Flectere LLC

Patent Trials and Appeals Board

Jan 28, 2021

IPR2020-00403 (P.T.A.B. Jan. 28, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: January 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FEDEX CORPORATION,
Petitioner,

v.

FLECTERE LLC,
Patent Owner.
____________

IPR2020-00403
Patent 6,415,284 B1
____________

Before DAVID C. McKONE, JOHN A. HUDALLA, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

IPR2020-00403
Patent 6,415,284 B1

2

I. INTRODUCTION
A. Case Posture
FedEx Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1–21 of U.S. Patent
No. 6,415,284 B1 (Ex. 1001, “the ’284 patent”). Flectere LLC (“Patent
Owner”) waived filing of a preliminary response to the Petition. Paper 7.
We instituted an inter partes review of claims 1–21 of the ’284 patent on all
grounds of unpatentability alleged in the Petition. Paper 8 (“Institution
Decision” or “Dec.”).
After institution, on September 16, 2020, Patent Owner informed the
Board that it “has elected to not file a response” to the Petition. Ex. 3001.
On September 24, 2020, pursuant to Section II.F of the Board’s
Consolidated Trial Practice Guide1 and the Scheduling Order in this case
(Paper 9, 10), the Board held a teleconference with the parties to discuss the
posture of this case and revision of due dates originally set in the Scheduling
Order. See Paper 10. During the call, Patent Owner stated that it did not
intend to request adverse judgment (see 37 C.F.R. § 42.73(b) (2019)), to
cancel any challenged claims, or to otherwise abandon the contest.
Paper 10, 2. Also during the call, we cautioned Patent Owner that “any
arguments not raised in the response may be deemed waived.” Paper 9, 10;
see 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be
considered admitted.”); In re Nuvasive, Inc., 842 F.3d 1376, 1379–82 (Fed.
Cir. 2016) (holding arguments of patent owner may be waived when not
included in a preliminary response and response permitted during trial); see

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-00403
Patent 6,415,284 B1

3

also Papst Licensing GmbH & Co. KG v. Samsung Elecs. Am., Inc.,
924 F.3d 1243, 1250 (Fed. Cir. 2019) (holding patent owner forfeited
argument for patentability not presented to the Board); Bradium Techs. LLC
v. Iancu, 923 F.3d 1032, 1048 (Fed. Cir. 2019) (explaining that arguments
not presented to the Board are waived). Because Patent Owner elected to
not file a response to the Petition, had not otherwise raised any issue in any
paper filed in this case, and had not requested oral hearing in this case, on
October 28, 2020, we ordered that this case would advance to final written
decision under 35 U.S.C. § 318(a) on the present record. Paper 14.
We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine Petitioner has
established by a preponderance of the evidence that claims 1–21 of the
’284 patent are unpatentable.
B. Related Proceedings
Petitioner indicates that the ’284 patent was involved in three U.S.
district court actions, namely, Flectere LLC v. Academy, Ltd., 2:18-cv-00227
(E.D. Tex.) (dismissed Dec. 4, 2018); Flectere LLC v. Sears Brands, LLC,
2:18-cv-00228 (E.D. Tex.) (dismissed Dec. 4, 2018); and Flectere LLC v.
Staples, Inc., 2:18-cv-00229 (E.D. Tex.) (dismissed Sept. 24, 2018).
Pet. 69–70. Patent Owner indicates that there is no judicial or administrative
matter that would affect, or be affected by, a decision in this proceeding.
Paper 4, 2.
IPR2020-00403
Patent 6,415,284 B1

4

Petitioner also indicates that the ’284 patent was involved in Unified
Patents Inc. v. Flectere LLC, IPR2019-00479 (PTAB Dec. 31, 2018), in
which the Board denied institution. Pet. 69–70.
We also note that Petitioner (FedEx) and Patent Owner (Flectere) are
the petitioner and patent owner, respectively, in IPR2020-00400 (involving
U.S. Patent No. 6,401,094 B1) and IPR2020-00402 (involving U.S. Patent
No. 6,272,506 B1), in which the Board instituted inter partes reviews.
These two cases remain pending.
C. The ’284 Patent
The ’284 patent is titled “Intelligent Forms for Improved Automated
Workflow Processing,” and issued on July 2, 2002, from U.S. Application
No. 09/344,269, filed June 30, 1999. Ex. 1001, codes (10), (21), (22), (45),
(54).
The ’284 patent generally relates to intelligent or “smart” forms for
improved automated workflow processing. Ex. 1001, Abstract. More
specifically, the ’284 patent is directed to:
[I]ntelligent forms [that] are intelligently pre-populated using a
business database and include logic for verification of properly
supplied data to minimize effort in filling in such forms and to
minimize the risk of accepting invalid form data, thus reducing
the system’s susceptibility to error.
Ex. 1001, 2:20–26. Figure 1 of the ’284 patent is reproduced below.
IPR2020-00403
Patent 6,415,284 B1

5

Figure 1 is a block diagram of computer system 100 for
processing insurance applications that implements smart
forms for workflow improvement.
Id. at 1:65–67, 2:26–28, Fig. 1.
As depicted in Figure 1, a “number of computers 102A–C are coupled
through a wide area network 106, such as the Internet, to a scalable network
server 108.” Ex. 1001, 2:33–35. Scalable network server 108 “routes data
between computers 102A–C on one end and applications 110A–D on the
other end.” Id. at 2:44–46. “Applications 110A–D access data in a
database 116 through an applications programming interface (API) 114.” Id.
at 2:47–48. Applications 110A–D perform a number of business functions,
such as “payroll, accounting, benefits administration, and inter-office
communications such as e-mail.” Id. at 2:49–53.
According to the ’284 patent, applications 110A–D implement
“workflows,” which include a number of actions to be taken by applications
IPR2020-00403
Patent 6,415,284 B1

6

110A–D in carrying out tasks that typically include interaction with users,
such as employees. Ex. 1001, 2:61–3:2. Workflows include “smart
form[s]” having a number of fields, “each of which corresponds to a
particular piece of information which is used in carrying out the task of
workflow.” Id. at 3:3–9. Fields include, as relevant to this Petition, “default
annotation[s]” and “verification annotation[s].” Id. at 3:14–15. These
annotations are “logic which can include references to data contained in
records in database 116.” Id. at 3:35–36.
A default annotation includes logic that “specifies a default data
value” for a field, and can include “references to data contained in
database 116.” Ex. 1001, 3:37–41. For example, according to the
’284 patent, if a field corresponds to an employee’s name, the default
annotation can specify that the employee’s name is retrieved from
database 116. Id. at 3:41–44. A verification annotation includes logic that
“processes data entered by an employee and indicates whether the entered
data is valid,” and may include “references to data stored in database 116.”
Id. at 3:57–60. For example, according to the ’284 patent, if a field
represents a number of vacation days requested by an employee, the
verification logic may include logic that compares the requested vacation to
the number of days of vacation available to the employee. Id. at 3:60–64.
According to the ’284 patent, a default annotation typically is
executed within application 110A, for example, because application 110A is
close to database 116, at least relative to computers 102A–C, and therefore
can quickly and efficiently resolve (i.e., replace) references to data in default
annotation with actual data values retrieved from database 116. Ex. 1001,
4:1–6. For verification annotation, “application 110A resolves references to
IPR2020-00403
Patent 6,415,284 B1

7

data items stored in database 116 by substituting the substantive data values
for such data items for such references within [the] verification annotation.”
Id. at 4:14–17; see id. at 5:32–36 (application 110A resolves verification
annotation “such that all references to data items of database 116 . . . are
replaced with data values retrieved from database 116, such that subsequent
access to database 116 by computer 102A is unnecessary”). As a result, a
verification annotation, when received by computer 102A, for example,
“includes no references to data items within database 116 but data constants
where such references had been,” and “is then executed within [remote]
computer 102A.” Id. at 4:17–23. By resolving the verification annotation in
this manner, remote computer 102A itself can verify data entered by the
user, without having to send the data or form containing the data back to
host applications 110A–D for verification (and if data are determined invalid
by host applications 110A–D, then back again to remote computer 102A for
reentry, and so forth). See id. at 4:6–50. According to the ’284 patent, this
“minimize[s] the risk of accepting invalid form data, thus reducing the
system’s susceptibility to error,” and helps reduce traffic congestion on wide
area network 106. Id. at 2:20–26, 4:12–13.
D. Illustrative Claim
The ’284 patent includes 21 claims, all of which are challenged.
Claims 1, 8, and 15 are the independent claims. Claim 1 is illustrative and
reproduced below.
1. A method for using a data-entry form to receive data
entered by a user, the method comprising:
including one or more fields in the data-entry form;
for each of the one or more fields,
IPR2020-00403
Patent 6,415,284 B1

8

including verification logic which, when executed,
determines whether form data entered by the user is valid
for the field; and
sending the data-entry form with the verification logic
through a computer network to a remote computer for entry of
the data by the user such that the remote computer receives the
data entered by the user and executes the verification logic.
Ex. 1001, 11:22–33.
E. Applied References
Petitioner relies upon the following references:
Xue, U.S. Patent No. 5,956,709 (Ex. 1002, “Xue”), filed
July 28, 1997, issued September 21, 1999.
Blinn et al., U.S. Patent No. 5,897,622 (Ex. 1003,
“Blinn”), filed October 16, 1996, issued April 27, 1999.
Wolff et al., U.S. Patent No. 5,774,887 (Ex. 1004,
“Wolff”), filed November 18, 1992, issued June 30, 1998.
Gupta et al., U.S. Patent No. 6,199,079 B1 (Ex. 1005,
“Gupta”), filed March 20, 1998, issued March 6, 2001.
Pet. 1–2.
F. Instituted Grounds of Unpatentability
We instituted inter partes review of claims 1–21 of the ’284 patent on
the following grounds. Dec. 2–3, 8, 26.
Claims Challenged 35 U.S.C. § Reference(s)
1, 8, 15 1022 Xue
1, 8, 15 103 Xue

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because
the ’284 patent was filed before March 16, 2013, the effective date of the
relevant amendments, the pre-AIA versions of § 102 and § 103 apply.
IPR2020-00403
Patent 6,415,284 B1

9

Claims Challenged 35 U.S.C. § Reference(s)
1, 2, 8, 9, 15, 16 103 Xue, Blinn
3, 5, 6, 10, 12, 13, 17, 19, 20 103 Xue, Blinn, Gupta
4, 7, 11, 14, 18, 21 103 Xue, Blinn
4, 7, 11, 14, 18, 21 103 Xue, Blinn, Wolff
Petitioner relies upon the Declaration of Benjamin B. Bederson, Ph.D.
(Ex. 1006).
II. ANALYSIS
A. Applicable Law
Petitioner challenges the patentability of claims 1–21 of the
’284 patent on the grounds that the claims are anticipated under 35 U.S.C.
§ 102 or obvious under 35 U.S.C. § 103 in light of various references
including: Xue, Blinn, Gupta, and Wolff. To prevail in its challenges to the
patentability of the claims, Petitioner must establish unpatentability by a
preponderance of the evidence. 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).
IPR2020-00403
Patent 6,415,284 B1

10

To serve as an anticipatory reference under 35 U.S.C. § 102, “the
reference must disclose each and every element of the claimed invention,
whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). “The identical invention must be shown in as
complete detail as is contained in the . . . claim.” Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (emphasis added).
The elements must be arranged as required by the claim, “but this is not an
‘ipsissimis verbis’ test,” i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. United
States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)).
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented 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 skill in the art; and (4) when of record, objective evidence of
non-obviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). Secondary considerations may include the
following: “commercial success, long felt but unsolved needs, failure of
others, etc.”3 Id. The totality of the evidence submitted may show that the

3 Patent Owner did not present any evidence or arguments directed to
secondary considerations during this proceeding.
IPR2020-00403
Patent 6,415,284 B1

11

challenged claims would not have been obvious to one of ordinary skill in
the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). When
evaluating a combination of teachings, we must also “determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Supreme Court has made clear that we apply “an expansive and
flexible approach” to the question of obviousness. Id. at 415. Whether a
patent claiming a combination of prior art elements would have been
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. To reach this conclusion, however, requires more than a mere
showing that the prior art includes separate references covering each
separate limitation in a claim under examination. Unigene Labs., Inc. v.
Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
requires the additional showing that a person of ordinary skill at the time of
the invention would have selected and combined those prior art elements in
the normal course of research and development to yield the claimed
invention. Id. “To satisfy its burden of proving obviousness, a petitioner
cannot employ mere conclusory statements. The petitioner must instead
articulate specific reasoning, based on evidence of record, to support the
legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
We analyze the challenges presented in the Petition in accordance
with the above-stated principles.
IPR2020-00403
Patent 6,415,284 B1

12

B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art, at the time
of the effective filing date of the ’284 patent, “would have had a minimum
of a bachelor’s degree in computer science or an equivalent field, and
approximately two years of industrial or academic experience designing user
interfaces or data entry forms.” Pet. 6–7 (citing Ex. 1006 ¶¶ 57–59). Patent
Owner makes no contention concerning the artisan’s skill level. We regard
Petitioner’s proposed definition as reasonable, and consistent with the prior
art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(finding that the Board of Patent Appeals and Interferences did not err in
concluding that the level of ordinary skill in the art was best determined by
the references of record). Accordingly, as in our Institution Decision, we
apply the level of skill set forth above, which also is consistent with
Dr. Bederson’s testimony (Ex. 1006 ¶¶ 57–59), except that we delete the
qualifier “a minimum of” to eliminate possible vagueness as to the amount
of formal education. The qualifier expands the range substantially without
an upper bound, and thus precludes a meaningful indication of the level of
ordinary skill in the art.
C. Claim Construction
We apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
§ 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary
and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the
invention.” Id. at 1313. “In determining the meaning of the disputed claim
IPR2020-00403
Patent 6,415,284 B1

13

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). Extrinsic evidence is “less significant than the intrinsic record
in determining ‘the legally operative meaning of claim language.’” Phillips,
415 F.3d at 1317. Only terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy. Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
Petitioner submits that the claim limitations in the ’284 patent should
be given their ordinary and customary meaning, but also proposes certain
constructions in the alternative. Pet. 7–10. Patent Owner, having elected to
not file a response after institution, has not disputed Petitioner’s proposed
constructions. In determining that Petitioner has established by a
preponderance of the evidence that claims 1–21 of the ’284 patent are
unpatentable, we need not and do not construe expressly any claim terms.
D. Anticipation of Independent Claims 1, 8, and 15
by Xue (Ex. 1002)
Petitioner contends independent claims 1, 8, and 15 are unpatentable
under 35 U.S.C. § 102 as anticipated by Xue (Ex. 1002). Pet. 18–36. For
the reasons expressed below, we determine that Petitioner has demonstrated
by a preponderance of evidence that claims 1, 8, and 15 are unpatentable as
anticipated by Xue.
IPR2020-00403
Patent 6,415,284 B1

14

1. Overview of Xue (Ex. 1002)
Xue relates generally to a method of “assembl[ing] data into a data
set, such as [an] item list in an Internet shopping cart, on [a] client side that
is necessary for a transaction between two parties on the Internet server side
and client side,” as shown, for example, in Figure 2, reproduced below.

Figure 2 depicts a client side shopping cart with
selected items in the shopping cart.
Ex. 1002, Abstract, 3:22–25, Fig. 2; see id. at 1:11–13 (naming the method
“Dynamic Data Assembling On Internet Client Side (DDAICS)”), 3:46–57
(defining “[t]ransaction,” “[s]erver party,” and “[c]lient party”). Xue
discloses a client (e.g., user) receiving an “Internet Client Side Shopping
Cart” as a web page with embedded script language, such as JavaScript,
which is executed using a “client side application program.” Ex. 1002,
IPR2020-00403
Patent 6,415,284 B1

15

Abstract. This enables editing operations such as “adding, deleting,
updating, entry check, calculation, and backup, [to be] executed on [the]
client side.” Id. Xue further explains:
In FIG. 2 and FIG 3, two items have been selected and dropped
into the shopping cart. The default quantity for items is one, but
a shopper can change that at any time by focusing on the quantity
cell [i.e., field] and typing in a new number in the shopping cart.
The shopper can also type in the tax rate if applicable into the tax
rate cell. The total prices, subtotal, tax, and grand total are
calculated automatically by client side application program.
After finishing shopping, shoppers can put user ID and password
in the shopping cart and submit the order by clicking on the
button “Send This Order”. If a shopper [has] not registered, by
clicking on the “Registration” button on the Control Panel, a
registration form will show up in the Display Window. After
registration, the shopper can submit the order.
Id. at 7:20–34; see id. at Figs. 2–3.
In operation, “[a] top file and the web pages associated with each
f[r]ame of the window are downloaded by a user with a browser, such as
Netscape Navigator 3.0,” and the “client side application program of
JavaScript is compiled by the buil[t]-in JavaScript compiler of the browser.”
Ex. 1002, 8:37–55; see id. at 4:7–20. Xue discloses that logic in the top file
“check[s] entries automatically” to determine whether data entered are valid
for a given cell or field. Id. at 4:53–55, 16:47–52, 17:7–18:15. According to
Xue, many “functions [can] be embedded in the top file in any order” (id.
at 18:7–8), such as a “function to check if the input is a valid number” (id.
at cols. 17–18 (see programming code)), and a function for “[c]hecking [a]
user’s ID and password” (id. at cols. 19–20 (see programming code
(“function isValidIDPasswd”))). Once data entry and checking are
completed on the client, the client sends the completed shopping cart data
IPR2020-00403
Patent 6,415,284 B1

16

back to the server in one transmission. Id. at 1:47–63 (“only one
transmission is enough”), 2:21–65, 3:52–58, 16:67–17:1.
Xue teaches that its method “eliminate[s] unnecessary transmissions
of useful data by implementing all edit operations, such as adding, deleting,
updating, entry check, calculation, and backup on [the] client side in a data
assembling process,” and as such, “transmissions of useless data will be
reduced to minimum if [the] data checking mechanism is well designed.”
Ex. 1002, 2:48–54. Xue explains: “the Internet information traffic will be
reduced significantly if this method is widely used, and Internet traffic will
speed up as a result of reduction of Internet traffic,” the “load on servers will
be reduced significantly,” and consequently, the “result is that the scarce
Internet resources will be used more effectively and efficiently.” Id. at
2:54–60.
Petitioner contends Xue qualifies as prior art under 35 U.S.C. § 102(e)
based on its filing date. Pet. 1. We have no evidence of an invention date
other than the earliest possible effective filing date of the challenged claims.
Thus, we determine that Xue qualifies as prior art under 35 U.S.C. § 102(e)
because Xue’s filing date of July 28, 1997, is before the earliest possible
effective filing date of the challenged claims, which is June 30, 1999.
Ex. 1001, code (22); Ex. 1002, code (22).
We further discuss below the disclosure of Xue in connection with
Petitioner’s arguments. As noted above, Patent Owner has presented no
arguments undermining the arguments presented in the Petition.
IPR2020-00403
Patent 6,415,284 B1

17

2. Analysis
a) Independent Claim 1
Petitioner contends Xue discloses all of the limitations of independent
claim 1. Pet. 18–36.
(1) “A method for using a data-entry form to
receive data entered by a user, the method
comprising:”
The preamble of claim 1 recites a “method for using a data-entry form
to receive data entered by a user.” Ex. 1001, 11:22–34. Petitioner cites
Xue’s disclosure of an Internet (online) shopping cart to receive data entered
by a shopper via various cells, including cells for receiving item quantity,
tax rate, username, and password. Pet. 18–24 (citing, inter alia, Ex. 1002,
7:20–34, Figs. 2, 3, 6, Abstract; Ex. 1006 ¶¶ 70–74). Petitioner does not
take a position as to whether the preamble is limiting. See id. at 18.
Because we find that Petitioner’s cited disclosure from Xue discloses a
“method for using a data-entry form to receive data entered by a user,” we
need not determine whether the preamble is limiting. See Nidec, 868 F.3d
at 1017.
(2) “including one or more fields in the data-
entry form;”
Xue discloses “cells” or “fields” in an Internet shopping cart
implemented using HTML and JavaScript that enable a shopper (or user) to
enter information. Ex. 1002, 7:20–34, Figs. 2, 3, 6, Abstract; see, e.g., id.
at 8:55–67 (providing a JavaScript function that “focus[es] on the quantity
field of that item in the cart” (emphasis added)), 18:17–67 (“Please enter a
number into the field!” (emphasis added)), Fig. 2 (“Type the tax rate into the
IPR2020-00403
Patent 6,415,284 B1

18

field below.” (emphasis added)), Fig. 3 (providing user ID and password
fields), 7:20–34 (“[A] shopper can change that at any time by focusing on
the quantity cell and typing in a new number in the shopping cart.”
(emphasis added)), 13:21–35 (“The new values in the text cells of the
shopping cart can be written by the client side application program without
causing the whole file of the web page for the shopping cart to be rewritten.”
(emphasis added)). Based on this evidence, Petitioner contends, and we
find, that such description discloses “including one or more fields in the
data-entry form,” as recited in claim 1. Pet. 24–25 (citing Ex. 1006 ¶ 75).
(3) “for each of the one or more fields,
including verification logic which, when executed,
determines whether form data entered by the user
is valid for the field; and”
Xue discloses Internet shopping cart fields having logic to perform
“entry check[s]” of entries made by the user before “final submission, save,
or print.” Ex. 1002, Abstract, 2:37–47; see, e.g., id. at 2:48–59
(“[T]ransmissions of useless data will be reduced to minimum if data
checking mechanism is well designed.”), 4:53–55 (describing manual entry
of data and “checking entries automatically”), 16:47–59 (“If an illegal
character is entered, an alert will be shown up on screen to remind users to
change to the legal character sets.”). Xue also discloses implementing such
logic for validating field entries using JavaScript. Id. at 17:13–18:15,
cols. 17–24 (exemplary JavaScript code for field logic). Based on this
evidence, Petitioner contends, and we find, that such description discloses
“for each of the one or more fields, including verification logic which, when
IPR2020-00403
Patent 6,415,284 B1

19

executed, determines whether form data entered by the user is valid for the
field,” as recited in claim 1. Pet. 25–29 (citing Ex. 1006 ¶¶ 76–81).
(4) “sending the data-entry form with the
verification logic through a computer network to a
remote computer”
Xue discloses a client (e.g., user) receiving an “Internet Client Side
Shopping Cart” as a web page with embedded script language, such as
JavaScript, which is executed using a “client side application program.”
Ex. 1002, Abstract. This enables editing operations such as “adding,
deleting, updating, entry check, calculation, and backup, [to be] executed on
[the] client side.” Id. Xue also discloses “[a] top file and the web pages
associated with each f[r]ame of the window are downloaded by a user with a
browser, such as Netscape Navigator 3.0,” and the “client side application
program of JavaScript is compiled by the buil[t]-in JavaScript compiler of
the browser.” Ex. 1002, 8:37–55 (emphasis added); see id. at 4:7–20.
Petitioner submits that “by downloading a form from the [I]nternet, a server
sends the form over a computer network to a remote computer.” Pet. 30
(citing Ex. 1006 ¶¶ 82–83); see also Ex. 1002, 3:46–57 (defining
“[t]ransaction,” “[s]erver party,” and “[c]lient party”). Based on this
evidence, Petitioner contends, and we find, that such description discloses
“sending the data-entry form with the verification logic through a computer
network to a remote computer,” as recited in claim 1. Pet. 29–34 (citing
Ex. 1006 ¶¶ 82–90).
IPR2020-00403
Patent 6,415,284 B1

20

(5) “for entry of the data by the user such that
the remote computer receives the data entered by
the user and executes the verification logic.”
Xue discloses, as discussed above, a shopper (user) entering data into
an Internet shopping cart on a client side (remote) computer, which client
side computer also performs “entry check[s]” of entries made by the user
before “final submission, save, or print.” See supra; see also, e.g., Ex. 1002,
2:32–45 (“Web pages used in the method are specifically designed in which
client side application program, such as one written with JavaScript, is
embedded” where “adding, deleting, updating, entry check, calculation, and
backup, are executed on client side until final submission, save, or print.”
(emphases added)), 4:7–16 (describing the client side application program as
“a program written with a script language or other computer language which
is embedded or called in one or more web pages, executed on client side, and
used for controls of editing operations of client parties” (emphasis added)),
7:20–34, 3:46–57, 17:13–18:15, cols. 17–24, Figs. 2, 3, 6, Abstract. Based
on this evidence, Petitioner contends, and we find, that such description
discloses “for entry of the data by the user such that the remote computer
receives the data entered by the user and executes the verification logic,” as
recited in claim 1. Pet. 34–36 (citing Ex. 1006 ¶¶ 91–93).
Patent Owner, having elected to not file a response after institution,
does not argue that any limitation in claim 1 is absent in Xue and,
consequently, has waived any such argument. See Paper 9, 10 (“Patent
Owner is cautioned that any arguments [for patentability] not raised in the
response may be deemed waived.”); NuVasive, 842 F.3d at 1380‒81
IPR2020-00403
Patent 6,415,284 B1

21

(holding that the patent owner waived arguments on an issue that were not
raised in its response after institution).
We have considered the entirety of the record in light of Petitioner’s
contentions on this ground of unpatentability (Pet. 18–36), and we are
persuaded by Petitioner’s mapping of the foregoing limitations of claim 1 to
the disclosure in Xue, and find that Xue discloses each limitation of claim 1,
arranged as in claim 1. Accordingly, having reviewed the complete record
before us, we conclude that Petitioner has proven by a preponderance of
evidence that independent claim 1 is unpatentable as anticipated by Xue.
b) Independent Claims 8 and 15
Petitioner contends Xue discloses all of the limitations of independent
claims 8 and 15. Pet. 45–48, 50–51.
The preamble of claim 8 recites “[a] computer readable medium
useful in association with a computer which includes a processor and a
memory, the computer readable medium including computer instructions
which are configured to cause the computer to use a data-entry form to
receive data entered by a user.” Ex. 1001, 11:62–66. Petitioner cites Xue’s
disclosure of Internet shopping carts involving data transmissions between
client side computers and server side computers over the Internet. Pet. 45–
48 (citing, inter alia, Ex. 1002, 1:21–63, 3:53–58, 8:36–39; Ex. 1006 ¶¶ 82–
85). Petitioner does not take a position as to whether the preamble is
limiting. See id. at 45. Because we find that Petitioner’s cited disclosure
from Xue discloses “[a] computer readable medium useful in association
with a computer which includes a processor and a memory, the computer
readable medium including computer instructions which are configured to
cause the computer to use a data-entry form to receive data entered by a
IPR2020-00403
Patent 6,415,284 B1

22

user,” we need not determine whether the preamble is limiting. See Nidec,
868 F.3d at 1017.
Claim 15 recites, in part, “[a] computer system comprising: a
processor; a memory operatively coupled to the processor; and a form
building module (i) which executes in the processor from the memory and
(ii) which, when executed by the processor, causes the computer to use a
data-entry form to receive data entered by a user.” Ex. 1001, 12:48–54.
Petitioner’s expert, Dr. Bederson, testifies, inter alia:
[The skilled artisan] would have recognized that Xue’s
processor, memory, and computer instructions would include a
“form building module” that causes its server computer to “use a
data-entry form to receive data entered by a user.” . . . Xue
discloses that a client downloads an HTML top file and interacts
with a server over the [I]nternet to complete an online
transaction. . . . Xue also discloses that its server includes
computer instructions to build a data-entry form. . . . [The skilled
artisan] therefore would have recognized that Xue’s instructions
for building a data-entry form discloses a “form building
module” as required by claim 15. A form building module would
simply be software instructions for building a data-entry form.
Ex. 1006 ¶¶ 114–116; see Pet. 50–51. Petitioner characterizes the above-
quoted text of claim 15 as “the preamble,” and does not take a position as to
whether it is limiting. See id. at 50. Patent Owner offers no evidence to
rebut Dr. Bederson’s testimony cited above (Ex. 1006 ¶¶ 114–116), and we
credit that testimony. Based on this testimony and the cited disclosures from
Xue supporting this testimony (see Ex. 1006 ¶¶ 82–85, 114–116), we find
that Xue discloses “[a] computer system comprising: a processor; a memory
operatively coupled to the processor; and a form building module (i) which
executes in the processor from the memory and (ii) which, when executed by
IPR2020-00403
Patent 6,415,284 B1

23

the processor, causes the computer to use a data-entry form to receive data
entered by a user.”
We agree with Petitioner that independent claims 8 (“computer
readable medium” claim) and 15 (“computer system” claim) otherwise recite
limitations commensurate in scope with independent claim 1 (“method”
claim). See Pet. 48, 51. We find that Xue discloses the limitations that
overlap with claim 1 for the same reasons given above for claim 1.
Accordingly, having reviewed the complete record before us, we conclude
that Petitioner has proven by a preponderance of evidence that independent
claims 8 and 15 are unpatentable as anticipated by Xue, for similar reasons
as discussed above regarding independent claim 1.
E. Obviousness of Claims 1, 8, and 15 over Xue (Ex. 1002)
Petitioner alternatively contends independent claims 1, 8, and 15 are
unpatentable under 35 U.S.C. § 103 as obvious over Xue (Ex. 1002).
Pet. 18–36. For similar reasons as discussed above regarding anticipation by
Xue of claims 1, 8, and 15, we conclude that Petitioner has proven by a
preponderance of evidence that independent claims 1, 8, and 15 are
unpatentable as obvious over Xue.4 See Cohesive Techs., Inc. v. Waters
Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (“[I]t is commonly understood
that prior art references that anticipate a claim will usually render that claim
obvious.”).

4 Patent Owner did not present any evidence or arguments directed to
secondary considerations during this proceeding.
IPR2020-00403
Patent 6,415,284 B1

24

F. Obviousness of Claims 1, 2, 8, 9, 15, and 16 Over the
Combination of Xue (Ex. 1002) and Blinn (Ex. 1003)
1. Independent Claims 1, 8, and 15
Petitioner also alternatively contends independent claims 1, 8, and 15
are unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Xue (Ex. 1002) and Blinn (Ex. 1003). Pet. 18–36.
Blinn relates generally to “a shopping and merchandising system for
online networks, such as the World Wide Web portion of the Internet,” as
shown, for example, in Figures 1 and 2, reproduced below. Ex. 1003, 1:6–9,
Abstract, Figs. 1, 2.

Figure 1 depicts an online network for implementing a
shopping and merchandising system, including client 100,
server 102, and network 104.
Ex. 1003, 4:29–30, 5:32–48, Fig. 1.
IPR2020-00403
Patent 6,415,284 B1

25

Figure 2 depicts an overview of an online merchant system.
Ex. 1003, 4:31–32, 6:26–46, Fig. 2. Blinn discloses that merchant system
120 communicates with database 121, consumer browser 122, merchant
browser 123, and network 124. Id. at 6:26–28. “[D]atabase 121 may
include query data, product information, order information, shopper
information, store information, receipts and customer feedback data.” Id.
at 6:33–36 (emphases added). In operation, “[a] shopper uses a consumer
browser 122, such as Microsoft Explorer or Netscape Navigator,
communicating with a network 124, such as the World Wide Web portion of
the Internet, to access a merchant’s online store using the merchant system
120.” Id. at 6:36–40.
Petitioner contends Blinn qualifies as prior art under, inter alia,
35 U.S.C. § 102(e) based on its filing date. Pet. 1. We have no evidence of
an invention date other than the earliest possible effective filing date of the
challenged claims. Thus, we determine that Blinn qualifies as prior art
IPR2020-00403
Patent 6,415,284 B1

26

under 35 U.S.C. § 102(e) because Blinn’s filing date of October 16, 1996, is
before the earliest possible effective filing date of the challenged claims,
which is June 30, 1999. Ex. 1001, code (22); Ex. 1003, code (22).
Petitioner introduces Blinn in connection with the claim limitation of
“sending the data-entry form with the verification logic through a computer
network to a remote computer.” Pet. 29 (emphasis added). Petitioner argues
Blinn teaches, inter alia, “‘[d]uring a shopping session, the consumer
browser 122 sends requests embedded in URL addresses to the merchant
system 120,’ and the merchant system 120 responds by sending an HTML
web page back to the client over the [I]nternet,” where such web pages
include “an [I]nternet shopping cart or ‘shopping basket.’” Pet. 32 (citing
Ex. 1003, 8:1–16, 10:5–17). Petitioner submits “Blinn therefore discloses
sending an HTML web page from a server to a client over the [I]nternet” for
execution by the client side or remote computer. Pet. 33 (citing Ex. 1006
¶¶ 87–89). Petitioner argues, for example, it would have been obvious to the
skilled artisan “to combine the sending feature of Blinn with the [I]nternet
shopping cart of Xue because it would have been nothing more than
combining known methods of transmitting information over the [I]nternet to
yield a predictable result: having Xue’s shopping cart—which Xue expressly
discloses as being downloaded—sent from a server over a computer network
as disclosed by Blinn.” Pet. 33–34 (citing Ex. 1006 ¶ 90). Patent Owner
offers no evidence to rebut Dr. Bederson’s testimony cited above (Ex. 1006
¶¶ 87–90), and we credit that testimony. Based on this evidence, we find
that combining Blinn’s sending feature with Xue’s shopping cart would have
been a predictable combination of known methods, and that a skilled artisan
would have had a reasonable expectation of success in doing so.
IPR2020-00403
Patent 6,415,284 B1

27

Having reviewed the complete record before us, we are persuaded that
the combination of Xue and Blinn teaches the subject matter of independent
claims 1, 8, and 15, and that the skilled artisan would have had a rational
reason to combine Xue and Blinn. Accordingly, for similar reasons as
discussed above regarding anticipation by and obviousness over Xue of
claims 1, 8, and 15, we conclude that Petitioner has proven by a
preponderance of evidence that independent claims 1, 8, and 15 are
unpatentable as obvious over the combination of Xue and Blinn.
2. Dependent Claims 2, 9, and 16
Petitioner contends dependent claims 2, 9, and 16 also are
unpatentable under 35 U.S.C. § 103 as obvious over the combination of Xue
(Ex. 1002) and Blinn (Ex. 1003). Pet. 36–45, 48–49, 52.
Dependent claim 2 (and similarly claims 9 and 16) require verification
logic as recited in independent claim 1 to include “one or more references to
data items stored in a database” and “resolving the references to replace the
references in the verification logic with data values of the data items
retrieved from the database.” Ex. 1001, 11:34–39, 12:10–17, 12:65–13:5.
Petitioner introduces Blinn here for teaching, inter alia, (1) logic
including references to data items stored in a database (see Pet. 36–43
(arguing, in part, “Blinn discloses one or more ‘references’ to data items
stored in a database by disclosing ‘directives’ that include ‘value references
for evaluation during page generation’” (citing, e.g., Ex. 1003, 8:17–52;
Ex. 1006 ¶¶ 94–102))); and (2) resolving such references in the logic with
data values of the data items retrieved from the database (see Pet. 44–46
(arguing, in part, “Blinn discloses retrieving data values from a database and
IPR2020-00403
Patent 6,415,284 B1

28

replacing value references in an HTML file with database values” (citing,
e.g., Ex. 1003, 8:17–52, 8:63–9:1; Ex. 1006 ¶¶ 103–105))). Petitioner
argues, and we find, that the skilled artisan “would have been motivated to
add Blinn’s database lookup functions to the HTML top file of Xue in order
to ensure that the data being checked by Xue’s data [verification] checks is
the most up-to-date information on the merchant (server) side of the
transaction.” Pet. 42; see id. at 36–45; Ex. 1006 ¶¶ 100–101. Petitioner also
argues, and we find, that it would have been obvious to combine “Blinn’s
database directives and value references with Xue’s shopping cart methods
when generating Xue’s top file,” because “[d]oing so would have provided
the client with up-to-date information from an online merchant to complete a
transaction without multiple requests to the server, thus fulfilling a primary
goal of Xue.” Pet. 41–42 (citing, e.g., Ex. 1003, 1:37–63, 2:48–59; Ex. 1006
¶¶ 100–101). Patent Owner offers no evidence to rebut Dr. Bederson’s
testimony cited above (Ex. 1006 ¶¶ 94–105), and we credit that testimony.
We have reviewed Petitioner’s contentions with respect to these
dependent claims (see Pet. 36–45, 48–49, 52) in light of the complete record
before us, and are persuaded that the combination of Xue and Blinn teaches
the subject matter of these claims, and that the skilled artisan would have
had a rational reason to combine Xue and Blinn. Accordingly, for the same
reasons provided above for independent claims 1, 8, and 15, as well as the
foregoing arguments and evidence submitted by Petitioner concerning
dependent claims 2, 9, and 16, which we adopt as our own, we conclude that
Petitioner has proven by a preponderance of evidence that the combined
teachings of Xue and Blinn render dependent claims 2, 9, and 16
unpatentable as obvious.
IPR2020-00403
Patent 6,415,284 B1

29

G. Obviousness of Claims 3, 5, 6, 10, 12, 13, 17, 19, and 20 Over
the Combination of Xue (Ex. 1002), Blinn (Ex. 1003), and Gupta
(Ex. 1005)
Petitioner contends dependent claims 3, 5, 6, 10, 12, 13, 17, 19,
and 20 are unpatentable under 35 U.S.C. § 103 as obvious over the
combination of Xue (Ex. 1002), Blinn (Ex. 1003), and Gupta (Ex. 1005).
Pet. 52–63. Patent Owner, having elected to not file a response after
institution, makes no arguments unique to this ground and thus has waived
any such challenge. See Paper 9, 10. We have considered the entirety of the
record in light of Petitioner’s contentions on this ground of unpatentability
(Pet. 52–63), and we are persuaded by Petitioner’s contentions. In
particular, we find Petitioner persuasively explains how the combination of
Xue, Blinn, and Gupta teaches the additional limitations in dependent claims
3, 5, 6, 10, 12, 13, 17, 19, and 20, as discussed below. We first turn briefly
to Gupta.
Gupta generally relates to “[a] method of automatically filling in on-
line forms presented by web pages in an internet transactional environment.”
Ex. 1005, Abstract; see Ex. 1006 ¶ 68. Gupta’s system uses a “virtual
check-out counter” that permits an online shopper to make purchases from
multiple online vendors simultaneously by interacting with only one
interface. Ex. 1005, 7:32–63; see id. at 2:66–3:20, 9:31–42. A shopper can
submit a form through the interface, which will cause the system to fill in
separate forms for each online vendor with data stored in a database. Id.
at 6:19–55, 7:32–8:53, Figs. 3C–3D. Gupta’s system recognizes fields of
the forms, then uses “relationships” between data objects to match the form
fields with user data retrieved from a “User Meta-database.” Id. at 6:19–55.
IPR2020-00403
Patent 6,415,284 B1

30

The system may complete the transaction automatically for the user after it
has filled the vendor’s form with the user’s data. Id. at 8:3–12.
Petitioner contends Gupta qualifies as prior art under 35 U.S.C.
§ 102(e) based on its filing date. Pet. 2. We have no evidence of an
invention date other than the earliest possible effective filing date of the
challenged claims. Thus, we determine that Gupta qualifies as prior art
under 35 U.S.C. § 102(e) because Gupta’s filing date of March 20, 1998, is
before the earliest possible effective filing date of the challenged claims,
which is June 30, 1999. Ex. 1001, code (22); Ex. 1005, code (22).
1. Claims 3, 10, and 17
Claim 3 depends from claim 2 (and ultimately from independent
claim 1), and further recites “identifying the user; and wherein the data items
retrieved from the database are associated with the user within the database.”
Ex. 1001, 11:40–44. Similarly, claims 10 and 17, which mirror the
limitations in claim 3, depend from claims 9 and 16, respectively (and
ultimately from independent claims 8 and 15, respectively). Id. at 12:17–22,
13:6–11.
Petitioner’s expert, Dr. Bederson, testifies that Xue discloses
“identifying the user by disclosing an internet shopping cart in which a user
can enter a user ID and password,” and that this would be used to identify a
user. Ex. 1006 ¶ 123 (citing Ex. 1002, 7:28–31 (“user ID and password in
[a] shopping cart”), 16:47–52, 19:9–25 (disclosing exemplary code for
“[c]hecking user’s ID and password”), Fig. 3). Similarly, Dr. Bederson
testifies that Blinn and Gupta also each disclose user identification.
See Ex. 1006 ¶¶ 124–125 (citations omitted). Based on this evidence, we
IPR2020-00403
Patent 6,415,284 B1

31

find that Xue, Blinn, and Gupta teach “identifying the user,” as recited in
claim 3.
Dr. Bederson also testifies that (1) Gupta discloses “[a] method of
automatically filling in on-line forms presented by web pages in an internet
transactional environment” (quoting Ex. 1005, Abstract); (2) “[u]sing
Gupta’s system, an online shopper may make purchases from multiple
online vendors simultaneously by using a single interface” (citing Ex. 1005,
2:66–3:20, 7:32–63, 9:31–42); (3) Gupta’s system “retrieves data stored in a
‘User Meta-database 170’ and ‘User Selection database 180’ to fill in forms
for each online vendor with which the user wishes to make a purchase”
(citing Ex. 1005, 6:19–55, 7:34–8:53, Figs. 3C–3D); (4) the skilled artisan
would have understood that “Gupta’s User Meta-database 170 and User
Selection database 180 are databases that store data items associated with a
user because Gupta fills the online forms with user-specific data from the
databases” (citing Ex. 1005, 2:66–3:9, 2:15–30); and (5) “Gupta [therefore]
discloses retrieving data from a database that is associated with a user.”
Ex. 1006 ¶ 126. Dr. Bederson further testifies that the skilled artisan “would
have been motivated to combine Gupta’s user-specific data with the HTML
pages and data checking features of Xue and Blinn to provide user-specific
data to a client along with an internet shopping cart.” Id. ¶ 127.
Dr. Bederson explains that “providing Gupta’s user-specific information
would have enabled the data checks of Xue to utilize user-specific data to
check against the user’s input,” and that “[t]his would have furthered Xue’s
desire to limit transmissions between the client and server before a
completed shopping cart is submitted to complete a transaction because the
user-entered data could be verified on the client without having to engage in
IPR2020-00403
Patent 6,415,284 B1

32

another transmission.” Id. Patent Owner offers no evidence to rebut
Dr. Bederson’s testimony in this regard, and we credit that testimony. Based
on this evidence, we find that Gupta teaches “wherein the data items
retrieved from the database are associated with the user within the database,”
as recited in claim 3, and that a skilled artisan would have combined Gupta’s
teachings with those of Xue and Blinn to limit transmissions between the
client and server.
Having reviewed the complete record before us, we are persuaded that
the combination of Xue, Blinn, and Gupta teaches the subject matter of
dependent claims 3, 10, and 17, and that the skilled artisan would have had a
rational reason to combine Xue, Blinn, and Gupta. Accordingly, for the
same reasons provided above for claims 1 and 2, as well as the foregoing
arguments and evidence submitted by Petitioner concerning dependent
claims 3, 10, and 17 (see Pet. 52–55, 61–62), which we adopt as our own,
we conclude that Petitioner has proven by a preponderance of evidence that
the combined teachings of Xue, Blinn, and Gupta render dependent claims 3,
10, and 17 unpatentable as obvious.
2. Claims 5, 12, and 19
Claim 5 depends from independent claim 1, and further recites “for
each of the one or more fields, determining default data values for the field
according to data items retrieved from a database.” Ex. 1001, 11:49–52.
Similarly, claims 12 and 19, which mirror the limitations in claim 5, depend
from independent claims 8 and 15, respectively. Id. at 12:29–34, 13:19–
14:3.
IPR2020-00403
Patent 6,415,284 B1

33

Petitioner’s expert, Dr. Bederson, testifies that “Gupta discloses
retrieving data items associated with a user from a database,” and
“determining default data values for fields of a form according to data items
retrieved from a database,” for reasons discussed above regarding dependent
claim 3. Ex. 1006 ¶ 129; see id. ¶ 128. In particular, Dr. Bederson testifies
that “Gupta uses ‘properties’ in its User Meta-Database 170 to automatically
fill-in online forms,” where, for example, “a property may include ‘a name
of a user’” and “‘[t]ransformation function 88 converts a property into a
value for filling in a field in a form.’” Ex. 1006 ¶ 129 (citations omitted).
Dr. Bederson also testifies:
[The skilled artisan] would have understood that Gupta’s
properties disclose “determining default data values” of a form
field according to data items in a database as required by claim 5
because Gupta’s properties are drawn from its database and are
used to automatically fill in form fields. Moreover, the examples
provided in Gupta are consistent with the ’284 patent’s
disclosure of this claim feature. Gupta’s example of
automatically filling in a user’s name is consistent with the ’284
patent’s disclosure that a “default annotation” of a form field may
be used to fill in an employee’s name.
Ex. 1006 ¶ 130 (citations omitted). In addition, Dr. Bederson testifies that
Xue and Blinn also each disclose this feature of claim 5. Ex. 1006 ¶¶ 131–
132 (citations omitted).
Dr. Bederson further testifies that “[a] skilled artisan would have
combined Xue, Blinn, and Gupta to provide default values in an HTML
form field provided to a user because each discloses providing such data.”
Ex. 1006 ¶ 133. More specifically, Dr. Bederson testifies that, among other
reasons, the skilled artisan “would have been motivated to combine Gupta
with Xue and Blinn in order to further their combined goal of reducing data
IPR2020-00403
Patent 6,415,284 B1

34

entry errors in an online form,” because “Gupta’s autofill features would
have improved this goal in the Xue and Blinn system by automating some
data entries and thus reducing errors by human input.” Ex. 1006 ¶ 133.
Dr. Bederson explains that “[t]his ultimately would have reduced
unnecessary data transmission between a client and server due to user entry
errors.” Ex. 1006 ¶ 133. Patent Owner offers no evidence to rebut
Dr. Bederson’s testimony in this regard, and we credit that testimony.
Having reviewed the complete record before us, we are persuaded that
the combination of Xue, Blinn, and Gupta teaches the subject matter of
dependent claims 5, 12, and 19, and that the skilled artisan would have had a
rational reason to combine Xue, Blinn, and Gupta. Accordingly, for the
same reasons provided above for independent claim 1, as well as the
foregoing arguments and evidence submitted by Petitioner concerning
dependent claims 5, 12, and 19 (see Pet. 55–60, 62–63), which we adopt as
our own, we conclude that Petitioner has proven by a preponderance of
evidence that the combined teachings of Xue, Blinn, and Gupta render
dependent claims 5, 12, and 19 unpatentable as obvious.
3. Claims 6, 13, and 20
Claim 6 depends from claim 5 (and ultimately from independent
claim 1), and further recites “identifying the user; and wherein the data items
retrieved from the database are associated with the user within the database,”
which additional limitations are identical to those of dependent claim 3,
discussed above. Ex. 1001, 11:53–56. Similarly, claims 13 and 20, which
mirror the limitations in claim 6 (and claim 3), depend from claims 12 and
IPR2020-00403
Patent 6,415,284 B1

35

19, respectively (and ultimately from independent claims 8 and 15,
respectively). Id. at 12:35–40, 14:5–11.
Petitioner argues the combination of Xue and Gupta (and Xue, Blinn,
and Gupta) render dependent claims 6, 13, and 20 unpatentable as obvious
for the same reasons discussed above regarding dependent claim 3. See
Pet. 60–63 (citing Ex. 1006 ¶¶ 127, 133–135).
Having reviewed the complete record before us, we are persuaded that
the combination of Xue and Gupta (and Xue, Blinn, and Gupta) teaches the
subject matter of dependent claims 6, 13, and 20, and that the skilled artisan
would have had a rational reason to combine Xue and Gupta (and Xue,
Blinn, and Gupta), for the same reasons explained above regarding claims 1,
2, 3, and 5. Accordingly, we conclude that Petitioner has proven by a
preponderance of evidence that the combined teachings of Xue and Gupta
(and Xue, Blinn, and Gupta) render dependent claims 6, 13, and 20
unpatentable as obvious.
H. Obviousness of Claims 4, 7, 11, 14, 18, and 21 Over the
Combination of Xue (Ex. 1002) and Blinn (Ex. 1003), and
Alternatively, Over the Combination of Xue, Blinn, and Wolff
(Ex. 1004)
Petitioner contends that dependent claims 4, 7, 11, 14, 18, and 21 are
unpatentable under 35 U.S.C. § 103 as obvious over the combination of Xue
(Ex. 1002) and Blinn (Ex. 1003), and alternatively, over the combination of
Xue, Blinn, and Wolff (Ex. 1004). Pet. 63–69. Patent Owner, having
elected to not file a response after institution, makes no arguments unique to
this ground and thus has waived any such challenge. See Paper 9, 10.
We have considered the entirety of the record in light of Petitioner’s
IPR2020-00403
Patent 6,415,284 B1

36

contentions in this ground of unpatentability (Pet. 63–69), and we are
persuaded by Petitioner’s contentions. In particular, we find Petitioner
persuasively explains how the combination of Xue and Blinn teaches the
additional limitations in dependent claims 4, 7, 11, 14, 18, and 21, as
discussed below. As such, we need not and do not address whether
Petitioner’s alternative combination of Xue, Blinn, and Wolff likewise
renders these claims obvious. See Ex. 1006 ¶¶ 146, 150–151 (Petitioner’s
expert explaining how this combination renders the subject claims obvious);
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner
“is entitled to a final written decision addressing all of the claims it has
challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., Nos. 2019-
1594, -1604, -1605, 2020 WL 2071962, at *4 (Fed. Cir. Apr. 30, 2020)
(non-precedential) (recognizing that the “Board need not address issues that
are not necessary to the resolution of the proceeding” and, thus, agreeing
that the Board has “discretion to decline to decide additional
instituted grounds once the petitioner has prevailed on all its challenged
claims”).
Claim 4 depends from claim 2 (and ultimately from independent
claim 1), and further recites “receiving data entered by the user in
completing the data-entry form; and storing the data entered by the user in
the database.” Ex. 1001, 11:45–48. Similarly, claims 11 and 18, which
mirror the limitations in claim 4, depend from claims 9 and 16, respectively
(and ultimately from independent claims 8 and 15, respectively). Id.
at 12:23–28, 14:12–17. Claim 7 depends from claim 5 (and ultimately from
independent claim 1), and further recites “receiving data entered by the user
in completing the data-entry form; and storing the data entered by the user in
IPR2020-00403
Patent 6,415,284 B1

37

the database,” which additional limitations are identical to those of
dependent claim 4, discussed above. Ex. 1001, 11:58–61. Similarly,
claims 14 and 21, which mirror the limitations in claim 7 (and claim 4),
depend from claims 12 and 19, respectively (and ultimately from
independent claims 8 and 15, respectively). Id. at 12:42–47, 14:12–19.
Thus, each of dependent claims 4, 7, 11, 14, 18, and 21 introduces the same
subject matter to the underlying claimed invention, namely, receiving data
entered by a user and storing the data in a database.
Petitioner’s expert, Dr. Bederson, testifies that “Xue discloses
receiving data entered by the user in completing a data-entry form by
disclosing an internet shopping cart with fields or cells that can receive user-
entered data, such as the quantity of an item to be purchased, the applicable
tax rate, and the user’s ID and password.” Ex. 1006 ¶ 146 (citing Ex. 1002,
7:21–34). Dr. Bederson also testifies that Xue discloses “saving the user’s
entries into a database.” Ex. 1006 ¶ 147 (citing Ex. 1002, 17:1–5 (“After
receiving the submitted data set, CGI program can make some necessary
checks. If everything seems to be right, the data set can then be saved in a
file or a database.”) (emphasis added), 11:20–48 (server-side CGI program
“retrieve[s] the data in the form of the shopping cart, and write[s] the data to
the file or database on the server side”)); see Ex. 1006 ¶ 148 (“[T]he term
‘database’ may be used to broadly refer to a single database or multiple
database servers or computers distributed over a network. . . . To the extent
it is argued that claims 2 and 4 require a single ‘database,’ it is my opinion
that Xue discloses this feature.”). Dr. Bederson further testifies that, to the
extent multiple databases or storage devices are necessary, “Blinn expressly
discusses a database that is made up of several storage devices distributed
IPR2020-00403
Patent 6,415,284 B1

38

across a network.” Ex. 1006 ¶ 149 (citing Ex. 1003, 6:26–46). Based on
this evidence, we find that Xue and Blinn teach receiving data entered by a
user and storing the data in a database. Patent Owner offers no evidence to
rebut Dr. Bederson’s testimony in this regard, and we credit that testimony.
Having reviewed the complete record before us, we are persuaded that
the combination of Xue and Blinn teaches the subject matter of dependent
claims 4, 7, 11, 14, 18, and 21, and that the skilled artisan would have had a
rational reason to combine Xue and Blinn. Accordingly, for the same
reasons provided above for claims 1 and 2, as well as the foregoing
arguments and evidence submitted by Petitioner concerning dependent
claims 4, 7, 11, 14, 18, and 21 (see Pet. 63–69), which we adopt as our own,
we conclude that Petitioner has proven by a preponderance of evidence that
the combined teachings of Xue and Blinn render dependent claims 4, 7, 11,
14, 18, and 21 unpatentable as obvious.
III. CONCLUSION5
Claims
35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 8, 15 102 Xue 1, 8, 15

5 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
IPR2020-00403
Patent 6,415,284 B1

39

Claims
35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 8, 15 103 Xue 1, 8, 15
1, 2, 8, 9,
15, 16 103 Xue, Blinn
1, 2, 8, 9, 15,
16
3, 5, 6, 10,
12, 13, 17,
19, 20
103 Xue, Blinn, Gupta
3, 5, 6, 10, 12,
13, 17, 19, 20
4, 7, 11,
14, 18, 21 103 Xue, Blinn
4, 7, 11, 14,
18, 21
4, 7, 11,
14, 18, 21 103
6 Xue, Blinn, Wolff
Overall
Outcome 1–21

IV. ORDER
Upon consideration of the record, it is:
ORDERED that claims 1–21 of U.S. Patent No. 6,415,284 B1 are
unpatentable; and

6 As explained above, because we find Petitioner persuasively explains how
the combination of Xue and Blinn teaches the additional limitations in
dependent claims 4, 7, 11, 14, 18, and 21, we need not and do not address
whether Petitioner’s alternative combination of Xue, Blinn, and Wolff
likewise renders these claims obvious. See SAS Inst., 138 S. Ct. at
1359; Boston Sci., 2020 WL 2071962, at *4.
IPR2020-00403
Patent 6,415,284 B1

40

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.

IPR2020-00403
Patent 6,415,284 B1

41

PETITIONER:
Jeffrey Berkowitz
Daniel Tucker
Alexander Boyer
Bradley Edgington
Guang-Yu Zhu
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
jeffrey.berkowitz@finnegan.com
daniel.tucker@finnegan.com
alexander.boyer@finnegan.com
guang-yu.zhu@finnegan.com
bradley.edgington@finnegan.com

PATENT OWNER:
Jonathan Szarzynski
SZARZYNSKI PLLC
jon@szarzynski.com