Trials@uspto.gov
`571-272-7822
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`Paper No. 50
`March 23, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
`AMERICAN EXPRESS CO., EXPEDIA, INC., ORBITZ WORLDWIDE,
`INC., PRICELINE.COM, INC., TRAVELOCITY.COM LP, YAHOO! INC.
`d/b/a YAHOO! TRAVEL, AMERICAN EXPRESS TRAVEL RELATED
`SERVICES CO., INC., HOTELS.COM LP, HOTELS.COM GP, LLC and
`HOTWIRE, INC.,
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`Petitioner,
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`vs.
`HARVEY LUNENFELD,
`Patent Owner.
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`- - - - - -
`
`Case CBM2014-00050
`
`Patent 8,239,451 B1
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`- - - - - -
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`Oral Hearing Held: February 24, 2015
`
`
`Before: MIRIAM QUINN (via video), KARL EASTHOM,
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`
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`FRANCES IPPOLITO (via video), Administrative Patent Judges
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`
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`
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`The above-entitled matter came on for hearing on Tuesday, February
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`24, 2015 at the U.S. Patent and Trademark Office, 600 Dulany Street,
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`Alexandria, Virginia in Courtroom B, at 2:00 p.m.
`
`
`571-272-7822
`
`
`
`
`Paper No. 50
`March 23, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`AMERICAN EXPRESS CO., EXPEDIA, INC., ORBITZ WORLDWIDE,
`INC., PRICELINE.COM, INC., TRAVELOCITY.COM LP, YAHOO! INC.
`d/b/a YAHOO! TRAVEL, AMERICAN EXPRESS TRAVEL RELATED
`SERVICES CO., INC., HOTELS.COM LP, HOTELS.COM GP, LLC and
`HOTWIRE, INC.,
`
`Petitioner,
`
`vs.
`HARVEY LUNENFELD,
`Patent Owner.
`
`- - - - - -
`
`Case CBM2014-00050
`
`Patent 8,239,451 B1
`
`- - - - - -
`
`Oral Hearing Held: February 24, 2015
`
`
`Before: MIRIAM QUINN (via video), KARL EASTHOM,
`
`
`
`FRANCES IPPOLITO (via video), Administrative Patent Judges
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, February
`
`24, 2015 at the U.S. Patent and Trademark Office, 600 Dulany Street,
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`Alexandria, Virginia in Courtroom B, at 2:00 p.m.
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`
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`JOHN D. VANDENBERG, ESQ.
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`KRISTEN P. LANTZ REICHENBACH, Ph.D., ESQ.
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`Klarquist Sparkman LLP
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`One World Trade Center
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`121 SW Salmon Street, Suite 1600
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`Portland, Oregon 97204
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`503-595-5300
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`ON BEHALF OF THE PATENT OWNER:
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`RICHARD M. MARTINEZ, ESQ.
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`BRYAN JAMES MECHELL, ESQ.
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`CYRUS A. MORTON, ESQ.
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`Robins, Kaplan, Miller & Ciresi LLP
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`2800 LaSalle Plaza
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`800 LaSalle Avenue
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`Minneapolis, Minnesota 55402-2015
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`612-349-8402
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`ALSO PRESENT:
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`HARVEY LUNENFELD, Patent Owner
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`Patent 8,239,451 B1
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`P R O C E E D I N G S
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`(2:00 p. m.)
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`JUDGE EASTHOM: Pl ease be sea ted. Welco me .
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`We have a couple judges on the sc reen. We wi ll wa it for
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`the m to appear .
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`Welco me , eve r yo ne. Judge Ippolito and Judge
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`Quinn, can you hear us? Judge Qu inn, can you hea r us? How
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`about that, can yo u hear us now? Thank you.
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`Judge Ippolito, are you with us? We can't hear
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`you. I can't hear you. C an you hea r me?
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`JUDGE I PP OLITO: Yes.
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`JUDGE EASTHOM: There you are .
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`JUDGE I PP OLITO: M y Inte rnet c onnection is
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`prett y choppy rig ht now. I think e ver yone is on a meeting. So
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`let me know if I e nd up getting logged out or so mething, I will
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`tr y to call ba ck in .
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`JUDGE EASTHOM: Oka y. If you are asking a
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`question, and I c a n't hear you , I will signal with my hand on
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`my ears , perhaps .
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`JUDGE I PP OLITO: Oka y. That would be helpful.
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`Thank you .
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`JUDGE EASTHOM: Oka y. Welco me , ever ybod y.
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`This is CB M 2014 -00050. And it is Ame rican Expre ss, et al.
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`versus Harve y Lu ne nfeld. And the patent is 8,239,4 51.
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`We have laid out ground rules in the trial orde r,
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`hearing order. And it sa ys in there each have one ho ur. So,
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`Petitioner, you will proceed first . And the n Pat ent Owne r will
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`proceed. And Pet itioner, you will r espond and rebut to Patent
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`Owne r, if the y sh ould address their motion to a mend . And
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`then, Patent Own er, you can respond to their -- you rebut their
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`response on the P atent Owner motion to a mend.
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`And wh y don't we introduce ourselves for the
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`record, please, Pe titioner.
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`MR. VANDENBERG: John Vende nberg for
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`Petitioner, of Kla rquist Spark man.
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`MS. R EIC HENB AC H: Kristen Re ichenbach of
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`Klarquist Spark man as well for Pet itioner.
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`JUDGE EASTHOM: Welco me .
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`MR. MARTINEZ: Good afte rnoon, Your Honors.
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`Richard Ma rtinez on behalf of Pat e nt Owner.
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`MR. MECHELL: Good a fternoon, Br yan Mechell
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`on behalf of Pate nt Owner.
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`JUDGE EASTHOM: Welco me .
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`Oka y. M r. Vandenberg, ar e you go ing to present
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`argu ment?
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`MR. VANDENBERG: Yes, Your Honor. I, first,
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`Petitioner would like to reserve 20 minutes for its re buttal and
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`response.
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`JUDGE EASTHOM: Oka y.
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`MR. VANDENBERG: Then I woul d like to address
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`the clai m interpr e tation issues and Section 101 and t hen my
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`colleag ue, Dr . R e ichenbach, would address section 1 03, with
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`the Board's pe r mi ssion.
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`JUDGE EASTHOM: That sounds good.
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`MR. VANDENBERG: Also we hav e a paper cop y
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`of our de monstrat ives. The y' re the ones we have sub mitted. If
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`the paper cop y would be hand y, my colleague will hand that up
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`to Your Honor.
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`JUDGE EASTHOM: That would be helpful to me .
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`I would appreciat e a cop y. Thank you.
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`MR. VANDENBERG: So ma y it please the Board,
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`what is pa ra mount, of course, is th e clai m, the clai m language,
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`the clai m li mita ti ons. And that's p articularl y i mportant here
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`because we sub mi t that the P atent Owne r's de fense of its
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`clai ms , both for 1 01 and 103, is r elying on i maginar y
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`li mitations. And we invite the Boa rd's attention to our slide
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`nu mber 3 in our d e monstrative exhib it.
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`And here in our s lide 3 and our sli de 4 in our
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`de monstratives, we list nine ele ments that the Pate nt Owner in
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`various places ha s asserted - -
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`JUDGE EASTHOM: Hang on one second. Please
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`indulge us. I a m having trouble seeing Dr . Ippolito. Judge
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`Qui nn, can you se e Judge Ippolito on your sc reen?
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`JUDGE QUINN: I don't see her .
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`Case CBM2014-00050
`Patent 8,239,451 B1
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`JUDGE EASTHOM: Oka y. I a m g oing to adjourn
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`one second and tr y to straighten this out. Sorr y.
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`(Discussion off t he record .)
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`JUDGE EASTHOM: Are you with us, Judge
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`Ippolito? Can yo u hear us?
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`JUDGE I PP OLITO: I can he ar yo u now. In case
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`this happens again, I think I will just call in directl y, and I
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`will just listen to the audio portion. Is there a nu mbe r there
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`handy that I can just call in and tha t might be a little bit easier
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`than tr ying to r ec onnect audio and visual?
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`(Discussion off t he record .)
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`MR. VANDENBERG: Can Your Honor hear me?
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`JUDGE I PP OLITO: I can, thank you.
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`JUDGE EASTHOM: Suc cess. Tha nk you. Sor r y
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`for the indulgence. I mean thank you for the ind ulgence.
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`Sorr y for the dela y.
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`Proceed, Mr . Van denberg.
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`MR. VANDENBERG: Thank you , Your Honor. So
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`we would like to begin with our sli des 3 and 4. And the
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`para mount point r eall y in this proc eeding is what do the clai ms
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`require and not r e quire.
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`Here we list about nine ele ments th at Patent Owner
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`so meplace has sai d or suggested ar e required b y the clai ms but
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`the y a re not required b y the clai ms .
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`In these slides we cite to the testi mony of
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`Dr . C arbonell, P a tent Owner's expe rt, but with the ca veat that
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`his testi mon y was in connection wi th the other par allel
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`proceeding about the '924 patent an d specificall y clai m 2.
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`So we don't want to overstate it; however , you
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`know, our position is that his testimon y, conclusions as to that
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`clai m also appl y t o these c lai ms . I n an y event, looking to the
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`clai m itself, it is clear that the clai ms here do not re quire an y
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`of these ele ments. And I would like to take a fe w ex a mples .
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`So the first one is structured or se mi -structured
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`search quer y. Th e Patent Owner s uggests that that's part of
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`the -- of their cla i med invention, but what the clai ms actuall y
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`recite a re search queries. The y do n't cite structure or
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`se mi -structure .
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`The Patent Owne r suggests substantially
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`si multaneous queries, but what the clai ms sa y is sen ding
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`queries. It doesn' t sa y if the y had t o be si multaneous or not.
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`And another exa mple is the y sa y s earching
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`heterogeneous hosts. This is an i mportant part of th eir
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`briefing, but what the clai ms sa y is at le ast one host. The
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`clai ms don't speci f y an ything about what that host is.
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`I won't belabor th e other points that are in our
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`brief, but that's t he main point on clai m interpretati on. And if
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`the Board had no questions for me on clai m interpret ation, I
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`would move to th e 101.
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`JUDGE EASTHOM: Just re all y br iefl y, is it Patent
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`Owne r's position that that ter m, tha t's a t er m o f a rt t hat was
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`known before the filing, that metas earching meant th ese
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`various things?
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`JUDGE QUINN: I can't hear whoever is speaking.
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`I can't hear .
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`JUDGE EASTHOM: That's my f ault . I turned off
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`my microphone. Can you hear now?
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`JUDGE QUINN: Yes.
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`JUDGE EASTHOM: So Patent Owner's position
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`see ms to be that metas earching wa s a te r m of art . C an you
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`address that?
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`MR. VANDENBERG: Pat ent Owne r has said that ,
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`certainl y. The B oar d's at l east ten tative broadest re asonable
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`interpretation does not require an y of these li mitations. We
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`have pointed to one of our exhibits is metase arch engines,
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`which re fers to a bout ten different metasea rch engines. So me
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`of those, you know, sear ch jus t we b sites, have nothing
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`structural, no stru ctured searches a bout the m. Ma mma .co m
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`had both. Knowl edge Broker had both.
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`But the y don't point, Patent Owner doesn't point, I
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`believe, to an y d e finition in the art that would prohibit a
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`metas earch engine fr o m being sear ching just unstructured data.
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`And, mo re i mport antly, perhaps, is in the
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`specification the y use the te r m met asearch engine s ynonymous
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`Patent 8,239,451 B1
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`with multi -tasking s yste m o r multi -tasking service. And the y
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`define that as being as broad as co nceivable. And we have
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`pointed in our briefs to ti me and ag ain the specificati on talks
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`about how the me tasearch engine o r the se rver or the client, et
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`cetera , c an be an y suitable means, c an be an ything on the
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`horizon, et c etera .
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`So this specificat ion to the -- did not give a nar row
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`definition -- I a m pausing a bit bec ause of the feedb ack in case
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`the other Judges are wondering -- the specification does not
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`give a narro w de f inition of metase arch. It goes in t he opposite
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`direction and sa ys metasear ch is a n ything that 's i mple mented
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`that can do this f unction, an y suita ble means whatsoever.
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`So turning to Sec tion 101 in our slide 10, the first
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`step under Alice i s whether the clai ms are directed to an
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`abstract idea. In slide 10 we have two quotes. One is fro m
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`the Board 's Institution decision, where it identifies the
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`abstract idea on which these cl ai ms are focused. And we
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`accept that desc ription of the abstract idea as a gene ral matte r.
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`Of course, each c lai m has diffe rent nuances. So ,
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`for instance, two of the clai ms don't require advertising. But
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`as a global proposition, this is a fa ir state ment of the abstract
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`idea, that it co mb ines searching for travel infor ma tion fro m
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`multiple sources, providing an advertise ment associated with
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`the travel sea rch results, and then ordering so me ite m fro m the
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`travel search resu lts.
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`Patent 8,239,451 B1
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`Now, Patent Own er has not adopted that specific
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`definition of the abstract idea, but we do quote here that in
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`their brief the y s a y the challenged clai ms co mprise t he
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`abstract idea of i ntegrating travel b ooking with met asearching.
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`So Patent Owner doesn't see m to at least put up
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`much of a contest on step one of Al ice that the clai ms actuall y
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`do -- a re directed to an abstract ide a.
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`Now, wh y is this idea abstract? Slide 11 addresses
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`this. And there i s e ssentiall y thre e re asons wh y this idea that
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`is in these clai ms is abstract , f airl y called to be abstr act.
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`First, it deals with intangible information. It is
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`talking about requests, responses, infor mation, sear ches,
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`queries, advertise ments. This is al l intangible information.
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`Second is that thi s idea does not ha ve an y
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`functional relationship with an y physical ele ment in the clai m.
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`This is not, for in stance, a for mula -- a clai m directe d to an
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`airplane airfoil th at is designed acc ording to a cert ain fo r mula,
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`where the for mul a ce rtainl y has a f unctional relationship with
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`the plane airfoil.
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`This is an idea th at does not i mpro ve an y -- the
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`operation of an y physical ele ment in the clai m. An d it doesn't
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`depend on an y ph ysical ele ment in the clai m. And we
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`su mmariz e those two points b y sa ying that the idea here has no
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`functional relationship with an y pa rticular ph ysical ele ment.
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`So that's the seco nd reason this is abstract.
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`The third reason i s, as the Board noted in its
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`Institution decision, that the ide a can be pe rfor med with pen
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`and paper. I have been watching, g oing through Downton
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`Abbe y latel y, and so I will analogize to a travel age nc y in
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`London in the 1920s. Well, that tr avel agenc y could have
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`benefitted fro m t his abstract idea.
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`The y could be lo oking in multiple p laces for travel
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`to the continent or travel to India. You get r esults, c ollect the
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`results, have so me sort of a poster or pa mphlet that i s an
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`advertise ment an d present it to the client. So this is an
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`abstract idea that could be perfor m ed with pencil and paper.
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`Inviting the Board's attention to slide 13, our
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`position is that Ultra mercial co mes ver y, ver y close to these
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`clai ms . We have in slide 13 a quote fro m the Ultra mercial
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`panel wher e the y identify six steps that the y sa y desc ribe the
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`abstract idea. I won't go through the steps, but those six steps
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`are abstract for th e sa me re ason that the clai med idea here is
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`abstract.
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`It is intangible infor mation. The re is no functional
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`relationship between the idea and a n y ph ysical ele me nt re cited
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`in the clai m, and it could have bee n done with paper and
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`pencil.
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`Turning to slide 16 and step 2 of the Alic e
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`anal ysis, i f there is no questions fro m the Board on step 1 of
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`Alice for me .
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`So moving to slide 16 and step t wo , the question
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`essentially there i s, oka y, we know that the clai m is directed
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`to an abstract idea. Wh at else is t here? What else is in the
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`clai m?
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`And what else we find in these clai ms is a
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`co mbination, a co nventional co mbination of ele ment s that are
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`generic to and re quired b y t his tec hnological field. This field
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`of invention, this technological field of invention is a
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`metas earch web s ite. Metasea rch web sites wer e common in
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`the mid - '90s. The y all had these e le ments. The y al l had a
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`client. The y all h ad a se rver. The y inhere ntl y all ha d an
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`HTTP . The y all used the Internet. And the y all had a
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`metas earch engine running on a ha rdware device . Those are
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`si mpl y field of use restrictions.
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`So what these cla i ms he re co mbine is an abstract
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`idea, so mething t hat could have be en used in the 19 20s, with
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`generic ele ments of a field of use, metas earch web s ites.
`
`Turning to slide 17, what makes this case, we
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`sub mit, even clea rer than most Sec tion 101 analyses is the
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`specification. An d I alluded to this earlier .
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`This specification bas icall y sa ys that ever ything
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`we mention in the specification can be an ything. It c an be
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`an ything known a nd unknown. For instance, this spe cification
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`sa ys that the serv er could be the si ze of a gr ain of d ust or
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`Patent 8,239,451 B1
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`could be a social network of individuals tied together b y
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`visions and thoughts.
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`Well, those are si lly, but the y mak e the point that
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`this patent sa ys n othing that we me ntion, server, met asearch
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`engine, client, is li mited. We are - -
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`JUDGE EASTHOM: Do you have a cite for that?
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`Wh ere is that?
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`MR. VANDENBERG: The cite is o n our petition
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`page 70, we quote that. I don't ha ve the cite to the patent,
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`colu mn and line with me , but it is in our petition on page 70.
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`JUDGE EASTHOM: Thank you .
`
`MR. VANDENBERG: But as slide 17 sa ys, it
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`refers to server P S 18. We see tha t highlighted about the fifth
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`line of this quote fro m the pat ent. Well, server PS 1 8 is the
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`closest the y get i n this patent to a metas earch engine. It is a
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`blank box. In one instance it sa ys optional database inside.
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`This huge patent never sa ys what i s inside the metas earch
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`engine. It doesn't give an y exa mpl es, structure , pro gra mming .
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`And what does it sa y he re about server 18, the P S
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`18? It ma y be ha rdware , fir mwar e, softwar e, and/or ma chines
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`and/or operating s yste ms , and/or a n y o ther suitable me ans. It
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`sa ys that for the c lient, the serve r, et ceter a.
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`So this specificat ion was written i n order to
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`pree mpt all conce ivable and, in fac t, inconceivable
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`i mple mentations of the abstract idea.
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`Patent 8,239,451 B1
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`So there is nothing in the clai m li miting the
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`abstract idea to a particular i mple mentation and certa inly the
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`specification points in the opposite direction.
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`I invite the Boa rd's attention to slide 20. And the
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`DR -- I' m sorr y, DDR Holdings case. So that case c a me down
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`after the parties, the bri efing. And we sub mit that t hese
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`clai ms are easil y distinguished from DDR Holdings on the
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`following three g rounds.
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`First, unlike DDR Holdings, these clai ms do not
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`address a proble m caused b y HTTP or the web or I nternet
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`technology. That was a big point i n DDR Holdings, to
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`distinguish it from Ultr a mer cial. The y said: These clai ms are
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`solving a proble m caused b y the ve r y essence of the HTTP
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`protocol.
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`Here the proble m is si mpl y collecti ng infor mation
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`more quickl y for people that co me to you seeking tra ve l
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`services. And, ag ain, that proble m existed in the 1920s in a
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`London travel ag enc y. It wasn't cr eated b y the Inter net. So
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`that's the first distinction, we sub mit.
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`The se cond distinction is that, as I said, a travel
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`agenc y could have benefitted f ro m t his idea well bef ore the
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`Internet ever existed. So not onl y was the proble m not
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`Internet -centric, t he benefit is not I nternet -centric.
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`In DDR Holdings, the benefit was specific to
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`people using HTTP. There was no morta r and bri ck analog.
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`Case CBM2014-00050
`Patent 8,239,451 B1
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`Here the probl e m, the benefit of thi s idea to speed the re ceipt
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`of travel infor ma t ion is not li mited to the Internet. It would
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`have applied in the 1920s.
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`And, finall y, the third point, again, DDR Holdings
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`e mphasized this in distinguishing Ultra me rcial was that
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`nothing in these c lai ms overrides t he conventional routine
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`operation of the I nternet.
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`In DDR Holdings, the y said the solution was to
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`override the conv entional operation of the Internet, override
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`how HTTP works . That is not the c ase here .
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`The onl y mention of HTTP and, the refore , the web
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`in these clai ms is on the f ront end, the client putting a request
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`to the metasea rch engine. This patent doesn't specif y ho w the
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`metas earch engine co mmunicates with, on the back end, to the
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`at least one host. And on the front end, these clai ms do not
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`specif y an y variat ion fro m HTTP or the Internet .
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`So in conclusion on 101, we sub mi t this case is
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`indistinguishable fro m Ultra me rcial . It is distinguished fro m
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`DDR Holdings. We sub mit that it is clea r f ro m loo king at the
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`wa y th ese clai ms are dr afted and what these clai ms a ctuall y
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`require, as opposed to what Patent Owner i magines the y
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`require, and made clear er b y the wa y the specificatio n is
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`written to mak e s ure it pre e mpts a n y conceivable or
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`inconceivable i mple mentation of it s a bstract idea .
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`Patent 8,239,451 B1
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`JUDGE EASTHOM: Counsel, if we acc ept Patent
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`Owne r's de finition of heterogeneous or diffe rent vari ation
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`t ypes of searches , does your anal ys is change at all with respect
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`to the abstract id ea?
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`MR. VANDENBERG: It would cha nge in the
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`respect that the -- that the abstra ct idea certainl y wo uld be
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`narrower . I f wha t these clai ms req uire is that when it sa ys we
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`search at least on e host having a pl uralit y of servers , if what
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`the clai m reall y me ans is we' re se arching at least one host with
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`a plural it y of ser ver devices, so me have structured d ata, so me
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`don't, then, then that's a na rrower a bstract idea.
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`And basicall y the concept there is t hat going back
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`to the travel agenc y, the idea is yo u go and you sear ch
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`multiple sources. And these multiple tra vel se rvices have
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`different wa ys of storing their information. Ma ybe o ne is a
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`shipping co mpan y and one is a sta ge coach co mpan y or
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`so mething. And t he y organize thei r infor mation in d ifferent
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`wa ys .
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`So it would certai nly be a diff erent abstract idea , it
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`would be narro we r, but as we have briefed Ma yo and
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`buySAFE, sa y, and we have a slide on this, that it do esn't
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`reall y matter how narro w or even b rilliant the abstra ct idea is .
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`Wh at is i mportant is it is abstract a s opposed to being concrete
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`or tangible?
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`Case CBM2014-00050
`Patent 8,239,451 B1
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`And sa ying that t he infor mation sources were
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`heterogeneous in so me wa y would not make that an y more
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`concrete or tangible. It would si mply be a na rrowe r idea.
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`So if ther e a re no further questions on 101, Dr .
`
`Reichenbach will address Section 1 03, Your Honors.
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`JUDGE EASTHOM: Thank you .
`
`JUDGE QUINN: I did have a quest ion for you .
`
`Wh at burden do you contend applies in our deter min ation that
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`Section 101 ma y have been violate d b y these clai ms ?
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`MR. VANDENBERG: Well, Your Honor, certainl y
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`the standard woul d be, to the exten t that there is a fa ctual
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`co mponent, then our burden, standard of proof there is
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`preponderance of the evidence.
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`Howeve r, we would sa y that in all , if not -- in most
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`if not all c ases, S ection 101 boils down to a purel y l egal issue.
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`We sub mit her e it is a purel y legal issue, whe re we d on't see
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`an y fact finding that the Board wo uld need to engage in to rule
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`for us on 101.
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`But if the Board was engaging in f act finding, then
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`we do have that b urden of a preponderance of the evi dence
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`standard.
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`JUDGE QUINN: Thank you .
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`JUDGE I PP OLITO: This is Judge Ippolito. I have
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`a quick question for you be fore you move on.
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`Case CBM2014-00050
`Patent 8,239,451 B1
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`The Patent Owne r has also proposed that the
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`prea mble "on the Internet" is li miting. And do you h ave an y
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`response or thought s on that point?
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`MR. VANDENBERG: Your Honor, we would sa y
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`that the prea mble "on the Internet" is, is probabl y li miting, i f I
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`ma y couch it a lit tle bit there. And the re ason I sa y t hat is the
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`body of the clai m ref ers to receivin g a h yp ertext tr ansfer
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`protocol request.
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`You can have an HTTP request wit hout the
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`Internet, but cert ainly the most co mmon i mple mentation
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`certainl y in 2000 of using HTTP would be over the I nternet.
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`So without taking up, you know, a final position on
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`it, I think that it i s not u nreasonable to sa y that the I nternet
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`ma y be a li mitati on here, as it was in Ultr a mer cial, as it was in
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`a nu mbe r of cases wher e the clai ms we re declared invalid or
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`unpatentable under 101.
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`JUDGE I PP OLITO: Thank you.
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`MR. VANDENBERG: Thank you .
`
`JUDGE EASTHOM: Thank you , c ounsellor.
`
`MS. R EIC HENB AC H: This is Kri sten Reichenbach
`
`for Petitioner.
`
`The challenged cl ai ms are also unpatentable under
`
`Section 103 as ob vious in view of t he Knowledge Br oker,
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`Ma mma .co m, and Travelscape. co m co mbination of r efere nces .
`
`And I a m sta rting off on slide 24.
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`Patent 8,239,451 B1
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`As Mr . Vandenberg explained, thes e challenged
`
`clai ms describe i n conventional ter ms three concept s; first, a
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`metas earch web s ite; second, r eturning an ad that is associated
`
`with the sea rch a nd the parties agr ee t hat that can b e satisfied
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`b y ke y word advertising. The third concept is proces sing an
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`order for an ite m for the se arched i te m, wher e that it e m that is
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`searched and orde red was travel rel ated.
`
`None of these con cepts we re ne w in 1999 and
`
`2000. Kno wledge Broker integrat ed a plural quer y metas earch
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`website with a ba ck end that proce ssed orders direct l y f ro m
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`the search results. Ma mma . co m, like Knowledge Br oker, was
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`also a met asearch web site. And M a mma also included
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`returning advertise ments with se arc h res ults and those ads
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`were associated with the sea rch.
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`Travelscape .co m in 1999, a user was able to go to
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`that web site and select and si multaneously search f or an
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`airline ticket and a hotel rese rvation at the sa me ti me and then
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`order both of those directl y f ro m th e sear ch results.
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`Therefor e, these r eferences teach al l ele ments of
`
`the challenged cl ai ms and it would have been obvious to put
`
`all these concepts into one s yste m f or several reasons.
`
`We sta rt off b y lo oking at the Kno wledge
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`Broker/Ma mma c o mbina tion, slide 25. If we we re t o envision
`
`the h ypothetical workbench of a s killed artisan, the se two web
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`sites would reall y be right next to e ach other. The y are ve r y
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`Case CBM2014-00050
`Patent 8,239,451 B1
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`si milar web sites. The y sea rch si milar places in a si milar
`
`manner .
`
`The y both sent th e u ser quer y to pl ural hosts,
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`returned the r esults. The y both sea rched sear ch engines. The y
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`both searched str uctured infor mation sources. The y both
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`accepted ke y wor d searching. And the y both had a
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`revenue-generating aspect to the m.
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`In the case of Kn owle dge Broker , i t processed
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`orders for ph ysics articles, to be pri nted and bound through the
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`search r esults. In the case of Ma mma , it was the tar geted ke y
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`word advertising.
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`So we sub mit that the skilled artisa n would find it
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`obvious to add to Knowledge Bro k er, Ma mma 's ke y word or
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`the metasear ch it e m advertising. And for -- one r e ason is that
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`Knowledge B roker sear ched sear ch engines -- and I a m
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`refer ring now to s lides 26 and 27.
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`In slide 27, we show an excerpt of Knowledge
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`Broker's user inte rface . It sho ws t here an option for the user
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`to select sear ch Webcra wlers . Those we re the sear ch engines
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`of the ti me . So Knowledge Broker was al read y sea rc hing
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`search engines. And we know tha t search engines c o mmonl y
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`returned advertise ments that were associated with t he search .
`
`Ma mma .co m, which is described o n slide 28, shows
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`that the y, in f act, we re doing this. The advertiser c ould
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`purchase ke y wor ds. And then whe n those ke y words we re
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`Patent 8,239,451 B1
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`used in a sea rch, the advertiser's b anner ad would a ppear with
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`the search res ults. The user could click through that banner ad
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`and go to the adv ertiser's web site.
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`So Ma mma .co m d e monstrates that t here was no
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`technical obstacle to returning ads with results and t here was
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`also no technical obstacle to associating those ads with th e
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`search.
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`Therefor e, all the skilled artisan ha d to do was to,
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`for Knowledge B r oker, who is al rea d y collecting sea r ch results
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`fro m sea rch engines. Kno wledge B roker could also c ollect
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`those advertise me nts that the searc h engines wer e al read y
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`returning wi th the results, pass those through and display the m
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`with the r esults on the Kno wledge Broker s yst e m. This would
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`require no ne w mechanis m at all .
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`And the clai m lan guage does not preclude this t ype
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`of i mple mentation. And as shown on slide 29, Dr. C arbone ll
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`testified that he a greed that the cla i m language did not place a
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`require ment on th e source of the advertise ment , that it could
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`co me f ro m one of the plural hosts.
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`And to cla rif y this testi mon y was i n the related
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`proceeding for cl ai m 2, but the lan guage is ver y si milar. Now,
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`it would also hav e been obvious to add to Knowledg e Broker
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`metas earch ite m a dvertising, because Knowl edge Br oker
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`reco mmended use in the bargain fi nding area. And that
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`excerpt is on slide 30.
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`Patent 8,239,451 B1
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`And in that exc er pt there, Kno wledge B roker
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`describes various advantages of its constraint -based s yste m
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`and then states that these advantag es can be exploited in other
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`areas, other than searching for ph ysics articles, such as
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`bargain finding and d yna mic assemblage of virtual catalogues.
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`Dr . C arbonell testified that he refe r s instead of
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`bargain finding, he re ferr ed to those sites as co mp ari son
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`shopping web site s, so all the skilled artisan had to d o was
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`recognize the age -old business practice of placing a n
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`advertise ment in front of a consu mer when the y a re shopping.
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`Therefor e, it is a natural addition to Knowledge Bro ker to add
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`this metase arch it e m advertising.
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`Now, Patent Own er has argued that Knowledge
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