AOL Inc.v.Coho Licensing, LLC

Patent Trial and Appeal Board

Nov 20, 2014

13208404 (P.T.A.B. Nov. 20, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: November 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AOL INC. and CLOUDERA, INC.,
Petitioner,

v.

COHO LICENSING LLC,
Patent Owner.

____________

Case IPR2014-00774
Patent 8,166,096 B1
__________

Before LINDA M. GAUDETTE, WILLIAM A. CAPP and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

Opinion dissenting-in-part filed by CAPP, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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AOL Inc. and Cloudera, Inc. (collectively, “Petitioner”) filed a
Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–20 of
U.S. Patent No. 8,166,096 B1 (Ex. 1001, “the’096 Patent”). Coho Licensing
LLC (“Coho”) did not file a Patent Owner Preliminary Response. We have
jurisdiction under 35 U.S.C. § 314(a). We conclude that Petitioner has
failed to show a reasonable likelihood of prevailing in challenging these
claims and we decline to institute inter partes review.
I. BACKGROUND
A. The ’096 Patent (Ex. 1001)
The ’096 patent, titled Distributed Processing Multiple -Tier Task
Allocation, relates to distributed computer processing in a networked
environment. Ex. 1001, 1:29–30. A computer which has been allocated a
distributed processing task portion may reallocate a portion of its task, i.e. a
subtask, to another computer in the network. Id. 1:66–2:7. The roles of
various computers in the network are transitory. Id. at 2:53–57. For
example, a computer initiating distributed processing and allocating task
portions for its task may next have a task or subtask portion allocated to it by
another computer in a succeeding task. Id. The described method(s)
manage the allocation of tasks and subtasks, the tasks and subtasks are
performed, and the results are collated. Id. at 1:66–2:7.
Figure 2 of the ’096 patent is reproduced below.

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Figure 2, above, depicts a block diagram of distributed processing
participatory computers 100 connected to each other through network 99.
Id. at 2:4143. Computers 100 are participatory based upon having installed
required software. Id. at 2:43–45. Computer 11 in Figure 2 is depicted in
the role of an allocating computer, signifying initial allocation of task
portions. Other computers are signified by their roles. Id. at 2:4950.
B. Illustrative Claim
Petitioner challenges claims 1–20. Claims 1, 8, and 14 are
independent claims. Illustrative claim 1 is reproduced below.
1. A computer-implemented method comprising:
a first computer receiving via network communication a
plurality of sets of calculated results from a plurality of
computers,
wherein said plurality of sets are calculated from portions of a
single computing task,
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wherein said first computer receiving a second set of said
plurality of sets,
said second set comprising results from a second computer
calculating a second task portion after said second computer
received said second task portion from a third computer,
said second task portion being divided from a third task portion,
said third task portion comprising after division said second
task portion and a fourth task portion,
wherein said first computer receiving a fourth set of said
plurality of sets,
said fourth set comprising results from said third computer
calculating a fourth task portion after said third computer
receiving said third task portion from a fourth computer;
and
said first computer collating said plurality of sets into a final
result set.
C. The Asserted Grounds of Unpatentability
Petitioner challenges claims 1–20 of the ’096 patent based on the
alleged grounds of unpatentability set forth in the table below, as further
supported by the Declaration of Anthony D. Joseph (Ex. 1006).
Reference(s) or other grounds Basis Claims challenged
Spawn (Ex. 1004)
1
§ 102 1–20
Spawn and Kisor (Ex. 1005)
2
§ 103 2, 4, 11, and 18
Knowledge and Skill of a Person of
Ordinary Skill in the Art
§ 103 1–20

1
Waldspurger et al., Spawn: A Distributed Computational Economy, IEEE
TRANSACTIONS ON SOFTWARE ENGINEERING, 18(2), 103117 (1992).
2
US Patent No. 6,098,091 (iss. Aug. 1, 2000).
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D. Claim Interpretation
In an IPR, claims of unexpired patents are construed by applying the
broadest reasonable interpretation, in light of the specification. 37 C.F.R.
§ 42.100(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,764
(Aug. 14, 2012). Consistent with the broadest reasonable construction,
claim terms are presumed to have their ordinary and customary meaning, as
understood by a person of ordinary skill in the art, in the context of the entire
patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007).
In its Petition, Petitioner proposed constructions for a multitude of
terms. Pet. 10–14. Based on our review of the present record, however, we
do not discern a need to construe expressly any of the claim terms of the
’096 patent at this time.
II. ANALYSIS
A. Anticipation by Spawn
1. Spawn (Ex. 1004)
Spawn is directed to an open, market-based computational system.
Ex. 1004, Abstract. The Spawn system utilizes idle computational resources
in a distributed network of computer work stations. Id. Applications are
divided into manager (M) and worker (W) modules. Id. at 10–11. An
application manager coordinates the execution of a set of tasks in a
distributed application. Id. It arranges, via communication with the
resource manager, for child workers and sub-managers to perform subtasks.
Id. A root application manager resides at the top-level user’s personal
workstation and serves as the user-interface for distributed computation. Id.
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The resource manager is responsible for initiating and monitoring the
execution of the application task. Id. at 9. The resource manager also serves
as the interface between high-level applications and the rest of the Spawn
system. Id.
Typically, a worker performs computations and reports partial reports
to its immediate manager. Id. at 10. The process of combining and
processing the partial reports is shown in Figure 1, reproduced below. Id.

In Figure 1, above, workers (W) report to their local managers (M)
who, in turn, report to a higher level of management. Ex. 1004, 11. Data
produced by subtask workers is aggregated by upper level managers and,
finally, the root manager presents the results to the user. Id.
2.Analysis of Evidence Presented Regarding Anticipation of claims 1,
8, and 14 by Spawn
The Petition sets forth each element of claims 1, 8, and 14,
respectively, in a separate paragraph. Pet. 17–28, 34–43, and 47–52. Each
paragraph cites to specific passages in Spawn that purportedly read each
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respective element of claims 1, 8, and 14 onto a corresponding passage in
Spawn. Id.
The independent claims are directed, generally, to a method of
distributed computing where a first computer receives sets of data
processing results from a plurality of computers. See Ex. 1001, claims 1, 8,
and 14. Claim 1, in particular, recites that “said second computer received
said second task portion from a third computer.” Id. at 6:1113. Claims 8
and 14 recite similar limitations. See id. at 6:5051 (“said first portion [of a
task] received by said first computer from a second computer via inter-
computer communications”(claim 8)), 7:1920, 2324 (“said first subtask
portion received by said fourth computer from a third computer” and “said
third computer received said first task portion from a second computer”
(claim 14)). We are not persuaded that Petitioner has demonstrated
sufficiently that Spawn discloses the limitation concerning tasks received by
one computer from another computer.
Petitioner relies on Spawn’s application subtasks as corresponding to
the above limitations. See Pet. 2122, 3738, 4950. With regard to
claim 1, the Petition states that “the second-tier ‘application subtask’
computer in Spawn (i.e., the ‘the third computer’ in the language of the
claim element) takes a subtask (which is a portion of the initial task) and
divides it into ‘subtasks’ and sends the subtasks to third-tier computers for
processing.” Id. at 22 (referring to annotations of Figure 1 of Spawn and
citing page 11 of Spawn in support for this statement). According to
Petitioner, the “third-tier computer” processes task portions sent to it from
another computer.” Id. at 23 (no citations to Spawn provided to support this
statement). The Petition, however, does not show or explain how Spawn
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discloses that a so-called “third-tier computer” receives subtasks from the
“second-tier computer.” At best, the Petition shows how the “third-tier
computer” reports to the next higher level of management, and eventually to
the root manager, which presents the results to the user. See Pet. 22 (citing
Ex. 1004, Fig. 1). There is a lack of explanation of how Petitioner contends
a Spawn computer receives a task from another computer.
The passages in Spawn that Petitioner cites to support its assertions
are also inconclusive. Petitioner cites to certain passages in pages 10 and 11
of Spawn, but Petitioner fails to explain how these passages describe
receiving the tasks that are alleged to occur in Spawn. For example, the
Petition alludes to page 11 as disclosing dividing a subtask into
“subsubtasks” and sending the “subsubtasks” to third-tier computers for
processing. Figure 1, on page 11 of Spawn, shows that managers make
reports to the next higher level of management. Figure 1 of Spawn does not
show that the computer running the “subsubtask” receives the subsubtask
from the computer running the “subtask” preceding it. Nor does Petitioner
allude to any specific disclosure at page 11 that describes or explains
computer-to-computer reception of subtasks. No other passages or
explanations of Spawn are identified in the Petition as disclosing this
limitation.
We have reviewed Petitioner’s evidence and are not persuaded that
Petitioner has demonstrated a reasonable likelihood of establishing that each
of the limitations of claims 1, 8, and 14, respectively, are disclosed by
Spawn.
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3. Claims 2–7, 9–13, and 15–20.
Claims 2–7 depend, directly or indirectly, from claim 1. Ex. 1001.
Claims 9–13 depend from claim 8. Id. Claims 15–20 depend, directly or
indirectly, from claim 14. Id. With regard to these dependent claims, the
Petition does not present evidence or arguments different from those
discussed above.
Accordingly, having reviewed Petitioner’s evidence, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood of
establishing that each of the respective limitations of claims 2–7, 9–13, and
15–20 is met by Spawn.
B. Obviousness over Spawn and Kisor
1. Kisor (Ex. 1005)
Kisor is directed to a method and system for assigning tasks to peer-
to-peer computers connected to a network. Ex. 1005, Abstract. Figure 1 of
Kisor is reproduced below.
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In Figure 1, the computer network 100 includes central computer 104
and a plurality of remote computers 108, 112, 116, and 120. Ex. 1005,
3:18–24. Each computer, including both the central computer and the
remote computers, may be coupled to other computers in the network via a
variety of communication techniques. Id. at 3:24–33. Central computer 104
executes management program 144 to coordinate operation of the network.
Id. at 3:45–46.
Kisor’s central computer coordinates tasks performed by a plurality of
independent remote computers. Id. at 2:21–24. The central computer polls
the remote computers as to their availability and computational capabilities.
Id. at 2:24–27. The central computer then matches tasks to be completed
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with remote computers based on the results of the polling and transmits the
task to the assigned remote computers. Id. at 2:27–31.
Kisor discloses that high priority tasks may be duplicated and sent to
multiple remote computers to ensure robustness and prevent system failure.
Id. at 6:20–22. Kisor’s central computer polls remote computers regarding
the time of day when the remote computers will be idle. Id. at 2:19–30.
2. Analysis
Petitioner relies on the same disclosures in Spawn concerning the
computer-to-computer receiving of subtasks, discussed above. Petitioner
relies on Kisor as teaching the additional limitations recited in dependent
claims 2, 4, 11, and 18. Further, Petitioner does not show that Kisor makes
up for Spawn’s deficiencies by, at a minimum, teaching the computer-to-
computer receiving of subtasks discussed above. Because we have
determined that the Petition fails to show sufficiently how these limitations
are met by Spawn, or by Kisor, we are not persuaded that there is a
reasonable likelihood that Petitioner would prevail in shown that dependent
claims 2, 4, 11, and 18 are obvious over Spawn and Kisor.
C. Obviousness Based On Level of Ordinary Skill
Petitioner asserts that all of the challenged claims are obvious based
on the knowledge, skill, and creativity of a person of ordinary skill in the art
at the time of the alleged invention. Pet. 59–60. Petitioner’s contentions are
supported by a series a statements in Dr. Joseph’s declaration regarding
basic computer science techniques that are taught to undergraduate students.
Id., Ex. 1006, ¶¶ 21–28. Dr. Joseph’s Declaration, in turn, refers generally
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to voluminous excerpts from three computer science treatises. Ex. 1006, ¶
22–26 (including Attachments B, D, and E.
3,4,5
).
Obviousness is a question of law based on underlying factual findings,
including the differences between the claims and the prior art. See Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966). A petitioner who does not
state the differences between a challenged claim and the prior art, and relies
instead on the Patent Owner and the Board to determine those differences
risks having the corresponding ground of obviousness not included for trial
for failing to adequately state a claim for relief. See Liberty Mutual Ins. Co.
v. Progressive Casualty Ins. Co., CBM2012-00003, 2012 WL 9494791, at
*2 (PTAB 2012).
A petition for inter partes review must identify, “in writing and with
particularity, each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the
challenge to each claim.” 35 U.S.C. § 312(a)(3). A petition must include
“[a] full statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence” and “where each element of
[each challenged] claim is found in the prior art patents or printed
publications relied upon [and] the relevance of the evidence to the challenge
raised.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4), (5).

3
RONALD B, GRAHAM ET AL., CONCRETE MATHEMATICS: A FOUNDATION
FOR COMPUTER SCIENCE (2d ed. 1994).
4
HAL ABELSON ET AL., STRUCTURE AND INTERPRETATION OF COMPUTER
PROGRAMS (2d ed. 1996).
5
GREGORY R. ANDREWS,, FOUNDATIONS OF MULTITHREADED, PARALLEL,
AND DISTRIBUTED PROGRAMMING, PART II (1999).
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Petitioner devotes approximately one and one-half pages to this
ground of unpatentability in its 58 page Petition. Pet. 59–60. Petitioner’s
contentions (Pet. 59–60) are conclusory in nature and fail to satisfy the
requirements in our rules that a petition contain a detailed explanation of the
significance of the evidence and identify where each element of each
challenged claim is found in the prior art. See 37 C.F.R. §§ 42.22(a)(2),
42.104(b)(4), (5). Accordingly, Petitioner has failed to show a reasonable
likelihood that it would prevail in establishing that claims 1–20 are obvious
based solely on the alleged knowledge of someone of ordinary skill in the
art.
III. CONCLUSION
For the foregoing reasons, we deny institution of inter partes review
of the ’096 patent based on all the grounds asserted in the Petition.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.
Case IPR2014-00364
Patent 6,289,096 B1

CAPP, Administrative Patent Judge, dissenting-in-part.
I agree with the decision to deny institution of a trial as to claims 1–
20 under the third ground of unpatentability based on nothing more than the
knowledge of someone of ordinary skill in the art. I dissent from the
decision to deny institution of a trial on the grounds of anticipation of claims
1–20 over Spawn and the unpatentability of claims 2, 4, 11, and 18 over
Spawn and Kisor.
A. Anticipation by Spawn
In my opinion, Petitioner has made a threshold showing that Spawn
discloses each and every limitation of the challenged claims and thus
anticipates them. Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747
(Fed. Cir. 1987) (a patent is invalid for anticipation if a single prior art
reference discloses each and every limitation of the claimed invention).
Spawn differs from the invention disclosed in Patent Owner’s
Specification primarily in its use of a Resource Manager to conduct auction
transactions between top level computers that buy distributed computing
time and lower level computers that sell unused computing time. Ex 1004,
Sec. III.B.2. However, this distinction does not defeat a finding of
anticipation. The claims at issue have “comprising” transition phrases and,
as such, do not preclude the use of additional elements that are not claimed.
See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(comprising transition means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim).
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As shown in Figure 1, Spawn discloses a two-tiered system of
distributed computing. Ex. 1004, Fig 1. Although Figure 1 discloses the
upward reporting chain of a completed task, it is clear from the overall
context of Spawn that the upward reporting chain merely retraces the
downward chain where tasks are delegated from a top-level application.
The majority faults Petitioner for not detailing “how” the data
processing task is allocated and distributed. The claims, however, only
require “that” the data processing task is allocated and sub-allocated and that
the results thereof are reported to the “first” or top level computer. The only
“how” requirement in the claims is: “receiving via network communication.”
Ex. 1001, claim 1.
6
There is no serious question that, in Spawn, a distributed
processing task originating at a top level computer is transferred and
allocated to computers at two tiers or levels and that the transfers are via
network connection. Similarly, there is no serious question that, after tasks
are allocated and distributed to allocated and sub-allocated computers, the
results are collated and reported back to the top level computer. The Petition
adequately identifies the various sets among the plurality of sets of
calculated results and their associated tasks portions and maps them to the
claim language for claim 1. Pet. 17-28. Given the breadth of the claim
language, I do not believe that a detailed showing of “how” the transfer
occurs is or should be required as part of a threshold showing to institute a
trial in this case.
Without prejudging what the final outcome of the trial would be in
this case, it is my opinion that Petitioner has made a threshold showing

6
“receiving by inter-computer communications.” Id. claim 8.
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sufficient to warrant institution of a trial on the ground of anticipation over
Spawn.
B. Obviousness over Spawn and Kisor
In my opinion, Petitioner has made the requisite threshold showings
that the combination of Spawn and Kisor discloses all of the limitations of
claims 2, 4, 11, and 18, and that Spawn discloses all of limitations of claims
1–20 and thus anticipates those claims. Kisor discloses distributed
computing with scheduling features, Kisor lacks only a disclosure of
distributed computing at multiple levels of distribution. Based on the record
before us, Petitioner has made a reasonable showing that the ’096 patent
does nothing more than arrange old elements with each performing the same
function it had been known to perform. Neither does it appear that the
combination yields anything more than one would expect from such an
arrangement. Controlling precedent dictates that, if such is proved at trial in
accordance with the requisite burden of proof, the combination is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)
Without prejudging what the final outcome of the trial would be in
this case, it is my opinion that Petitioner has made a threshold showing
sufficient to warrant institution of a trial on the ground of obviousness over
Spawn and Kisor.
For the foregoing reasons, I respectfully DISSENT.
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For PETITIONER:
David Pekarek Krohn
PERKINS COIE LLP
dpekarekkrohn@perkinscoie.com

For PATENT OWNER:
EUGENIO J. TORRES
Ferraiuoli LLC
etorres@ferraiuoli.com

Kris S. LeFan
Lowe & Associates, P.C.
11400 Olympic Boulevard, Suite 640
Los Angeles, CA 90064