sumy issue text file

UNITED STATES PATENT AND TRADEMARK OFFICE











BEFORE THE PATENT TRIAL
AND APPEAL BOARD








PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 5,987,500




Filed on behalf of SAP America, Inc.
Lori A. Gordon
By:
Michael Q. Lee


Sterne, Kessler, Goldstein & Fox PLLC
1100 New York Avenue, NW


Washington, D.C.



Tel:  (202) 371-2600
Fax: (202) 371-2540










OF CONT
TABLE O
TENTS

.... 2
.... 4
.... 4
..... 4
..... 5
..... 5
.... 6
.. 12

... 12
.. 16
.. 23
.. 25
.. 27
.. 29
.. 30
.. 30
.. 33
.. 34
.. 35

... 39
.. 41
.. 47
.. 49
.. 50
.. 51
.. 53
.. 53
.. 55
.. 56
.. 56
.. 60

I.
II.
III.

) ...............
.................
.................
7 C.F.R. §
Notice (37
Mandatory
M
42.8(a)(1)
.................
.................
R. § 42.104
g (37 C.F.R
r Standing
Grounds for
G
4(a)) ..........
.................
.................
Id
dentificatio
on of Chal
lenge (37 C
C.F.R. § 42
2.104(b)) .
.................
.................
challenge
nds for the
utory groun
Statu
A.
................
.................
.................
.................
or Art .......
ion of Prio
Citat
B.
.................
.................
.................
Claim
C.
m Construc
ction ........
.................
.................
.................
.................
1.
Summary
y of the ‘50
00 Patent .
.................
.................
.................
ANTICIPAT
SED ON A
NGES BAS
CHALLEN
IV.  C
TION .......
A
A.
-12, 14-17
  Grou
und 1: Chel
lliah antici
ipates claim
ms 1-6, 10
7, and
.................
.................
.................
................
.................
35. ...
.................
Chelliah
anticipates
dent claim
1.
s independ
1 ..............
.................
Chelliah
2.
anticipates
s dependen
nt claim 2.
 ................
.................
Chelliah
 ................
.................
s dependen
anticipates
3.
nt claim 3.
Chelliah
 ................
s dependen
anticipates
4.
nt claim 4.
.................
Chelliah
5.
anticipates
s dependen
nt claim 5.
 ................
.................
Chelliah
 ................
nt claim 6.
s dependen
anticipates
6.
.................
Chelliah
and 16. ......
0-12, 15, a
s claims 10
anticipates
7.
.................
Chelliah
8.
anticipates
s claim 14
. ...............
.................
.................
Chelliah
. ...............
.................
s claim 17
anticipates
9.
.................
Chelliah
35. ...........
dent claim
s independ
anticipates
10.
.................
ms  1-6,  10-
Grou
und  2: Giff
ford  anticip
pates  claim
-12,  14-17
7,  and
.................
.................
.................
................
.................
35. ...
.................
Gifford a
1 ................
ent claim 1
independe
anticipates
1.
.................
2.
Gifford a
anticipates
dependent
t claim 2. .
.................
.................
.................
dependent
anticipates
Gifford a
3.
t claim 3. .
.................
.................
dependent
anticipates
Gifford a
4.
t claim 4. .
.................
Gifford a
5.
anticipates
dependent
t claim 5. .
.................
.................
6.
Gifford a
anticipates
dependent
t claim 6. .
.................
.................
-12, 15, an
nd 16. ........
claims 10
anticipates
Gifford a
7.
.................
claim 14. .
Gifford a
8.
anticipates
.................
.................
.................
9.
Gifford a
anticipates
claim 17. .
.................
.................
.................
35. .............
ent claim 3
independe
anticipates
Gifford a
10.
.................
Conclusion
C
n ................
.................
.................
.................
.................
................

ABC

B
B.



V.



- i -



Petitioner SAP America, Inc. ("SAP") petitions the United States Patent

Office to institute an inter partes review of claims 1-6, 10-12, 14-17, and 35

(collectively, the “challenged claims” or “claims under review”) of United States

Patent No. 5,987,500 to Arunachalam (“the ’500 patent”). According to Office

records, the ʼ500 patent is assigned to Pi-Net International, Inc. (“Pi-Net” or

“Patent Owner”).  A copy of the ’500 patent is provided as SAP 1001.

Although the '500 Patent purports to be the first to introduce real-time

transactions over a network, electronic commerce over networks such as the World

Wide Web was known well before the '500 Patent's earliest possible priority date.

In fact, the ‘500 Patent acknowledges that two-way, interactive, real-time

transactions over the World Wide Web existed prior to the filing date of the '500

Patent. ('500 Patent, 1:50-2:7.) For example, robust systems with diverse

functionality, such as electronic malls (i.e., applications accessible over the World

Wide Web that allow users to perform real-time transactions with a variety of

different merchants) and electronic payment systems were well known before the

'500 Patent.  Because the prior art references discussed in this petition teach real-

time electronic commerce and predate the '500 Patent, this petition presents

grounds of rejection that are reasonably likely to prevail, and it should be granted

on all grounds.





- 1 -



I.  Mandatory Notice (37 C.F.R. § 42.8(a)(1))
REAL  PARTY  IN  INTEREST:    The  real  party-in-interest  of  Petitioner  is  SAP

America, Inc. (“SAP”).

RELATED MATTERS:  Petitioner notes that U.S. Patent No. 5,987,500 is

involved in the following current proceedings that may affect or may be affected

by a decision in this proceeding:  Pi-Net International, Inc v. 1st Valley Credit

Union, No. 5:12-cv-01989 (C.D.Cal.); Pi-Net International, Inc v. Ace Rent A Car

Inc, No. 2:12-cv-04303 (C.D.Cal.); Pi-Net International, Inc v. Avis Budget Group

Inc et al, No. 2:12-cv-04036 (C.D.Cal.); Pi-Net International Inc v. Cal Poly

Federal Credit Union, No. 2:12-cv-09703 (C.D.Cal.); Pi-Net International Inc v.

Dollar Thrifty Automotive Group Inc et al, No. 2:12-cv-04270 (C.D.Cal.); Pi-Net

International Inc v. Enterprise Holdings Inc, No. 2:12-cv-03970 (C.D.Cal.); Pi-Net

International Inc v. In-land Valley Federal Credit Union, No. 5:12-cv-01990

(C.D.Cal.); Pi-Net International Inc v. Media City Community Credit Union, No.

2:12-cv-09699 (C.D.Cal.); Pi-Net International Inc v. Payless Car Rental System

Inc, No. 2:12-cv-04394 (C.D.Cal.); Pi-Net International Inc v. South Bay Credit

Union, No. 2:12-cv-09705 (C.D.Cal.); Pi-Net International Inc V. The Hertz

Corporation et al, No. 2:12-cv-10012 (C.D.Cal.); Pi-Net International Inc v. U-

Haul International Inc, No. 2:12-cv-04301 (C.D.Cal.); Pi-Net International, Inc. v.

Bank of America, N.A. et al., No. 1:12-cv-00280 (D. Del.); Pi-Net International



- 2 -



Inc. v. Capital One Financial Corporation et al, No. 1:12-cv-00356 (D.Del.); Pi-

Net International, Inc v. Citizens Financial Group, Inc., No. 1:12cv-00355

(D.Del.) (the “Concurrent Litigation”); Pi-Net International Inc. v. JP Morgan

Chase & Co, No. 1:12-cv-00282 (D.Del.); Pi-Net International Inc. v. Sovereign

Bank N.A, No. 1:12-cv-00354 (D.Del.); Pi-Net International Inc. v. UBS Financial

Services Inc, No. 1:12-cv-00353 (D.Del.); Pi-Net International Inc. v. Wilmington

Trust Company et al, No. 1:12-cv-00281 (D.Del.); Pi-Net International Inc. v.

WSFS Financial Corporation et al, No. 1:12-cv-00352 (D.Del.); Pi-Net

International, Inc v. Bridge Bank, No. 5:12-cv-04959 (N.D.Cal.); Pi-Net

International, Inc v. Commonwealth Central Credit Union, No. 5:12-cv-05730

(N.D.Cal.); Pi-Net International, Inc. v. Mission National Bank, No. 3:12-cv-

04960 (N.D.Cal.); Pi-Net International, Inc. v. First National Bank Of Northern

California, No. 3:12-cv-04957 (N.D.Cal.); Pi-Net International, Inc. v. My Credit

Union, No. 3:12-cv-05733 (N.D.Cal.); Pi-Net International, Inc. v. San Jose Credit

Union, No. 4:12-cv-05732 (N.D.Cal.); Pi-Net International, Inc. v. My Credit

Union, No. 4:12-cv-05733.

SERVICE  INFORMATION:   Please address all correspondence  to  the  lead counsel

as  shown  below.    Petitioner  consents  to  electronic  service  by  email  at  the  email

address provided below.

  LEAD AND BACKUP COUNSEL:



- 3 -



Lead Counsel

Backup Counsel

Lori A. Gordon, Reg. No. 50,636

Michael Q. Lee, Reg. No. 35,239



STERNE, KESSLER, GOLDSTEIN & FOX

STERNE, KESSLER, GOLDSTEIN & FOX

1100 New York Avenue, N.W.

1100 New York Avenue, N.W.

Washington, D.C. 20005-3932

Washington, D.C. 20005-3932

Tel.:  202-772-8862

Fax:  202-371-2600





Tel.:  202-772-8674

Fax:  202-371-2600





lgordon-PTAB@skgf.com

mlee-PTAB@skgf.com

II.  Grounds for Standing (37 C.F.R. § 42.104(a))
The undersigned and SAP certify that the ’500 patent is available for review.

Because  the  ’500  patent  has  an  effective  filing  date  of  November    13,  1995,  35

U.S.C.  §  311(c)'s  timing  requirements  do  not  apply.    See  AIA  Technical

Corrections  Bill,  H.R.  6621,  112th  Cong.  §  1(d)(1)  (2013)  (enacted).    SAP  also

certifies  that  it  is  not  estopped  from  requesting  an  inter  partes  review  challenging

claims 1- 6, 10-12, 14-17, and 35 on the grounds identified in the petition.

III.

Identification of Challenge (37 C.F.R. § 42.104(b))
A.
Statutory grounds for the challenge
SAP  request  inter  partes  review  of  claims  1-6,  10-12,  14-17  and  35

(collectively referred to herein as the “challenged claims”):





Ground  1:    Claims  1-6,  10-12,  14-17,  and  35  are  unpatentable  under  35

- 4 -



U.S.C. § 102(e) as anticipated by U.S. Patent No. 5,710,887 to Chelliah, et al.

Ground  2:  Claims  1-6,  10-12,  14-17,  and  35  are  unpatentable  under  35

U.S.C. § 102(e) as anticipated by U.S. Patent No. 5,724,424 to Gifford.

B.  Citation of Prior Art
The  earliest  possible  priority  date  is  November  13,  1995.1  The  following

prior art references are applied in the above grounds:

U.S. Patent No. 5,710,887  to Chelliah et. al.  (“Chelliah”) qualifies as prior

art  under  at  least  §  102(e)  because  it  was  filed  on  August  29,  1995,  prior  to  the

filing date of the ‘500 patent.  Chelliah is provided as SAP 1003.

U.S.  Patent  No.  5,724,424  to  Gifford  (“Gifford”)  qualifies  as  prior  art

under  at  least  §  102(e)  because  it  has  an  effective  filing  date  of  December  16,

1993, prior to the filing date of the ‘500 patent.  Gifford is provided as SAP 1004.

C.  Claim Construction
Except  for  the  claim  terms  explicitly  set  forth  below  in  section  III.C.2,  the

claim  terms  of  the  ‘500  patent  are  to  be  given  their  broadest  reasonable

interpretation,  as understood by one of ordinary  skill  in  the  art  and  consistent with

the disclosure.  A brief summary of the ‘500 patent is provided in section III.C.1.


1 Solely for purposes of petition,  it  is assumed  that  the  '500 Patent  is entitled
to priority to Provisional Application No. 60/006,634 filed November 13, 1995.



- 5 -



1.

Summary of the ‘500 Patent
(a)  Background
According  to  the  '500  Patent,  before  its  earliest  possible  filing  date  "[t]he

ability to complete robust real-time, two-way transactions" was not "truly available

on  the Web."  ('500 Patent, 2:27-28.) One option  available  to  users was  "deferred,"

i.e.,  non-real-time,  transactions  (e.g.,  using  email)  that  were  "not  processed  until

the  email  [was]  received,  read,  and  the  person  or  system  reading  the  email

execute[d]  the  transaction."  ('500  Patent,  1:29-32.)  This  option  thus  employed  a

"strictly  []  one-way  browse mode  communications  link, with  the  e-mail  providing

limited, deferred transactional capabilities." ('500 Patent, 1:47-49.)

But the '500 Patent admits that well known technologies existed that allowed

for  "two-way"  transactions  on  the  Web  using  Common  Gateway  Interface  (CGI)

applications.  ('500  Patent,  1:50-52.)  These  CGI  scripts  featured  real-time

transactions,  e.g.,  making  payments  on  a  loan.  ('500  Patent,  1:64-66;  DEC.)  The

‘500  Patent,  however,  contends  that  these  CGI  scripts  were  not  a  "viable  solution

for merchants with a large number of services." ('500 patent, 1:60-2:7.)

(b)  The '500 Patent's Disclosure
The  '500  Patent  sought  to  provide  "a  method  and  apparatus  for  providing

real-time,  two-way  transactional  capabilities  on  the  Web."  ('500  Patent,  2:32-34.)

FIG.  8  of  the  '500  Patent  provides  a  flow  diagram  in which  the  user  first  connects

to  a  Web  server  and  issues  a  request  for  a  transactional  application.  ('500  Patent,



- 6 -



9:18-20.)  An  "exchange"  then  presents  the  user  with  a  list  of  applications  and,  in

response  to  the  user's  selection,  switches  the  user  to  the  selected  application.  ('500

Patent,  9:22-26.)  An  "object  routing  component"  then  executes  the  user's  request.

('500 Patent, 9:25-28.)

FIG. 7 of  '500 Patent shows a value added network (VAN) switch 520. ('500

Patent,  8:34-35.)  VAN  switch  520  includes  a  boundary  service  701,  a  switching

service  702,  a management  service  703,  and  an  application  service  704. Boundary

service  701  "provides  the  interface  to  the  on-line  service  provider."  ('500  Patent,

8:39-40.)  Switching  service  702  routes  user  connections  to  specific  software

modules,  multiplexes  and  prioritizes  requests,  and  facilitates  access  to  financial

networks  (e.g.,  banking  networks)  using  the  Internet.  ('500  Patent,  8:44-52.)

Management  service  803  includes  tools  that  are  "used  by  the  end  users  to manage

network  resources."  ('500 Patent, 8:58-60.) Also, application  service 804  "includes

POSvc [point of service] applications." ('500 Patent, 9:2-3.)

(c)  Claim Terms for Construction
(i)
 “Value-added network”” Terms
The  ‘500  Patent  uses  the  term  “value-added  network”  (or  “value  added

network”)  only  in  the  context  of  a  value-added  network  service  or  a  value-added

network switch.   The ‘500 Patent, however, does not provide definition of a value-



- 7 -



added  network.    (Sirbu Decl.,2  ¶  15.). Under  the  broadest  reasonable  construction,

a  "value-added  network"  is  a  network  that  provides  additional  value  or  services

relative  to  a  network  (e.g.,  a  connection  between  two  nodes).  (Sirbu  Decl.,  ¶  15)

Value-added  services  include,  for  example,  packet  switching,  encryption,  or

authentication.  (Sirbu  Decl.,  ¶  15.)  Because  the  Internet  is  a  packet-switched

network,  it  is a  "value-added network."  (Sirbu Decl., ¶ 15.) Moreover, because  the

World Wide Web  is provided over  the  Internet,  it also  is a "value-added network."

(Sirbu Decl., ¶ 15.)

VALUE-ADDED NETWORK SWITCH (CLAIMS 1, 10, AND 35)

The plain and ordinary meaning of a  "switch"  is a hardware and/or  software

module  that  facilitates  the  movement  of  data  between  two  or  more  computers.

(Sirbu Decl., ¶ 16.) The  '500 Patent does not provide a definition contradicting this

plain  meaning.  (Sirbu  Decl.,  ¶  16.)  Thus,  under  the  broadest  reasonable

interpretation,  a  "value-added  network  switch"  at  least  encompasses  a  hardware

and/or  software  module  resident  on  one  or  more  computers  accessible  over  the

Internet or the World Wide Web that facilitates the movement of data between two

or more computers. (Sirbu Decl., ¶ 16.)

VALUE-ADDED NETWORK SERVICE PROVIDER (CLAIMS 1, 10, AND 35)

Generally, a service provider is a party that provides a service to an end user.


2 The Sirbu Declaration is provided as SAP 1002.



- 8 -



The  '500  Patent  describes  that  a  merchant  is  an  example  of  a  "service  provider."

(Sirbu  Decl.,  ¶  17;  see  also  '500  Patent,  7:20-25  ("three-way  transaction  can  be

expanded  to  n-way  transactions,  where  n  represents  a  predetermined  number  of

merchants  or  other  service  providers  who  have  agreed  to  cooperate  to  provide

services  to  users"  (emphasis  added).).  Thus,  a  "value-added  network  service

provider" includes at least a party such as a merchant which provides services over

a value-added network (e.g., the Internet or the WWW). (Sirbu Decl., ¶ 17.)

(ii)  “Transactional application” (claims 1, 10, and 35)
A  transactional  application  is  simply  an  application  that  supports  one  or



more  transactions.  (See  Sirbu  Decl.,  ¶  18.)  The  '500  Patent  describes  an  explicit

definition  of  the  term  "transaction"  as  "any  type  of  commercial  or  other  type  of

interaction  that  a  user  may  want  to  perform."  ('500  Patent,  5:19-22.)  The  '500

Patent provides examples of applications supporting one or more transactions.  For

example,  the  ‘500  Patent  describes  that  a  POSvc  application  is  a  type  of

transactional  application.  ('500  Patent,  6:11-14.)  The  '500  Patent  further  defines  a

POSvc  application  as  "an  application  that  can  execute  the  type  of  transaction  that

the  user  may  be  interested  in  performing."  ('500  Patent,  6:30-32.)  Thus,  a

"transactional  application"  is  an  application  that  allows  a  user  to  execute  any  type

of interaction that the user may want to perform. (Sirbu Decl., ¶ 19.).



- 9 -



(iii)  “Transactional services” (claims 1, 10, and 35)
The  ‘500  Patent  does  not  provide  an  explicit  definition  of  the  term

“transactional  services.”  (Sirbu  Decl.,  ¶  20.)  However,  the  '500  Patent  provides

examples  of  "services."  A  bank  can  offer,  as  "services,"  the  ability  to  complete  a

transfer  between  a  checking  and  a  savings  ('500  Patent,  7:4-8),  buy  a  car  from  a

dealer ('500 Patent, 7:15-16), or request a car loan ('500 Patent, 7:16.). Thus, in the

context  of  the  '500  Patent,  a  "transactional  service"  is  functionality  that  allows  a

user to perform a specific type of transaction. (Sirbu Decl., ¶ 20.)

(iv)  “Transaction link” (claims 3, 12, and 35)
In claims 3 and 12,  the  term “transaction  link” appears as "a  transaction  link

between  said  network  application  and  said  transactional  application"  and  in  claim

35  the  term  appears  as  "a  transaction  link  between  said  user  application  and  said

transactional  application."  Under  the  broadest  reasonable  interpretation  and  in  the

context  of  claims  3,  12,  and  35,  this  term  is  any  type  of  connection  between  a

"network  application"  or  a  "user  application"  and  a  "transactional  application."

(Sirbu Decl., ¶ 21.)

(v)
In  claims  1,  10,  and  35,  a  network  application  is  an  element  that  provides  a

“Network application” (claims 1, 10, and 35)

"user  specification"  (e.g.,  to  a  value-added  network  switch).  Thus,  in  accordance

with  its  broadest  reasonable  interpretation,  a  "network  application"  is  any

application  that  communicates  a  user  specification  using  a  network  (e.g.,  a  Web



- 10 -



browser). (Sirbu Decl., ¶ 22.)

(vi)

 “Keeping a  transaction  flow captive”  (claims 1,
10, and 35)

The  plain  and  ordinary  meaning  of  "transaction  flow"  is  the  series  of  steps

that  carry  out  a  transaction.  (Sirbu  Decl.,  ¶  23.)  Further,  the  plain  and  ordinary

meaning  of  captive  is  maintaining  control.  (Sirbu  Decl.,  ¶  23.)  Thus,  as  best

understood,  under  the  broadest  reasonable  interpretation,  "keeping  a  transaction

flow  captive”  is maintaining  control  over  the  steps  used  to  carry  out  a  transaction.

(Sirbu Decl., ¶ 23.)

(d)  Means-plus-function limitations
In  compliance  with  37  C.F.R.  §  42.204(b)(3),  an  identification  of  the

structure  corresponding  to  the  claimed  function of means-plus-function  limitations

recited in the challenged claims is provided below.

Claims  Element/Function
1, 2, 35  Means for switching
1, 5, 35  Means for transmitting
1, 5, 35  Means for processing
2, 4  Means for receiving

2

Means for enabling a
switch

2, 3  Means for activating said
transactional application

Corresponding Structure
Switching service 702 ('500 Patent, 8:44-46.)
Boundary service 701 ('500 Patent, 8:39-43.)
Bank "Back Office" ('500 Patent, 6:54-65.)
The  portion  of  switching  service  702    that
receives  user
a
communications  over
network('500 Patent, 8:46-49.)
The  portion  of  switching  service  702  that
routes  user  connections  ('500  Patent,  8:44-
55.)
The  portion  of  switching  service  702  that
activates  an  application  ('500  Patent,  8:44-



- 11 -



for presenti
Means f
ing

for submitt
Means f
ting

for creating
Means f
g a
transacti
ion link

5
5.)
that
undary  ser
on  of  bou
The  portio
rvice  701
plication  (
('500
nterfaces  t
to  the  ne
etwork  app
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9-43.)
rvice  702
that
tching  ser
on  of  swit
The  portio
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outputs data
a to the use
er. ('500 Pa
atent, FIG.
6:40-47.)
rvice  702
tching  ser
on  of  swit
The  portio
that
00 Patent, F
u
ubmits use
er specifica
ations.  ('50
FIG.
C, 6:40-47
7.)
that
ank  "Back
of  the  Ba
A  portion
k  Office"
des  a
processes  re
eceived  re
quests,  and
d/or  includ
ch  as  the  B
s  data,  suc
that  stores
epository  t
e
Bank
"B
Back  Offi
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repository
y  ('500  Pa
atent,
6
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An  interm
ediary  to
Patent, 6:61
1-65.)
0  Patent,  9
erface  ('500
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9:22-
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create a
2
23.)
transacti
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t  means  (
the  host
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3

4

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5, 6,
15, 16,
35

5

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-17, and 35
10-12, 14-
5.

'500  Paten
nt —  the  l

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mber

ANTICIPA
SED ON A
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IV.  C
CHALLEN
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¶ 24.)

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- 12 -



transactions  analogous  to  those  occurring  in  physical  commerce."  (Chelliah,  5:58-

61.)  FIG.  1  of  Chelliah  (reproduced  below  with  annotations),  illustrates  an

embodiment of Chelliah's electronic mall. (Sirbu Decl., ¶ 24.)

One or more computers
providing access to the
Web via a browser

114

115

Applications
running on a
computer
accessible over
the Web

External systems
that fulfill  a
transaction









Using a web browser running on a PC (user interface 13), a customer can

"enter" Chelliah's electronic mall. (Chelliah, 6:28-31, 12:1-9; Sirbu Decl., ¶ 25.)

The electronic mall includes a number of different applications running on a

server, e.g., a web server. (Sirbu Decl., ¶ 25.) Upon entry, the user is presented

with various storefront options presented as icons on the browser. (Chelliah, 6:37-

40; Sirbu Decl, ¶ 25.) The user then enters a specific store by clicking on its



- 13 -



particular icon.  (Sirbu Decl., ¶ 25.) The selection  is communicated to the

electronic mall by the user's browser. (Sirbu Decl., ¶ 25; see also Chelliah, 6:37-

40.) Upon receiving the user's selection, internal commerce subsystems 116 are

invoked by the selected electronic storefront 14. (Sirbu Decl., ¶ 25; see also

Chelliah, 6:40-43.) In particular, interfaces 22 and 24 are used to transmit the user's

request to internal commerce subsystems 116. (Sirbu Decl., ¶ 25.)

Internal commerce subsystems 116 can include, for example, an incentives

system, an observations subsystem, and/or a sales reprsentative system. (Sirbu

Decl., ¶ 26; see also Chelliah, 9:4-6.) For example, once a user enters a particular

storefront, the selected electronic storefront 14 calls a sales representative factory

115. (Sirbu Decl., ¶ 26; see also Chelliah, 13:27-32.) Sales representative factor

115 creates an instance of sales representative program object 114. (Sirbu Decl., ¶

26; see also Chelliah, 13:33-35.) Thereafter, a WWW session can be initiated

between sales representative program object 114 and the customer. (Sirbu Decl., ¶

26; see also Chelliah, 14:45-51.) In particular, sales representative program object

114 operates like a virtual sales person and figuratively accompanies the customer

through the virtual store and provides the customer with a number of different

services, e.g., providing pricing information, authorizing a purchase method,

applying discounts, shipping items, and arranging for payment. (Sirbu Decl., ¶ 26;

see also Chelliah, 13:48-53.) When the customer selects an item for purchase, the



- 14 -



customer's browser transmits a request to execute the purchase transaction to sales

representative program object 114 (i.e., using an HTTP request). (Sirbu Decl., ¶

26; see also Chelliah, 15:24-28.) Sales representative program object 114 then

routes this transaction request by calling payment handler interface 124 (included

in interfaces 22 of FIG. 1 of Chelliah) to validate the method of payment. (Sirbu

Decl., ¶ 26; see also Chelliah, 16:27-31.) Payment handler interface 124 calls an

external payment handler 126 (included in one of external commerce subsystems

18 in FIG. 1 of Chelliah) to obtain authorization to charge the customer's account.

(Sirbu Decl., ¶ 26; see also Chelliah, 16:57-59.) Thereafter, sales representative

program object 114 calls order fulfillment subsystem 128 (included in interfaces 22

of FIG. 1 of Chelliah) and provides it with the items that the customer ordered.

(Sirbu Decl., ¶ 26; see also Chelliah, 17:23-26.) Order fulfillment legacy

subsystem 130 (included in one of external commerce subsystems 18 of FIG. 1 of

Chelliah) performs the activities needed to ship the selected products to the

customer. (Sirbu Decl., ¶ 26; see also Chelliah, 17:26-30.) Finally, after the

selected products are indicated as shipped, order fullfillment subsystem 128 calls

payment handler 124, which in turn calls external payment handler 126 to charge

pursuant to a payment order. (Sirbu Decl., ¶ 26; see also Chelliah, 17:46-51.)

Petitioner has provided a second annotated version of FIG. 1 of Chelliah below to

illustrate how Chelliah's disclosure maps to the challenged claims.



- 15 -





Network
application




VAN
Switch

Transactional
application

Means for
transmitting
Means for
processing

Host means

Means for
switching

114



115

dB

dB

dB

VAN
System



1.

Chelliah anticipates independent claim 1
(a)  Chelliah  teaches  “A  configurable  value-added  network  switch
for enabling real-time transactions on a network”

As shown above in FIG. 1 of Chelliah (annotated to show correspondence to

the challenged claims), Chelliah discloses a set of applications  that collectively are

the  recited  “VAN  switch.”  (Sirbu  Decl.,  ¶  27.)  In  particular,  the  storefront

applications  14  receive  data  in  the  form  of  a  request  from  a  browser  running  on

user  interface  13  via  a  value-added  network,  i.e.,  the  Internet.  (Sirbu  Decl.,  ¶  27;

see also Chelliah,   6:13-19; DEC.) This  request  is switched or  routed by  interfaces



- 16 -



24  and  26  to  sale  representative  factory  115  (shown  in  FIG.  6  of Chelliah).  (Sirbu

Decl.,  ¶  27;  see  also  Chelliah  6:53-56,  13:33-40,  17:23-30).  Accordingly,  these

elements constitute the recited VAN switch.

Moreover, Chelliah's VAN  switch  is  "configurable."  (Sirbu Decl.  ¶¶  28-29.)

In  particular,  store  management  dashboards  20  allow  a  store's  management  to

configure  aspects  of Chelliah's VAN  switch.  (Sirbu Decl.,  ¶  28;  see  also Chelliah,

6:47-51.)  For  example,  the  store  management  can  configure  Chelliah's  VAN

switch  to provide an  in-store sale as an  incentive  to a customer. (Sirbu Decl., ¶ 28;

see  also  Chelliah,  6:51-52.)  Further,  as  described  below,  the  Chelliah's  VAN

switch enables "real-time" transactions.

(b) Chelliah  teaches  "means  for  switching  to  a  transactional  application
in response to a user specification from a network application."

As  discussed  above,  the  structure  for  the  “means  for  switching”  is  the

switching  service  702  of  the  ‘500  Patent.    The  function  of  this  limitation  is

“switching  to  a  transactional  application  in  response  to  a  user  specification  from  a

network application.”  Chelliah discloses this limitation.

The sales program object 114of Chelliah is an application5 that allows a user

to  engage  in  a  variety  of  transactions  such  as  obtaining  pricing  information,

authorizing a payment method, applying discounts, shipping items, or arranging for


5 A person of ordinary skill in the art would appreciate that a program object
is an “application.”  (Sirbu Decl., ¶ 30; see also Chelliah, 9:30-38.)



- 17 -



payment. (Sirbu Decl., ¶ 30; see also Chelliah, 13:48-54.)

The  electronic  storefronts  14,  interfaces  22  and  24,  and  sales  representative

factory 115 switch or route the customer to sales representative program object 114

(the recited “transactional application”) in response to a user specification received

from  a  network  application.  (Sirbu Decl.,  ¶  31.) As  noted  above, when  a  customer

“enters”  a  particular  store,  electronic  storefront  14  receives  a  request  (i.e.,  an

HTTP  request)  from  the  customer's  web  browser  selecting  a  specific  storefront.

(Sirbu  Decl.,  ¶  31;  Chelliah,  6:37-40.)  Such  request  from  the  customer/user

corresponds  to  the  recited  “user  specification.”    (Sirbu  Decl.,  ¶  31.)  The  user's

browser corresponds to the recited “network application.” (Sirbu Decl., ¶ 31.)

Responsive  to  the  request  from  the  browser,  the  particular  electronic

storefront  14  calls  sales  representative  factory  115  (through  interfaces  22  and  24).

(Sirbu  Decl.,  ¶  32;  see  also  Chelliah,  13:33-40.)  Sales  representative  factory  then

creates  sales  respresentative  program  object  114.  (Sirbu  Decl.,  ¶  32;  see  also

Chelliah,  13:33-40.)  Thereafter,  the  customer  interacts  with  sales  representative

program  object  114  in  a  WWW  session.  (Sirbu  Decl.,  ¶  32;  see  also  Chelliah,

13:48-53;  14:45-51.)  Thus,  electronic  storefronts  14,  interfaces  22  and  24,  and

sales  representative  factory  115  switch  the  customer  to  sales  representative

program object 114. (See Sibru Decl., ¶ 32.)





Moreover, Chelliah perfoms switching  in  the same way as switching service

- 18 -



702  of  the  '500  Patent.  In  particular,  switching  service  702  performs  switching  by

routing  user  connections.  ('500  Patent,  8:46-49.)  Similarly,  Chelliah  performs

switching  by  activating  the  sales  representative  program  object  114  and  routing

subsequent  communications  from  the  customer  to  sales  representative  program

object  114.    (Sirbu Decl.,  ¶  33;  see  also Chelliah,  13:34-40,  13:4853.) Further,  the

result  of  Chelliah's  switching  is  identical  to  that  of  switching  service  702—the

customer  interacts with  sales  representative  program  object  114.  (See  Sirbu Decl.,

¶ 33; see also Chelliah, 12:34-42.)

(c)  Chelliah  teaches  "said  transactional  application  providing  a  user
with  a  plurality  of  transactional  services managed  by  at  least  one
value-added network service provider."

Chelliah's sales representative program object 114 (the recited "transactional

application") provides the user with a plurality of transactional services:

After  the  Sales  Representative  Object  114  is  created,  it
figuratively  accompanies  the  customer  through  the  store,  provides
pricing  information,  authorizes  the  purchase  method  (e.g.,  VISA),
applies  any  applicable  discounts  (e.g.,  in-store  price  discounts  or
coupon-based  price  discounts),  and  completes  the  sale  (e.g.,  ships  the
items and arranges for payment). (Chelliah, 13:48-53.)

The  entity  providing  a  store  represented  in  Chelliah's  electronic  mall  by  an

electronic  storefront  14  is  a  "value-added  network  service  provider."  (Sirbu Decl.,

¶  34.)  In  particular,  electronic  storefront  14  is  accessible  over  a  value-added



- 19 -



network  (i.e.,  the  Internet).  (Sirbu  Decl.,  ¶  35;  see  also  Chelliah,  12:1-9.)  Further,

the sales representative program object associated with each storefront 14 provides

a  number  of  transactional  services  (e.g.,  a  list  of  items  for  purchase  and  prices,

shipping  items,  arranging  for  payment,  and  applying  discounts)  through  sales

representative  object  114.  (See  Sirbu  Decl.,  ¶  35;  see  also  Chelliah,  10:56-11:3.)

Moreover,  the entity providing  the store manages  its  transactional services  through

store  management  dashboard  20.  (Sirbu  Decl.,  ¶  35;  see  also  Chelliah,  19:59-

20:19; DEC.)

(d)  Chelliah  teaches  "said  value-added  network  service  provider
keeping a transaction flow captive."

As  discussed  above,  “keeping  a  transaction  flow  captive”  is  maintaining

control  over  the  steps  used  to  carry  out  a  transaction.  (Sirbu Decl.,  ¶  23.) Chelliah

discloses  this  limitation.  A  store  in  Chelliah,  through  its  associated  sales

representative program object 114, maintains control over the transaction flow:

The  Sales  Representative  Program  Object  114  has  access  to
information,  kept  by  the  store,  about  the  customer  and  also  controls
the  flow  of  a  transaction  processing  session  and  forms  part  of  an
Internal Commerce Subsystem 16 shown in FIG. 1.

(Chelliah, 10:35-39; emphasis added).

(e)  Chelliah  teaches  "said  plurality  of  transactional  services  being
performed interactively and in real time."

The  transactions  offered  by  the  sales  representative  program  object  are



- 20 -



performed "interactively":

When  the  customer  12  selects  items  for  purchase,  User
Interface  13  calls Sales Representative Program Object  114  to  inform
that program object of the selected item. (Chelliah, 14:52-54.)
…
In  response  to  output  from  the  function  call  given  directly
above,  and  as  shown  in  Step  181,  Sales  Representative  Program
Object  114  calls  User  Interface  13  to  obtain  the  customer's  selected
method  of  payment. As  shown  in  detail  in FIG.  8A,  in  step  181 Sales
Representative Program Object 114 calls User Interface 13, passing to
it  the  list  of  payment  method  tokens  that  correspond  to  the  payment
methods for which the customer is authorized. (Chelliah, 16:4-11.)

These transactions are further performed in "real-time":

As  the  customer  decides  what  items  to  purchase,  External

Commerce  Subsystems  18  may  be
the
to  complete
invoked
transaction. For example, VISA's credit card network may be used for
payment  followed  by  FedEx's  Powership  shipping  management
software for shipping. (Chelliah, 6:44-48.)

(f)  Chelliah  teaches  "means  for  transmitting  a  transaction  request
from said transactional application"

The  structure  in  the  '500 Patent  corresponding  to  this  limitation  is  boundary

service 701, which provides  "the  interfaces between VAN  switch 520,  the  Internet

and  the  Web,  and  multi-media  end  user  devices  such  as  PCs,  televisions  or

telephones."  ('500 Patent, 8:39-42.)   The  function of  the  limitation  is  “transmitting



- 21 -



a  transaction  request  from  said  transaction  application.”    This  limitation  is

disclosed by Chelliah.

As  noted  above  in  Section  IV(A)(1)(b),  sales  representative  program  object

114  is  the  recited  "transactional  application."  When  a  user  initiates  a  payment

transaction  in  Chelliah,  the  sales  representative  program  object  114  transmits  an

object-oriented function call to payment handler interface 124. (Sirbu Decl., ¶¶ 39-

40.)    The  sales  representative  program  object  114  transmits  this  object-oriented

function  call  to  request  a  transaction  (e.g.,  payment  validation).  (Sirbu  Decl.,  ¶¶

39-40.)  The  payment  handler  interface  124  transmits  the  transaction  request  to

external  payment  handler  interface  126  for  processing.  (Sirbu Decl.,  ¶¶  39-40;  see

also Chelliah, 11:40-49).

(g)  Chelliah teaches "means for processing said transaction request."
The  structure  of  the  “means  for  processing”  is  the  Bank  Back  Office.    The

function is “processing said transaction request.”  Chelliah discloses this limitation.

The payment handler 126 of Chelliah receives a transaction request from the

sales  representative  program  object  114  via  the  payment  handler  interface  124.

(Sirbu  Decl.,  ¶  41.)  The  payment  handler  126  processes  the  received  transaction

request  to validate payment and  thereby complete  the purchase. (Sirbu Decl., ¶ 41;

see  also Chelliah,  12:56-65,  16:57-59,  17:46-51.) Moreover,  payment  handler  126

processes the transaction request in the same way as the Bank "Back Office" in the



- 22 -



'500 Patent, i.e., operating on received and stored data:

For  example,  other  Payment  Handler  systems  might  include
CheckFree's  automatic  check  handling  system  for  non  credit-card
acceptors  or  in-house  "legacy  systems"  for  large  department  store
chains.  Therefore,  the  system  architecture  must  accommodate  a  wide
variety of existing subsystems. (Chelliah, 8:53-58.)

Moreover,  the  result  of Chelliah's  payment  handlers  is  the  same:  the  transaction  is

processed. (See Sirbu Decl., ¶ 42; see also Chelliah, 12:63-65.)

Chelliah anticipates dependent claim 2.

2.
Claim  2  depends  from  claim  1  and  additionally  recites  "wherein  said means

for  switching  to  a  transactional  application  further  comprises: means  for  receiving

said  user  specification;  means  for  enabling  a  switch  to  said  transactional

application; and  means for activating said transactional application."

(a)  Chelliah teaches "means for receiving said user specification."
The  structure  in  the  ‘500  patent  corresponding  to  this  limitation  is  the

portion  of  boundary  service  701  that  receives  requests  over  the  Internet. As  noted

in  Section  IV(A)(1)(b),  in  Chelliah,  the  request  from  the  web  browser  running  on

user  interface  13  corresponds  to  the  recited  "user  specification."  Chelliah  teaches

that  storefronts  14  receive  the  request  (the  “user  specification”)  from  the  web

browser  over  the  Internet.  (Sirbu  Decl.,  ¶  43;  see  also  Chelliah,  6:37-43.)    Thus,

Chelliah's  storefront  14  provides  the  equivalent  function  and  corresponding



- 23 -



structure of this limitation.

(b)  Chelliah
teaches  "means
transactional application."

for  enabling  a  switch

to  said

The  structure  in  the  '500 Patent  corresponding  to  this  limitation  is  boundary

service  701.  Boundary  service  701  provides  "the  interfaces  between  VAN  switch

520,  the  Internet  and  the  Web,  and  multi-media  end  user  devices  such  as  PCs,

televisions,  or  telephones."  ('500  Patent,  8:36-39.)    The  function  of  this  limitation

is  “enabling  a  switch  to  said  transactional  application.”    Chelliah  discloses  this

limitation.

Like  the  boundary  service  701  of  the  ‘500  Patent,  Chelliah  discloses

interfaces  26  and  24  to  the  transactional  application  (i.e.,  sales  representative

program  object  114)  that  route  the  received  user  selection  to  internal  commerce

subsystems.  (Sirbu Decl., ¶ 44; see also Chelliah, 6:26-36.) Thus, Chelliah  teaches

the function and structure of this limitation.

(c)  Chelliah  teaches  "means  for  activating  said  transactional
application."

The  structure  in  the  '500  Patent  corresponding  to  this  limitation  is  a

graphical  user  interface  that  provides  a  list  of  transactional  applications.      The

function  of  this  limitation  is  “activating  said  transactional  application."    Chelliah

discloses  this  limitation  because  Chelliah  discloses  a  graphical  user  interface  that

displays  icons  the  customer  can  select  to  initiate  activation  of  a  particular



- 24 -



transactional application:

A  Customer  12  enters  the  electronic  mall  via  a  user  interface
13,  where  the  customer  is  presented  with  a  choice  of  displayed
Electronic  Storefronts  14.  The  user  interface  13  may  be  a  personal
computer, set-top box, a touch sensitive screen, a touch tone telephone
or  any  other  device  capable  of  reproducing  to  audio  or  video
information  to  a  human  being.  It  typically  includes  an  input  means
such as a keyboard or computer "mouse"  through which  the computer
can  input  information  into  the  system.    (Chelliah,  6:28-36;  emphasis
added; see also Sirbu Decl., ¶ 46.)

Chelliah  discloses  that  interfaces  26  and  24  routes  the  user's  selection  to

sales  representative  factory  115  (included  in  internal  commerce  subsystems  16.

(Sirbu  Decl.,  ¶  25.)  Sale  representative  factory  115  creates  sales  representative

program  object  114  (the  recited  “transactional  application”)  in  response  to  a

customer  selection  in  a  graphical  interface.  (Sirbu  Decl.,  ¶  45;  see  also  Chelliah,

6:37-40,  13:33-35;  DEC.)  One  of  ordinary  skill  in  the  art  would  appreciate  that

"creating" an application  is one  form of "activating" an application.  (Sirbu Decl., ¶

45.)

Chelliah anticipates dependent claim 3.

3.
Claim 3 depends  from claim 2 and additionally recites, "wherein said means



for  activating  said  transactional  application  further  includes  means  for  creating  a

transaction

link  between  said  network  application  and  said

transactional



- 25 -



application."   The  structure  corresponding  to  the  “means  for  creating  a  transaction

link”  is  the  portion  of  the  boundary  service  701  that  provides  "the  interfaces

between  VAN  switch  520,  the  Internet  and  the  Web,  and  multi-media  end  user

devices  such  as  PCs,  televisions,  or  telephones."  ('500  Patent,  8:36-39.)    Chelliah

discloses this limitation.

As  discussed  above,  the  “means  for  activating”  equates  to  Chelliah’s

graphical  user  interface  from  which  a  customer  can  select  a  particular  electronic

store, interfaces 26 and 24, and sales representative factory 115.  Like the interface

portion  of  the  boundary  service  701,  Chelliah's  interface  26  interfaces  the  web

browser  to  sales  representative  program  object  114.  (Sirbu  Decl.,  ¶  47;  Chelliah,

13:35-39)  Chelliah's  interface  26  creates  a  connection  (transaction  link)  between

the  user's  browser  (i.e.,  the  “network  application”)  and  the  sales  representative

program  object  (the  “transactional  application”).  (Sirbu Decl.,  ¶  47.)  In  particular,

one skilled  in  the art would appreciate  that  interface 26  links  the web-based model

(implemented  by  storefronts  14)  and  the  distributed  object-oriented  model

(implemented  by  internal  commerce  subsystems  16  including  sales  representative

program  object  114).  (Sirbu  Decl.,  ¶  47.)  In  doing  so,  interface  26  creates  a

"transaction link" between the web browser (i.e., the recited “network application”)

and  sales  representative  program  object  114  (the  recited  “transactional

application”). (Sirbu Decl., ¶ 48.)



- 26 -



Chelliah anticipates dependent claim 4.

4.
Claim 4 depends  from claim 2 and additionally recites, "wherein said means

for  receiving  said  user  specification  further  comprises:  means  for  presenting  said

user with  a  list  of  transactional  applications,  each  of  said  transactional  application

being  associated  with  a  particular  value-added  network  service  provider;  and

means  for  submitting  said  user  specification  according  to  a  user's  selection  of  said

transactional application from said list of transactional applications."

(a)  Chelliah  teaches  “means  for  presenting  said  user  with  a  list  of
transactional  applications,  each  of  said  transactional  application
being  associated  with  a  particular  value-added  network  service
provider.”

The  structure  corresponding  to  this  limitation  is  the  portion  of  switching

service  702  that  outputs  data  to  the  user.  The  function  of  this  limitation  is

"presenting  said  user  with  a  list  of  transactional  applications,  each  of  said

transactional  application  being  associated  with  a  particular  value-added  network

service provider." Chelliah teaches this limitation.

Chelliah  teaches  providing  customer  12  with  a  menu  of  icons  (the  recited

"list  of  transactional  applications")  each  of  which  corresponding  to  a  particular

electronic  storefront  14.  (Chelliah,  6:37-40.)  Because  a  selection  of  a  particular

electronic  storefront  14  corresponds  to  a  particular  instance  of  sales  representative

program object 114 (the recited "transactional application"), each  item  in  the menu

constitutes a representation of a   particular  transactional application. (See Chelliah,



- 27 -



14:10-14  (each  sales  representative program object being  instantiated with a  list of

distributor  program  object  118  particular  to  the  electronic  store  14.))  Moreover,

each  electronic  store  12  and  its  corresponding  instantiation  of  sales  representative

program  object  114  is  managed  by  the  associated  store  (the  recited  "value-added

network service provider). Thus, Chelliah teaches this limitation.

(b)  Chelliah  teaches  “means  for  submitting  said  user  specification
according  to  a  user's  selection  of  said  transactional  application
from said list of transactional applications.”

The  structure  corresponding  to  this  limitation  is  the  portion  of  switching

service  702  that  submits  user  specifications.  The  function  of  this  limitation  is

"submitting  said  user  specification  according  to  a  user's  selection  of  said

transactional  application  from  said  list  of  transactional  applications."  Chelliah

discloses this limitation.

Chelliah's  interfaces  26  and  24  receive  the  user's  specification  (i.e.,  the

request  from  the  web  browser  running  on  user  interface  13)  and  submits  the  user

specification  according  to  the  user's  selection  from  the  menu  of  icons  (the  recited

"list  of  transactional  application)  by  generating  a  corresponding  object-oriented

function  call  that  can  be  used  by  the  object-oriented  programs  that  constitute

internal  commerce  subsystems  116.  (Sirbu  Decl.,  ¶  25.)  Thus,  Chelliah  discloses

this limitation.



- 28 -



Chelliah anticipates dependent claim 5.

5.
Claim 5 depends from claim 1 and additionally recites, "wherein said means



for processing said transaction request further comprises means for coupling said

means for transmitting to a host means."  The "host means"6 equates, for example,

to the portion of the Bank "Back Office" that processes received requests and/or a

repository that stores data. The structure corresponding to the "means for coupling"

is an intermediary to the "host means."



As noted above in section IV(A)(1)(g), Chelliah's payment handler 126 is

equivalent to the recited “means for processing" the transaction request. As would

have been appreciated by one of ordinary skill in the art, external payment handlers

such as Chelliah's payment handler 126 inherently include a data repository (such

as a card-issuing bank server) that stores information corresponding to the

customer involved in the transaction (e.g., the customer’s account number and

account balance) and a network for accessing that data repository. (Sirbu Decl., ¶

49.) Accordingly, the card-issuing bank server discloses the recited "host means"

because it includes a data repository that stores information relevant to a payment

request. (Sirbu Decl., ¶ 49.) The card-issuing bank server also processes such data

when processing transaction requests. Moreover, the payment handler's network is

equivalent to the "means for coupling" because it is an intermediary that couples


6 Petitioner does not concede that this term invokes 35 U.S.C. § 112(f).



- 29 -



Chelliah's means for transmitting (i.e., payment handler interface 124) to the card-

issuing bank server or other data repository (the recited “host means”). (Sirbu

Decl., ¶ 49.)

Chelliah anticipates dependent claim 6.

6.
Claim 6 depends from claim 5 and additionally recites, "wherein said host



means contains data corresponding to said transaction request." As described above

with respect to claim 5, the structure in the ‘500 patent corresponding to the "host

means" is the Bank "Back Office" data repository.  As also noted above in Section

IV(A)(5), the external payment handlers 126 of Chelliah inherently store user

information such as account numbers, account balances, etc. (Sirbu Decl., ¶ 50).

Because account numbers and account balances “correspond to a transaction

request,” Chelliah teaches this limitation.

Chelliah anticipates claims 10-12, 15, and 16.

7.
Independent claim 10 and its dependent claims 11, 12, 15, and 16 recite



similar features as independent claim 1 and its dependent claims 2, 3, 5, and 6.

The following claim chart indicates the correspondence between the limitations of

claims 10-12, 15, and 16 and the limitations of claims 1-3, 5, and 6.  Accordingly,

claims 10-12, 15 and 16 are anticipated by Chelliah for the same reasons as

provided above for claims 1-3, 5 and 6.

Limitation of Claim 10

Corresponding
Limitation of Claim 1

Section



- 30 -



A method for configuring a value-added
network switch for enabling real-time
transactions on a network, said method
for configuring said value-added
network switch compromising the steps
of:

switching to a transactional application
in response to a user specification from
a network application,

said transactional application providing
a user with a plurality of transactional
services managed by at least one value-
added network service provider,

said value-added network service
provider keeping a transaction flow
captive,

said plurality of transactional services
being performed interactively and in
real time;

transmitting a transaction request from
said transactional application; and

processing said transaction request.

A configurable value-
added network switch
for enabling real-time
transactions on a
network, said
configurable value-
added network switch,
comprising
means for switching to
a transactional
application in response
to a user specification
from a network
application,
said transactional
application providing a
user with a plurality of
transactional services
managed by at least
one value-added
network service
provider,
said value-added
network service
provider keeping a
transaction flow
captive,
said plurality of
transactional services
being performed
interactively and in real
time;
means for transmitting
a transaction request
from said transactional
application;
means for processing
said transaction
request.

IV(A)(1)(a)

IV(A)(1)(b)

IV(A)(1)(c)

IV(A)(1)(d)

IV(A)(1)(e)

IV(A)(1)(f)

IV(A)(1)(g)



- 31 -



Limitation of Claim 11

Limitation of Claim 12

receiving said user specification;

enabling a switch to said transactional
application; and

The method for configuring said value-
added network switch as claimed in
claim 10 wherein said step of switching
to a transactional application further
comprises the steps of:

Corresponding
Limitation of Claim 2
The configurable
value-added network
switch as claimed in
claim 1 wherein said
means for switching to
a transactional
application further
comprises:
means for receiving
said user specification;
means for enabling a
switch to said
transactional
application; and
activating said transactional application.  means for activating
said transactional
application.
Corresponding
Limitation of Claim 3
The configurable
value-added network
switch as claimed in
claim 2 wherein said
means for activating
said transactional
application further
includes
means for creating a
transaction link
between said network
application and said
transactional
application
Similar Limitation of
Claim 5
The configurable
value-added network

The method for configuring said value-
added network switch as claimed in
claim 11 wherein said step of activating
said transactional application further
includes

a step of creating a transaction link
between said network application and
said transactional application.

Limitation of Claim 15

The method for configuring said value-
added network switch as claimed in



- 32 -

Section

IV(A)(2)

IV(A)(2)(a)

IV(A)(2)(b)

IV(A)(2)(c)

Section

IV(A)(3)

IV(A)(3)

Section

IV(A)(5)



claim 10

wherein said step of processing said
transaction request further comprises the
step of transmitting said transaction
request to a host means.

Limitation of Claim 16

The method for configuring said value-
added network switch as claimed in
claim 15

wherein said host means contains data
corresponding to said transaction
request.

switch as claimed in
claim 1
wherein said means for
processing said
transaction request
further comprises
means for coupling
said means for
transmitting to a host
means
Corresponding
Limitation of Claim 6
The configurable
value-added network
switch as claimed in
claim 5
wherein said host
means contains data
corresponding to said
transaction request

IV(A)(5)

Section

IV(A)(6)

IV(A)(6)

Chelliah anticipates claim 14.

8.
Claim  14  corresponds  to  claim  4,  except  instead  of  "value-added  network

service provider" recited in claim 4, claim 14 recites an "Internet service provider."

As  noted  in  Section  IV(A)(4),  Chelliah  teaches  the  limitations  of  claim  4.  To  the

extent  that  an  "Internet  service  provider"  differs  from  a  "value-added  network

service provider", Petitioner notes  that  the store  relied upon  in Section  IV(A)(4)  to

disclose "value-added network service provider" also discloses an "Internet service

provider"  because  the  stores  are  accessible  over  the  Internet.  (See  Section

IV(A)(1)(c).) Thus, Chelliah discloses the limitations of claim 14.



- 33 -



Chelliah anticipates claim 17.

9.
Claim  17  depends  from  claim  10  and  further  recites  "wherein  said  value-

added  network  service  providers  cooperate

to  provide  said  plurality  of

transactional services to said user." Chelliah discloses this limitation.

The  external  commerce  subsystems  18  (e.g.,  VISA,  Fedex,  and  AVP)  of

Chelliah  provide  a  variety  of  transactional  services  (e.g.,  payment  authorization,

shipping and tax calculating, etc.) to a user.

They could include: Customer Accounts Subsystem, Participant
Subsystem;  Order  Fulfillment;  Payment  Handler;  Product  Database;
Shipping; and Tax.
Examples  of  well-known  existing  implementations  of  these
subsystems  are:  VISA's  computerized  credit  card  network  (Payment
Handler),  various  catalog  sales'  central  warehouse  operations  (Order
Fulfillment),  FedEx's  on-site,  personal  computer-based  shipping
calculator (Shipping), and AVP's tax calculator (Taxing).
(Chelliah, 8:41-50; see also Sirbu Decl., ¶ 51.)

These  services  are  provided  by multiple  service  providers  (e.g., VISA, Fedex,  and

AVP).

The  different  external  commerce  subsystems  18  of  Chelliah  "cooperate"  to

provide  the  transactional  services  by  working  together  to  complete  a  purchase.

(Sirbu  Decl.,  ¶  52)  For  example,  the  payment  service  provider  and  the  shipping

service  provider  cooperate  to  provide  the  payment  service.  (Sirbu  Decl.,  ¶  52)



- 34 -



Specifically,  payment  handler  126  (provided  by  the  payment  service  provider)  is

invoked to convert an “authorization to charge” to a “payment order” only after the

product  is  indicated  as  shipped  by  order  fulfillment  legacy  system  130  (provided

by  the  shipping  service  provider).  (Sirbu Decl.,  ¶  52;  see  also   Chelliah,  17:23-30,

17:46-52.)

10.  Chelliah anticipates independent claim 35.
Independent  claim  35  recites  similar  features  as  claim  1.  The  following

claim  chart  indicates  the  correspondence  between  the  limitations  of  claim  35  and

the limitations of claim 1.

Limitation

A configurable value-added network
system for enabling real-time
transactions on a network, said
configurable value-added network
system comprising:

means for switching to a transactional
application in response to a user
specification from a network application,

said transactional application providing a
user with a plurality of transactional
services managed by at least one value-
added network service provider,

Section

IV(A)(1)(a)

IV(A)(1)(b)

IV(A)(1)(c)

Corresponding
limitation in Claim 1
A configurable value-
added network switch
for enabling real-time
transactions on a
network, said
configurable value-
added network switch,
comprising
means for switching to a
transactional application
in response to a user
specification from a
network application,
said transactional
application providing a
user with a plurality of
transactional services
managed by at least one
value-added network
service provider,



- 35 -



said value-added network service
provider keeping a transaction flow
captive,

said plurality of transactional services
being performed interactively and in real
time;

means for activating an agent to create a
transaction link between said user
application and said transactional
application
means for transmitting a transaction
request from said transactional
application; and

a host means for processing said
transaction request and retrieving data
corresponding to said transaction
request.

IV(A)(1)(d)

said value-added
network service provider
keeping a transaction
flow captive,
said plurality of
transactional services
being performed
interactively and in real
time,
See subsection (a) below  See
subsection
(a) below

IV(A)(1)(e)

IV(A)(1)(f)

means for transmitting a
transaction request from
said transactional
application;
See subsection (b) below  See
subsection
(b) below

a)  Chelliah  teaches  "means  for  activating  an  agent  to  create  a
transaction
link  between  said  user  application  and  said
transactional application."

The  structure  in  the  ‘500  patent  corresponding  to  "means  for  activating  an

agent  to  create  a  transaction  link  between  said  user  application  and  said

transactional  application"  is  a  graphical  user  interface.    Chelliah  discloses  this

limitation.

As  described  above,  the  system  of  Chelliah  provides  a  graphical  user

interface  including  icons  that  the  customer  can  select  to  choose  a  particular



- 36 -

  (



electronic storefront7:

The customer enters a particular electronic store by selecting its
Electronic  Storefront  14,  e.g.,  by  clicking  on  an  icon  with  a
conventional  selection  or  input  device  such  as  a  mouse/curser  device
touchpad. (Chelliah, 6:37-40.)
Chelliah's  graphical  user  interface  performs  the  function  of  "activating  an  agent  to

create  a  transaction  link  between  said  user  application  and  said  transactional

application."  When  the  customer  "enters"  a  storefront  14  (i.e.,  by  clicking  on  the

icon  in  the graphical user  interface), a participant program object 112  (an agent)  is

activated:

When  the  Customer  12  "enters"  a  Storefront  14,  Participant

Program  Object  112  is  retrieved  from  the  Participant  Subsystem  and
activated. Storefront 14 determines what Distributor Objects 118 exist
to  distribute  coupons  that  can  be  used  by  this  storefront.  (Chelliah,
13:23-25.)
The  participant  program  object  112  is  the  recited  “agent.”  Participant  program

object  112  creates  a  transaction  link  between  the  customer's  web  browser  (the

recited "user application") and sales representative program object 114 (the recited

"transactional  application")  by  providing  a

token

that  allows  for  secure

communications between  the web browser and sales representative program object


7  Sales  representative  program  object  114  is  initiated  and  receives  requests
from  the  customer  as  a  result  of  the  customer's  interaction  with  electronic
storefronts 14. (Sirbu Decl., ¶¶ 25-26.)



- 37 -



b)  Chelliah  teaches  "a  host  means  for  processing  said  transaction
request  and  retrieving  data  corresponding  to  said  transaction
request."

  (

The  structure  in  the  ‘500  patent  corresponding  to  "a  host  means  for

processing  said  transaction  request  and  retrieving  data  corresponding  to  said

transaction  request,"  is  a  portion  of  the  Bank  "Back  Office."  As  noted  above  in

Section  IV(A)(1)(g)  with  respect  to  claim  1,  Chelliah's  payment  handler  discloses

the  relevant  portions  of  the Bank  "Back Office"  and  thus  teaches  the  recited  “host

114. (Sirbu Decl., ¶ 54; Chelliah, 10:14-17, 10:28-30.)

means.”

Chelliah's  payment  handler  126  performs  the  function  of  "processing  said

transaction  request  and  retrieving  data  corresponding  to  said  transaction  request."

In particular, the Payment Handler processes a transaction request by converting an

“authorization to charge” to a “payment order”:

Payment  Handler  Interface  124  again  calls  External  Payment
Handler 126 to convert the authorization to charge to a payment order.
(Chelliah, 17:49-51.)
Further,  the  Payment  Handler  retrieves  "data  corresponding  to  said

transaction request" in the form of, e.g., charge acknowledgements:

For example, if the customer selects a Visa credit card as a payment
method, then Payment Handler Interface 124 will call the VISAnet



- 38 -



account.8 E
sy
ystem for a
authorizati
ion to char
ge the sele
ected Visa
External
that the
erface 124
andler Inte
Payment Ha
6 notifies P
andler 126
Payment Ha
pted. (Chel
harge to th
he selected
 payment m
method wi
ill be accep
lliah,
6:61-67.)

P c 1 B G

B.

  Grou
17, and 35.
10-12, 14-1
aims 1-6, 1
cipates cla
fford antic
und 2: Gif
.
e  '500  Pate
m  that  the
me  problem
ves  the  sam
Gifford  solv
ent  sought

to  solve—
—  the

limited

number  o
of  services

that  can

d  applicati
work-based
ed  by  netw
be  provide
ions.

Gifford

ior  to  No
d  that  pr
described
ovember

nt  indepen
o  merchan
1995  “no
ndent

mechan
sers  to  ut
permits  us
rks  that  p
ter  networ
or  comput
vailable  fo
nism  is  av
tilize

s,  and  dem
debit  cards
dit  cards,  d
uch  as  cred
ruments  su
ncial  instr
tional  finan
convent
mand

(Gifford, 1
alances.”  (
account ba
deposit
1:25-31.)

imitations,
erceived  li
s  these  pe
To  address
T
,  Gifford

provides

"[a]  comp
plete

system

for  the  pu
urchasing

of  goods

uter  netwo
er  a  compu
mation  ove
or  inform
ork."

(Gifford
ow, illustra
duced belo
ford, reprod
. 1 of Giffo
mple, FIG
t.) For exam
d, Abstract
ates a

tem 200 th
k sales syst
network
hat:

1:46-49.)

7  to  interc
f  buyer  co
plurality  o
connect  a  p
network  6
mploys  a  n
omputers
merchant
omputer
64,  each  m
61  and  62,
computers
s  63  and  6
merchant  c
65  and  66
atabases  6
isement  da
tal  adverti
ctive  digit
with  respec
6,  and  a
a  buyer
payment  c
omputer  6
68.  A  use
er  of  the
  system
employs
omputer  t
erchant  com
m  the  me
ments  from
advertisem
o  retrieve
mputers,
used  to
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chase  goo
ds  of  inte
rest.  A  pa
ayment  com
mputer  is



8
Handler. (C
Payment H
mple of the P
VISAnet i
is an exam
Chelliah, 1

e 6 w p c a



- 39 -



authorize a purchase transaction. (Gifford, 4:44-52.)

Gifford  further  notes  "[t]he  software  architecture  underlying  the  particular

preferred embodiment  is based upon  the hypertext conventions of  the World Wide

Web." (Gifford, 4:61-64.)



As shown in FIG. 6 of Gifford, the user activates a link that results in "the

HTTP request 20 for a specific document with a specified URL." (Sirbu Decl., ¶

59; see also Gifford, 5:51-53.) The merchant then returns the document

(advertisements or lists of goods/services that can be purchased) specified by the

URL. The user can select a link in this document to send another HTTP request

(e.g., to request a purchase) to the merchant computer. (Sirbu Decl., ¶ 59; see also

Gifford, 5:57-59.) The merchant computer can then send a payment order to a

payment system/computer. (Sirbu Decl., ¶ 59; see also Gifford, 6:9-11.)



"If  the  payment  system  authorizes  the  request,  an  authorization  message  at

29  is  returned  to  the buyer computer, and  the merchant computer checks at 30  that

the  authorization  message  came  from

the  payment  computer  using

the

authenticator  mechanism  described  below."  (Gifford,  6:52-56.)  The  merchant

computer  can  then  complete  the  transaction:  "the  merchant  computer  performs

fulfillment  at  30,  returning  the  purchased  product  in  response  at  31."  (Gifford,

6:57-59.)  Annotated  FIG.  1  of  Gifford  illustrates  how  the  elements  of  Gifford’s

system map to the limitations of the challenged claims.



- 40 -





Transactional
application

Network
Application

Financial
Network

VAN
System

VAN
Switch

Host
Means

Means for
processing



1.  Gifford anticipates independent claim 1
(a)  Gifford  teaches  “A  configurable  value-added  network  switch
for enabling real-time transactions on a network”

Gifford's  merchant  computers  63  and  64  and  payment  computer  68

collectively  function  as  a  VAN  switch.  (Sirbu  Decl.,  ¶  61.)  In  particular,  a  buyer

accesses merchant computer 63 over network 67. (Sirbu Decl., ¶ 61; see also 4:44-

48.) Gifford makes clear that network 67 can be the World Wide Web and thus is a

value-added  network.  (Sirbu  Decl.,  ¶  59;  see  also  Gifford,  4:61-64.)  Moreover,

merchant  computers  63  and  64  and  payment  computer  68  route  a  purchase

transaction  request  received  from  buyer  computers  61  and  62  to  a  financial

network and therefore are collectively a “VAN switch.” (Sirbu Decl., ¶ 61; see also



- 41 -



Gifford,  6:39-49  (describing  routing  from  buyer  computers  61  and  62  to  the

merchant computers 63 and 64 and  to  the payment  computer 68), 9:14-18  (routing

from  the  payment  computer  68  to  the  external  financial  network).)    Moreover,  a

person  of  ordinary  skill  in  the  art would  recognize  that  computers  63,  64,    and  68

are "configurable." (Sirbu Decl., ¶ 61.)

(b)  Gifford
for  switching  to  a  transactional
teaches  "means
application  in  response  to  a  user  specification  from  a  network
application"



The structure  in  the ‘500 Patent corresponding  to  this  limitation  is switching

service 702.   Gifford discloses this limitation.

As  illustrated  in  the  annotated  figures  from  Gifford  reproduced  below,

Gifford  discloses  switching  from  an  application  that  provides  an  overview  screen

(FIG.  2)  to  an  application  that  provides  digital  advertisements  of  items  (i.e.,

different  articles)  available  for  purchase  (FIG.  3)  in  response  to  a  request  received

from  buyer  computer  61  when  user  selects  link  1  in  the  overview  screen.  (Sirbu

Decl.,  ¶  59;  see  also  Gifford,  5:7-13.)  The  application  that  provides  the  digital

advertisement  of  items  is  the  recited  “transactional  application”  and  the  reqeust

received from buyer computer 61 is the "user specification."



- 42 -



Clicking link 1 results in buyer
computer 61 transmitting a request to
merchant computer 63

Responsive to the request, merchant
computer 63 calls an application that delivers
this webpage to buyer computer 61





For example, Gifford discloses:

An  initial  user  inquiry  19  from  activating  link  1  results  in  the  HTTP
request  20  for  a  specific  document  with  a  specified  URL.  The  URL
specifies  the name of  the merchant computer. The merchant computer
retrieves  the  document  given  the  URL  at  21,  and  returns  it  to  the
buyer computer at 22. (Gifford, 5:51-56)

Further,  the  result  of  Gifford's  switching  is  identical  to  the  result  of  switching

service  702—the  user  is  switched  to  the  transactional  application  (running  on

merchant computer 63). (Sirbu Decl., ¶ 64; see also Gifford, 5:54-57.)

(c)  Gifford  teaches  "said  transactional  application  providing  a  user
with  a  plurality  of  transactional  services managed  by  at  least  one
value-added network service provider"



As  shown  in  FIG.  3  of  Gifford  (reproduced  below  with  annotations),  the

digital  advertisement  screen  provides  a  plurality  of  items  available  for  purchase.



- 43 -



(Sirbu  Decl.,  ¶  64;  see  also  Gifford,  5:19-20.)  In  the  example  of  FIG.  3,  Gifford

lists  3  items  for  sale.  Selecting  any  of  these  items  results  in  the  purchase  of  the

selected items. (Sirbu Decl., ¶ 64.)

Service 1

Service 2
Service 3



One  of  ordinary  skill  in  the  art  would  appreciate  that  the  functionality

corresponding  to  each  of  these  items  is  a  "transactional  service,"  because  each

operates  to  perform  a  user-specified  transaction  (e.g.,  the  purchase  of  a  user-

selected  news  item,  and  the  download  of  the  news  item  to  the  buyer  computer  61

for  viewing  by  the  user).  (Sirbu Decl.,  ¶  66.) Moreover,  a  person  of  ordinary  skill

in  the  art  would  appreciate  that  a  merchant  manages  the  items  available  for

purchase  (e.g.,  selecting  news  items  that  can  be  purchased,  setting  their  respective

prices, etc.) through interaction with the merchant computer. (Sirbu Decl., ¶ 66; see

also Gifford, 5:22-24.)

(d)  Gifford  teaches  "said  value-added  network  service  provider
keeping a transaction flow captive."

As  discussed  above,  “keeping  a  transaction  flow  captive”  is  maintaining



- 44 -



control  over  the  steps  used  to  carry  out  a  transaction.  (Sirbu  Decl.,  ¶  23.)  Gifford

teaches  that  the  merchant  retains  control  over  the  transaction  flow.  For  example,

interactions  with  the  buyer  computer  61  and  payment  computer  68  in  the

information  flow  of FIG.  6  of Gifford  are  responsive  to  actions  of  and  directed  by

the merchant computers 63 and 64. (Sirbu Decl., ¶ 67.)

(e)  Gifford  teaches  "said  plurality  of  transactional  services  being
performed interactively and in real time."

The services provided to a user by Gifford are performed "interactively":

Accordingly,  therefore,  it  is  a  primary  objective  of  this
invention  to  provide  a  user  interactive  network  sales  system  in which
the  user  can  freely  use  any  merchant  of  choice  and  utilize  existing
financial  instruments  for  payment.  (Gifford,  1:50-53;  emphasis
added.)
Further, these services are performed in "real-time":

A  payment  system  authenticates  a  payment  order,  checks  for

sufficient  funds  or  credit,  and
transfer
then  originates  funds
transactions  to carry out  the payment order. (Gifford, 3:1-3; emphasis
added.)
(f)  Gifford  teaches  "means  for  transmitting  a  transaction  request
from said transactional application"

The  structure  in  the  '500 Patent  corresponding  to  this  limitation  is  boundary

service 701, which provides  "the  interfaces between VAN  switch 520,  the  Internet

and  the  Web,  and  multi-media  end  user  devices  such  as  PCs,  televisions  or

telephones."  ('500  Patent,  8:39-42.) Merchant  computers  63,  64  of  Gifford,  which



- 45 -



control  the  transaction  between  the  end  user  (i.e.,  buyer  computer  61)  and  the

payment  computer  68  via  the  Internet  87  are  equivalent  to  this  limitation.  (Sirbu

Decl., ¶ 70.)

In  particular,  as  discussed  above  with  reference  to  annotated  FIG.  3  of

Gifford  (provided  above),  the  user  interacts  with  the  recited  “transactional

application”  (i.e.,  the  application  in Gifford  that provides digital  advertisements of

items)  to  select  an  item  for  purchase.    Such  selection  by  the  user  causes  this

“transaction application”  to  transmit a  transaction request  to download  the selected

news item to the buyer computer 61.

Other  transaction  requests  are  also  transmitted.    For  example,  responsive  to

the  user’s  interaction  with  the  “transactional  application”  and  resulting  requests

transmitted  by  the  “transactional  application,”  the  merchant  computer  63,  64

queues  and  sends  a  payment  order  corresponding  to  the  purchase  to  the  payment

computer  68.    (Sirbu  Decl.,  ¶  70.)  The  payment  computer  68  uses  the  payment

order to process the transaction:

If  the  merchant  computer  is  able  to  construct  a  complete
payment order at 26  the payment order  is  sent  to a payment computer
for  authorization  at  27.  If  a  payment  order  can  be  constructed,
processing continues at 28. (Gifford, 6:9-13.)

(g)  Gifford teaches "means for processing said transaction request."
The  structure  of  the  “means  for  processing”  is  the  Bank  Back  Office.    The



- 46 -



function is “processing said transaction request.”  Gifford discloses this limitation.

The  payment  computer  68  of  Gifford  processes  transaction  requests  and

therefore  is  equivalent  to  the  “means  for  processing.”  (Sirbu  Decl.,  ¶  71;  see  also

Gifford,  2:66-3:1.)  In  particular,  the  payment  computer  68  (shown  as  payment

computer  72  in  FIG.  13)  receives  a  payment  transaction  request  in  the  form  of  a

payment  order  from  merchant  computer  63,  64  and  processes  the  request  by,  for

example,  verifying  the  authenticator  and  requesting  authorization  from  a  real-time

financial authorization network. (Sirbu Decl., ¶ 71; see also Gifford, FIG. 14 (steps

82-90),  6:48-49  (merchant  computer  sending  the  payment  order  to  the  payment

computer),  8:27-30  (verifying  authenticator),  9:14-18  (requesting  authorization

from a real-time financial authorization network).)

Moreover,  the merchant  computers  63,  64  and  the  databases  65,  66,  as well

as  the  payment  computer  68,  process  requests  in  the  same way  as  the Bank  "Back

Office"  of  the  '500  Patent,  using  databases  or  data  repositories.  For  example,  one

skilled in the art would appreciate that verifying an authenticator requires access to

stored data. (Sirbu Decl., ¶ 72.)

2.  Gifford anticipates dependent claim 2.
Claim 2 depends  from claim 1 and additionally recites, "wherein said means

for  switching  to  a  transactional  application  further  comprises: means  for  receiving

said  user  specification;  means  for  enabling  a  switch  to  said  transactional



- 47 -



application; and  means for activating said transactional application."

(a)  Gifford teaches "means for receiving said user specification."
The  structure  in  the  ‘500  patent  corresponding  to  this  limitation  is  the

portion  of  boundary  service  701  that  receives  requests  over  the  Internet.    Gifford

teaches  receiving  user  specifications  at  merchant  computer  63,  64  in  the  form  of

HTTP requests:

The  buyer  computer  displays  the  resulting  HTML  document  at
23. When  the  user  activates  link  5,  an HTTP  request  25  is  sent  to  the
merchant  computer  requesting  the  document.  (Gifford,  4:56-59;
emphasis added; see also Sirbu Decl., ¶¶ 73-74.)

(b)  Gifford teaches "means for enabling a switch to said transactional
application."

The  structure  in  the  ‘500  Patent  corresponding  to  this  limitation  is  the

portion  of    boundary  service  701  that  passes  information  from  the  network

application  to  the  transactional  application.  In  a  like  manner,  Gifford's  merchant

computer  provides  an  interface,  in  the  form  of  links  to  the  digital  advertisements

screen (shown in FIG. 3), which allow information to be passed to the transactional

application.  (Sirbu Decl.,  ¶  75;  see  also  Gifford,  5:8-13.)    Thus, Gifford  discloses

this limitation. In particular, with reference to annotated FIG. 3 of Gifford (above),

the  merchant  computer  provides  an  interface,  in  the  form  of  links  to  the  digital

advertisements  screen  (shown  in FIG.  3), which  allow  information  to  be  passed  to

the transactional application. (Sirbu Decl., ¶¶ 75-76; see also Gifford, 5:8-13.)



- 48 -



(c)  Gifford
teaches  "means
application."

for  activating  said

transactional

The  structure  in  the  ‘500  Patent  corresponding  to  this  limitation  is  a

graphical  user  interface  that  displays  a  list  of  applications.  Gifford  discloses  this

limitation.  In  particular,  the  "overview  screen"  of  Gifford  (shown  in  FIG.  2)

provides  links  that,  when  activated,  cause  the  merchant  computer  to  activate  the

digital advertisement application:

FIG. 2 shows an overview screen that has been retrieved from a
merchant  computer  by  a  buyer  computer  and  displayed  by  the  buyer
computer.  It  includes  links  1,  2,  and  3  that  when  activated  by  a  user
cause the buyer's computer to take specified actions. (Gifford, 5:8-11.)

For  example, FIG.  2  of Gifford  illustrates  an  "overview  screen"  that  is  a  graphical

user interface that provides a list of applications. (Sirbu Decl., ¶ 78.)

3.  Gifford anticipates dependent claim 3.
Claim 3 depends  from claim 2 and additionally recites, "wherein said means

for  activating  said  transactional  application  further  includes  means  for  creating  a

transaction

link  between  said  network  application  and  said

transactional

application."  The  structure  in  the  ‘500  patent  corresponding  to  the  “means  for

creating”  is  boundary  service  701.  Boundary  service  701  provides  "the  interfaces

between  VAN  switch  520,  the  Internet  and  the  Web,  and  multi-media  end  user

devices  such  as  PCs,  televisions,  or  telephones."  ('500  Patent,  8:36-39.)  Similarly,

Gifford  teaches  the  "overview  screen"  of  FIG.  2  (identified  above  as  teaching  the



- 49 -



means  for  activating)  as  including  links  1,  2,  and  3.  (Sirbu  Decl.,  ¶  79;  see  also

Gifford,  5:9-10.)  These  links,  when  activated  by  a  user,  create  a  connection  (a

transaction  link)  between  the  network  application  running  on  the  buyer  computer

61  and  the  digital  advertisements  application  (i.e.,  the  transactional  application).

(Sirbu Decl.,  ¶  79;  see  also Gifford,  5:12-14.) The  overview  screen  and  links  1,  2,

and  3  teach  the  function  and  structure  of  the  “means  for  creating.”  Thus,  Gifford

discloses this limitation.

4.  Gifford anticipates dependent claim 4.
Claim 4 depends  from claim 2 and additionally recites, "wherein said means

for  receiving  said  user  specification  further  comprises:  means  for  presenting  said

user with  a  list  of  transactional  applications,  each  of  said  transactional  application

being  associated  with  a  particular  value-added  network  service  provider;  and

means  for  submitting  said  user  specification  according  to  a  user's  selection  of  said

transactional application from said list of transactional applications."

(a)  Gifford  teaches  “means  for  presenting  said  user  with  a  list  of
transactional  applications,  each  of  said  transactional  application
being  associated  with  a  particular  value-added  network  service
provider.”

The  structure  corresponding  to  this  limitation  is  the  portion  of  switching

service  702  that  outputs  data  to  the  user.  The  function  of  this  limitation  is

"presenting  said  user  with  a  list  of  transactional  applications,  each  of  said

transactional  application  being  associated  with  a  particular  value-added  network



- 50 -



service provider." Gifford  teaches  this  limitation. Specifically, FIG. 2 of Gifford  is

an  overview  screen  that  provides  a  list  of  transactional  applications  in  the  form  of

links  to,  for  example,  digital  advertisements  and  audio  content.  (Gifford,  5:7-17.)

Each  of  these  applications  is  associated  with  a  particular  value-added  network

service provider (e.g.,  the digital advertisements are associated with  the New York

Times). (See Sirbu Decl., ¶ 83.) Thus, Gifford teaches this limitation.

(b)  Chelliah  teaches  “means  for  submitting  said  user  specification
according  to  a  user's  selection  of  said  transactional  application
from said list of transactional applications.”

The  structure  corresponding  to  this  limitation  is  the  portion  of  switching

service  702  that  submits  user  specifications.  The  function  of  this  limitation  is

"submitting  said  user  specification  according  to  a  user's  selection  of  said

transactional  application  from  said  list  of  transactional  applications."  Gifford

discloses  this  limitation.  Specifically, Gifford  discloses merchant  computer  63,  64

as  submitting  the  user's  specification  (i.e.,  the HTTP  request  from  buyer  computer

61)  to  an  application  that  retrieves  digital  advertisements  to  be  sent  to  the  user  in

response  to  the  user's  request.  (See  Gifford,  5:49-59.)  Thus,  Gifford  discloses  this

limitation.

5.  Gifford anticipates dependent claim 5.
Claim 5 depends from claim 1 and additionally recites, "wherein said means



for processing said transaction request further comprises means for coupling said



- 51 -



means for transmitting to a host means."  The "host means"9 equates, for example,

to the portion of the Bank "Back Office" that processes received requests and/or a

repository that stores data. The structure corresponding to the "means for coupling"

is a network of the Bank "Back Office."



As noted above in section IV(B)(1)(g), Gifford's payment computer 68 is

equivalent to the recited “means for processing “the transaction request. A person

of ordinary skill in the art would have appreciated that Gifford's external financial

system necessarily included data repositories included in card-issuing bank servers.

(Sirbu Decl., ¶ 80.) These bank servers are the “host means.” In particular, the

bank servers process and store data used to determine whether to approve a

transaction request (e.g., account numbers and balances). (Sirbu Decl., ¶ 80).



Moreover, the payment computer 68 acts as an intermediary between, and

thereby couples, the merchant computers 63, 64 (corresponding to the recited

“means for transmitting”) and the external financial system (including the recited

“host means”). (Sirbu Decl., ¶ 81). In particular, the payment computer 68 receives

a transaction request from merchant computers 63, 64 (Gifford, 6:39-49) and

transmits an appropriate request for authorization to the external financial network

(Gifford 9:14-18). (Sirbu Decl., ¶ 81.)


9 Petitioner does not concede that this term invokes 35 U.S.C. § 112(f).



- 52 -



6.  Gifford anticipates dependent claim 6.
Claim 6 depends from claim 5 and additionally recites, "wherein said host



means contains data corresponding to said transaction request." As explained

above in section IV(B)(5), the card-issuing bank server of Gifford's external

financial system (corresponding to the recited “host means”) necessarily includes

one or more data repositories that store information needed to determine whether

to approve an authorization request. (Sirbu Decl., ¶ 82) This information can

include, for example, account numbers and balances. (Sirbu Decl., ¶ 82.) Because

account numbers and balances correspond to a transaction request (the transaction

request being the authorization request from merchant computer 63 pertaining to a

specific account), Gifford teaches this limitation. (Sirbu Decl., ¶ 82.)

7.  Gifford anticipates claims 10-12, 15, and 16.
Independent claim 10 and its dependent claims 11, 12, 15, and 16 recite



similar features as independent claim 1 and its dependent claims 2, 3, 5 and 6,

respectively. Thus, claims 10, 11, 12, 15 and 16 are anticipated by Gifford for the

same reasons as discussed above for claims 1, 2, 3, 5 and 6.  Petitioner has

provided the following claim chart indicating the correspondence between claims

10-12, 15, and 16 and claims 1-3, 5, and 6, respectively.

Limitation of Claim 10

A method for configuring a
value-added network switch for

Corresponding limitation in
Claim 1
A configurable value-added
network switch for enabling

Section

IV(B)(1)(a)



- 53 -



enabling real-time transactions
on a network, said method for
configuring said value-added
network switch compromising
the steps of:
switching to a transactional
application in response to a user
specification from a network
application,

said transactional application
providing a user with a plurality
of transactional services
managed by at least one value-
added network service provider,

said value-added network
service provider keeping a
transaction flow captive,
said plurality of transactional
services being performed
interactively and in real time;
transmitting a transaction
request from said transactional
application; and
processing said transaction
request.
Limitation of Claim 11

The method for configuring said
value-added network switch as
claimed in claim 10 wherein
said step of switching to a
transactional application further
comprises the steps of:
receiving said user
specification;
enabling a switch to said
transactional application; and

real-time transactions on a
network, said configurable
value-added network switch

means for switching to a
transactional application in
response to a user
specification from a network
application
said transactional application
providing a user with a
plurality of transactional
services managed by at least
one value-added network
service provider
said value-added network
service provider keeping a
transaction flow captive
said plurality of transactional
services being performed
interactively and in real time
means for transmitting a
transaction request from said
transactional application
means for processing said
transaction request
Corresponding limitation in
Claim 2
The configurable value-added
network switch as claimed in
claim 1 wherein said means
for switching to a
transactional application
further comprises:
means for receiving said user
specification;
means for enabling a switch
to said transactional

IV(B)(1)(b)

IV(B)(1)(c)

IV(B)(1)(d)

IV(B)(1)(e)

IV(B)(1)(f)

IV(B)(1)(g)

Section

IV(B)(2)

IV(B)(2)(a)

IV(B)(2)(b)



- 54 -



IV(B)(2)(c)

Section

IV(B)(3)

activating said transactional
application.
Limitation of Claim 12

The method for configuring said
value-added network switch as
claimed in claim 11 wherein
said step of activating said
transactional application further
includes
a step of creating a transaction
link between said network
application and said
transactional application.
Limitation of Claim 15

application; and
means for activating said
transactional application.
Corresponding limitation in
Claim 3
The configurable value-added
network switch as claimed in
claim 2 wherein said means
for activating said
transactional application
further includes
means for creating a
transaction link between said
network application and said
transactional application
Corresponding limitation in
5
The configurable value-added
network switch as claimed in
claim 1
wherein said means for
processing said transaction
request further comprises
means for coupling said
means for transmitting to a
host means
Corresponding limitation in
6
The method for configuring said
The configurable value-added
value-added network switch as
network switch as claimed in
claimed in claim 15
claim 5
wherein said host means
wherein said host means
contains data corresponding to
contains data corresponding
said transaction request.
to said transaction request
8.  Gifford anticipates claim 14.
Claim  14  corresponds  to  claim  4,  except  instead  of  "value-added  network

The method for configuring said
value-added network switch as
claimed in claim 10
wherein said step of processing
said transaction request further
comprises the step of
transmitting said transaction
request to a host means.

Section

IV(B)(6)

Limitation of Claim 16

IV(B)(3)

Section

IV(B)(5)

IV(B)(5)

IV(B)(6)

service provider" recited in claim 4, claim 14 recites an "Internet service provider."



- 55 -



As  noted  in  Section  IV(B)(4),  Chelliah  teaches  the  limitations  of  claim  4.  To  the

extent  that  an  "Internet  service  provider"  differs  from  a  "value-added  network

service provider," Petitioner notes  that  the  store  relied upon  in Section  IV(B)(4)  to

disclose "value-added network service provider" also discloses an "Internet service

provider"  because  the  stores  are  accessible  over  the  Internet.  (See  Section

IV(B)(1)(c).) Thus, Chelliah discloses the limitations of claim 14.

9.  Gifford anticipates claim 17.
Claim 17 depends from claim 10 and further recites "wherein said value-

added network service providers cooperate to provide said plurality of

transactional services to said user." Gifford teaches that at least two different

entities cooperate to provide transactional services to the user. The first is the

content provider that controls the merchant (e.g., in the example of FIG. 2, the

content provider is the New York Times). (Sirbu Decl., ¶ 83.) The second is the

entity that facilitates payment via the payment computer (e.g., Mastercard, Visa,

American Express, or Discover in the embodiment of FIG. 5). (Sirbu Decl., ¶ 83.)

The merchant computer 63, 64 and the payment computer 68 (and their associated

entities) "cooperate" to perform the purchase. (Sirbu Decl., ¶ 83; see also Gifford,

3:15-25.)

10.  Gifford anticipates independent claim 35.
Independent claim 35 recites similar features as claim 1. Thus, Petitioner has



- 56 -



provided  the  following  claim  chart  indicating  the  correspondence  between

limitations of claim 35 and claim 1.

Limitation

A configurable value-added network
system for enabling real-time
transactions on a network, said
configurable value-added network
system comprising:

means for switching to a transactional
application in response to a user
specification from a network
application,

said transactional application providing
a user with a plurality of transactional
services managed by at least one value-
added network service provider,

said value-added network service
provider keeping a transaction flow
captive,

said plurality of transactional services
being performed interactively and in
real time;

means for activating an agent to create a
transaction link between said user
application and said transactional
application

Corresponding
limitation in Claim 1
A configurable value-
added network switch
for enabling real-time
transactions on a
network, said
configurable value-
added network switch,
comprising:
means for switching to a
transactional application
in response to a user
specification from a
network application,
said transactional
application providing a
user with a plurality of
transactional services
managed by at least one
value-added network
service provider,
said value-added
network service provider
keeping a transaction
flow captive,
said plurality of
transactional services
being performed
interactively and in real
time,
See section (a) below.

Section

IV(B)(1)(a)

IV(B)(1)(b)

IV(B)(1)(c)

IV(B)(1)(d)

IV(B)(1)(e)

See
subsection
(a) below



- 57 -



means for transmitting a transaction
request from said transactional
application; and

IV(B)(1)(f)

means for transmitting a
transaction request from
said transactional
application;
See section (b) below.

a host means for processing said
transaction request and retrieving data
corresponding to said transaction
request.
(a)  Gifford  teaches  "means  for  activating  an  agent  to  create  a
transaction
link  between  said  user  application  and  said
transactional application."

See
subsection
(b) below

The  structure  in  the  ‘500  Patent  corresponding  to  "means  for  activating  an

agent  to  create  a  transaction  link  between  said  user  application  and  said

transactional  application"  is  a  graphical  user  interface.    Gifford  discloses  this

limitation.

FIG. 3 of Gifford  shows a purchase  screen  that  includes  links 5, 6, 7, and 8,

which  activate  the  agent.  (Sirbu  Decl.,  ¶  84;  see  also  Gifford,  5:19-29.)

Specifically, when  the  user  selects  link  5,  by,  for  example,  clicking with  a mouse,

an  HTTP  request  is  generated  by  the  buyer  computer  and  transmitted  to  the

merchant  computer.  (Sirbu Decl.,  ¶ 84) A person of ordinary  skill  in  the  art would

appreciate  that  this HTTP  request  causes  the web  server  to  activate  an  application

on  the  merchant  computer  that  keeps  the  response  to  the  HTTP  request  pending

while  the  merchant  computer  is  waiting  for  a  communications  from  the  payment

computer  indicating  the purchase has been approved. (Sirbu Decl., ¶ 84) Thus,  this

application  functions  as  an  agent  to  create  (and  maintain)  a  transaction  link



- 58 -



between  the  user’s  web  browser  and  the  transactional  application.  (Sirbu  Decl.,  ¶

84.) Further, the "overview screen" of FIG. 2 of Gifford (which includes links 1, 2,

and  3)  is  a  graphical  user  interface.  (Sirbu Decl.,  ¶  85;  see  also Gifford,  5:50-56.)

Thus, Gifford discloses this limitation.

(b)  Gifford  teaches  "a  host  means  for  processing  said  transaction
request  and  retrieving  data  corresponding  to  said  transaction
request."

Gifford  teaches  the  function  and  the  structure  corresponding  to  this

limitation.  In  particular,  Gifford  teaches  an  external  financial  system  that

corresponds  to  the  recited  “host  means.”  In  response  to  an  authorization  request,

the  external  financial  system  determines  whether  to  approve  the  request.  (Sirbu

Decl.,  ¶  86;  see  also  Gifford,  9:14-18.)  One  of  ordinary  skill  in  the  art  would

appreciate  that  in  determining  whether  to  approve  the  request,  the  external

financial  system  necessarily  accesses  data  corresponding  to  the  request  (e.g.,  an

account  number  corresponding  to  the  buyer).  (Sirbu Decl.,  ¶  86.) Accordingly,  the

external financial system discloses this limitation.







- 59 -





APPENDIX A


EXHIBIT LIST:  INTER PARTES REVIEW OF '500 PATENT


SAP
Exhibit #

1001

1002

1003

Description

U.S. Patent No. 5,987,500  to Arunachalam  (filed  Jun. 20, 1997;  issued Nov. 16,
1999) ("the '500 patent").

Declaration  of  Dr.  Marvin  Sirbu  (including  Curriculum  Vita  of  Dr.  Sirbu,
attached as Appendix A)

U.S. Patent No. 5,710,887  to Chelliah et al. (filed Aug. 29, 1995;  issued Jan. 20,
1998).

1004

U.S. Patent No. 5,724,424 to Gifford (filed Nov. 29, 1995; issued Mar. 3, 1998).