Paper 51
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: May 22, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS CO., AMERICAN EXPRESS TRAVEL CO.,
`EXPEDIA, INC., ORBITZ WORLDWIDE, INC., PRICELINE.COM INC.,
`TRAVELOCITY.COM LP, YAHOO! INC., HOTELS.COM LP,
`HOTELS.COM GP, LLC, HOTWIRE, INC.,
`Petitioner,
`
`v.
`
`HARVEY LUNENFELD,
`Patent Owner.
`____________
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`____________
`
`
`Before MIRIAM L. QUINN, KARL D. EASTHOM, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: May 22, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS CO., AMERICAN EXPRESS TRAVEL CO.,
`EXPEDIA, INC., ORBITZ WORLDWIDE, INC., PRICELINE.COM INC.,
`TRAVELOCITY.COM LP, YAHOO! INC., HOTELS.COM LP,
`HOTELS.COM GP, LLC, HOTWIRE, INC.,
`Petitioner,
`
`v.
`
`HARVEY LUNENFELD,
`Patent Owner.
`____________
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`____________
`
`
`Before MIRIAM L. QUINN, KARL D. EASTHOM, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`
`I.
`
`INTRODUCTION
`
`American Express Company et al. (collectively, “Petitioner”) filed a
`
`Petition requesting a covered business method patent review of claims 1, 5, 15,
`
`21, 31, and 35 (“the challenged claims”) of U.S. Patent No. 8,239,451 B1 (“the
`
`’451 patent”) pursuant to section 18(a) of the Leahy-Smith America Invents Act
`
`(“AIA”).1 Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`
`Paper 16 (“Prelim. Resp.”). On June 18, 2014, we instituted this proceeding as
`
`to claims 1, 5, 15, 21, 31, and 35 on two grounds of unpatentability, 35 U.S.C.
`
`§§ 101, 103. Paper 17 (“Dec. to Inst.”).
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 33 (“PO Resp.”)) and a contingent Motion to Amend (Paper 34, (“Mot.
`
`to Amend”)). Petitioner filed a Reply (Paper 37 (“Pet. Reply”)) and an
`
`Opposition to Patent Owner’s Motion to Amend (Paper 38 (“Opp. to Mot. to
`
`Amend”)). Patent Owner then filed a Reply to Petitioner’s Opposition to its
`
`Motion to Amend. Paper 40 (“PO Reply”). Oral hearing was held on February
`
`24, 2015. A transcript of the hearing is in the record. Paper 50 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This is a Final
`
`Written Decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the
`
`reasons that follow, we determine that Petitioner has demonstrated by a
`
`preponderance of the evidence that claims 1, 5, 15, 21, 31, and 35 are
`
`unpatentable under §§ 101 and 103, and we deny Patent Owner’s Motion to
`
`Amend.
`
`
`1 Pub. L. 112-29, 125 Stat. 284, 329 (2011).
`
`2
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`
`A. Related Matters
`
`Petitioner represents that the ’451 patent is involved in district court
`
`proceedings as follows:
`
`MetaSearch Sys., LLC v. Am. Express Co., No. 1:12-cv-01225-LPS
`(D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. TravelZoo Inc., No. 1:12-cv-01222-LPS
`(D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Yahoo! Inc., No. 1:12-cv-01223-LPS
`(D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. KAYAK Software Corp., No. 1:12-cv-
`01224-LPS (D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Bookit.com Inc., No. 1:12-cv-01226-LPS
`(D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Expedia Inc., No. 1:12-cv-01188-LPS (D.
`Del. filed Sept. 21, 2012);
`
`MetaSearch Sys., LLC v. Orbitz Worldwide, Inc., No. 1:12-cv-
`01190-LPS (D. Del. filed Sept. 21, 2012);
`
`MetaSearch Sys., LLC v. Priceline.com Inc., No. 1:12-cv-01191-
`LPS (D. Del. filed Sept. 21, 2012); and
`
`MetaSearch Sys., LLC v. Travelocity.com, LP, No. 1:12-cv-01189-
`LPS (D. Del. filed Sept. 21, 2012).
`
`See Pet. 1 (citing Ex. 1050 (Order staying district court proceedings pending
`
`CBM2014-00050 and CBM2014-00001)). Patent Owner also indicates that
`
`Harvey Lunenfeld owns the ’451 patent, and Metasearch Systems, LLC is the
`
`real party-in-interest “as it is the exclusive licensee of the ’451 patent.”
`
`Paper 13, 2. Related U.S. Patent No. 8,326,924 B1, which claims continuity to
`
`3
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`the ’451 patent, is involved in a covered business method patent review
`
`designated CBM2014-00001. Ex. 1050 ¶ 3
`
`B. The ’451 Patent
`
`The ’451 patent, titled “Metasearch Engine for Ordering Items Returned
`
`in Travel Related Search Results Using Multiple Queries on at Least One Host
`
`Comprising a Plurality of Server Devices,” issued on August 7, 2012, based on
`
`U.S. Patent Application No. 13/436,957.
`
`The ’451 patent is directed to a method and system for client-server
`
`multitasking or metasearching. Ex. 1001, 111:64–112:6. One embodiment
`
`described in the ’451 patent employs a metasearch engine, which the
`
`’451 patent describes as “a search engine that sends user requests to several
`
`other search engines, servers, clients, and/or databases, and other suitable
`
`systems and/or devices, groups, sorts, and returns the results from each one.”
`
`Id. at 111:58–63. The described system may “search or metasearch a plurality
`
`of queries or keyword phrases of a plurality of sites,” and receive, place, and
`
`process orders from users “based upon selections from the returned grouped and
`
`sorted results.” Id. at 112:30–39. The ’451 patent adds that users of the
`
`described metasearch system should be able to place orders, such as purchases,
`
`and other types of orders either directly or through servers or sites on the
`
`network. Id. at 3:65–4:2; see id. at 113:1–4. The ’451 patent further teaches
`
`that substantially any item can be ordered or purchased using the disclosed
`
`metasearch system, including an airline ticket. Id. at 114:50–64.
`
`Figure 1 of the ’451 patent (reproduced below) illustrates client-server
`
`metasearch system 10 on network 24. Ex. 1001, 20:47–53.
`
`
`
`4
`
`
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`CBM2014-00050
`Patent 8,239,451 B1
`
`
`
`
`Figure 1 depicts client-server metasearch system 10 having requestors or users
`
`12, user interfaces 14, clients 16, server PS 18, servers 20, and optional servers
`
`22. Id. In operation, each user 12 enters user inputs or requests into user
`
`interfaces 14. Id. at 20:57–60. User requests are communicated from user
`
`interfaces 14 to clients 16. Id. at 20:60–62. Clients communicate the user
`
`requests to servers such as server PS 18. Id. at 21:36–38. If the request is
`
`communicated to server PS 18, then server PS 18 may communicate it to
`
`servers 20. Id. at 22:8–11. Servers 20 reply to server PS 18 and communicate
`
`responses associated with the user requests to server PS 18. Id. at 22:18–21.
`
`Server PS 18 then communicates the responses to clients 16, which then
`
`communicate responses to user interfaces 14. Id. at 22:39–44. Users review
`
`the responses (e.g., search results) at the user interfaces. Id. at 22:49–52.
`
`In some cases, server PS 18 (or clients 16) may parse, process, format,
`
`sort, group, or organize the responses into “corresponding service and/or
`
`information responses” acceptable to clients 16 and user interfaces 14.
`
`Ex. 1001, 22:27–35. These organized responses may incorporate links and
`
`5
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`selected advertising according to selectable search query, sorting, or grouping
`
`criteria into the information delivered to user interfaces. Id. at 8:24–28. These
`
`responses may also include purchasing and price comparisons, product
`
`availability information such as the pricing and availability of airline tickets,
`
`and ordering features. Id. at 8:29–40, Figs. 122A–H (showing an “Order
`
`Quantity Below” box in the search result report that allows the user to order a
`
`desired number of items from some of the listed results).
`
`C. Illustrative Claims
`
`All challenged claims 1, 5, 15, 21, 31, and 35 are independent claims.
`
`Claims 1 and 35 of the ’451 patent, reproduced below, are illustrative of the
`
`challenged claims.
`
`1. A process for metasearching on the Internet, wherein the
`steps of the process are performed by a metasearch engine
`executing on a hardware device, the process comprising the steps
`of:
`
`(a) receiving a Hypertext Transfer Protocol request from a
`client device for the metasearch engine to send a plurality of search
`queries to at least one host that comprises a plurality of server
`devices that provide access to information to be searched, wherein
`the Hypertext Transfer Protocol request from the client device is
`associated with a plurality of travel related items that may be
`ordered comprising at least one airline ticket and at least one other
`type of travel related item;
`
`
`(b) sending the plurality of search queries to the at least one
`host in response to the Hypertext Transfer Protocol request
`received from the client device;
`
`
`(c) receiving search results from the at least one host in
`response to the plurality of search queries sent to the at least one
`host;
`
`
`(d) incorporating the received search results into a response;
`
`6
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`
`
`
`
`
`(e) communicating the response from the metasearch engine
`to the client device;
`
`
`(f) receiving another Hypertext Transfer Protocol request
`from the client device for placing an order for at least one of the
`plurality of travel related items;
`
`
`(g) processing the order.
`
`35. A process for metasearching on the Internet, wherein
`the steps of the process are performed by a metasearch engine
`executing on a hardware device, the process comprising the steps
`of:
`
`(a) receiving a Hypertext Transfer Protocol request from a
`client device for the metasearch engine to send a plurality of search
`queries to at least one host that comprises a plurality of server
`devices that provide access to information to be searched, wherein
`the Hypertext Transfer Protocol request from the client device is
`associated with a plurality of travel related items that may be
`ordered comprising at least one airline ticket and at least one other
`type of travel related item from the group consisting of a hotel
`reservation and a car rental;
`
`
`(b) sending the plurality of search queries to the at least one
`host in response to the Hypertext Transfer Protocol request
`received from the client device;
`
`
`(c) receiving search results from the at least one host in
`response to the plurality of search queries sent to the at least one
`host;
`
`
`(d) incorporating the received search results into a results list
`and incorporating the results list into a response;
`
`
`(e) incorporating at least one universal resource locator link
`into the response;
`
`
`7
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`
`(f) communicating the response from the metasearch engine
`to the client device, wherein the universal resource locator link
`causes at least one advertisement associated with at least a portion
`of the plurality of travel related items to be communicated to the
`client device;
`
`
`(g) receiving another Hypertext Transfer Protocol request
`from the client device for placing an order for the plurality of
`travel related items;
`
`
`(h) processing the order.
`
`Challenged
`Claims
`1, 5, 15, 21, 31,
`and 35
`1, 5, 15, 21, 31,
`and 35
`
`D. Instituted Grounds of Unpatentability
`
`Basis
`
`References and Descriptions
`
`§ 101
`
`for lack of patentable subject matter
`
`§ 103
`
`Mamma.com,2 Metasearch Engines,3
`Knowledge Broker,4 and Travelscape
`website5
`
`
`2 Mamma.com website captured by Internet Archives Wayback Machine
`(May 5, 1998) (Ex. 1012) (“Mamma.com”).
`
` 3
`
` Wendy Tan, Subject Access on Internet: Highlights of the Metasearch
`Engines, 36 J. OF EDUC. MEDIA & LIBRARY SCI. 20–29 (Sept. 1998) (Ex. 1014)
`(“Metasearch Engines”).
`
` 4
`
` Uwe M. Borghoff et al., Agent-Based Document Retrieval for the European
`Physicists: A Project Overview, PROC. 2ND INT’L CONF. ON THE PRACTICAL
`APPLICATION OF INTELLIGENT AGENTS & MULTI-AGENT TECH. (PAAM ’97),
`Apr. 21–23, 1997 (Ex. 1015) (“Knowledge Broker”).
`
` 5
`
` Travelscape.com website as captured by Internet Archives Wayback Machine
`and described by Exhibits 1008, 1017, and 1019–1046. See Pet. 40.
`
`8
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`
`II. ANALYSIS
`
`A. Standing
`
`We determined, in the Decision to Institute, that the ’451 patent is a
`
`covered business method as defined in § 18(a)(1)(E) of the America Invents Act
`
`and 37 C.F.R. § 42.301, because at least one claim of the ’451 patent is directed
`
`to a covered business method. Dec. to Inst. 8–13.
`
`B. Constitutionality of Covered Business Method Patent Review
`
`As an initial matter, Patent Owner argues that covered business method
`
`patent review proceedings violate the Seventh Amendment’s right to a jury
`
`trial. PO Resp. 39–41. Patent Owner asserts covered business method patent
`
`reviews are similar to federal court trials and constitutionally different from
`
`ex parte reexaminations, because the governing rules of a covered business
`
`method patent review provide for discovery, the entering of final judgment,
`
`estoppel, and restrictive claim amendment practice. Id. at 40.
`
`Patent Owner raises the constitutional issue to preserve it for appeal. See
`
`id. at 39–40 (citing Cooper v. Lee, Case No. 1:14-cv-00672, Dkt.15 at 14 (E.D.
`
`Va. July 23, 2014)). To the extent the Office responds at this stage, see Cooper,
`
`Dkt. 15 at 14, our reviewing court has determined previously that even when
`
`applied retroactively, reexamination proceedings do not violate the Seventh
`
`Amendment. Patlex Corp. v. Mossinghoff, 758 F.2d 594, 604 (Fed. Cir. 1985)
`
`(“A defectively examined and therefore erroneously granted patent must yield
`
`to the reasonable Congressional purpose of facilitating the correction of
`
`governmental mistakes.”); see also Joy Techs., Inc. v. Manbeck, 959 F.2d 226,
`
`228–29 (Fed. Cir. 1992) (affirming the holding in Patlex), other grounds
`
`superseded by statute, 35 U.S.C. § 145, as recognized in In re Teles AG
`
`9
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`Informationstechnologien, 747 F.3d 1357 (Fed. Cir. 2014). Covered business
`
`method patent review and inter partes review proceedings are post-grant
`
`proceedings, which, like a reexamination proceeding, allow the Office to
`
`evaluate the alleged unpatentability of claims in an issued patent and to cancel
`
`any claims the Office determines should not have been issued. Thus, we are not
`
`persuaded there is a constitutionally-significant distinction between
`
`reexaminations and covered business method patent review proceedings.
`
`Moreover, Patent Owner has not explained the constitutional significance
`
`of asserted similarities shared between covered business review proceedings
`
`and federal district court litigation. The Federal Circuit explained in Patlex that
`
`the Constitution does not require the striking of statutes, “otherwise having a
`
`reasonable legislative purpose, that invest administrative agencies with
`
`regulatory functions previously filled by judge and jury” where there is a “fair
`
`opportunity for judicial review and full respect for due process.” Id. Although
`
`there may very well be similarities between a jury trial and a covered business
`
`method patent review proceeding, those similarities by themselves do not
`
`render covered business method patent review unconstitutional. Accordingly,
`
`for the reasons articulated in Patlex, we conclude that covered business method
`
`patent reviews, like reexamination proceedings, comply with the Seventh
`
`Amendment.
`
`C. Level of Ordinary Skill in the Art
`
`Patent Owner disagrees with Petitioner’s definition of PHOSITA
`
`measured as of 1999 or 2004, or somewhere in between, and with Petitioner’s
`
`assertion that the PHOSITA would understand the technology underlying the
`
`Web, Web-based search engines and metasearch engines, Web-based travel
`
`commerce sites, and, in particular, the teachings of Travelscape, Mamma.com,
`
`10
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`and Knowledge Broker. PO Resp. 32; see Pet. 24. Patent Owner urges a
`
`different definition of PHOSITA as that of a person having a bachelor’s degree
`
`in computer science, engineering, or a related discipline, and five years of
`
`industry experience. PO Resp. 32
`
`To determine the level of ordinary skill in the art in this case we consider
`
`the type of problems encountered in the art, the prior art solutions to those
`
`problems, the rapidity with which innovations are made, and the sophistication
`
`of the technology. Custom Accessories v. Jeffrey-Allan Indus. Inc., 807 F.2d
`
`955, 962 (Fed. Cir. 1986). Also, we are guided by the level of ordinary skill in
`
`the art reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d.
`
`1350, 1355 (Fed. Cir. 2001).
`
`We are persuaded that the level of ordinary skill in the art would include
`
`knowledge of technology underlying the Web, Web-based search engines and
`
`metasearch engines, and Web-based travel commerce sites. The prior art of
`
`record describes the operation of metasearch engines/web-based search engines
`
`(e.g., Mamma.com and Metasearch Engines) and travel commerce sites (e.g.,
`
`Travelscape). Thus, a skilled artisan would need some knowledge through
`
`education or experience of how the web-based sites work, particularly web-
`
`based search/commerce sites, to choose the appropriate techniques and properly
`
`use them.
`
`We do not agree with Patent Owner that a bachelor’s degree in a specific
`
`field and five years of industry experience are required. Although Petitioner’s
`
`declarant, Mr. Bob Offutt, agrees with Patent Owner that a bachelor’s degree
`
`may be necessary, Mr. Offutt disagrees that the degree must be in any specific
`
`field. Ex. 2005, 26:7–23, 27:20–28:5. Mr. Offutt explains that the requisite
`
`industry experience can be acquired “in a matter of a few years [or] . . . in
`
`11
`
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`CBM2014-00050
`Patent 8,239,451 B1
`
`months.” Ex. 2005, 26:24–27:8. Thus, based on all the evidence, we conclude
`
`that a person of ordinary skill in the art at the time of the ’451 patent, through
`
`education or experience, would have knowledge of technology underlying the
`
`Web, Web-based search engines and metasearch engines, and Web-based travel
`
`commerce sites.
`
`D. Weight Given to Petitioner’s Declarant, Mr. Offutt
`
`Patent Owner asserts that Petitioner has failed to provide the testimony of
`
`a person having ordinary skill in the art (“PHOSITA”). PO Resp. 32. Patent
`
`Owner asserts that Mr. Offutt is not one of ordinary skill in the art because he
`
`did not read Petitioner’s exhibits (e.g., Travelscape.com S-1 statement) or work
`
`with Mamma.com, Travelscape, or Knowledge Broker in the 1999–2000
`
`timeframe. PO Resp. 33–34. Patent Owner further argues Mr. Offutt lacks
`
`real-world experience with metasearch technology, and that Mr. Offutt states he
`
`is not an expert in metasearching technology. PO Resp. 32, 34–35 (citing
`
`Ex. 2005, 22:19–23:5).
`
`Although Mr. Offutt may not have read all the references of record or
`
`acquired actual real-world experience with Mamma.com, Travelscape, or
`
`Knowledge Broker in 1999–2000, these facts do not disqualify him from giving
`
`a competent opinion as to what a hypothetical person of ordinary skill would
`
`have known in 1999–2000. “The person of ordinary skill in the art is a
`
`hypothetical person who is presumed to know the relevant prior art.” In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, arguments that the
`
`scientific or technical experience and knowledge of Mr. Offutt do not match the
`
`alleged level of ordinary skill in the art are unpersuasive as there is no
`
`requirement of a perfect match between the expert’s experience and the field of
`
`12
`
`
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`CBM2014-00050
`Patent 8,239,451 B1
`
`the art in question. See SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d
`
`1360, 1373 (Fed. Cir. 2010).
`
`Further, a declarant may be qualified as an expert if the declarant’s
`
`scientific, technical, or other specialized knowledge will help the trier of fact to
`
`understand the evidence or to determine a fact in issue. Fed. R. Evid. 702.
`
`Patent Owner has not filed a motion to exclude on the basis of competency of
`
`Petitioner’s expert witnesses, and, therefore, we do not undertake an analysis of
`
`whether the challenged expert is, indeed, qualified under the Federal Rules of
`
`Evidence. Here, Mr. Offutt has experience in the application of metasearching
`
`to travel, and testifies as to the reasons one of ordinary skill in the art would
`
`have combined metasearch engine technology disclosed in Mamma.com,
`
`Metasearch Engines, and Knowledge Broker with travel booking services
`
`disclosed in Travelscape. Ex. 2005, 21:17–23:5; Ex. 1007 ¶¶ 34–44. Although
`
`Patent Owner acknowledges Mr. Offutt has experience in this area, Patent
`
`Owner maintains that Mr. Offutt lacks the technical expertise/experience
`
`necessary to opine on the proposed combination. PO Resp. 64. However,
`
`Patent Owner has not filed a motion to exclude Petitioner’s expert witnesses.
`
`Additionally, we are capable of discerning from the testimony, and the
`
`evidence presented, whether the witness’s testimony is entitled to any weight,
`
`and taking into consideration the areas of expertise of each witness in weighing
`
`that testimony accordingly.
`
`With these considerations in mind, we now turn to the construction of the
`
`following terms.
`
`E. Claim Construction
`
`During a review before the Board, we construe claims in an unexpired
`
`patent in accordance with the broadest reasonable interpretation in light of the
`
`13
`
`
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`CBM2014-00050
`Patent 8,239,451 B1
`
`specification of the patent in which they appear. 37 C.F.R. § 42.300(b); see
`
`In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015)
`
`(“Congress implicitly adopted the broadest reasonable interpretation standard in
`
`enacting the AIA,” and “the standard was properly adopted by PTO
`
`regulation.”); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012). Under the broadest reasonable interpretation standard,
`
`claim terms are given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`An inventor may rebut that presumption by providing a definition of the term in
`
`the specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`
`definition, limitations are not to be read from the specification into the claims.
`
`In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`1. “metasearching” (claims 1, 5, 15, 21, 31, and 35)
`
`For purposes of our Decision instituting trial, we determined that
`
`“metasearching” is not limited to being conducted “substantially
`
`simultaneously” or “on-the-fly” as proposed by Patent Owner in its Preliminary
`
`Response. Dec. to Inst. 16–17. Further, on that preliminary record, we
`
`concluded it was not necessary to construe other aspects of “metasearching” at
`
`the institution stage. Id. at 17.
`
`In its Patent Owner’s Response, Patent Owner asserts that
`
`“metasearching” was known at the time of the invention to include searches of
`
`various heterogeneous information sources, including unstructured searches,
`
`semistructured searches, and structured searches. PO Resp. 36. Patent Owner
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`argues that adopting Petitioner’s proposed construction limiting
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`Patent 8,239,451 B1
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`“metasearching” to “unstructured keyword query(ies)” would improperly
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`import a limitation into the construction of the term. Id. at 37–38. Patent
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`Owner further advocates, for the purpose of clarity, that “metasearching,” under
`
`the broadest reasonable interpretation in light of the known art at the time of the
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`invention and the patent specification, means “sending at least one search query
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`to plural hosts, and returning the results received from each host.” Id.
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`First, we agree with Patent Owner that the term “metasearching” does not
`
`require an unstructured query as proposed by Petitioner. The claim language
`
`does not literally restrict “metasearching” to any particular type of information
`
`source that is unstructured, structured, semi-structured, etc. Further, the
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`’451 patent’s disclosure is consistent with this interpretation. For example, the
`
`’451 patent provides that
`
`the metasearch system and/or processes of the present invention
`may be used in a variety of searching, metasearching, ordering,
`shopping, and purchasing applications.
`
`Ex. 1001, 111:66–112:2 (emphasis added). Additionally, with reference to
`
`Figure 1 (reproduced below), the ’451 patent describes the general architecture
`
`and operation of metasearch system 10.
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`Patent 8,239,451 B1
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`Specifically, Figure 1 shows metasearch system 10 includes users 12, user
`
`interfaces 14, clients 16, server PS 18, servers 20, and optional servers 22.
`
`Ex. 1001, 20:47–53. As shown, user requests are communicated from user
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`interfaces 14 to clients 16, and clients communicate the user requests to servers
`
`such as server PS 18. Id. at 20:60–62, 21:36–38. Then, server PS 18 may
`
`communicate user requests to servers 20. Id. at 22:8–11. Servers 20 reply to
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`server PS 18 and server PS 18 then communicates the responses to clients 16,
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`which then communicate responses to user interfaces 14. Id. at 22:18–21,
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`22:39–44. This disclosure does not limit the search to using a particular query.
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`This disclosure also does not limit metasearching to a particular data structure.
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`Moreover, we credit the testimony of Patent Owner’s declarant,
`
`Dr. Jaime Carbonell, in that a person of ordinary skill in the art would not
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`Patent 8,239,451 B1
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`understand the term “metasearching” to mean only unstructured queries.
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`Dr. Carbonell testifies that in 2000 metasearch engines: (1) queried sources of
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`“structured” data such as relational databases; and (2) conducted “semi-
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`structured” queries, where a user “can specify keywords and also structure
`
`those keywords, such as a window in the text in which they must co-occur.”
`
`Ex. 2006 ¶¶ 26–31. Furthermore, Petitioner’s declarant, Mr. Offutt, also stated
`
`at his deposition that metasearch engines in the 1999 time frame conducted both
`
`structured and unstructured searches. Ex. 2005, 12:20–13:6. Thus, based on
`
`the evidence presented, we agree with Patent Owner
`
`that
`
`the
`
`term
`
`“metasearching” is not limited to unstructured queries.
`
`Second, we further adopt Patent Owner’s proposed construction of
`
`“metasearching” as “sending at least one search query to plural hosts, and
`
`returning the results received from each host.” This is consistent with the
`
`Specification of the ’451 patent, which describes a metasearch engine as a
`
`search engine that sends user requests to several other search engines, servers,
`
`clients, and/or databases, and other suitable systems and/or devices, groups,
`
`sorts, and returns the results from each one. Ex. 1001, 111:58–63.
`
`Accordingly, we construe “metasearching” to mean “sending at least one
`
`search query to plural hosts, and returning the results received from each host.”
`
`2. “on the Internet” (claims 1, 5, 15, 21, 31, and 35)
`
`Patent Owner argues that the preamble phrase “on the Internet,” of
`
`independent claims 1, 5, 15, 21, 31, and 35, is limiting, and that, when
`
`construed together with “metasearching,” requires the sending of search queries
`
`substantially simultaneously. PO Resp. 36 n.4, 78–80.
`
`In general, a preamble is construed as a limitation “if it recites essential
`
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
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`claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
`
`(Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`
`1298, 1305 (Fed. Cir. 1999)). Language in a claim preamble acts as claim
`
`limitation when such language serves to “give meaning to a claim and properly
`
`define the invention.” Apple Computer, Inc. v. Articulate Systems, Inc.,
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`234 F.3d 14, 22 (Fed. Cir. 2000) (quoting In re Paulsen, 30 F.3d 1475, 1479
`
`(Fed.Cir.1994)).
`
`We agree that the preamble phrase “on the Internet” is limiting. All of
`
`the challenged claims recite the use of Hypertext Transfer Protocol (HTTP) in
`
`request-response steps. For example, claim 1 requires “receiving a Hypertext
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`Transfer Protocol request” and “sending the plurality of search queries . . . in
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`response to the Hypertext Transfer Protocol request received.” Ex. 1001,
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`145:9–10, 145:18–20. Moreover, claim 35 further recites the step of
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`“incorporating at least one universal resource locator link into the response.”
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`The terms HTTP and universal resource locator are primarily, though not
`
`exclusively, used in the context of communications on the Internet. See
`
`Ex. 1082, 5:14–24. Thus, we are persuaded that “on the Internet” serves to
`
`further define the inventions recited claims 1, 5, 15, 21, 31, and 35.
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`Additionally, we note that at the oral hearing, Petitioner did not dispute that the
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`preamble language “on the Internet” is limiting. Tr. 18:4–16.
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`We do not agree, however, with Patent Owner’s position that the phrase
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`“on the Internet,” construed with “metasearching,” requires the sending of
`
`queries “substantially simultaneously.” See PO Resp. 36 n.4, 78–80. The
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`challenged claims do not use the term “substantially simultaneously.”
`
`Moreover, Patent Owner has not explained persuasively that the claims or the
`
`’451 patent specification support the argument that “on the Internet” should be
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`construed with a timing limitation of “substantially simultaneously” on
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`“metasearching.” Although the language “on the Internet” may provide context
`
`for the use of HTTP and universal resource locators (URLs) recited in the
`
`challenged claims, we are not persuaded that the phrase requires metasearching
`
`to occur “substantially simultaneously.”
`
`Accordingly, we agree with Patent Owner that the preamble phrase “on
`
`the Internet” is limiting, but we do not adopt Patent Owner’s proposal that “on
`
`the Internet” should be construed with “metasearching” to mean sending of
`
`queries substantially simultaneously.
`
`3. “results list” (claims 15, 31, 35)
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`In the Decision to Institute, we interpreted “results list” as a “list of
`
`information” and the phrase “incorporating the received results into a results
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`list” as “incorporating the results into a list of information.” Dec. to Inst. 18.
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`That analysis relied on Patent Owner’s proposed construction and evidence
`
`presented. Id. Patent Owner and Petitioner do not dispute this interpretation in
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`the Patent Owner Response or Petitioner’s Reply.
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`Based on the evidence of record, we find that the meaning of “result list”
`
`as “a list of information” is consistent with the broadest reasonable
`
`interpretation of the term in accordance with the plain and ordinary meaning of
`
`the term.
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`Accordingly, we interpret “results list” as a list of information.
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`4. “the universal resource locator link causes at least one advertisement
`associated with at least a portion of the plurality of travel related items
`to be communicated to the client device” (claim 35)
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`Petitioner and Patent Owner do not provide an explicit construction for
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`this phrase (recited in claim 35). Nonetheless, in the Decision to Institute we
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`Patent 8,239,451 B1
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`determined that Patent Owner’s response to Petitioner’s asserted grounds of
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`unpatentability was based on the argument that the universal resource locator
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`link must cause at least one advertisement to be associated with at least a
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`portion of the plurality of travel related items. Dec. to Inst. 18–19 (citing
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`Prelim. Resp. 79). At the institution stage, we further determined that claim 35
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`does not require the URL to cause an association. Id. at 19.
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`Patent Owner and Petitioner do not dispute this interpretation in the
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`Patent Owner Response or Petitioner’s Reply. Moreover, we maintain that the
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`phrase “associated with at least a portion of the plurality of travel related items”
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`modifies “advertisement,” and it describes a relationship between advertisement
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`and a travel-related item in the result list, which includes a URL. The claim
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`does not require, however, the URL either to be or to cause the association
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`between the advertisement and a travel-related item in the results list. The
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`Specification supports this i
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