1006–1012 are the version of FIPA 97 Version 1.0 released on
October 10, 1997, and posted on the FIPA website in late 1997. As
discussed above, a preponderance of the evidence shows that the October 10,
1997 version of FIPA 97 Version 1.0 was publicly accessible in late 1997.
Accordingly, we find that Petitioner has met is burden to show that FIPA97,
submitted as Exhibits 1006–1012 and relied on by Petitioner in its
unpatentability challenges, was publicly accessible prior to the critical date
of January 5, 1999, and therefore is available as prior art to the ’560 patent
under 35 U.S.C. § 102(a).
G. Asserted Obviousness over Kiss and FIPA97
Petitioner contends that claims 1, 5–13, 22–25, and 50–55 of the
’560 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Kiss and FIPA97. Pet. 32–87. We have reviewed the
parties’ arguments in the Petition, Patent Owner Response, Reply, and
Sur-reply, as well as the relevant evidence discussed in those papers and
other record papers, including the declarations of Dr. Lieberman and
Dr. Medvidovic. For the reasons that follow, we determine Petitioner has
shown by a preponderance of the evidence that claims 1, 5–9, 12, 13, 22–25,
and 52 are unpatentable as obvious over the combined teachings of Kiss and
FIPA97, but has not shown by a preponderance of the evidence that claims
10, 11, 50, 51, and 53–55 are unpatentable as obvious over the combined
teachings of Kiss and FIPA97.
1. Proposed Combination of Kiss and FIPA97
In its proposed combination of Kiss with FIPA97, Petitioner relies on
Kiss for teaching electronic agents and their general functions and
operations, including agent collaboration, agent registry, and inter-agent
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messaging. Pet. 27–28. Petitioner acknowledges, however, that Kiss does
not disclose an inter-agent communication language and relies on FIPA97 to
teach a common communications protocol and language (FIPA ACL), which
is combined with the teachings of Kiss to provide a communication language
for inter-agent communication between the agents of Kiss and add
administrative functionality and exemplary practices to the Kiss system. Id.
Petitioner explains that “[FIPA97’s] techniques are used to implement the
functionality described in Kiss, including facilitating agent collaboration,
agent registry, and inter-agent messaging, as well as adding functionality
that is disclosed in FIPA97.” Id. at 28 (citing Ex. 1005, 3:32–36, 3:67–4:1,
6:67–7:1). Petitioner asserts that “[w]here the two systems disclose
analogous functionality, such as facilitating cooperation and agent registry,
their techniques are combined.” Id. (citing Ex. 1050 ¶¶ 204–206).
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, Petitioner “must
show some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” KSR, 550 U.S. at 418. A reason to
combine teachings from the prior art “may be found in explicit or implicit
teachings within the references themselves, from the ordinary knowledge of
those skilled in the art, or from the nature of the problem to be solved.”
WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)).
Petitioner argues the proposed combination of Kiss and FIPA97
would have been obvious for several reasons. First, Petitioner argues that
Kiss, FIPA97, and the ’560 patent are analogous art, because “each is
directed to the same field of endeavor, i.e., distributed computing
environments generally and architectures for communication and
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cooperation among distributed electronic agents specifically.” Pet. 28
(citing Ex. 1001, 1:17–21; Ex. 1005, Abstract; Ex. 1007, Foreword, 1;
Ex. 1050 ¶ 207). Petitioner also argues that FIPA97 and Kiss are reasonably
pertinent to the problem addressed by the ’560 patent—“the need for
‘flexible, fault-tolerant, distributed problem solving’ using ‘agent-based
technologies.’” Id. at 28–29 (citing Ex. 1001, 4:30–36; Ex. 1005, 2:33–40;
Ex. 1007, 1; Ex. 1050 ¶ 208).
Next, Petitioner argues the combination of Kiss and FIPA97
would have been the arrangement of old elements (i.e., the
functionality of FIPA97, and the system of Kiss) with each
performing the same function it had been known to perform
(communication between distributed agents (FIPA97));
cooperative task competition and problem solving (Kiss)) and
yielding no more than what one would expect from such an
arrangement (a system of distributed agents, able to
communicate to conduct cooperative task completion and
problem solving).
Id. at 29 (citing Ex. 1020, 2; Ex. 1046, 50; Ex. 1050 ¶ 209).
Petitioner also argues that a skilled artisan
would have known that agents, such as in Kiss, must use a
common communications protocol, i.e., an inter-agent
communication language, and related management
functionality, and therefore would have been motivated to
consider and employ one of the available inter-agent
communications languages and its related functionality, and
because doing so would have been a convenient and efficient
way to facilitate effective communication between agents.
Id. (citing Ex. 1020, 2; Ex. 1046, 50; Ex. 1050 ¶ 210).
Petitioner further argues that a skilled artisan would have been
motivated based on earlier descriptions of KQML’s similar use of an
inter-agent communication language to use FIPA ACL in a system like Kiss.
Id. at 29–30 (citing Ex. 1016, Abstract, 4, 29, 30; Ex. 1006, 7; Ex. 1007, 40–
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42; Ex. 1005, Abstract; Ex. 1050 ¶¶ 211–213). According to Petitioner, a
skilled artisan “would have been further motivated to make the combination
because of the known advantages of FIPA97, including that it specifies, ‘key
agents necessary for the management of an agent system, the ontology
necessary for the interaction between systems, and it defines also the
transport level of the protocols.’” Id. at 30 (citing Ex. 1035, 1; Ex. 1050
¶ 217).
Additionally, Petitioner argues that “FIPA97 represented a substantial
attempt to formulate an industry standard designed to encourage
interoperability and uniformity amongst agent systems” and a person of
ordinary skill in the art “would have understood that agent systems that
complied with such a standard would be more likely to be interoperable with
other systems and would likely have more resources available.” Id. at 30–31
(citing Ex. 1007, vii; Ex. 1047; Ex. 1050 ¶ 218). Moreover, Petitioner
argues, the description of the administrative functionality and exemplary
practices in FIPA97 “suggests that their use with the FIPA ACL would be
advantageous and workable,” and a person of ordinary skill in the art would
have been motivated to employ such additional functionality and practices in
the combined system “in order to obtain the full benefit of using FIPA
ACL.” Id. at 31 (citing Ex. 1050 ¶ 219).
Finally, Petitioner argues that a skilled artisan could have made the
combination without undue experimentation because by January 1999 the
component parts of the combination were well-known, conventional
technology and because others had combined FIPA97 technology with agent
systems. Id. (citing Ex. 1007; Ex. 1016; Ex. 1030; Ex. 1050 ¶ 216).
In response, Patent Owner asserts that “Petitioner utterly defaults in
offering any reason to combine” Kiss and FIPA97 and that Petitioner’s
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arguments contain boilerplate language. PO Resp. 137; PO Sur-reply 51.
Patent Owner argues that Petitioner’s motivation to combine Kiss and
FIPA97 suffers from “hindsight bias” and that Petitioner “offers no reason or
explanation that a person of skill in the art looking at Kiss would be
motivated to find a particular language with the characteristics of FIPA97’s
ACL.” PO Resp. 137. Patent Owner also argues that Petitioner fails to
identify how the combination of Kiss and FIPA97 could be achieved. Id. at
138. Specifically, Patent Owner argues that the FIPA97 and Kiss protocols
are “different” and “mutually exclusive” and that FIPA97 “discouraged
interoperability between different and incompatible systems.” PO
Sur-reply 51–54. Patent Owner also argues that the Kiss and FIPA97
architectures “look quite different” and “Petitioner offers no articulation of
how to add the [FIPA97 Directory Facilitator (DF)] to any of the Kiss
layers.” PO Resp. 95.
We agree with Petitioner that Patent Owner “ignores the several pages
of analysis supported by expert testimony (including citations to evidence in
the prior art) articulating the rational underpinning of the combination” of
Kiss and FIPA97. Pet. Reply 22; see Pet. 27–31. As summarized above,
Petitioner provides ample reasoning and explanation for why person of
ordinary skill in the art would have combined the teachings of FIPA97 and
Kiss in the manner Petitioner describes. Thus, Patent Owner’s argument that
Petitioner fails to offer any reason to combine Kiss and FIPA97 is directly
contrary to the evidence of record and is unpersuasive. See PO Resp. 137.
We also agree with Petitioner that a showing of obviousness does not
require a person of ordinary skill in the art to have been motivated to find the
particular ACL language in FIPA97, as Patent Owner contends. See Pet.
Reply 22 (citing PO Resp. 137). Under the correct obviousness analysis,
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“any need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR, 550 U.S. at 420. Here, Petitioner provides
persuasive evidence and argument that FIPA97 and Kiss are reasonably
pertinent to the problem addressed by the 560 patent—“the need for
‘flexible, fault-tolerant, distributed problem solving’ using ‘agent-based
technologies.’” Pet. 28–29 (citing Ex. 1001, 4:30–36; Ex. 1005, 2:33–40;
Ex. 1007, 1; Ex. 1050 ¶ 208). For instance, Kiss observes that “a need exists
for a knowledge management system for dynamic, distributed problem-
solving systems.” Ex. 1005, 2:39–40. And as Dr. Lieberman notes, the
FIPA97 specification “defines a language and supporting tools, such as
protocols, to be used by intelligent software agents to communicate with
each other,” and “the terms used and the mechanisms used [by FIPA97]
support such a higher-level, often task based, view of interaction and
communication.” Ex. 1050 ¶ 208 (emphasis omitted). This evidence
support’s Petitioner’s position that a person of ordinary skill in the art at the
time of the claimed invention would have combined FIPA97 and Kiss in the
manner described in the Petition to provide a flexible, fault-tolerant,
distributed problem solving system using agent-based technologies.
Petitioner further argues, and we agree, that Patent Owner’s criticism
that Petitioner fails to identify how the combination could be achieved
“ignores the detailed description in the Petition (supported by Dr.
Lieberman) that demonstrates how the combination would work.” Pet.
Reply 23 (quoting PO Resp. 138) (citing Pet. 27–31; Ex. 1050 ¶¶ 204–206).
For example, the Petition explains that “FIPA97 provides a common
communications protocol and language (FIPA ACL) between the agents of
Kiss, and also adds its administrative functionality and exemplary practices
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to the Kiss system.” Pet. 28. The Petition also explains that “[t]hese
techniques are used to implement the functionality described in Kiss,
including facilitating agent collaboration, agent registry, and inter-agent
messaging . . . as well adding functionality that is disclosed in FIPA97.” Id.
(citing Ex. 1005, 3:32–36, 3:67–4:1, 6:67–7:1) (emphasis added).
Petitioner’s proffered combination of FIPA97 and Kiss is amply
supported by Dr. Lieberman’s testimony. For instance, Dr. Lieberman
explains that:
in the combination of Kiss with FIPA97, the “interagent
abstract communications facilities” of Kiss, [Ex. 1005], 3:32-
36, would use the inter-agent communication language of
FIPA97 to, for example, “negotiate with each other, conduct
joint planning, and to collaborate in the execution of planned
tasks,” [Ex. 1005], 3:32-36. Additionally, the Agent Service
Layer and meta-agent of Kiss would be implemented using the
FIPA97 Agent Management System (“FIPA-AMS”) and the
functionality of the FIPA Directory Facilitator, described in
[Exhibit 1006]. Thus, the “capabilities, interests, and attributes
for the knowledge modules,” [Ex. 1005], 6:67-7:1, as stored in
the agent registry of Kiss, and the meta agent of Kiss, would be
implemented with the directory facilitator functionality of
FIPA97. Therefore, FIPA-AMS would be used to provide a
“scalable and modular” inter-agent management system and
agent registry for the distributed agents of Kiss. [Ex. 1005,
3:67-4:1]. Further, the combination of FIPA97 and Kiss would
be informed by and include the exemplary practices described
in the informative sections of FIPA97 (i.e, Parts 4-7).
Ex. 1050 ¶ 206. Dr. Lieberman provides annotated versions of several of
Kiss’s figures representing exemplary depictions of the combined
Kiss/FIPA97 system. Id. at ¶¶ 205–206 (presenting annotated Figures 4–6,
8, and 21 of Kiss).
In one example, Dr. Lieberman provides an annotated version of
Kiss’s Figure 8 showing how FIPA97’s communications protocol (FIPA
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ACL) and Directory Facilitator would be incorporated into Kiss in the
combined Kiss/FIPA97 system:

Ex. 1050 ¶¶ 205–206. In annotated Figure 8 above, Dr. Lieberman
illustrates how Kiss’s agents would use FIPA ACL to “negotiate with each
other, conduct joint planning, and . . . collaborate in the execution of planned
tasks.” Id. ¶ 206 (quoting Ex. 1005, 3:32–36). Annotated Figure 8 also
shows at a high level how Kiss’s Agent Service Layer and meta-agent (MA)
would include the functionality of FIPA97’s Directory Facilitator. Id.
In another example, Dr. Lieberman provides an annotated version of
Kiss’s Figure 21, shown below, illustrating how FIPA97’s Directory
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Facilitator (DF) would be incorporated into Kiss’s knowledge management
system:

Ex. 1050 ¶ 206. Petitioner’s annotated version of Kiss’s Figure 21, shown
above, depicts how FIPA97’s Directory Facilitator (DF) would be
incorporated into the user interface layer, meta-agent layer, and knowledge
agent layer of Kiss’s knowledge management system connected to a
distributed environment such as the Internet. See Ex. 1050 ¶¶ 204–206;
Ex. 1005, 10:55–12:28, 14:31–36, Figs. 4–6, 8, 21.
In view of Dr. Lieberman’s testimony, we find Patent Owner’s
arguments that the Petition says nothing about how to combine FIPA97’s
Directory Facilitator and Kiss’s meta-agent and offers “no articulation” of
how to add a Directory Facilitator to any of the Kiss layers to be contrary to
the evidence of record. See PO Resp. 94–95. Similarly, Patent Owner’s
arguments that the FIPA97 and Kiss protocols are “mutually exclusive” and
that FIPA97 “discouraged interoperability” between systems are unavailing
and not supported adequately by the record. See PO Sur-reply 51–54.
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Finally, Patent Owner argues Petitioner’s combination of references
“is emblematic of hindsight bias” because Dr. Lieberman “picks and chooses
elements” and “superimposes them into one figure in an attempt to ‘show’
the combination.” PO Resp. 98. In particular, Patent Owner argues that
“simply drawing in block diagrams with terminology from other references
into one cobbled diagram is insufficient as a matter of law without any
explanation of how such a combination could be achieved or, indeed, why.”
Id. at 98–99.
We note that “[a]ny judgment on obviousness is in a sense necessarily
a reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Here, Petitioner provides persuasive evidence that a person of
ordinary skill in the art at the time of the invention would have had reason to
use FIPA97’s communications protocol and inter-agent communication
language (FIPA ACL) between the agents of Kiss, adding FIPA97’s
administrative functionality and practices to the Kiss system. See, e.g., Pet.
27–31; Ex. 1050 ¶¶ 204–219. This is not evidence of hindsight bias. Patent
Owner does not identify, and we do not discern, any particular knowledge
used by Petitioner in its combination of FIPA97 and Kiss that was gleaned
from the ’560 patent’s disclosure and was not within the level of ordinary
skill in the art at the time of the invention.
For the reasons discussed, we find that Petitioner has articulated
sufficient reasoning with rational underpinning for why a person of ordinary
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skill in the art at the time of the invention would have combined the
teachings of Kiss and FIPA97 in the manner proffered by Petitioner.
2. Independent Claim 1
Claim 1 is directed to a software-based, flexible computer architecture
for communication and cooperation among distributed electronic agents, the
architecture contemplating a distributed computing system comprising
service-providing electronic agents and a distributed facilitator agent
including an agent registry and a facilitating engine, the service-providing
electronic agents and the distributed facilitator agent communicating using
an interagent communication language (ICL) including a layer of
conversational protocol. Ex. 1001, 29:57–30:23. Claim 1 also requires the
facilitating engine to be operable to interpret a service request as a base goal
for generating a goal satisfaction plan, where the goal satisfaction plan
involves using reasoning to determine sub-goal requests and to coordinate
and schedule efforts by the service-providing electronic agents for fulfilling
the sub-goal requests. Id. at 30:5–15.
In its proposed combination of Kiss with FIPA97, Petitioner relies on
Kiss to teach electronic agents and their general communication and
collaboration functions as recited in claim 1, FIPA97 to teach the recited
ICL, and a combination of Kiss and FIPA97 to teach the claimed distributed
facilitator agent. Pet. 32–53. Patent Owner argues that the proposed
combination of Kiss and FIPA97 does not teach the “distributed facilitator
agent functionally distributed across at least two computer processes” or the
“goal satisfaction plan” recited in the claim. PO Resp. 78–102, 111–118.
Patent Owner also asserts that FIPA97 does not teach the “inter-agent
language” (or Interagent Communication Language (ICL)) and related
limitations. Id. at 118–133. In the following discussion, we analyze the
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limitations of claim 1 in more detail, addressing Petitioner’s contentions and,
where applicable, Patent Owner’s responsive arguments.
a. Preamble
The preamble of claim 1 recites: “A software-based, flexible computer
architecture for communication and cooperation among distributed
electronic agents, the architecture contemplating a distributed computing
system.”16 Ex. 1001, 29:57–60. Petitioner contends that Kiss teaches a
“software-based, flexible computer architecture” because it discloses a
computerized knowledge management system in which interaction between
a user and knowledge resources is mediated by a collection of cooperative
intelligent agents. Pet. 32 (citing Ex. 1005, 2:43–49, 3:1–3, Fig. 1).
Petitioner further contends that Kiss’s agents are “distributed” in a
“hierarchical” architecture. Id. (citing Ex. 1005, Abstract, 2:50–55, 4:57–
59). Petitioner also contends that Kiss teaches the recited “communication
and cooperation among distributed electronic agents” in the form of
“cooperative intelligent agents [that] incorporate generalized automated
negotiation and distributed inference (i.e. problem-solving) processes,”
analyze “problem statements,” and reorganize them as “sets of tasks.” Id. at
33 (citing Ex. 1005, 2:50–55).
Patent Owner does not specifically dispute that Kiss teaches the
preamble of claim 1. See generally PO Resp. Based on the complete record
and for the reasons explained by Petitioner, we are persuaded that Petitioner
has demonstrated sufficiently that Kiss teaches the preamble of claim 1.

16 Because Petitioner has shown that Kiss teaches the recitations in the
preamble, we need not determine whether the preamble is limiting. See
Vivid Techs., 200 F.3d at 803.
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b. “plurality of service-providing electronic agents”
Petitioner contends that Kiss teaches “a plurality of service-providing
agents,” as recited in claim 1, because Kiss discloses a plurality of agents
responding to requests for service by providing information such as market
price and cost information. Pet. 33 (citing Ex. 1005, 12:21–14:30, Figs. 8–
20). Patent Owner does not specifically dispute that Kiss teaches this
limitation. See generally PO Resp. Based on the complete record and for
the reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that Kiss teaches a “plurality of service-providing
electronic agents,” as recited in claim 1.
c. “distributed facilitator agent”
Claim 1 recites “a distributed facilitator agent functionally distributed
across at least two computer processes.” Ex. 1001, 29:63–67. Petitioner
contends that Kiss and FIPA97 teach a “facilitator agent” that is
“functionally distributed across at least two computer processes.” Pet. 33–
36. Patent Owner disputes Petitioner’s contentions. PO Resp. 78–102. We
address both parts of this limitation below.
(i) “facilitator agent”
Petitioner contends that the agent service layer of Kiss combined with
Kiss’s meta-agent constitutes a “facilitator agent” because it is responsible
for matching requests from users and agents with descriptions of the
capabilities of other agents. Pet. 34 (citing Ex. 1005, 12:21–14:30, Figs. 8–
20). Petitioner argues that FIPA97 also discloses a Directory Facilitator,
which provides analogous functionality, so that in the combined system
FIPA97’s Directory Facilitator would be implemented in Kiss’s meta-agent.
Id. (citing Ex. 1006, 6–7; Ex. 1050 ¶ 233).
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Patent Owner argues that Kiss and FIPA97 either alone or in
combination do not disclose “the specialized functionality and operation” of
the claimed “facilitator agent.” PO Resp. 86. Patent Owner first argues that
Kiss’s meta-agent is not a facilitator. Id. Patent Owner argues that “meta-
agents are described in the ’560 Patent itself as part of the [Open Agent
Architecture] architecture and distinct from facilitator agents,” and the
facilitator agent and meta-agents are shown separately in Figure 4 of the
’560 patent. Id. at 86–87 (citing Ex. 1005, Fig. 4). Patent Owner argues that
meta-agents in the ’560 patent are “client agents as opposed to facilitating
agents.” Id. at 87 (citing Ex. 1001, 6:54–56 (“All agents that are not
facilitators are referred to herein generally as client agents . . . .”); id. at
6:60–62 (“Some typical categories of client agents would include . . . meta-
agents . . . .”)). Thus, Patent Owner argues, Kiss’s meta-agent is similar to
the meta-agent of the ’560 patent and does not perform the role of the
claimed facilitator. Id. at 88 (citing Ex. 2032 ¶ 117). Patent Owner asserts
that Kiss’s meta-agent is at best “a controller that routes queries through the
system and presents results, and it lacks the sophistication and intelligent
planning that the claimed facilitator performs.” Id. (citing Ex. 1001, 20:11–
12; Ex. 2032 ¶ 119).
Patent Owner further argues that Kiss does not disclose a meta-agent
capable of the three types of processing performed by the claimed facilitator
in the ’560 patent—delegation, optimization, and interpretation. Id. at 89
(citing Ex. 1001, 19:27–29). First, Patent Owner Patent Owner argues that
although Kiss’s meta-agent “breaks down queries into questions and passes
them to knowledge agents,” it “does not apply ‘selective application of
global and local constraint and advice parameters onto the specific sub-
goals.’” Id. (quoting Ex. 1001, 19:34–35). Second, Patent Owner argues
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that Kiss “contains no disclosure of optimization—‘result[ing] in a goal
whose interpretation will require as few exchanges as possible, between the
facilitator and the satisfying agents, and can exploit parallel efforts of the
satisfying agents.’” Id. (quoting Ex. 1001, 19:40–43). Third, Patent Owner
argues that Kiss’s meta-agent “does not use an intelligent method or its own
knowledge resources to interpret capabilities or use strategies or advice in
the coordination of requests to and assembly of results from satisfying
agents.” Id. at 90 (citing Ex. 1001, 19:49–52).
With regard to FIPA97’s Directory Facilitator, Patent Owner argues it
“is no more than a directory of agent capabilities.” Id. at 92. Patent Owner
argues that while FIPA97’s Directory Facilitator “may provide agent
registry-type functions within a facilitator, FIPA97 does not disclose any of
the robust facilitator functions described in the ’560 Patent and which are
missing from Kiss’s meta-agent.” Id. (citing Ex. 1001, Fig. 7; Ex. 2032
¶¶ 132–136).
In its Reply, Petitioner argues that Patent Owner “ignores the actual
Kiss/FIPA97 combination and instead attacks the references individually.”
Pet. Reply 27; see id. at 30. Responding to Patent Owner’s argument that
Kiss’s meta-agent is similar to the meta-agent of the ’560 patent and thus
cannot be the claimed facilitator agent, Petitioner argues “the combined
system of Kiss/FIPA97 discloses all the claimed features of a facilitator
agent, so what Kiss chose to name his facilitator is plainly immaterial.” Id.
at 27 (emphasis omitted).
Petitioner also argues Patent Owner’s “list of the various optional
features of the facilitator agent are simply not relevant to the ‘facilitator
agent’ as claimed—and in fact, the record evidence suggests a much broader
understanding of that term.” Id. (citing PO Resp. 84–93). Petitioner points
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out that Patent Owner’s expert, Dr. Medvidovic, defined a “facilitator agent”
as “a specialized server agent responsible that is for coordinating agent
communications and cooperative problem solving.” Id. at 28 (quoting
Ex. 1129, 79:7–9).
Petitioner further argues that the “delegation, optimization, and
interpretation” functionalities Patent Owner claims are missing from the
Kiss meta-agent are limited to a preferred embodiment in the ’560 patent,
and therefore are not relevant to an obviousness analysis. Id. (citing PO
Resp. 88). Petitioner contends that Dr. Medvidovic confirmed these were
functionalities of a preferred embodiment. See id. (citing Ex. 1129, 54:2–9).
In any event, Petitioner argues, the Kiss/FIPA97 combination teaches
delegation under the ordinary meaning of that term. Id. at 28–29 (citing
Ex. 1005, 3:25–27, 5:24–27, 12:21–14:30, Figs. 8–20). Petitioner takes
similar positions with respect to “optimization” and “interpretation.” See id.
at 29–30 (citing Ex. 1005, 7:8–11, 7:65–8:8, 9:17–23).
In its Sur-reply, Patent Owner argues it is not attacking the prior art
references individually, but rather it “addresses the disclosures within each
reference, matching what the Petition does.” PO Sur-reply 31. With respect
to Patent Owner’s argument that Kiss’s meta-agent is not a facilitator, Patent
Owner argues that “none of Patent Owner’s arguments rest on the fact that
the same words are or are not used in the asserted references and the
’560 Patent.” Id. at 31–32 (citing Pet. Reply 27). Patent Owner argues that
Dr. Lieberman relies on similar portions of the specification to describe his
interpretation of the “facilitator agent” as Patent Owner uses to show
facilitator agent functionality in the ’560 patent. Id. at 33.
We are persuaded that Petitioner has shown sufficiently that the
combination of Kiss and FIPA97 teaches a “facilitator agent.” Petitioner
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asserts that it is “[t]he agent service layer [of Kiss] combined with the meta-
agent of Kiss [that] constitutes ‘a facilitator agent’ because it is responsible
for matching requests, from users and agents, with descriptions of the
capabilities of other agents.” Pet. 34 (citing Ex. 1005, 12:21–14:30, Figs. 8–
20). Kiss also provides that its meta-agent layer “analyzes user queries or
problem formulations from the user interface layer, allocates tasks to the
knowledge agent layer, resolves conflicts arising from the knowledge agent
layer, and consolidates (including fusing and deconflicting) results provided
by the knowledge agent layer.” Ex. 1005, 3:25–29. Kiss’s meta-agent also
operates with an agent service layer to identify relevant capabilities of
service providing agents in the system. See id. at 3:36–47, 12:1–14:30.
Given Petitioner’s articulation that the combination of the agent
service layer and the meta-agent of Kiss constitutes a “facilitator agent,”
Patent Owner’s argument that Kiss’s meta-agent is not a facilitator is
unavailing because it fails to respond to Petitioner’s assertion that the recited
“facilitator agent” includes the combination of the Kiss agent service layer
and the Kiss meta-agent. See PO Resp. 86. Similarly, Patent Owner’s
argument that the Kiss meta-agent cannot be part of a “facilitator agent” in
the combined Kiss/FIPA97 system because the ’560 patent identifies a meta-
agent as a separate component from the facilitator agent is unavailing for at
least the same reason, i.e., that Patent Owner does not address the
functionality of Kiss’s meta-agent and agent service layer combined. See id.
at 87. Moreover, with respect to Petitioner’s showing how FIPA97’s
Director Facilitator would be implemented in Kiss in the combined
Kiss/FIPA97 system that uses FIPA ACL, we determined above that
Petitioner has presented sufficient rationale for combining the references in
the manner asserted. See § II.G.1.
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As for Patent Owner’s arguments that Kiss does not teach a facilitator
agent capable of performing delegation, optimization, and interpretation, we
disagree with Patent Owner’s arguments because they improperly attempt to
read exemplary characteristics from preferred embodiments of the
’560 patent into the claims. See PO Resp. 89–91. Indeed, as the ’560 patent
makes clear, “[a] further preferred embodiment of the present invention
incorporates facilitator handling of compound goals, preferably involving
three types of processing: delegation, optimization and interpretation.
Ex. 1001, 19:26–29.
Also helpful in understanding the nature of a “facilitator agent” is the
observation of Patent Owner’s expert, Dr. Medvidovic, in reference to
Figure 4 of the ’560 patent that “facilitator agent 402” is “a specialized
server agent that is responsible for coordinating agent communications and
cooperative problem-solving.” Ex. 2032 ¶ 32 (citing Ex. 1001, 6:46–48,
Fig. 4).17 Indeed, at his deposition, Dr. Medvidovic confirmed that this was
his understanding of a “facilitator agent.” There, Dr. Medvidovic testified,
“if you were asking me [to] define a facilitator agent, I might say it’s a
specialized server agent responsible for coordinating agent communications
and cooperative problem solving. That is a definition.” Ex. 1129, 79:15–19.
Based on this understanding of a facilitator agent, Petitioner’s
proposed combination of Kiss’s meta-agent and agent service layer is a
“facilitator agent” that is responsible for analyzing user queries or problem
formulations, allocating tasks to knowledge agents, resolving conflicts that

17 We also note for the record that neither party has proposed a construction
for the term “facilitator agent.”
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arise, and consolidating (including fusing and deconflicting) results. See
Ex. 1005, 12:21–14:30, Figs. 8–20.
(ii) “functionally distributed across at least two computer processes”
As discussed above in § II.C.2, we construe the term “computer
process” as “a process that runs or executes one or more computer
programs” for this Final Written Decision.
Petitioner contends that Kiss discloses a facilitator agent distributed
across at least two computer processes because Figure 21 of Kiss shows
meta-agents on multiple systems remotely located from each other and
provides that meta-agents can accept problem inputs from other meta-agents.
Pet. 34 (citing Ex. 1005, Fig. 21). Figure 21 of Kiss is reproduced below:

Figure 21 above shows Kiss’s meta-agents (MAs) on multiple systems
remote from each other.
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Petitioner contends that a person of ordinary skill in the art would
have understood that two meta-agents on separate systems operate together
as part of a “facilitator agent” to facilitate the cooperative satisfaction of
goals. Pet. 35 (citing Ex. 1005, 5:20–64; Ex. 1050 ¶ 235). Petitioner
contends “Kiss further discloses that a meta-agent ‘adaptively and
dynamically synthesizes problem-specific knowledge interfaces’ over
multiple distributed knowledge sources.” Id. (citing Ex. 1005, 2:61–67,
Fig. 1). Therefore, Petitioner concludes, the two meta-agents divided on
separate and remote systems operate cooperatively as a “distributed
facilitator agent functionally distributed across at least two computer
processes” to achieve the goals of the system. Id. at 35–36 (citing Ex. 1050
¶¶ 235–236).
Petitioner argues that FIPA97 likewise teaches that its Directory
Facilitator “can manage distributed agent[s] over multiple computer
processes.” Id. at 36 (citing Ex. 1006, 10, Fig. 2; Ex. 1050 ¶ 237).
According to Petitioner, a person of ordinary skill in the art would have
understood the agent platforms shown in Figure 2 to be separate computer
processes because each agent platform provides the physical infrastructure in
which agents can be deployed, and therefore represents a distinct program.
Id. (citing Ex. 1006, 10, Fig. 2; Ex. 1050 ¶¶ 238–239).
Patent Owner argues the combination of Kiss and FIPA97 does not
teach a facilitator agent “distributed across at least two computer processes.”
PO Resp. 100–102. Patent Owner asserts there is no support for Petitioner’s
“assumption” that distributed agents must be distributed across separate
computer processes. Id. at 101 (citing Ex. 2032 ¶ 160). Rather, Patent
Owner argues, a distributed facilitator could use a single computer process.
Id. (citing Ex. 2032 ¶ 161). Patent Owner also argues that Petitioner’s
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citation to Figure 2 of FIPA97 does not disclose any information about what
agents are involved. Id. at 101–102 (citing Ex. 2032 ¶ 41).
We are persuaded that Petitioner, with support from Dr. Lieberman,
has shown sufficiently that Kiss teaches or at least suggests that its meta-
agents on separate and remote systems, operating together as part of a
facilitator agent, are “functionally distributed across at least two computer
processes,” as recited in claim 1. As Petitioner points out, the ’560 patent
provides no detail as to what computer processes may be running. Pet.
Reply 36. Dr. Lieberman’s testimony supports Petitioner’s contention that a
person of ordinary skill in the art generally would have understood Kiss to
teach at least one computer process running on each separate host computer.
Pet. 34–36; Ex. 1050 ¶¶ 235–36; Pet. Reply 36. Indeed, Patent Owner itself
acknowledges that a person of ordinary skill in the art would have
recognized that meta-agents distributed on different systems are executing
on “separate processes.” PO Resp. 105.
As for Petitioner’s reliance on FIPA97, we are not persuaded that
Petitioner’s analysis of claim 1 explains in sufficient detail how or why
FIPA97’s Directory Facilitator that allegedly “can manage distributed
agent[s] over multiple computer processes” shows that the Directory
Facilitator is itself “distributed across at least two computer processes,” as
recited in the claim. See Pet. 36. Nevertheless, we find Petitioner’s reliance
on Kiss sufficient to teach or suggest a facilitator agent “functionally
distributed across at least two computer processes.”
In summary, based on the complete record and for the reasons
explained by Petitioner, we are persuaded that Petitioner has demonstrated
sufficiently that the combination of Kiss and FIPA97 teaches or suggests “a
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distributed facilitator agent functionally distributed across at least two
computer processes,” as recited in claim 1.
d. “bi-directional communications”
Claim 1 also requires the facilitator agent to be “capable of
bi-directional communications with the plurality of service-providing
electronic agents.” Ex. 1001, 29:65–67. For this limitation, Petitioner
points to Figure 10 of Kiss (not reproduced herein), which shows a meta-
agent receiving a question from a knowledge agent and then communicating
the question to a different knowledge agent. Pet. 36–37 (citing Ex. 1005,
Fig. 10).
Patent Owner does not specifically dispute that Kiss teaches this
limitation. See generally PO Resp. Based on the complete record and for
the reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that Kiss teaches “the facilitator agent capable of
bi-directional communications with the plurality of service-providing
electronic agents,” as recited in claim 1.
e. “agent registry”
Claim 1 requires the facilitator agent to include “an agent registry that
declares capabilities for each of the plurality of service-providing electronic
agents currently active within the distributed computing environment.”
Ex. 1001, 30:1–4. Petitioner asserts that Kiss teaches this limitation because
Kiss describes a “registry of agents,” which is constructed through
“registering a description of each active client agent’s functional capabilities
as corresponding registered functional capabilities.” Pet. 38 (citing
Ex. 1005, 3:37–45, 6:66–7:19, 8:41–48, 10:32–35, 12:18–20, Fig. 1).
Patent Owner does not specifically dispute that Kiss teaches this
limitation. See generally PO Resp. Based on the complete record and for
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the reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that Kiss teaches this “agent registry” limitation of
claim 1.
f. “facilitating engine” limitations
Claim 1 recites “a facilitating engine operable to interpret a service
request as a base goal [and] further operable for generating a goal
satisfaction plan associated with the base goal.” Ex. 1001, 30:5–8. The
claimed “goal satisfaction plan” involves “using reasoning to determine
sub-goal requests based on non-syntactic decomposition of the base goal and
using said reasoning to co-ordinate and schedule efforts by the
service-providing electronic agents for fulfilling the sub-goal requests in a
cooperative completion of the base goal.” Id. at 30:10–15. Petitioner
contends that Kiss teaches each of these limitations. Pet. 38–46.
(i) “facilitating engine”
Petitioner contends that the meta-agent in Kiss “includes a
‘facilitating engine’ because it is capable of analyzing user queries,
allocating tasks, resolving conflicts, and consolidating results” and applying
various inferencing methods to allocate tasks to knowledge agents in order
to solve problems. Pet. 39 (citing Ex. 1005, 3:25–30). Patent Owner does
not specifically dispute that Kiss teaches this limitation. See generally PO
Resp. Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that Kiss teaches a “facilitating engine,” as recited in claim 1.
(ii) “operable to interpret a service request as a base goal”
As set forth above in § II.C, we have construed “goal” as “a request
for service.” Petitioner contends that Kiss’s meta-agent (the claimed
“facilitating engine”) receives a query (a “service request”) via a user agent
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requesting “either a solution to a problem, such as predicting the outcome of
a course of treatment, or the retrieval of information, such as the side effects
of a medication.” Pet. 39–40 (citing Ex. 1005, 8:26–29). Petitioner asserts
that the meta-agent interprets the request as a “base goal” because “it is the
basic request initiated by the user that the system seeks to satisfy and which
inspired a number of additional, more particular requests in order to be
satisfied.” Id. at 40 (citing Ex. 1005, 12:21–14:20, Figs. 8–20). Patent
Owner does not specifically dispute that Kiss teaches this limitation. See
generally PO Resp. Based on the complete record and for the reasons
explained by Petitioner, we are persuaded that Petitioner has demonstrated
sufficiently that Kiss teaches a facilitating engine “operable to interpret a
service request as a base goal,” as recited in claim 1.
(iii) “goal satisfaction plan”
Petitioner asserts that Kiss teaches “generating a goal satisfaction
plan” because Kiss describes that the meta-agent “formulates a goal
statement for the problem-solving phase of the process,” then “formulates a
solution plan for the problem.” Pet. 41 (citing Ex. 1005, 8:32–34, 5:33–64,
12:29–64, Figs. 8–20). Petitioner contends that Figures 8–20 of Kiss
illustrate adding tasks to an agenda, i.e., constructing a plan, to satisfy the
user request (i.e., a “goal”) “what is the effect of increasing sales by 20%?”
Id. at 40 (citing Ex. 1005, 13:27–29, Figs. 8–20).
Patent Owner contends that Kiss does not teach the claimed “goal
satisfaction plan” because Kiss does not disclose “the use of any reasoning,
optimization, or taking into account any advice parameters or constraints.”
PO Resp. 115. Patent Owner also argues that Kiss “does not have the
capability of formulating an ‘optimal or near-optimal’ ‘goal satisfaction
plan’ utilizing reasoning as described in the ‘560 patent.” Id. at 117 (citing
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Ex. 2032 ¶ 212). These arguments are predicated on Patent Owner’s
proposed construction of “goal satisfaction plan” to mean “a plan for the
satisfaction of a complex goal expression in an optimal or near-optimal
manner that is consistent with any advice parameters or constraints.” See id.
at 32. As discussed above in § II.C.1, we disagree with Patent Owner that
the claim term “goal satisfaction plan” is limited as Patent Owner contends.
Thus, for the reasons explained above, we disagree with Patent Owner’s
argument that Kiss does not disclose the “goal satisfaction plan” recited in
claim 1.
Based on the complete record, we determine that Petitioner has shown
sufficiently that Kiss teaches “constructing a goal satisfaction plan,” as
recited in claim 1.
(iv) “sub-goal requests based on non-syntactic decomposition of
the base goal”
The “goal satisfaction plan” recited in claim 1 involves “using
reasoning to determine sub-goal requests based on non-syntactic
decomposition of the base goal.” Ex. 1001, 30:10–12. As set forth above in
§ II.C, we have construed “non-syntactic decomposition” as “generation of a
sub-request (sub-goal/sub-delegation) based on factors other than the syntax
of how the goal was received or made.” For this limitation, Petitioner cites
Kiss’s disclosure of a meta-agent responding to the user’s request of “what
is the effect of increasing sales by 20%?” by generating sub-requests based
on the registered capabilities of agents active in the system. Pet. 41 (citing
Ex. 1005, 12:54–56, 13:25–27, 13:37–39, 13:56–57, 14:3–5). Because the
tasks or sub-requests are formulated based on knowledge of the capabilities
of underlying knowledge systems, Petitioner asserts, they are not based on
the syntax of the request. Id. at 42 (citing Ex. 1005, 8:32–48). As an
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example, Petitioner points out that the sub-request asking for confirmation
that “the cost per unit at the specified number of units does not exceed the
market price plus an acceptable profit” does not relate to the syntax of the
base goal (“what is the effect of increasing sales by 20%?”). Id. (citing
Ex. 1005, 13:25–27).
Patent Owner does not specifically dispute that Kiss teaches this
limitation. See generally PO Resp. Based on the complete record and for
the reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that Kiss teaches this limitation.
(v) “co-ordinate and schedule efforts by the service-providing
agents”
The “goal satisfaction plan” in claim 1 also involves “using said
reasoning to co-ordinate and schedule efforts by the service-providing
electronic agents for fulfilling the sub-goal requests in a cooperative
completion of the base goal.” Ex. 1001, 30:12–15. For this limitation,
Petitioner refers to the example in Figures 8–20 of Kiss. Pet. 44–45. For
instance, Petitioner asserts that Kiss’s meta-agent coordinates and schedules
efforts by the service-providing agents when it pushes a task onto an agenda
to query a sales agent. Id. (citing Ex. 1005, 12:29–36, Fig. 9). Petitioner
also asserts that Kiss teaches “fulfilling the sub-goal requests in a
cooperative completion of the base goal” because Kiss’s meta agent asks the
agent registry to identify a knowledge agent that has registered a capability
to answer a question related to sales. Id. at 44–45 (citing Ex. 1005, 12:29–
36).
Patent Owner does not specifically dispute that Kiss teaches this
limitation. See generally PO Resp. Based on the complete record and for
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the reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that Kiss teaches this limitation.
(vi) “using reasoning”
In claim 1, both aspects of the goal satisfaction plan—determining
sub-goal requests and coordinating and scheduling efforts by agents—must
be accomplished “using reasoning.” Ex. 1001, 30:10–15. In addition to
citing the example in Figures 8–20 of Kiss, Petitioner contends that the
various inferencing schemes disclosed in Kiss to formulate dynamic solution
plans and to allocate tasks to agents constitute “reasoning” to determine and
fulfill sub-goal requests. Pet. 43–46 (citing Ex. 1005, 5:24–40, 7:20–41,
7:53–56, 7:65–8:4, 12:29–36).
Patent Owner contends that the “solution plan” of Kiss is not
constructed by “using reasoning” because Kiss’s inferencing schemes are
used only “[a]fter the solution plan is formulated . . . to perform the search
and execution phases.” PO Resp. 115 (citing Ex. 1005, 8:58–60). In
response, Petitioner persuasively argues that the Petition additionally relies
on several other ways in which Kiss utilizes reasoning to formulate a
solution plan “using various types of reasoning and allocating tasks to
different agents.” Pet. Reply 56 (citing Pet. 40; Ex. 1005, 5:33–64; Ex. 1050
¶¶ 266–267). For example, Kiss describes how the meta-agent can
“formulate parallel sub-plans and perform iterative and recursive
procedures.” Id. (quoting Ex. 1005, 5:37–39); see Pet. 40, 61; Ex. 1050
¶¶ 266–267.
Based on the complete record, we determine that Petitioner has shown
sufficiently that Kiss teaches “using reasoning to determine sub-goal
requests based on non-syntactic decomposition of the base goal and using
said reasoning to co-ordinate and schedule efforts by the service-providing
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electronic agents for fulfilling the sub-goal requests in a cooperative
completion of the base goal,” as recited in claim 1.
g. “interagent communication language” limitations
Claim 1 recites that “the plurality of service-providing electronic
agents and the distributed facilitator agent communicate using an interagent
Communication Language (ICL).” Ex. 1001, 30:16–19. The ICL includes
“a layer of conversational protocol defined by event types and parameter
lists associated with one or more of the events, wherein the parameter lists
further refine the one or more events.” Id. at 30:19–23. Petitioner asserts
that Kiss teaches communication among agents, and that communication in
the proposed combination of references occurs via the Agent
Communication Language of FIPA97 (FIPA ACL). Pet. 46–47 (citing
Ex. 1007, vii, ix, 51, Fig. 10). Specifically, Petitioner contends that FIPA
ACL employs multi-layer messaging for communication between distributed
agents. Id. (citing Ex. 1007, 51).
Patent Owner asserts that FIPA97 does not teach “refin[ing] . . .
events” as recited in claim 1. PO Resp. 121–130. Patent Owner does not
dispute that FIPA97 teaches the rest of the limitations relating to an
interagent communication language as recited in clam 1. See id. at 121–133.
As we explain below, Petitioner has demonstrated sufficiently that
FIPA97 teaches these limitations reciting elements of the claimed ICL.
(i) “layer of conversational protocol”
Petitioner asserts that FIPA97 teaches “a layer of conversational
protocol” recited in claim 1 because FIPA ACL “defines the semantics of
messages between agents as including a communicative act, followed by
various parameters and parameter expressions,” as shown in Figure 1 of
Part 2 of FIPA97 reproduced above in § II.D.2. Pet. 47 (emphasis added)
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(citing Ex. 1007, 12; Ex. 1050 ¶ 291). Petitioner also argues that FIPA97
“discloses a number of different performatives and rules governing FIPA
ACL messages and the meaning of the different parts” and, therefore,
discloses “a layer of conversational protocol.” Id. at 48 (citing Ex. 1007,
11–22; Ex. 1050 ¶¶ 292–295).
(ii) “events” and “event types”
As discussed above in § II.C, we construe “event” to mean “a message
or goal communicated between agents” and “event type” to mean “a type of
an event” for this Final Written Decision.
Petitioner maps the “event” of claim 1 to FIPA ACL’s “message” and
asserts that FIPA ACL’s “message type” teaches an “event type” recited in
claim 1. Pet. 48–49 (citing Ex. 1007, 3, 4, 11–13, 18). Petitioner argues that
FIPA ACL’s “message” is an “event” recited in claim 1 because the FIPA
ACL communicative acts “are performed by an agent sending a message to
another agent.” Id. at 48 (emphasis added) (citing Ex. 1007, 3, 4, 11).
Referencing Figure 1 of Part 2 of FIPA97 reproduced above,
Petitioner asserts that in FIPA ACL, “[t]he first element of the message is a
word which identifies the communicative act being communicated, which
defines the principal meaning of the message,” and “the message’s
communicative act type corresponds to that which in KQML is called the
performative.” Pet. 48 (emphasis added) (citing Ex. 1007, 12, 13).
Petitioner argues that FIPA97 further defines “message type” as
corresponding to the “communicative acts/performatives of the FIPA ACL.”
Id. at 49 (citing Ex. 1007, 18).
As discussed above, Petitioner asserts that FIPA97 teaches “a layer of
conversational protocol” because FIPA ACL “defines the semantics of
messages between agents as including a communicative act.” Pet. 47
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(emphasis added) (citing Ex. 1007, 2). Petitioner contends that FIPA97
teaches that the layer of conversational protocol in FIPA ACL is “defined by
event types,” as recited in claim 1, because in FIPA97, “[t]he message types
are a reference to the semantic acts defined in this specification.” Id. at 49
(emphases added) (citing Ex. 1007, 11).
(iii) “parameter list”
Claim 1 recites that “a layer of conversational protocol” is also
“defined by . . . parameter lists associated with one or more of the events.”
Petitioner asserts that in FIPA97, FIPA ACL messages may include multiple
different parameters (“parameter lists associated with one or more of the
events”) that can “help the message transport service to deliver the message
correctly” or “the receiver to interpret the meaning of the message,” or “to
respond co-operatively,” as shown in Figure 1 of Part 2 of FIPA97
(reproduced above). Pet. 50 (citing Ex. 1007, 12, 14, Fig. 1). Petitioner
contends that FIPA97 discloses additional parameters in Table 1. Id. (citing
Ex. 1007, 13–14).
(iv) “refining events”
Claim 1 recites that “the parameter lists further refine the one or more
events.” Petitioner asserts that this phrase should be construed to mean that
“a list of parameters associated with an event can refine the event by
affecting the meaning of the event.” Pet. 12. Petitioner discusses the
disclosures in the Specification and the prosecution history of the
’560 patent in support of its proposed construction. Id. at 12–15 (citing
Ex. 1001, 11:16–48; Ex. 1002, 13–14, 51, 55; Ex. 1020, 5, 6; Ex. 1050
¶¶ 111–118).
Although Patent Owner discusses constructions for several terms in
the Patent Owner Response, Patent Owner does not discuss Petitioner’s
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proposed construction for the claim term “refine . . . events” or propose its
own construction. See PO Resp. 29–52. Instead, Patent Owner argues that
FIPA97 does not teach parameters that “refine . . . events” under Petitioner’s
proposed construction. See id. at 121 (“the cited parameters in FIPA97 do
not, contrary to Petitioner’s assertion, affect the meaning of the message”),
124 (“this parameter does not affect the meaning of the message”), 125 (“In
contrast, the FIPA97 ‘receiver’ parameter does not affect the meaning of
the ‘inform’ communicative act.”). Based on the arguments and evidence
presented by Patent Owner, we understand Patent Owner not to dispute
Petitioner’s proposed construction for the term “the parameter lists further
refine the one or more events.”
Upon considering the complete record, we agree with Petitioner that
the claim term “refine . . . events” encompasses “affecting the meaning of
the events.” As discussed above, during prosecution, the limitation “wherein
the parameter lists further refine the one or more events” was added to
claim 1 of the parent ’115 patent in an amendment to distinguish the claim
from the combination of Nwana/KQML and Kiss cited by the Examiner.
See Ex. 1002, 13–14, 18, 28, 51; Pet. 13–15 (citing Ex. 1002, 13–14, 51).
Citing the disclosures of Nwana/KQML discussed by the Examiner,
Petitioner persuasively argues that the parameters of Nwana’s KQML “tell”
message (i.e., the claimed “event”) do not change the meaning of the
message, whereas the parameters of an event in the ’560 patent change the
meaning of the event by “refin[ing] the event.” Pet. 12–15 (citing Ex. 1002,
13–14, 51, 55; Ex. 1020, 5, 6). In support of its argument, Petitioner cites
the following passage from the Specification that distinguishes the
’560 patent’s ICL (i.e., the recited “interagent communication language”)
from KQML:
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For example, in KQML, a request to satisfy a query can employ
either of the performatives ask_all or ask_one. In ICL, on the
other hand, this type of request preferably is expressed by the
event type ev_post_solve, together with the
solution_limit(N) parameter--where N can be any positive
integer. (A request for all solutions is indicated by the
omission of the solution limit parameter.) [The request can also
be accompanied by other parameters, which combine to further
refine its semantics.] In KQML, then, this example forces one
to choose between two possible conversational options, neither
of which may be precisely what is desired. In either case, the
performative chosen is a single value that must capture the
entire conversational characterization of the communication.
Pet. 12–13 (quoting Ex. 1001, 11:38–53). Petitioner argues that a message
having the KQML performative “ask_all” always has the same meaning,
requesting all solutions to the request, just as the KQML performative
“ask_one” always requests one solution. Id. at 13. According to Petitioner,
in contrast, the meaning of the ’560 patent’s event “ev_post_solve” depends
on the value of its parameter “solution_limit(N)”—e.g., an agent may
request the identity of three agents capable of translating a document by
including “solution_limit(N)” in the message and setting the value of N to 3.
Id. Thus, Petitioner argues that the parameters of an event of the ’560 patent
affect the meaning of the event. Id. at 13–15.
We are persuaded by Petitioner’s argument and evidence that the
“parameterized approach” of the ’560 patent (Ex. 1001, 11:38–53) can refine
an event by changing the meaning of the event. As discussed above in
§ II.C, we construe “event” to mean “a message or goal communicated
between agents” and “goal” to mean “a request for service.” The
’560 patent describes that “[i]n one embodiment, a request for one of an
agent’s services normally arrives in the form of an event from the agent’s
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facilitator.” Id. at 12:61–63 (emphasis added). In a section titled “Refining
Service Requests,” the ’560 patent describes as follows:
In a preferred embodiment of the present invention, parameters
associated with a goal (or sub-goal) can draw on useful features
to refine the request’s meaning. For example, it is frequently
preferred to be able to specify whether or not solutions are to be
returned synchronously; this is done using the reply parameter,
which can take any of the values synchronous, asynchronous, or
none. As another example, when the goal is a non-compound
query of a data solvable, the cache parameter may preferably be
used to request local caching of the facts associated with that
solvable.
Id. at 16:5–15 (emphases added). Thus, the ’560 patent describes that in an
embodiment, parameters of a request for service, i.e., an event, can refine the
“meaning” of the request or event.
Nonetheless, we note that this passage and all of the disclosures of the
’560 patent cited by Petitioner describe exemplary embodiments. See id. at
11:42–45 (“In ICL . . . this type of request preferably is expressed by the
event type ev_post_solve, together with the solution_limit(N) parameter--
where N can be any positive integer.” (emphasis added)), 16:6–8 (“In a
preferred embodiment of the present invention, parameters associated with a
goal (or sub-goal) can draw on useful features to refine the request’s
meaning.” (emphases added)). Thus, the term “refine . . . events” recited in
claim 1 may encompass but is not necessarily limited to “affecting the
meaning of events.” See SuperGuide, 358 F.3d at 875 (“a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment”);
WesternGeco, 889 F.3d at 1323–24 (“It is well established that claims are not
limited to preferred embodiments, unless the specification clearly indicates
otherwise.”). Indeed, Petitioner’s proposed construction of the term “the
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parameter lists further refine the one or more events” expresses the meaning
of the term in a permissive fashion—“an event can refine the event by
affecting the meaning of the event.” Pet. 12 (emphasis added).
Based on the complete record, we determine that the term “the
parameter lists further refine the one or more events” encompasses
parameters “affecting the meaning of the events.”
Petitioner asserts that FIPA97 teaches “the parameter lists further
refine the one or more events” because several of the conversational layer
parameters disclosed in FIPA97 affect the meaning of the performative
included within the message, and therefore affect the meaning of the
message, or event. Pet. 51. According to Petitioner, FIPA97 discloses a
parameter “:receiver,” which “can alter the meaning [of] an event, such as
‘inform,’ to be ‘inform one’” or “inform a number’ of agents, depending on
the value of the parameter.” Id. (citing Ex. 1007, 13). Citing the testimony
of Dr. Lieberman, Petitioner asserts that naming a tuple “corresponds to the
action of multicasting the message” such that “semantics of this multicast” is
refined so that “the message is sent to each agent named in the tuple.” Id.
(citing Ex. 1007, 13; Ex. 1050 ¶ 314). Petitioner argues that “[t]his ‘tuple
naming’ functionality is analogous to the example provided in the
[’560 patent] of ‘solution_limit(N),’ in which ‘N’ modifies how many
solutions are requested, and is not found in the KQML Nwana reference that
was before the examiner.” Id. (citing Ex. 1001, 11:32–48; Ex. 1020;
Ex. 1050 ¶ 314). Petitioner also asserts that FIPA97 discloses two other
parameters—“:protocol” (when used with the “call for proposals”
performative) and “:conversation-id”—that affect the meaning of a message.
Id. at 52–53 (citing Ex. 1007, 13–14, 46–49; Ex. 1050 ¶¶ 316–321).
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Patent Owner asserts that FIPA97 does not teach parameters
“refin[ing] . . . events,” as recited in the claim, because the parameters of
FIPA97 cited by Petitioner do not affect the meaning of the message.
PO Resp. 121. In particular, Patent Owner contends that FIPA97’s
“:receiver” parameter of the FIPA97 “inform” message relied upon by
Petitioner is no different from KQML’s “:receiver” parameter for the KQML
“tell” message in that both modify the message but do not affect the meaning
of the message. Id. at 122 (citing Ex. 1007, 12; Ex. 1020, 5). Patent Owner
asserts that FIPA97’s “:receiver” parameter does not affect the meaning of
the FIPA97 “inform” message because “the result of this parameter is only
that the message is multicast; i.e., it is ‘sent to each agent named in the
tuple.’” Id. at 124. According to Patent Owner, “the content of the message
is unchanged; the only thing that changes is who (as in, recipient) receives
the message.” Id.
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The portion of FIPA97 cited by Petitioner is reproduced below:

Ex. 1007, 13. Pointing to this disclosure in FIPA97, Petitioner asserts that
the “receiver” parameter affects the meaning of the event by affecting
“whether the performative communicates the message to a single agent, a
selection of agents, or if [the message is] broadcast to every agent.”
Pet. Reply 62 (citing Ex. 1007, 13). According to Petitioner, “in FIPA97, an
event using ‘inform’ can mean three or more different things (i.e., inform
(1) one person, (2) a select group of people, (3) everybody) depending on the
value of just that parameter.” Id. at 63.
We agree with Petitioner’s argument and disagree with Patent
Owner’s argument. As shown above in the portion of FIPA97 relied on by
Petitioner, FIPA97 describes the “meaning” of the message affected by the
“:receiver” parameter (under the column heading “Meaning:”) as follows:
Note that the recipient may be a single agent name, or a tuple of
agent names. This corresponds to the action of multicasting the
message. Pragmatically, the semantics of this multicast is that
the message is sent to each agent named in the tuple, and that
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the sender intends each of them to be recipient of the CA
encoded in the message. For example, if an agent performs an
inform act with a tuple of three agents as receiver, it denotes
that the sender intends each of these agent to come to believe
the content of the message.
Ex. 1007, 13 (emphases added). We agree with Petitioner this passage
describes, under the column heading “Meaning,” the meaning of the
message modified or affected by the “:receiver” parameter.
Patent Owner argues that the FIPA97 “:receiver” parameter does not
change “the content of the message” and that “the only thing that changes is
who (as in, recipient) receives the message.” PO Resp. 124. Patent Owner
contends that, in contrast, the solution_limit(N) parameter of the ’560 patent
“modifies the actual request/communicative act/performative itself—i.e.,
[ev_post_solve], because it imposes a modification on the limits of
solutions presented in response to a request.” Id. at 125 (citing Ex. 2032
¶ 262).
We disagree with Patent Owner’s argument. First, we disagree with
Patent Owner that the FIPA97 “:receiver” parameter changes only “who (as
in, recipient) receives the message.” As described in FIPA97, the
“:receiver” parameter does not merely specify “who receives the message,”
e.g., agent A as opposed to agent B. Rather, as persuasively explained by
Petitioner, the “:receiver” parameter affects the qualitative aspect of the
message—i.e., whether to inform (1) one agent, (2) a select group of agents,
or (3) every known agent. See Pet. Reply 63.
In addition, Patent Owner does not explain adequately why the
solution_limit(N) parameter of the ’560 patent specifying the number of
agents to be queried “modifies the actual request/communicative
act/performative itself” but the “:receiver” parameter of FIPA97 specifying
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the number of agents to which to send a message does not. See PO Resp.
125. We agree with Petitioner that Patent Owner does not identify “a
practical distinction between limiting the number of agents to be queried
(solution_limit(N)), and querying a selection of agents (:receiver).”
Pet. Reply 63.
Next, Patent Owner contends that FIPA97 does not teach parameters
“refin[ing] . . . events,” as recited in the claim, because FIPA97’s “:receiver”
parameter is the same as or similar to the KQML “:receiver” parameter,
which does not modify the meaning of a message. PO Resp. 122 (citing
Ex. 1007, 12; Ex. 1020, 5). In support of its argument, Patent Owner cites a
page from Dr. Finin’s presentation slides at an unidentified meeting or class,
which compares “KQML tell and FIPA ACL inform.” Id. at 123 (citing
Ex. 2019, 15; Ex. 2068, 132:6–22). Patent Owner also cites the testimony
from Dr. Finin at his deposition that “the general idea of agent
communication language that was embodied in KQML is similar to the one
that is embodied in FIPA.” Id. (citing Ex. 2068, 32:10–17).
Patent Owner, however, does not discuss the disclosure of
KQML/Nwana (Ex. 1020) sufficiently (other than pointing to the similarity
of the format between the “:receiver” parameter of KQML and FIPA97) or
explain adequately why KQML’s “:receiver” parameter is similar to the
FIPA97 “:receiver” parameter. See PO Resp. 122–124. For example, Patent
Owner does not explain whether KQML’s “:receiver” parameter specifies,
similar to FIPA97, that “the recipient may be a single agent name, or a tuple
of agent names,” that “the message is sent to each agent named in the tuple,”
and that “the sender intends each of them to be recipient of the message.”
See id.; Ex. 1007, 13 (emphasis added). The general statements from
Dr. Finin (or a slide purportedly from his unidentified presentation) cited by
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Patent Owner (PO Resp. 123 (citing Ex. 2019, 15; Ex. 2068, 132:6–22,
32:10–17)) regarding the alleged similarity between KQML and FIPA97 at a
general level are simply insufficient to override the specific disclosures in
FIPA97 cited by Petitioner regarding the meaning of the message modified
or affected by the FIPA97 “:receiver” parameter.
Patent Owner also cites testimony from Petitioner’s declarant,
Dr. Lieberman, as “confirm[ing]” that the FIPA97 “:receiver” parameter
does not change “the content of the message” and that “the only thing that
changes is who (as in, recipient) receives the message.” PO Resp. 124
(citing Ex. 2069, 110:14–111:16, 168:5–12). The cited testimony of
Dr. Lieberman, however, discusses FIPA97’s messages and multicasting in
general (responding to general questions from Patent Owner’s counsel) and
does not discuss the specific disclosure in FIPA97 cited by Petitioner
regarding the meaning of the message modified or affected by the FIPA97
“:receiver” parameter. See Ex. 2069, 108:4–111:16, 168:5–12. Thus, we
disagree with Patent Owner that the testimony of Dr. Lieberman cited by
Patent Owner “confirm[s]” that the FIPA97 “:receiver” parameter does not
change “the content of the message” and that “the only thing that changes is
who (as in, recipient) receives the message.” See PO Resp. 124.
Next, Patent Owner cites 23 paragraphs from the Declaration of
Dr. Cohen (Ex. 2033) to argue that “FIPA97 does not contain any
conversational layer parameters that affect the semantics of FIPA97
messages.” PO Resp. 127 (citing Ex. 2033 ¶¶ 70–92). Patent Owner,
however, does not discuss Dr. Cohen’s testimony in the Patent Owner
Response or explain how Dr. Cohen’s testimony supports its contention. See
id. Thus, to the extent Patent Owner purports to rely on Dr. Cohen’s
testimony, this amounts to improper incorporation by reference in violation
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of 37 C.F.R. § 42.6(a)(3). Accordingly, we decline to consider the cited
paragraphs from the Cohen Declaration.18
Lastly, Patent Owner contends that the limitation “the parameter lists
further refine the one or more events” requires “the parameters of an event
(or message) can refine the message or goal itself” (PO Resp. 121) or
“change the nature of the communicative act itself” (id. at 126). Although it
is not entirely clear what Patent Owner argues,19 to the extent Patent Owner
argues “refin[ing]” a message or goal requires changing the message or goal
itself, we disagree with Patent Owner’s argument. As discussed above, in a
section titled “Refining Service Requests,” the ’560 patent describes
examples of “parameters” associated with a request or goal that “refine the
request’s meaning,” including the “reply parameter” that specifies whether
solutions are to be returned synchronously or asynchronously, and the
“cache parameter” that specifies local caching of facts related to the request.
See Ex. 1001, 16:5–15. These parameters do not appear to change the
request itself but, rather, specify how the request should be handled—e.g.,
synchronous response, local caching, etc. Thus, we disagree with Patent
Owner’s argument that the claim requires the recited “parameters” “refine
the message or goal itself” (PO Resp. 121) or “change the nature of the
communicative act itself” (id. at 126). Such an interpretation, which
“excludes a [disclosed] embodiment from the scope of the claim is rarely, if

18 Nonetheless, we note that Dr. Cohen’s testimony appears to dwell in
generalities, e.g., citing the works of logicians/philosophers Tarski and Frege
(see Ex. 2033 ¶¶ 84–85), and discusses tuples and multicasting in general
terms (see id. ¶¶ 88–92).
19 As discussed above, Patent Owner does not dispute Petitioner’s proposed
construction of the term “the parameter lists further refine the one or more
events.” See PO Resp. 29–52.
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ever, correct.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed.
Cir. 2013) (quoting Accent Pkg., Inc. v. Leggett & Platt, Inc., 707 F.3d 1318,
1326 (Fed. Cir. 2013)) (citing Phillips, 415 F.3d at 1312–13).
Based on the foregoing and upon considering the complete record, we
determine that Petitioner has shown sufficiently that FIPA97 teaches
“wherein the parameter lists further refine the one or more events,” as
recited in claim 1. Based on the complete record and for the reasons
explained by Petitioner, we determine that Petitioner has shown sufficiently
that FIPA97 teaches “a layer of conversational protocol defined by event
types and parameter lists associated with one or more of the events, wherein
the parameter lists further refine the one or more events,” as recited in
claim 1.
h. Conclusion for Claim 1
On the full record now before us, we are persuaded that Petitioner has
shown sufficiently that the combination of Kiss and FIPA97 teaches or
suggests all the limitations of claim 1 and that a person of ordinary skill in
the art would have combined the references in the manner asserted in the
Petition. We weigh this evidence of obviousness together with Patent
Owner’s evidence of objective indicia of nonobviousness, infra § II.G.14,
before reaching our final determination as to patentability of claim 1.
3. Dependent Claim 5
Claim 5 depends directly from claim 1 and further recites:
wherein the ICL enables agents to perform queries of other
agents, exchange information with other agents, and set triggers
within other agents, the ICL further defined by an ICL syntax
supporting compound goal expressions such that goals within a
single request provided according to the ICL syntax may be
coupled by a conjunctive operator, a disjunctive operator, a
conditional execution operator, and a parallel disjunctive
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operator that indicates that disjunctive goals are to be
performed by different agents.
Ex. 1001, 30:56–65.
Petitioner relies on a combination of Kiss and FIPA97 for teaching the
limitations of claim 5. Pet. 53–57. Patent Owner argues that FIPA97 does
not teach that the ICL enables agents “to set triggers within other agents” but
does not dispute that Kiss and FIPA97 together teach the rest of the
limitations of claim 5. PO Resp. 130–131.
Based on the complete record, as discussed below, we determine that
Petitioner has demonstrated sufficiently that the combination of Kiss and
FIPA97 teaches these limitations of claim 5 relating to the claimed ICL.
(i) “perform queries”
Petitioner asserts that Kiss teaches that its agents are enabled to
“perform queries of other agents,” as recited in claim 5, because Kiss
describes “abstract communication facilities” that allow agents to “negotiate
with each other, conduct joint planning, and to collaborate in the execution
of planned tasks.” Pet. 53 (quoting Ex. 1005, 3:34–36). Petitioner further
contends that Kiss’s agents can communicate through the agent service layer
that facilitates agent-to-agent interactions. Id. (citing Ex. 1005, 7:13).
Petitioner cites the example in Figures 8–20 of Kiss showing a meta agent
sending queries to and receiving queries from the sales agent and production
agent. Id. (citing Ex. 1005, 12:21–14:29, Figs. 8–20; Ex. 1050 ¶ 376).
Petitioner also cites Kiss’s disclosure of a meta-agent that “analyzes user
queries” and “allocates tasks” to knowledge agents. Id. (quoting Ex. 1005,
3:25–30) (citing Ex. 1050 ¶ 376).
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(ii) “exchange information”
Petitioner asserts that Figures 8–20 of Kiss also show that Kiss’s
agents are able to “exchange information with other agents,” as recited in
claim 5. Id. at 54 (citing Ex. 1005, 12:21–14:29, Figs. 8–20; Ex. 1050
¶ 378). In the combined system with FIPA97, Petitioner contends, such
communication would be performed using FIPA ACL. Id. (citing Ex. 1050
¶ 379).
(iii) “set triggers within other agents”
Petitioner asserts that a “trigger” is “a general mechanism for
requesting some action be taken when one or more conditions is met.”
Pet. 10–11 (citing Ex. 1001, 21:51–22:62; Ex. 1050 ¶¶ 101–102). Patent
Owner does not dispute Petitioner’s proposed meaning of “trigger” (see PO
Resp. 29–52). We adopt this undisputed interpretation of “trigger” for this
Final Written Decision because the construction is consistent with the
disclosure in the ’560 patent. See Ex. 1001, 21:52–54 (“triggers [provide] a
general mechanism for requesting some action be taken when a set of
conditions is met”).
Petitioner asserts that FIPA97 discloses the use of content parameters
to “set triggers within other agents,” as recited in claim 5, specifically citing
FIPA97’s performative “accept-proposal,” which “informs the receiver” that
the “receiving agent” (i.e., the claimed “other agent”) should “perform the
action” (i.e., the action that takes place in response) once a “given
precondition is, or becomes, true” (i.e., the occurrence or failure of a
precondition). Pet. 54 (citing Ex. 1007, 23). Therefore, Petitioner contends,
the “precondition” is sent to another agent, and then at some point in the
future, when the precondition is met, the receiving agent will trigger and
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take an action based on the information in the message. Id. (citing Ex. 1007,
23; Ex. 1050 ¶ 380).
Patent Owner contends as an initial matter that FIPA97 “lacks
disclosure of triggers altogether.” PO Resp. 130. Patent Owner contends
that the description of the “accept-proposal” performative in FIPA97
“offer[s] no support for a settable trigger that kicks in when a specified event
takes place” and “offers no explanation of what the preconditions or
resulting requested actions are.” Id. at 130–131 (citing Ex. 2032 ¶¶ 239,
241). Patent Owner asserts that the performative “contain[s] parameters
dictating what the associated action is” and “the performative is simply that
the proposal is to be accepted in accordance with certain parameters.” Id. at
(citing Ex. 2032 ¶ 240).
Patent Owner also cites 39 paragraphs from the Cohen Declaration in
support of its argument. Id. at 131 (citing Ex. 2033 ¶¶ 30–68). Patent
Owner, however, does not discuss Dr. Cohen’s testimony in the Patent
Owner Response or explain how Dr. Cohen’s testimony supports its
contention. See id. Thus, to the extent Patent Owner purports to rely on
Dr. Cohen’s testimony, this amounts to improper incorporation by reference
in violation of 37 C.F.R. § 42.6(a)(3). Accordingly, we decline to consider
the cited paragraphs from the Cohen Declaration.
Responding to Patent Owner’s argument that the Petition does not
explain what the preconditions or resulting requested actions are, Petitioner
asserts that the “accept-proposal” performative “informs the receiver that it
intends that (at some point in the future) the receiving agent will perform
the action, once the given precondition is, or becomes, true.” Pet. Reply 67
(quoting Ex. 1007, 23; Pet. 54). Petitioner further provides details of an
example in FIPA97 of the performative “accept-proposal” that “will take an
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action—in this example, streaming a multimedia channel (‘some action be
taken’)—when ‘the customer is ready’ (‘when one or more conditions is
met’).” Id. at 68 (citing Ex. 1007, 23).
Patent Owner does not dispute Petitioner’s responsive argument in the
Reply, but instead contends that Petitioner’s argument is presented “too
late.” PO Sur-reply 48. We disagree. Petitioner’s Reply responds directly
to Patent Owner’s argument by emphasizing details of FIPA97’s description
of the performative “accept-proposal,” which the Petition cites for teaching
“triggers.” Pet. Reply 67–68 (citing Ex. 1007, 23; Pet. 54).
Patent Owner also argues in its Response that nothing in the cited
portion of FIPA97 shows that one agent would be able to set a trigger within
another agent. PO Resp. 131. Petitioner again cites the detail of FIPA97’s
example of the “accept-proposal” performative in which one agent (i.e.,
agent i) uses “accept-proposal” to set a condition within another agent (i.e.,
agent j). Pet. Reply 69 (citing Ex. 1007, 23; Pet. 54). Patent Owner does
not respond to Petitioner’s argument on this point. See PO Sur-reply 48.
Based on the complete record, we determine that Petitioner has shown
sufficiently that FIPA97 teaches “set[ting] triggers within other agents,” as
recited in claim 5.
(iv) “compound goal expression”
As discussed above in § II.C, we construe “a compound goal
expression” as “a single goal expression that specifies multiple sub-goals to
be performed” for this Final Written Decision.
Petitioner contends that FIPA97’s FIPA ACL “allows the expression
of multiple sub-goals, . . . which can potentially include more than one type
of logical connector and/or more than one level of logical nesting (e.g., use
of parentheses), or the substantive equivalent.” Pet. 55 (citing Ex. 1050
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¶ 384). For example, Petitioner contends, FIPA97 “allows the construction
of s-expressions of arbitrary depth and complexity,” discloses complex “goal
expressions” that “express multiple sub-goals” and which may also include
“logical nesting” using parentheses, and discloses that a goal expression can
be composed of smaller expressions chained with operators or logical
connectives. Id. (citing Ex. 1007, 15–17, 40, 41, 69, 75, 78; Ex. 1050
¶¶ 385–392). Therefore, Petitioner asserts, FIPA ACL is “defined by an ICL
syntax supporting compound goal expressions,” as recited in claim 5. Id. at
56.
(v) “operators”
Petitioner contends that FIPA97 discloses operators for composing
base goals including a “conjunctive operator” and a “disjunctive operator.”
Pet. 56 (citing Ex. 1007, 73 (describing “Conjunction” and “Disjunction”
formulas); Ex. 1050 ¶¶ 395–397, 399–400). Petitioner points out that
FIPA97 explains that the performative “request-when” can be used as a
“conditional execution operator.” Id. (citing Ex. 1050 ¶ 402). Petitioner
also asserts that FIPA97 discloses a “parallel disjuncti[ve] operator” in the
form of an operator that is able to query multiple disjunct agents in a single
expression. Id. Petitioner asserts FIPA97’s disclosed content language
(SL2) supports grammars for “quantifying-in inside modal operators.” Id. at
56–57 (citing Ex. 1007, 78; Ex. 1050 ¶¶ 404–406).
4. Dependent Claims 6–9
Claim 6 depends from claim 5 and further requires the ICL to be
“computer platform independent.” Ex. 1001, 30:66–67. Petitioner contends
that FIPA97 teaches or suggests this limitation because it provides
specifications for a software language for “communication between
independently designed and developed software agents” that is designed to
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facilitate the “construction and management of an agent system composed of
different agents,” even when systems are “built by different developers.”
Pet. 58 (quoting Ex. 1007, vii, ix, 3).
Claim 7 depends from claim 6 and further requires the ICL to be
“independent of computer programming languages in which the plurality of
agents are programmed.” Ex. 1001, 31:1–3. Petitioner asserts that FIPA97
“does not comment on how an agent is constructed and focuses only on the
interaction between and the interfaces of the agents.” Pet. 58–59 (citing
Ex. 1007, viii; Ex. 1050 ¶ 412). Petitioner further asserts that “FIPA ACL
supports software integration at the agent-communication level and not the
agent level” to support emerging technologies, such a CORBA, DCOM, and
Java, and to provide “freedom to agent-programmers.” Id. at 59 (citing
Ex. 1008, 5). Thus, Petitioner asserts, “the programming language of the
underlying agent is not important, because all actions and communication
between agents are supported by the ACL, not the programming language.”
Id. (citing Ex. 1006, 10 n.2; Ex. 1050 ¶ 413).
Claim 8 depends from claim 7 and further recites “wherein the ICL
syntax supports explicit task completion constraints within goal
expressions.” Ex. 1001, 31:4–6. Claim 9 depends from claim 8 and further
recites “wherein possible types of task completion constraints includes use
of specific agent constraints and response time constraints.” Id. at 32:7–9.
Petitioner asserts that in Kiss’s “Real Time” inferencing method, the
user may specify “I am willing to wait ten minutes for a response,” at which
point the meta-agent may “deactivate” any knowledge agents who “do not
meet time delay.” Pet. 60 (citing Ex. 1005, 7:65–8:2). Petitioner argues that
these “constraints” effect how the inferencing process is carried out and can
result in “partial information from the incomplete knowledge agent,” and,
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therefore, are “task completion constraints,” as recited in claim 8, and
“response time constraints,” as recited in claim 9. Id. at 60–61 (quoting
Ex. 1005, 8:1–2) (citing Ex. 1050 ¶¶ 417, 425).
Petitioner also points to Kiss’s partitioned inferencing, used when the
problem domain easily can be divided into distinct subfields. Pet. 61 (citing
Ex. 1005, 7:53–58). The meta-agent has available subfield and query
division possibilities, and thus Petitioner asserts that the meta-agent could
divide the problem based on “specific agent constraints” such as subfields
and problem domain. Id. (citing Ex. 1005, 7:53–58; Ex. 1050 ¶ 424).
Petitioner also relies on FIPA97 for teaching the limitations of
claims 8 and 9. Petitioner asserts that FIPA97’s performative “request-
when” causes an agent to inform another agent that a certain action should
be performed as soon as a given precondition becomes true. Id. at 60 (citing
Ex. 1007, 40). According to Petitioner, this performative applies an
“explicit task completion constraint” (wait until alarm before completing the
action in the performative). Id. (citing Ex. 1050 ¶ 418).
Petitioner also contends that FIPA97 teaches “specific agent
constraints,” such as the “Quality of Service” parameter, which is “a type of
constraint on task completion that allows the user to specify which networks
can be used in a VPN connection, such as ‘Constant Bit Rate (CBR) traffic
for voice ATM network.’” Id. at 61–62 (citing Ex. 1012, 46). Therefore,
Petitioner asserts FIPA ACL supports constraints based on a specific agent’s
functional capabilities. Id. at 62 (citing Ex. 1050 ¶¶ 423–426).
Petitioner also argues that FIPA97 teaches “response time constraints”
in the form of “Response Time” as a negotiation metric between agents. Id.
(citing Ex. 1012, 30). In particular, Petitioner points to a “respond-by”
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parameter that “denotes a time interval or event(s) when a response to a
request is desired.” Id. (quoting Ex. 1012, 47) (citing Ex. 1050 ¶ 427).
Patent Owner does not specifically dispute that the combination of
Kiss and FIPA97 teaches or suggests these further limitations on the claimed
ICL. See generally PO Resp. Based on the complete record and for the
reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that the combination of Kiss and FIPA97 teaches
or suggests the limitations of claims 6–9.
5. Dependent Claims 10 and 11
Claim 10 depends directly from claim 8, and claim 11 depends
directly from claim 5. Ex. 1001, 31:10–15. Each of claims 10 and 11
further recites “wherein the ICL syntax supports explicit task completion
advisory suggestions within goal expressions.” Id. Petitioner relies on
FIPA97 for teaching this limitation. Pet. 62–63. Patent Owner argues that
FIPA97 does not teach a syntax supporting explicit task completion advisory
suggestions. PO Resp. 131–133.
The term “advisory suggestions” does not appear in the ’560 patent
except in claims 10 and 11. See generally Ex. 1001. Neither party proposes
a construction of the term,” but both parties refer to the following passage in
the written description of the ’560 patent:
Advice parameters preferably give constraints or guidance to
the facilitator in completing and interpreting the goal. For
example, a solution_limit parameter preferably allows the
requester to say how many solutions it is interested in; the
facilitator and/or service providers are free to use this
information in optimizing their efforts. Similarly, a time_limit
is preferably used to say how long the requester is willing to
wait for solutions to its request, and, in a multiple facilitator
system, a level_limit may preferably be used to say how remote
the facilitators may be that are consulted in the search for
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solutions. A priority parameter is preferably used to indicate
that a request is more urgent than previous requests that have
not yet been satisfied. Other preferred advice parameters
include but are not limited to parameters used to tell the
facilitator whether parallel satisfaction of the parts of a goal is
appropriate, how to combine and filter results arriving from
multiple solver agents, and whether the requester itself may be
considered a candidate solver of the sub-goals of a request.
Ex. 1001, 16:22–41 (emphasis added); see PO Resp. 132; Pet. Reply 70; see
also Pet. 62–63 (referring to the level_limit advice parameter in the
’560 patent).
In arguing that FIPA97 teaches “advisory suggestions,” Petitioner
cites FIPA97’s directory performative “search,” which is used to search
local or remote directories for relevant resources. Pet. 62 (citing Ex. 1006,
20). The “search” performative may contain “Constraints+”), such as
Directory Facilitator Depth (“df-depth”) and Required Number of Records
(“recs-req”). Id. (citing Ex. 1006, 21–22). Petitioner contends that
Directory Facilitator Depth is similar to the level_limit advice parameter
disclosed in the ’560 patent because both indicate how many directory
facilitators should be searched. Id. at 62–63 (citing Ex. 1006, 21–22).
Patent Owner argues that Petitioner improperly equates “advisory
suggestions” with “constraints” and points to certain “constraints” disclosed
in FIPA97. PO Resp. 131. Patent Owner contends it is clear from the
quoted passage above that the claim term “advisory suggestions” refers to
the “guidance” type of advice parameter described in the ’560 patent, as
distinct from “constraints.” Id. at 132. Patent Owner further contends that
the language of claims shows that “constraints” and “advisory suggestions”
have different meanings. Id. at 132–133 (citing CAE Screenplates Inc. v.
Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000)).
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Because Petitioner does not explain how FIPA97’s Directory Facilitator
Depth and Required Number of Records are “guidance” or “advisory
suggestions” rather than “constraints,” Patent Owner argues that Petitioner
has failed to show that FIPA97 teaches the recited claim limitation.
In its Reply, Petitioner argues that Patent Owner does not explain any
differences between “guidance” and “constraints” or explain why the
parameters that Petitioner identifies are “constraints” but not “guidance.”
Pet. Reply 69–70. Petitioner also contends that the quoted passage from the
’560 patent does not explain which parameters are “constraints” and which
are “guidance.” Id. at 70. Because Petitioner relies on a FIPA97 parameter
that is analogous to the level_limit parameter described in the ’560 patent,
and in connection with other limitations points to FIPA97 functionality that
allegedly is analogous to the solution_limit and time_limit parameters,
Petitioner contends FIPA97 teaches several examples of advice parameters
that provide “explicit task completion advisory suggestions.” Id.
We agree with Patent Owner that Petitioner has not met its burden of
showing that FIPA97 teaches the claimed “advisory suggestions.” Although
the ’560 patent could more clearly differentiate “constraints” from
“guidance” or “advisory suggestions,” the quoted passage from the
’560 patent first describes some parameters that are quantitative in nature
(i.e., solution_limit, time_limit, and level_limit) and then describes some
that are not (i.e., priority, whether parallel satisfaction is appropriate, how to
combine and filter results). See Ex. 1001, 6:22–41. In the context of the
quoted passage, solution_limit, time_limit, and level_limit, which require
numerical values, are more likely than the other parameters to be considered
“constraints” rather than “guidance.” See id. Petitioner asserts that FIPA97
teaches solution_limit, time_limit, and level_limit parameters, but Petitioner
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does not attempt to explain why these are disclosed examples of “advisory
suggestions” rather than “constraints.” See Pet. 62–63; Pet. Reply 69–70.
Under these circumstances, Petitioner has not met its burden to show that the
prior art teaches the “advisory suggestions” limitation. See Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the
petitioner has the burden from the onset to show with particularity why the
patent it challenges is unpatentable.” (emphasis added)) (citing 35 U.S.C.
§ 312(a)(3)); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1369 (Fed. Cir. 2016) (requiring that “the initial petition identify
‘with particularity’ the ‘evidence that supports the grounds for the challenge
to each claim.’” (emphasis added)).
Accordingly, based on the complete record, we determine Petitioner
does not demonstrated sufficiently that the combination of Kiss and FIPA97
teaches the limitations of claims 10 and 11.
6. Dependent Claims 12 and 13
Claim 12 depends from claim 5 and further recites “wherein each
autonomous service-providing electronic agent defines and publishes a set of
capability declarations or solvables, expressed in ICL, that describes services
provided by such electronic agent.” Ex. 1001, 31:16–20. Claim 13 depends
from claim 12 and further requires the solvables to “define an interface for
the electronic agent.” Id. at 31:21–23.
Petitioner asserts that the term “solvable” means “a declaration of
capabilities describing the services and agent provides.” Pet. 15 (citing
Ex. 1001, 12:19–31; Ex. 1050 ¶ 120). Patent Owner does not dispute
Petitioner’s proposed meaning of “solvable” (see PO Resp. 29–52). We
adopt this undisputed interpretation of “solvable” for this Final Written
Decision because the construction is consistent with the disclosure in the
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’560 patent. See Ex. 1001, 21:19–31 (“[E]very participating agent defines
and publishes a set of capability declarations, expressed in ICL, describing
the services that it provides. . . . [T]hese capability declarations are referred
[to] as solvables.”).
Petitioner asserts that Kiss discloses a published set of “capability
declarations or solvables” by “maintaining a registry of agents in the
system,” such as the agent registry. Pet. 63 (citing Ex. 1005, 3:38–39, 3:40–
43, 12:1–17; Ex. 1050 ¶ 440). Petitioner asserts that Kiss’s registry
“identifies each agent's capabilities and interests, and contains knowledge
about the relationships between them.” Id. (citing Ex. 1005, 3:40–43).
Petitioner further asserts that Kiss discloses that each agent is responsible for
and defining these “capability declarations or solvables.” Specifically,
Petitioner contends that each knowledge agent keeps summaries of the
domain features and methods of its associated knowledge modules (i.e.,
“defin[ing] capability declarations”). Id. at 64 (citing Ex. 1005, 6:46–48).
Further, Petitioner asserts that the set of capabilities for each module is
registered (i.e., “publishe[d]”) in the agent service layer by its associated
agent. Id. (citing Ex. 1005, 6:48–51). Moreover, Petitioner contends, each
agent in Kiss provides its capabilities to the agent services layer, and in the
combination of Kiss with FIPA97, the communications to provide those
capabilities would be expressed in FIPA ACL (i.e., “expressed in ICL”). Id.
at 64 (citing Ex. 1050 ¶ 442).
In the alternative, Petitioner contends, FIPA97 discloses a “Directory
Facilitator” (DF) that provides “yellow pages” services to other agents (i.e.,
“a set of capability declarations or solvables, . . . that describes services
provided by such electronic agent”). Pet. 64 (citing Ex. 1006, 6; Ex. 1050
¶ 443). Petitioner asserts that each agent within an agent domain registers
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with the DF using the “register” performative and the “agent-services”
parameters can include definitions such as “service-type,” “service-
ontology,” and “service-conditions.” Id. at 65 (citing Ex. 1006, 19). Thus,
Petitioner contends, each agent “defines and publishes a set of capability
declarations or solvables,” expressed in ICL. Id. at 65–66 (citing Ex. 1006,
6, 19; Ex. 1050 ¶¶ 444–445).
Petitioner also cites FIPA97 for teaching that a “solvable” may
“define an interface,” as recited in claim 13. Id. at 66. Petitioner contends,
for example, that the “service-ontology” and “service-conditions”
parameters define the language and syntax of communication between two
agents, which is an “interface” between two agents. Id. (citing Ex. 1006, 35;
Ex. 1050 ¶ 449–452).
Patent Owner does not specifically dispute that the combination of
Kiss and FIPA97 teaches or suggests these limitations of claims 12 and 13.
See generally PO Resp. Based on the complete record and for the reasons
explained by Petitioner, we are persuaded that Petitioner has demonstrated
sufficiently that the combination of Kiss and FIPA97 teaches or suggests the
limitations of claims 12 and 13.
7. Independent Claim 22
Like claim 1, independent claim 22 is directed to a software-based,
flexible computer architecture for communication and cooperation among
distributed electronic agents. Ex. 1001, 31:61–63. Claim 22 contains many
limitations that are the same as or similar to those in claim 1, and Petitioner
refers back to its analysis for claim 1 in addressing those limitations.
Pet. 68–71. For the reasons discussed above, Petitioner has shown
sufficiently that the combination of Kiss and FIPA97 teaches or suggests
those limitations.
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Claim 22 additionally requires “at least one service-requesting agent
capable of making a request directly to a service-providing agent as a peer to
peer communication for accomplishment of at least one of the sub-goals.”
Ex. 1001, 32:13–16. Petitioner contends that the ordinary meaning of “peer
to peer communication” is “a communication between agents without an
intermediary.” Pet. 71 (citing Ex. 1034, 359 (dictionary defining “peer-to-
peer communications” as “[i]nteraction between devices that operate on the
same communications level on a network based on a layered architecture”);
Ex. 1050 ¶ 531).
In the Patent Owner Preliminary Response, Patent Owner argued that
the claim term “peer to peer communication” should be construed to require
that “devices in the same level of a hierarchy can share information and
resources directly without relying on a dedicated central server.” Prelim.
Resp. 63 (citing, e.g., Ex. 2010, 2 (dictionary defining “peer to peer” as
“relating to, using, or being a network by which computers operated by
individuals can share information and resources directly without relying on a
dedicated central server”)).
In the Institution Decision, we determined it was unnecessary for us to
construe “peer to peer communication” explicitly because Petitioner had
shown sufficiently for purposes of that Decision that the prior art teaches the
limitation under either party’s definition. Inst. Dec. 58–59. We noted that
the dictionary definition provided by Petitioner appears to support Patent
Owner’s proposed construction rather than Petitioner’s construction and that
neither party construed the term based on its use in the claims, written
description, or prosecution history of the ’560 patent. Id. at 59. We
encouraged the parties to address the construction of the term “peer to peer
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communication” during the trial, but neither party did. Id.; see generally PO
Resp.; Pet. Reply.
The term “peer to peer communication” appears in the written
description of the ’560 patent only in the following sentence referring to
Figure 3: “The agents 320 may engage in interagent communication (also
called peer to peer communication[]).” Ex. 1001, 6:33–34. This statement
supports Petitioner’s construction of the term as “a communication between
agents without an intermediary” and does not suggest that communicating
peer agents be “in the same level of a hierarchy,” as Patent Owner contends.
See Pet. 71; Prelim. Resp. 63. With no other argument from the parties, and
notwithstanding the parties’ competing dictionary definitions, which are
extrinsic evidence, we adopt Petitioner’s construction, which is supported by
the intrinsic evidence of record (i.e., the written description of the
’560 patent).
Petitioner contends that Kiss teaches “at least one service-requesting
agent capable of making a request directly to a service-providing agent as a
peer to peer communication for accomplishment of at least one of the
sub-goals,” as recited in claim 22. Pet. 71–75. Kiss discloses that “[e]ach
agent in the system includes inter-agent abstract communications facilities
with the capability to negotiate with each other, conduct joint planning, and
to collaborate in the execution of planned tasks.” Ex. 1005, 3:33–36; see
Pet. 72. Petitioner cites Figure 17 of Kiss (not reproduced herein) as an
example showing peer to peer communication. Pet. 72–73 (citing Ex. 1050
¶¶ 532–533). In that figure, Petitioner argues, a meta-agent directly makes a
service request for information (corresponding to the claimed “sub-goal”) to
a knowledge agent, which request meets the claimed “peer to peer
communication.” Id. at 72–73 (citing Ex. 1005, Fig. 17); see Ex. 1001,
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14:11–13. Petitioner also points out that claims 22 and 25 together show
that a service-requesting agent making a request via peer to peer
communication to a service-providing agent may be a facilitator agent.
Pet. 73; see Ex. 1001, 32:13–15 (claim 22 reciting “at least one service-
requesting agent capable of making a request directly to a service-providing
agent as a peer to peer communication”); id. at 32:24–25 (claim 25 reciting
that “the agent operable to make said peer to peer service request” in
claim 22 “is said facilitator agent”). Thus, Petitioner argues, in Kiss’s
Figure 17, the meta-agent (which is part of the claimed “facilitator agent”) is
the claimed “service-requesting agent” and the knowledge agent is the
claimed “service-providing agent.” See Pet. 73 (citing Ex. 1005, Fig. 17;
Ex. 1050 ¶ 533).
Alternatively, Petitioner relies on FIPA97 for teaching “peer to peer
communication.” Pet. 74 (citing Ex. 1007, 24; Ex. 1050 ¶ 534).
Specifically, Petitioner cites an example from FIPA97 of communication
between two client agents—agent i (a job-shop scheduler) and agent j (a
robot). Id. (citing Ex. 1007, 24). In the example, agent i is the claimed
“service-requesting agent” that requests agent j (the claimed “service-
providing agent”) to move a box. Id. (citing Ex. 1007, 24). FIPA97
explains that “if the agent is able to support direct communication then it is
free to use a direct address when registering.” Ex. 1006, 13. Thus,
Petitioner argues the communication occurs “directly” and is “peer to peer.”
Pet. 74 (citing Ex. 1050 ¶ 535).
Patent Owner does not specifically dispute that Kiss or FIPA97
teaches this limitation of claim 22. See generally PO Resp. Based on the
complete record and for the reasons explained by Petitioner, we are
persuaded that Petitioner has demonstrated sufficiently that Kiss and FIPA97
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teach “at least one service-requesting agent capable of making a request
directly to a service-providing agent as a peer to peer communication for
accomplishment of at least one of the sub-goals,” as recited in claim 22.
Patent Owner does not present any arguments regarding claim 22
other than those made respect to claim 1 and addressed above. Therefore, on
the full record now before us, and for the reasons discussed previously, we
are persuaded that Petitioner has shown sufficiently that the combination of
Kiss and FIPA97 teaches or suggests all the limitations of claim 22.
8. Dependent Claims 23–25
Claim 23 depends directly from independent claim 22 and further
requires the peer to peer communication to be “in a language other than an
interagent communication language.” Ex. 1001, 32:17–19. Petitioner
asserts that FIPA97 teaches or suggests this limitation. Pet. 75–76. With the
support of Dr. Lieberman, Petitioner asserts that FIPA97 describes a
wrapper agents that “allows other client agents in the system to ‘invoke
commands on the underlying software system, translating the commands
contained in ACL messages into operations on the underlying software
system.’” Id. at 75 (quoting Ex. 1008, 9) (citing Ex. 1006 (Fig. 2); Ex. 1050
¶ 538). Thus, Petitioner contends that the wrapper agents sends a peer to
peer communication using the language of the underlying system, which is
“a language other than an interagent communication language.” Id. at 76
(citing Ex. 1050 ¶ 539).
Claim 24 depends from independent claim 22 and further recites “the
peer to peer communication is bi-directional.” Ex. 1001, 32:20–22.
Petitioner asserts that the peer to peer communication between agent i and
agent j in FIPA97 discussed above with respect to claim 22 is bi-directional
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because agent j responds to agent i that it agrees to the request. Pet. 76–77
(citing Ex. 1007, 24; Ex. 1050 ¶¶ 542–543).
Claim 25 depends from independent claim 22 and further recites that
“the agent operable to make said peer to peer service request is said
facilitator agent.” Ex. 1001, 32:23–25. Referring back to its analysis of
claim 1’s “facilitator agent,” Petitioner asserts that the service-requesting
agent in Kiss’s Figure 17 example of peer to peer communication, discussed
above with respect to claim 22, is a meta-agent, which also is a facilitator
agent. Pet. 77 (citing Ex. 1050 ¶ 545).
Patent Owner does not specifically dispute that Kiss and FIPA97
teach or suggest these limitations of claims 23–25. See generally PO Resp.
Based on the complete record and for the reasons explained by Petitioner,
we are persuaded that Petitioner has demonstrated sufficiently that the
combination of Kiss and FIPA97 teaches or suggests the limitations of
claims 23–25.
9. Independent Claim 50
Independent claim 50 is directed to a “computer-implemented method
for providing cooperative task completion within a distributed computing
environment” and contains many limitations that are the same as or similar
to those in independent claim 1. For those limitations, Petitioner refers back
to its analysis for claim 1. Pet. 77–78, 81–82. For the reasons discussed
above, Petitioner has shown sufficiently that the combination of Kiss and
FIPA97 teaches or suggests those limitations.
Claim 50 additionally recites “providing a plurality of synchronized
agent registries each declaring capabilities of service-providing electronic
agents currently active within the distributed computing environment, the
plurality of synchronized agent registries each resident within a separate
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computer process.” Petitioner contends that FIPA97’s Directory Facilitators
(DFs) meet this limitation in the combined Kiss and FIPA97 system because
they are distributed over multiple agent domains and platforms. Id. at 78–79
(citing Ex. 1006, 10, Fig. 2). Petitioner asserts that each DF contains a
directory that “lists all Agents in the DF domain and is used to advertise
agent existence, services, capabilities, protocols, etc.” (i.e., “declaring
capabilities of service-providing electronic agents,” as recited in claim 50),
and that agents A–E are “currently active within the distributed computing
environment,” as recited in claim 50. Id. at 79–80 (citing Ex. 1006, 10, 18;
Ex. 1050 ¶ 694).
Petitioner also contends that FIPA97’s registries are “synchronized”
because the timing of search operations is coordinated, and “the same
information can be retrieved from any point in the system.” Id. at 80 (citing
Ex. 1006, 18 (“Agent domains can be structured where a DF registers with
other DFs. Agents can query information on agents in other domains
through its DF escalating the query to a level at which it can be resolved.
The querying agent can interact either directly with DFs . . . or indirectly
[such that] the response to the query is passed through the hierarchy to the
agent which originated the query.”)). Moreover, Petitioner contends that it
would have been obvious to implement DFs in a synchronized fashion to
obtain benefits such as “local agent management, increased responsiveness,
preventing duplicated work, fault-tolerance, version control, etc.” Id. (citing
Ex. 1050 ¶ 695).
Claim 50 also requires “each” of “the plurality of synchronized agent
registries” to be “resident within a separate computer process.” Under the
Petition subheading “Remote Agent Registry,” Petitioner contends that a
person of ordinary skill in the art “would understand the Agent Platforms
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shown in Figure 2 to be separate computer processes because each agent
platform ‘provides the physical infrastructure in which agents can be
deployed,’ and therefore represents a distinct program, or a part of a
program.” Id. at 80–81 (citing Ex. 1006; Ex. 1050 ¶ 697). Petitioner’s
argument depends on its proposed construction of “computer process,”
which we have not adopted. See supra § II.C.2. Even under Petitioner’s
proposed construction, however, the Petition fails to address the language of
claim 50, which recites “the plurality of agent registries each resident within
a separate computer process.” Ex. 1001, 34:57–59 (emphasis added); see
Pet. 80–81. Without providing a detailed explanation tying its argument to
the claim language, Petitioner has not met its burden of showing how the
prior art teaches the recited limitation. See Harmonic, 815 F.3d at 1363 (“In
an IPR, the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” (emphasis added)
(citing 35 U.S.C. § 312(a)(3))); Intelligent Bio-Systems, 821 F.3d at 1369
(requiring that “the initial petition identify ‘with particularity’ the ‘evidence
that supports the grounds for the challenge to each claim.’” (emphasis
added)).
For at least this reason, based on the complete record, we determine
Petitioner has not shown sufficiently that the combination of Kiss and
FIPA97 teaches all the limitations of claim 50.
10. Dependent Claim 51
Claim 51 depends directly from claim 50. Petitioner’s arguments and
evidence with respect to this claim only address the additionally recited
limitation of claim 51 and, therefore, do not remedy the deficiencies in
Petitioner’s analysis of claim 50. Therefore, for the same reasons discussed
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above with respect to claim 50, Petitioner has not shown sufficiently that the
combination of Kiss and FIPA97 teaches all the limitations of claim 51.
11. Independent Claim 52
Independent claim 52 is directed to a “computer implemented process
for providing coordinated task completion within a distributed computing
environment,” and its limitations are the same as or similar to those in
independent claims 1 and 22. Ex. 1001, 35:16–39. Petitioner refers back to
portions of its analysis for claims 1 and 22. Pet. 82–84.
Patent Owner does not present any arguments regarding claim 52
other than those made respect to claim 1 and addressed above. Therefore, on
the full record now before us, and for the reasons discussed previously, we
are persuaded that Petitioner has shown sufficiently that the combination of
Kiss and FIPA97 teaches or suggests all the limitations of claim 52.
12. Independent Claim 53
Independent claim 53 is directed to a “computer-implemented process
for providing coordinated task completion within a distributed computing
environment,” and its limitations are the same as or similar to those in
independent claims 1, 22, and 50. Ex. 1001, 35:16–39. Petitioner refers
back to portions of its analysis for claims 1, 22, and 50. Pet. 84–85.
Critically, claim 53 recites “providing a plurality of synchronized
agent registries each declaring a set of functional capabilities for one or
more of the autonomous service-providing electronic, each of the agent
registries being resident within a separate computer process,” which is
substantially similar to the limitation in independent claim 50 discussed
above in § II.G.9. For the same reasons discussed with respect to claim 50,
Petitioner has not shown sufficiently that FIPA97 teaches “each of the agent
registries being resident within a separate computer process.”
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Accordingly, based on the complete record, we determine Petitioner
has not shown sufficiently that the combination of Kiss and FIPA97 teaches
all the limitations of claim 53.
13. Dependent Claims 54 and 55
Claims 54 and 55 depend directly from claim 53. Petitioner’s
arguments and evidence with respect to these claims only address the
additionally recited limitations of claims 54 and 55 and, therefore, do not
remedy the deficiencies in Petitioner’s analysis of claim 53, which refers
back to its analysis of claim 50. Therefore, for the same reasons discussed
above with respect to claim 50, Petitioner has not shown sufficiently that the
combination of Kiss and FIPA97 teaches all the limitations of claims 54 and
55.
14. Objective Indicia of Nonobviousness
In determining whether the challenged claims would have been
obvious as Petitioner alleges, we must also weigh secondary considerations
of nonobviousness, such as commercial success, long-felt but unmet need,
failure of others, and unexpected results. KSR, 550 U.S. at 406. A nexus is
required between the merits of the claimed invention and any objective
evidence of nonobviousness if that evidence is to be given substantial weight
in reaching a conclusion on obviousness. Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1539 (Fed. Cir. 1983). Evidence of secondary
considerations is only significant if there is a nexus with respect to the
claimed invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–
12 (Fed. Cir. 2006).
Nexus is a legally and factually sufficient connection between the
objective evidence and the claimed invention, such that the objective
evidence should be considered in the determination of nonobviousness. See
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Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). For instance, commercial success is relevant if it flows
from the merits of the claimed invention. Sjolund v. Musland, 847 F.2d
1573, 1582 (Fed. Cir. 1988). The burden of showing nexus is on the patent
owner. In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996). Objective
evidence of nonobviousness also must be commensurate in scope with the
claims that the evidence is offered to support. In re Kulling, 897 F.2d 1147,
1149 (Fed. Cir. 1990).
Patent Owner contends that objective indicia of nonobviousness
confirm the nonobviousness of the ’560 patent. PO Resp. 140–63. Patent
Owner argues that industry praise for a software application known as
“Siri,” “which was first made available for download to iPhone users on
Apple, Inc.’s App Store on February 4, 2010,” bears a nexus to the claims of
the ’560 patent. Id. at 142, 163. Patent Owner argues that the “personal
context awareness and service delegation ‘main technical components’ of
the Siri application are made possible by the claims of the ’560 Patent.” Id.
at 154.
Patent Owner asserts that the ’560 patent “was based on SRI
International’s development of version 2 of the Open Agent Architecture
(‘OAA’).” Id. at 153 (citing Ex. 2032, App’x A; Ex. 1001, 23:35–36). For
support, Patent Owner relies on Exhibit 2054, an SRI web page, which
states, “SRI developed OAA® software, which is designed with intelligent
‘agents’ that track human interactions and work processes to streamline
electronic and computer interchange.” Id. at 153–54 (quoting Ex. 2054).
Patent Owner further asserts that “[a]fter version 2 of OAA was developed,
SRI International spun out Siri, Inc. as an SRI venture, where the Siri
application was created based on an OAA groundwork.” Id. at 154 (citing
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Ex. 2054 (“OAA laid the groundwork for the DARPA-funded CALO
project, from which Siri, the first virtual personal assistant, was born. Siri
was spun out into an SRI venture that Apple acquired from SRI.”)). Apple
Inc. apparently acquired Siri, Inc. in April 2010, approximately two months
after the Siri application’s initial release.20 See id. at 9, 142, 154.
Patent Owner argues that its “evidence of industry praise . . . satisfies
the nexus requirement, as it shows praise for the Siri application’s
integration of personal context awareness into a service-delegating virtual
personal assistant.” Id. at 154; see id. at 143–54. Patent Owner also argues
that “industry journalists recognized that the Siri application filled an unmet
need for a true virtual personal assistant.” Id. at 159; see id. at 159–63.
To establish a nexus between claim 1 of the ’560 patent and the Siri
application, Patent Owner provides the chart below. Id. at 155–57. Patent
Owner relies, in significant part, on the opinion of its declarant,
Dr. Medvidovic, to establish a nexus between the Siri application and the
claims of the ’560 patent. See Ex. 2032 ¶¶ 282–290.

20 We note for the record that the effective filing date for the ’560 patent is
Jan. 5, 1999, approximately ten years prior to the Siri application’s initial
release.
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PO Resp. 155–157.
Patent Owner argues that “the Siri application’s integration of
personal context awareness is made possible because of the claimed inter-
agent language limitations.” PO Resp. 157 (citing Ex. 2032 ¶ 288). Patent
Owner explains that “[b]y having a layer of conversational protocol that has
parameter lists, the [’560 patent] describes how agents can then use the
parameters in the parameter lists to provide feedback or advice to agents
who directly, or indirectly through the facilitating agent, receive the service
request.” Id. (citing Ex. 1001, 16:15–25). For example, Patent Owner
explains that a “requesting agent can utilize such a parameter to provide
context on a user’s preference to the facilitator agent and/or the tasking
agents.” Id. (citing Ex. 2032 ¶ 290). Patent Owner argues that “[t]his same
functionality of being able to account for individual preferences, for
example, was described by Siri, Inc. as representing personal context
awareness.” Id. at 158 (citing Ex. 2040, 2).
Patent Owner also argues that:
the Siri application’s service delegation corresponds to the
claimed dynamic interpretation limitations. Siri, Inc. described
the service delegation feature of the Siri application as
including “an assistant [that] can reason about what specific set
of resources or services would best be combined to help you
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accomplish a particular task.” This is precisely what is claimed
in the dynamic interpretation limitations, e.g., “generating a
goal satisfaction plan associated with the base goal . . . using
reasoning . . . to coordinate and schedule efforts by the service-
providing electronic agents for fulfilling the sub-goal requests
in a cooperative completion of the base goal.”
Id. (citing Ex. 2032 ¶ 287).
Petitioner argues that Patent Owner’s “secondary considerations
position rests primarily on an unsubstantiated, conclusory opinion that
certain aspects of the [’560 patent] are embodied in the Apple product
‘Siri.’” Pet. Reply 76. Petitioner argues that as “Dr. Medvidovic conceded,
the evidence he relied on is ‘circumstantial,’ or a ‘suggestion.’” Id. (citing
Ex. 1129, 147:12–15). Petitioner argues that Dr. Medvidovic “never
reviewed the Siri source code, and indeed never even asked to review that
source code.” Id. (citing Ex. 1129, 146:20–147:6, 147:22–148:9). Petitioner
argues,
[t]he failure to review the code is fatal, because [Dr.
Medvidovic] further testified that an “agent”—an element in
every claim—is a “piece of functionality that is capable of
performing certain tasks that is embodied in at least for a
software engineer a clearly identifiable body of code,” and that
to distinguish an “agent” from any other software he “would
have to look inside the code.”
Id. (quoting Ex. 1129, 9:14–11:8).
Petitioner faults Patent Owner for “not seek[ing] that code through a
motion for additional discovery or other means, [or] seek[ing] any other
objective evidence (such as specifications) to support its assertions.” Id. at
77. Petitioner also faults Patent Owner for not seeking the testimony of
Mr. Adam Cheyer, one of the named co-inventor’s on the ’560 patent and a
co-founder of Siri, Inc. Id.; see PO Resp. 142. During the oral hearing in
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this proceeding, counsel for Patent Owner was asked about this potential
source of evidence:
12 JUDGE TROCK: Counsel, this is Judge Trock
13 again.
14 Do you have any evidence from Mr. Cheyer
15 that this Siri version that you're discussing right
16 now incorporated the claim limitations of the '115
17 patent?
18 MS. ABDULLAH: Your Honor, we do not have
19 any direct evidence from Mr. Cheyer. And the reason
20 is because he was never deposed in this
21 proceeding and he is also not a consultant or
22 anybody that's working with IPA at the moment. I
23 know --
24 JUDGE TROCK: Wasn't he deposed -- sorry.
25 Wasn't he deposed in the Google proceeding?
26 MS. ABDULLAH: He was, your Honor. And that
1 was pursuant to a subpoena that we had to get
2 permission to serve from the Board because he
3 refused to simply cooperate with us voluntarily.
4 JUDGE TROCK: Was there a reason why you
5 didn't approach the Board in this case for a
6 subpoena?
7 MS. ABDULLAH: Your Honor, because we don't
8 believe that his testimony is as probative as the
9 expert testimony that we presented drawing the
10 direct connection as well as the actual industry
11 praise and long-felt need evidence that we --
12 JUDGE TROCK: But wouldn't he be a witness
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13 with personal knowledge of whether or not that
14 original Siri version incorporated the claim
15 limitations of the '115 patent?
16 MS. ABDULLAH: Your Honor, respectfully, I
17 believe that that was not -- that would not be a
18 question of personal knowledge but rather of expert
19 testimony. And also, your Honor, I would note that
20 I don't believe that we would have the requisite
21 showing under the Garmin factors that he would be
22 able to testify to those aspects.
23 JUDGE TROCK: But he is the inventor, right?
24 You've told us that.
25 MS. ABDULLAH: Yes, your Honor, he is the
26 inventor.
1 JUDGE TROCK: All right. So he might be a
2 person -- a witness with personal knowledge; isn't
3 that right?
4 MS. ABDULLAH: Absolutely. And were this a
5 district court case, you know, I'm sure we would
6 have pursued his deposition. I'm sure Microsoft
7 would have as well. But given the high burden for
8 us to obtain additional discovery, your Honor, we
9 determined that the probative value of his testimony
10 was not such that it would meet the Garmin factors
11 here.
12 JUDGE TROCK: But you did pursue that in the
13 Google case though?
14 MS. ABDULLAH: Your Honor, the Google case
15 was a different issue. The question there had to do
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16 with authorship of a prior art reference that
17 Mr. Cheyer was an author of. And it had to do with
18 whether that could be considered the work of another
19 versus the inventor. So inventorship was front and
20 center in the Google proceedings where it is not
21 here. Here this is a 103 analysis for which, you
22 know, obviously I can't pretend to say what the
23 Board would have done. But I think the evidence
24 that we have, that we have been able to present
25 demonstrates that link better than Mr. Cheyer's
26 testimony would be able to.
Tr. 114:12–116:26.
Petitioner also points to evidence that potentially undermines a nexus
between the challenged claims of the ’560 patent and the Siri application.
For example, Petitioner argues that “Adam Cheyer testified that ‘Siri’ did
not implement the agent registry functionality described in the [’115 and
’560 patents].” Pet. Reply 77–78 (citing Ex. 2034, 46:12–47:5).
Petitioner also argues that Patent Owner’s “evidence credits the
CALO project with being the progenitor of the ideas that led to Siri—not
any version of OAA.” Id. at 78 (citing Ex. 2042, 1 (“Siri traces its origins to
a military-funded artificial-intelligence project called CALO”); Ex. 2044, 1;
Ex. 2047, 2; Ex. 2054, 1; Ex. 2001, 2). “Nor is there any evidence in the
record,” Petitioner argues, “that OAA was ultimately utilized in SRI’s
CALO project other than that the original OAA (i.e., the version first created
in 1994 prior to the ’560 Patent work) laid ‘groundwork’ for what would
ultimately become CALO.” Id. (citing Ex. 2054). Petitioner argues that
“substantial evidence shows that a later agent system named ‘SPARK’ (SRI
Procedural Agent Realization Kit) was used as the basis of CALO,” but that
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Patent Owner “ignores this intervening SPARK system and makes no
attempt to show it practices the claims, nor does it meaningfully address the
CALO project.” Id. (citing Ex. 1136 § 7).
Petitioner argues that Patent Owner “failed to provide evidence ‘that
the industry praised a claimed invention or a product that embodies the
patent claims.’” Id. at 78–79 (quoting Apple Inc. v. Samsung Elecs. Co., 839
F.3d 1034, 1053 (Fed. Cir. 2016)) (emphasis omitted). In particular,
Petitioner argues, Patent Owner “failed to ‘establish that the evidence relied
upon traces its basis to a novel element in the claim and not to something in
the prior art.’” Id. at 79 (quoting BioMarin Pharm. Inc. v. Genzyme
Therapeutic Prods. LP, IPR2013-00537, Paper 79 at 22 (PTAB Feb. 23,
2015)) (emphasis omitted).
“Furthermore,” Petitioner argues, Patent Owner “has provided no
showing that the Siri App ‘embodies the claimed features and is
co-extensive with them,’ and accordingly can gain no presumption from any
Siri success.” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d
1056, 1072 (Fed. Cir. 2018)) (emphasis omitted). “Even assuming portions
of Siri embodied the claims,” Petitioner argues, “the record is undisputed
that Siri provides significant functionality well beyond anything covered by
the claims—voice recognition, for example.” Id. at 79–80.
Petitioner further argues “the table provided by [Patent Owner]
merely lists unrelated claim language and ‘examples’ of ‘personal context
awareness’ with no further analysis.” Id. at 80. “For example,” Petitioner
argues, Patent Owner “provides no explanation about how the alleged
‘Personal Context Awareness’ feature in Siri practices ‘a layer of
conversational protocol.’” Id. (emphasis omitted). Moreover, Petitioner
argues, “despite claiming that ‘the Siri application’s integration of personal
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context awareness is made possible because of the claimed inter-agent
language limitations,’ [Patent Owner] provides no evidence.” Id. at 81.
Rather, Petitioner continues, Patent Owner “cites only to a single paragraph
of Dr. Medvidovic’s declaration, which is itself bare ipse dixit and further
undermined by his failure to examine the source code or any other
descriptive technical materials for Siri.” Id. (citing Ex. 2032 ¶ 288).
Petitioner argues that Patent Owner’s evidence that Siri embodies the
ICL limitations of claim 1 “is no better.” Id. at 81–82 (citing PO Resp. 158).
Petitioner argues Patent Owner:
does not discuss the actual limitations of claim 1 nor explain
how giving different answers depending on individual
preferences embodies the claims. For example, [Patent Owner]
does not even attempt to articulate how Siri has a
conversational layer, or event types, or how those event types
are refined by parameters. Nor does [Patent Owner] address
how Siri embodies the claimed agent registry limitation,
particularly when the testimony of the inventor Mr. Cheyer
indicates that it does not.
Id. at 82 (citing Ex. 2034, 46:12–47:5).
Petitioner also argues that Dr. Medvidovic’s testimony should be
given no weight. Id. Petitioner argues that:
Dr. Medvidovic admitted that he would be unable to determine
whether a piece of software was an “agent” without examining
the source code for that software, and further admitted that he
had not reviewed the Siri source code nor ever asked to review
such source code. Yet, Dr. Medvidovic opines at length that
Siri must embody the claims of the [’560 patent] because, for
example, “personal context awareness and service delegations
are made possible by the functionality claimed in the
independent claims of the [’560 patent]”—an opinion without
any evidentiary support. Indeed, by Dr. Medvidovic’s own
admission, he lacks the necessary personal knowledge to opine
on the architecture of Siri.
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Id. at 82–83 (quoting Ex. 2032 ¶ 286) (citing Ex. 1129, 11:9–16).
We agree with Petitioner that Patent Owner does not provide
persuasive evidence that the Siri application is reasonably commensurate
with the scope of the challenged claims. Patent Owner’s cited evidence
attempting to tie the Siri application to the limitations of claim 1 relies
substantially on the opinion testimony of Dr. Medvidovic (Ex. 2032) and a
web.archive.org Internet page (Ex. 2040) Patent Owner identifies as “Siri,
Inc., Technology – ‘About Siri – Your Virtual Personal Assistant.’” See PO
Resp. 155–157 (citing Ex. 2032 ¶¶ 282–286, 288; Ex. 2040, 1–2), 174.
We note at the outset that Dr. Medvidovic’s opinion does not rely on
an examination of the Siri application’s source code. During his deposition,
Dr. Medvidovic testified as follows:
[Q] Let me ask you, have you ever reviewed the Siri source
code?
[A] I have not.
[Q] So you don't know the details of how Siri is
implemented?
[A] Not beyond what I'm stating in the declaration as my
sources of information that I'm drawing on.
Ex. 1129, 146:10–17. This is significant because Dr. Medvidovic testified at
his deposition that an “agent”—an element in every claim—is a “piece of
functionality that is capable of performing certain tasks that is embodied in
at least for a software engineer a clearly identifiable body of code,” and that
“if there is no accompanying specification language, then we would have to
look inside the code [to determine] what kinds of facilities the agent
provides.” See id. at 9:13–11:8. Instead, Dr. Medvidovic testified, the
evidence he relied upon to form his opinion is “circumstantial,” or a
“suggestion.” Id. at 147:7–148:9.
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In Section XII.B of his declaration, “Nexus of Industry Praise to the
Independent Claims of the ’560 Patent,” Dr. Medvidovic cites to Exhibit
2040 as support for his understanding of how the Siri application works. See
e.g., Ex. 2032 ¶¶ 281–282, 284, 292, 295.
Exhibit 2040 describes “Siri” as:
the first mainstream consumer application of a Virtual Personal
Assistant. Siri is an intelligent software agent designed to have
a back-and-forth conversational interaction with you as it helps
you get tasks done. The three main technical components
behind Siri’s differentiation correspond to the essential qualities
of an assistant: a conversational interface, personal context
awareness and service delegation.
Ex. 2040, 1.
In his declaration, Dr. Medvidovic discusses the “personal context
awareness” and “service delegation” aspects of Siri in some detail. See, e.g.,
Ex. 2032 ¶¶ 284–286. Dr. Medvidovic, however, only mentions Siri’s
“conversational interface” in passing, even though Exhibit 2040 describes
Siri as an intelligent software agent “designed to have a back-and-forth
conversational interaction with you as it helps you get tasks done,” and lists
Siri’s “conversational interface” as the first of Siri’s “three main technical
components.” See Ex. 2032 ¶ 281; Ex. 2040, 1.
In his declaration, Dr. Medvidovic attempts to link the Siri application
and the limitations of the independent claims of the ’560 patent.
Dr. Medvidovic does this by first separating the limitations of the
independent claims of the ’560 patent into two categories, an “Inter-agent
Communication Layer” (ICL) and “Service Request Planning and
Execution.” See Ex. 2032 ¶ 287. Dr. Medvidovic then states that “[i]t is my
opinion that the Siri application’s integration of personal context awareness
is made possible because of the claimed ICL limitations above.” Id. ¶ 288.
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Dr. Medvidovic explains that “within the conversational protocol layer of
the ICL, there are further claimed ‘parameter lists’ that may ‘further refine
the one or more events.’” Id. ¶ 289. Dr. Medvidovic concludes that “[t]he
claimed parameter lists are what allows the Siri application to provide
‘different answers’ depending on the context, as they are able to refine the
meaning of a service request.” Id. ¶ 292. Dr. Medvidovic, however,
provides no citation or further support for this conclusion, nor does he point
to any evidence to show that the Siri application utilizes the claimed
parameter lists. See id.
In his declaration, Dr. Medvidovic also states that “[i]t is further my
opinion that the Siri application’s integration of service delegation is made
possible because of the claimed service request planning and execution
claim limitations.” Id. ¶ 293. Dr. Medvidovic attempts to support this
opinion by comparing the language of claim of the ’560 patent to language
used in Exhibit 2040 to describe the service delegation feature of the Siri
application. Id. ¶ 295. The claim language he quotes, however, does not
appear in claim 1 (or any claim) of the ’560 patent. See id. (erroneously
asserting that claim 1 recites “a suitable delegation of sub-goal requests to
best complete the requested service request by using reasoning”). Thus,
Dr. Medvidovic’s testimony on this point is unpersuasive with respect to the
’560 patent.
Petitioner also points out, and we agree, that there is evidence of
record that credits the CALO project with being the progenitor of the ideas
that led to Siri. See, e.g., Ex. 2042, 1 (“Siri traces its origins to a military-
funded artificial-intelligence project called CALO”); see also Ex. 2044, 1;
Ex. 2047, 2; Ex. 2054, 1; Ex. 2001, 2. Opus Research explains that “Siri is
set apart because it applies the depth of knowledge its founders and software
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specialists have built at SRI and elsewhere in creating a ‘cognitive assistant
that learns and organizes’ (CALO).” Ex. 2044, 1. Petitioner points out that
there is also evidence of record that indicates a later agent system named
“SPARK” was used as the basis of CALO. See Pet. Reply 78 (citing
Ex. 1136 § 7). The SPARK-based Personal Assistant is described as
follows:
SPARK provides general-purpose agent technology for a range
of domains that require reactive task execution. To date, the
driving application for SPARK has been the development of an
intelligent personal assistant for a high-level knowledge
worker. This assistant, called CALO, will be able to perform
routine tasks on behalf of its user (e.g., arrange meetings,
complete online forms, file email), as well as undertake open-
ended processes (e.g., purchasing a computer online), and
anticipate future needs of its user.
Ex. 1136 § 7. This evidence, however, does not appear to have been
considered or addressed by Dr. Medvidovic. See Ex. 2032 ¶¶ 271–295.
We are mindful that objective evidence of nonobviousness need only
be “reasonably commensurate with the scope of the claims.” Rambus Inc. v.
Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013). We also bear in mind that
“[w]hen the thing that is commercially successful is not coextensive with the
patented invention—for example, if the patented invention is only a
component of a commercially successful machine or process”—the patentee
must show prima facie a legally sufficient relationship between that which is
patented and that which is sold. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d
1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392).
Here, Patent Owner relies on industry praise for the Siri application
and evidence of an unmet need to establish a nexus between the Siri
application and the claimed invention. However, we are concerned that
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Patent Owner and its declarant, Dr. Medvidovic, pay little attention to one of
the “three main technical components behind Siri’s differentiation,” the
“conversational interface,” when evaluating the proffered industry praise.
See Ex. 2040, 1.
Petitioner argues, and we agree, that “[e]ven assuming portions of Siri
embodied the claims, the record is undisputed that Siri provides significant
functionality well beyond anything covered by the claims—voice
recognition, for example.” Pet. Reply 79–80. The impression made by
Siri’s conversational interface on reviewers is notable. For example, MIT
Technology Review explains that with Siri, “[u]sers can type or speak
commands in casual sentences, and the software deciphers their intent from
the context.” Ex. 2042, 1. A reviewer in Opus Research reports: “I’ve had
[Siri] for a couple of days and here are my initial reactions. My overall
experience has been quite positive. The quality of voice recognition
(powered by the same ‘engine’ that supports Dragon Dictation and Dragon
Search on the iPhone) is quite good.” Ex. 2044, 1. Fast Company.Com
reports, “Siri, which launches today as a free iPhone app, is a virtual
personal assistant that amazingly resembles . . . an actual personal assistant.
It understands plain English commands, which can be spoken or typed (e.g.
‘Get me tickets to that Matt Damon movie’).” Ex. 2045, 2.
Further, The Chronicle of Higher Education explains that Siri “takes a
multi-step search process and turns it into one, simple, voice-driven
request.” Ex. 2046, 2. A USA Today reviewer reported that “[t]here were
occasional mistakes in speech recognition, but the overall accuracy [of Siri]
was impressive, at least when I spoke slowly and clearly in a quiet
environment.” Ex. 2047, 2. Spatial Computing Strategy & Research reports
that, with Siri, “You ask it to do stuff like ‘find me a pizza place near me’ or
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‘tell me the weather in Chicago this weekend,’ [w]ith your voice or by
typing commands.” Ex. 2048, 2. Search Engine Land explains that Siri is
“intended to enable you to do more with your voice and your phone in fewer
clicks or moves.” Ex. 1050, 1. It further explains that “one can speak to Siri
in a more natural way. Rather than speaking like a robot and saying ‘Open
Table’ to minimize error, you can say something more elaborate and
‘conversational’ such as, ‘I’d like a reservation tonight around 7:30 at Le
Cheval.’” Id. at 2.
Each of these reported examples indicate that the reviews Patent
Owner relies upon to demonstrate industry praise for the Siri application
considered Siri’s conversational interface to be a significant part of its
functionality. Unfortunately, Patent Owner and Dr. Medvidovic give Siri’s
conversational functionality little consideration when evaluating the reasons
for the “industry praise” used to try and establish a nexus between the Siri
application and the claimed invention. See, e.g., Ex. 2032 ¶ 276. Even if the
Siri application incorporated some of the functionality of the claimed
invention, the evidence of record relied on by Patent Owner shows that the
Siri application, and its attendant “industry praise,” is not coextensive with
the patented invention. Patent Owner does not argue that the Siri
application’s “conversational interface” is claimed by the ’560 patent.
For these reasons, we are not persuaded that Patent Owner’s evidence
of industry praise for the Siri application, and evidence of an unresolved
need, establishes a sufficient nexus between the Siri application and the
challenged claims of the ’560 patent. If anything, the evidence of record
establishes only a weak or vague connection between the Siri application
and the claimed invention. Accordingly, we determine that Patent Owner’s
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secondary considerations evidence does not weigh in favor of
nonbviousness.
15. Conclusion
Having considered the Graham factors, including the scope and
content of the prior art, the differences between the prior art and the
challenged claims, and the evidence of secondary considerations, we
determine that Petitioner has shown by a preponderance of the evidence that
claims 1, 5–9, 12, 13, 22–25, and 52 of the ’560 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of Kiss and
FIPA97, but has not shown by a preponderance of the evidence that
claims 10, 11, 50, 51, and 53–55 are unpatentable as obvious over the
combination of Kiss and FIPA97.
H. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude Exhibits 1127, 1137, 1141,
1145, 2034, and a portion of Exhibit 1129. PO Mot. 1–11. We address each
of these exhibits below.
1. Exhibit 1129
Exhibit 1129 is the deposition transcript of Patent Owner’s expert Dr.
Medvidovic, taken on May 19, 2020. Patent Owner seeks to exclude
Petitioner’s reliance “on portions of Dr. Medvidovic’s deposition testimony
that should be excluded because the question on which the testimony is
based is vague, ambiguous, confusing, lacks foundation and calls for a legal
conclusion. And any testimony elicited from this improper question is
irrelevant, prejudicial, and misleading.” Id. at 8.
In particular, Patent Owner seeks to exclude lines 53:19–54:21 of
Exhibit 1129, which read as follows:
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Q: If that's true, then it's your opinion these three things, these
three types of processing are required to teach '115's facilitator,
correct?
MS. ABDULLAH: Objection.
BY THE WITNESS:
A: I think that the authors of the patent, the inventors were very
careful to specify that this is is an embodiment. It's a preferred
embodiment. There are other embodiments that they discuss.
For this particular embodiment that deals with compound goals,
delegation, optimization and interpretation are preferably
involved. So this is the preferred embodiment. This is a legal
thing, not a technical thing. What a preferred embodiment is,
that's something that appears in patents, pretty much every
patent I've ever read, software patent, anyway. It is something
that has a particular meaning. So if you want to handle
compound goals, you need to have three types of processing
preferably, delegation, optimization and interpretation. So it is
my opinion that anybody who tries or, sorry, anybody who is
claiming, purporting to be solving the same kinds of problems
needs to show an embodiment that matches those three.
Ex. 1129, 53:19–54:21.
Patent Owner argues that Petitioner “attempts to use this improper
testimony to support its incorrect conclusion that ‘delegation, optimization,
and interpretation’ are ‘functionalities [] related to a preferred embodiment,
so they are not relevant to the claims.’” PO Mot. 9–10 (citing Ex. 1001,
19:26–29; Ex. 1129, 54:2–9; Pet. Reply 28). Patent Owner argues that
Petitioner’s “question was vague, ambiguous, confusing, lacked foundation
and called for a legal conclusion.” Id. at 10. Patent Owner also argues “the
testimony is irrelevant, prejudicial, and misleading.” Id.
Petitioner opposes the motion, arguing that the testimony is
admissible and that Petitioner’s counsel “failed to object to this question
with sufficient specificity at the appropriate time.” Pet. Opp. to Mot. 13
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(citing PTAB Consolidated Trial Practice Guide, 128 (Nov. 2019) (“An
objection must be stated concisely in a non-argumentative and non-
suggestive manner . . . .”)). Petitioner points out that Patent Owner’s
counsel “only said ‘Objection’ but failed to indicate what type of
objection—i.e., form, relevance, etc.” Id. Petitioner argues that for the first
time, Patent Owner “now attempts to assert multiple grounds for exclusion
which were not previously raised—objections which it has waived.” Id.
“Furthermore,” Petitioner argues, Patent Owner “does not explain how the
question is “vague, ambiguous, and confusing,” and that “summarily saying
it is without more is insufficient to challenge admissibility.” Id. (citing
37 C.F.R. § 42.20 (c); Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
IPR2017-01798, Paper 32 at 103 (PTAB Jan. 31, 2019)).
Petitioner also points out that:
the party proffering a witness for cross-examination has the
opportunity to conduct redirect examination of the witness
immediately following the cross-examination to cure any
perceived deficiency or to provide a more complete answer.
Here, IPA did not avail themselves of this opportunity.
Id. at 14 (citing 37 CFR § 42.53(c)(2); CBS Interactive Inc. v. Helferich
Patent Licensing, LLC, IPR2013-00033, Paper 101 (Oct. 7, 2013); Garmin
Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 50 (July 18,
2013); Ex. 1129, 164:15–16 (MS. ABDULLAH: IPA does not have any
redirect.)).
In its Reply, Patent Owner argues “[t]he vague, ambiguous,
confusing, lack of foundation, and legal conclusion nature of questions
asked by Microsoft’s counsel in Exhibit 1129 is clear both on its face and by
Dr. Medvidovic’s deposition response,” and that “[Patent Owner’s] counsel
properly and timely objected.” PO Mot. Reply 5.
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We are not persuaded by Patent Owner’s arguments that
Dr. Medvidovic’s testimony should be excluded from evidence in this
proceeding. Although Patent Owner’s counsel did state the word
“Objection” in response to Petitioner’s question to Dr. Medvidovic, Patent
Owner’s counsel did not state the nature of objection, thus depriving
Petitioner’s counsel of the opportunity to cure the objection by rephrasing
the question.
In its Motion to Exclude, Patent Owner now takes the position that the
question is “vague, ambiguous, confusing, lacks foundation and calls for a
legal conclusion.” PO Mot. 8. Patent Owner, however, does not explain
adequately how the question is vague, ambiguous or confusing, other than to
state that “Dr. Medvidovic[’s] testimony highlights the vague, ambiguous,
and confusing nature of Microsoft’s question.” Id. at 8. Nor does Patent
Owner explain adequately how the question lacks foundation or calls for a
legal conclusion aside from pointing to Dr. Medvidovic’s response that
“[t]his is a legal thing, not a technical thing” in reference to the term
“preferred embodiment.” Id. at 9.
Patent Owner also argues that Dr. Medvidovic’s response to the
question is “irrelevant, prejudicial, and misleading.” Id. at 8.
Dr. Medvidovic’s testimony, however, concerns his understanding of a
preferred embodiment described in the ’115 patent (and the ’560 patent) and
his opinion of whether the prior art, particularly Kiss, teaches a “facilitator.”
See, e.g., Ex. 1129, 52:15–54:21. We find it difficult to see how
Dr. Medvidovic’s testimony is “irrelevant,” since it goes to his
understanding of the challenged patent, the asserted prior art, and the nature
of his opinion in this proceeding.
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It is also relevant to note, as Petitioner points out, that Patent Owner’s
counsel had “the opportunity to conduct redirect examination of the witness
immediately following the cross-examination to cure any perceived
deficiency or to provide a more complete answer.” Pet. Opp. to Mot. 13.
Patent Owner’s counsel, however, declined to redirect any questions to
Dr. Medvidovic. See Ex. 1129, 164:15–16.
As for Dr. Medvidovic’s testimony being prejudicial or misleading,
the Board, sitting as a non-jury tribunal with particular administrative and
technical expertise, is not as vulnerable to being misled or prejudiced as a
jury might, and is well-positioned to determine and assign appropriate
credibility and weight to the evidence presented at trial, without resorting to
a formal exclusion of evidence that might later be held to be reversible error.
See, e.g., Liberty Mut. Ins. Co. v Progressive Cas. Ins. Co., CBM2012-
00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A. v. S. Alabama
Med. Sci. Found.,, IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014).
For these reasons, we deny Patent Owner’s Motion to Exclude the
identified testimony of Dr. Medvidovic.
2. Exhibit 2034
Patent Owner moves to exclude portions of Exhibit 2034, the
transcript of a deposition of Mr. Adam Cheyer taken in a set of different
proceedings involving the ’560 patent and ’115 patent, Google LLC v. IPA
Technologies Inc., including IPR2019-00728, IPR2019-00730, and
IPR2019-00731. See PO Mot. 10–11. Specifically, Patent Owner seeks to
exclude portions of Mr. Cheyer’s cross-examination testimony (Ex. 2034,
46:12–47:5, 58:15–63:16) as beyond the scope of his direct testimony in
those proceedings. PO Mot. 10–11.
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Petitioner argues that Patent Owner never objected in this proceeding
to Exhibit 2034, an exhibit submitted by Patent Owner itself to support its
arguments. Pet. Opp. to Mot. 14. Petitioner argues that Patent Owner did
not make any objections to the testimony on the record in this proceeding
and therefore its argument is waived. Id. at 14–15. Petitioner also argues
that Patent Owner has not explained why the portions it seeks to exclude
were outside the scope of direct testimony. Id. at 15.
We agree with Petitioner that Patent Owner’s motion summarily
asserts that the portions of testimony it seeks to exclude are outside the
scope of Mr. Cheyer’s direct testimony without sufficient explanation. See
id.; PO Mot. 10–11. Although Patent Owner identifies the topics addressed
in those portions, the motion provides no details regarding the scope of
direct testimony in a deposition that was taken in a different proceeding. PO
Mot. 11. Thus, we are unable to determine whether Mr. Cheyer’s cross-
examination testimony was beyond the scope of his direct testimony, and
Patent Owner has not shown it is entitled to the requested relief. See
37 C.F.R. § 42.20(c).
For at least this reason, we deny Patent Owner’s Motion to Exclude
the identified deposition testimony of Mr. Cheyer.
3. Exhibits 1127, 1137, 1141, and 1145
Patent Owner moves to exclude Exhibit 1127 as irrelevant,
prejudicial, misleading, and outside the scope of direct examination. PO
Mot. 1–4. Patent Owner moves to exclude Exhibit 1137 on hearsay, lack of
authentication, misleading, undue prejudice, and lack of relevance grounds.
Id. at 4–6. Patent Owner moves to Exclude Exhibits 1141 and 1145 on
grounds of hearsay, lack of authentication, and lack of relevance. Id. at 6–8.
Because we do not rely on the cited evidence in this Final Written Decision,
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we dismiss Petitioner’s Motion to Exclude Exhibits 1127, 1137, 1141, and
1145 as moot.
I. Constitutional Challenges
Patent Owner raises two constitutional challenges. First, Patent
Owner argues that subjecting a pre-AIA patent, such as the’560 patent,
retroactively to inter partes review violates the Takings and Due Process
Clauses of the Fifth Amendment. PO Resp. 164. Second, Patent Owner
asserts that inter partes reviews violate the Appointments Clause of the U.S.
Constitution when conducted by administrative patent judges not nominated
by the President and confirmed by the Senate. Id.
Addressing first Patent Owner’s Appointments Clause challenge, we
are bound by the Federal Circuit’s decision in Arthrex, Inc. v. Smith &
Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert. granted sub nom. United
States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020), which addressed
this issue. See 941 F.3d at 1337 (“This as-applied severance . . . cures the
constitutional violation.”); see also Arthrex, Inc. v. Smith & Nephew, Inc.,
953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of
rehearing) (“Because the APJs were constitutionally appointed as of the
implementation of the severance, inter partes review decisions going
forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further.
With regard to the Takings and Due Process Clause challenge, we
note that challenges to retroactive application of IPRs to pre-AIA patents
have been addressed by the Federal Circuit in Celgene Corp. v. Peter, 931
F.3d 1342, 1357–1363 (Fed. Cir. 2019), cert. denied 2020 WL 3405867
(June 22, 2020) (Takings Clause), and Sound View Innovations, LLC v.
Hulu, LLC, Nos. 2019-1865, 2019-1867, 2020 WL 3583556, *3 (Fed. Cir.
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July 2, 2020) (non-precedential) (Due Process Clause). Accordingly, we do
not consider this issue any further.
III. CONCLUSION
For the foregoing reasons, we determine Petitioner has shown by a
preponderance of the evidence that claims 1, 5–9, 12, 13, 22–25, and 52 of
the ’560 patent are unpatentable, but has not shown by a preponderance of
the evidence that claims 10, 11, 50, 51, and 53–55 of the ’560 patent are
unpatentable. The chart below summarizes our conclusions:

IV. ORDER
Accordingly, it is
ORDERED that claims 1, 5–9, 12, 13, 22–25, and 52 of the ’560
patent have been shown to be unpatentable;
FURTHER ORDERED that claims 10, 11, 50, 51, and 53–55 of the
’560 patent have not been shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied in part and dismissed in part; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims 35 U.S.C. § References
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 5–13, 22–
25, 50–55 103(a) Kiss, FIPA97
1, 5–9, 12, 13,
22–25, 52
10, 11, 50, 51,
53–55
Overall
Outcome
1, 5–9, 12, 13,
22–25, 52
10, 11, 50, 51,
53–55
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PETITIONER:

Joseph A. Micallef
Scott M. Border
SIDLEY AUSTIN LLP
jmicallef@sidley.com
sborder@sidley.com

PATENT OWNER:

Steven W. Hartsell
Alexander E. Gasser
Sarah E. Spires
SKIERMONT DERBY LLP
shartsell@skiermontderby.com
agasser@skiermontderby.com
sspires@skiermontderby.com