throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 32
`Entered: June 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`_______________
`
`Case IPR2014-00206
`Patent 7,496,854 B2
`_______________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`

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`IPR2014-00206
`Patent 7,496,854 B2
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`I. INTRODUCTION
`
`A. Background
`
`Apple Inc., Google Inc., and Motorola Mobility LLC (collectively
`
`“Petitioner”) filed a Petition (Paper 3, “Pet.”) to institute an inter partes
`
`review of claims 19–35, 57–85, 96, and 99 of U.S. Patent 7,496,854 B2
`
`(Ex. 1001, “the ’854 patent”). Pet 1; see 35 U.S.C. § 311. Arendi S.A.R.L.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 9, “Dec.”),
`
`we instituted trial as to claims 19, 20, 22–26, 28–30, 57, 58, 60–74, 76–78,
`
`85, and 96.
`
`After the Decision to Institute, Patent Owner filed a Patent Owner
`
`Response (Paper 16, “PO Resp.”) and Petitioner filed a Reply to the Patent
`
`Owner Response (Paper 20, “Reply”). An oral hearing (Paper 31, “Tr.”)
`
`was held on February 4, 2015.
`
`B. Related Matters
`
`Patent Owner has sued Petitioner for infringement of the ’854 patent
`
`in Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.); Arendi
`
`S.A.R.L. v. Google Inc., No. 1:13-cv-00919 (D. Del.); and Arendi S.A.R.L. v.
`
`Motorola Mobility LLC, Case No. 1:12-cv-01601-LPS (D. Del.). Pet. 1;
`
`Paper 6, 2–3. The ’854 patent is also the subject of a petition in IPR2014-
`
`00207 filed by Petitioner. Id. at 3–4. We granted inter partes review as to
`
`claims 1–12 and 36–49 of the ’854 patent in Apple Inc. et al v. Arendi
`
`S.A.R.L., Case IPR2013-00207, slip op. at 23–24 (PTAB June 11, 2014)
`
`(Paper 9).
`
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`2
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`IPR2014-00206
`Patent 7,496,854 B2
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`C. The Asserted Ground
`
`We instituted trial based on the ground of unpatentability set forth in
`
`the table below. Dec. 16–18, 22.
`
`Reference
`
`Basis
`
`Claims Challenged
`
`Domini1
`
`35 U.S.C. § 102(e)
`
`19, 20, 22–26, 28–30, 57, 58, 60–74,
`76–78, 85, and 96
`
`D. The ’854 Patent
`
`The ’854 patent, titled “Method, System and Computer Readable
`
`Medium for Addressing Handling From a Computer Program,” relates to
`
`computer implemented processes for providing a computer program, such as
`
`a word processing program or spreadsheet program, that is coupled to an
`
`information management source, such as a database program or contact
`
`management program. Ex. 1001, 1:19–50.
`
`Figures 3 and 4 of the ’854 patent are reproduced below.
`
`
`1 U.S. Patent No. 6,085,206, issued July 4, 2000, filed June 20, 1996 (Ex.
`1006, “Domini”)
`
`
`
`3
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`IPR2014-00206
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`
`
`Figure 3 illustrates the inputting of a name to be searched into a document.
`
`Figure 4 illustrates a retrieved address that is inserted into a document.
`
`Ex. 1001, 2:51–57. The user types a name into the document. When the
`
`user clicks on OneButton 42, the claimed process is launched, retrieving
`
`name 40 from the document, searching a database for name 40, and inserting
`
`the retrieved address associated with name 40 into the document as shown in
`
`Figure 4. Id. at 5:60–6:5.
`
`Figure 2 of the ’845 patent, illustrating a flow chart of a method for
`
`address handling within a computer program, is reproduced below.
`
`4
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`IPR2014-00206
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`Figure 2 depicts a flow chart of the address handling process initiated by the
`
`user clicking on OneButton 42 of Figure 4. At step 4, text typed by the user
`
`in a document is analyzed for contact information. At step 6, if the
`
`identified contact information includes a name, a search occurs in the
`
`database at step 12. When the database finds a name with more than one
`
`possible matching address, the user is prompted for a decision, and that
`
`selected information is added to the document at step 22. Id. at 5:10–22,
`
`6:4–5.
`
`
`
`Independent claim 19, reproduced below, is illustrative of the claimed
`
`subject matter:
`
`19. A method for information handling within a
`document created by a first application program
`comprising the steps of:
`
`entering a first information in the first
`application program;
`
`marking without user intervention the first
`information
`to alert
`the user
`that
`the first
`
`5
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`IPR2014-00206
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`information can be utilized in a second application
`program; and
`
`responding to a user selection by performing
`an operation related to a second information, the
`second
`information associated with
`the first
`information from the second application program.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`
`778 F.3d 1271, 1279–81 (Fed. Cir. 2015). Claim terms generally 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. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “marking . . . the first information to alert the user”
`
`The claim phrase “marking without user intervention the first
`
`information to alert the user” appears in independent claims 19 and 25. In
`
`the Decision to Institute, we preliminarily construed “marking without user
`
`intervention the first information to alert the user” to mean that the first
`
`information is detected and has some form of marking applied to it without
`
`user intervention. Dec. 8. We also determined that “marking” included the
`
`acts of highlighting, designating, or displaying the information in a separate
`
`screen or window to draw a user’s attention. Id.
`
`The parties do not dispute this preliminary construction. Based on the
`
`record before us, we determine that “marking” includes highlighting,
`
`6
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`IPR2014-00206
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`designating, or displaying the information in a separate screen or window to
`
`draw a user’s attention.
`
`2. “performing an operation related to second information”
`
`The claim phrase “performing an operation related to second
`
`information,” appears in independent claims 19, 25, 57, 73, 85, and 96. In
`
`the Decision to Institute, we determined that “performing an operation
`
`related to second information” encompasses operations on pre-existing
`
`information or new information that may be the second information itself or
`
`related to the second information. Dec. 8–9. The parties do not dispute this
`
`preliminary construction. Based on the complete record, we determine that
`
`“performing an operation related to second information” includes operations
`
`on pre-existing information or new information that may be the second
`
`information itself or related to the second information.
`
`3. “associated” and “second information associated with the
`first information from a second application program”
`
`“Associated” appears in the claim phrase “second information
`
`associated with the first information from a second application program”
`
`recited in independent claims 19, 25, 57, 73, 85, and 96. In the Decision to
`
`Institute, we determined preliminarily that “associated” is construed as
`
`“connected or related” (Dec. 10) and that “second information associated
`
`with the first information from a second application program” included
`
`second information that is related to or connected with the first information
`
`from a second application program (Dec. 11).
`
`Patent Owner contends that because “associated” in dependent claim
`
`64 describes searching for and retrieving the second information
`
`“associated” with the first information, this indicates that the “association” is
`
`7
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`IPR2014-00206
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`equivalent to the association of a data in a database record. PO Resp. 16.
`
`Thus, Patent Owner argues that the searching limitations found in dependent
`
`claim 64 and independent claims 85 and 96 “requires that the association
`
`between the first and second information is a ‘pre-existing relationship,’
`
`such as, the association between field entries for a database record in a
`
`database.” PO Resp. 18–19.
`
`Patent Owner further contends that the ’854 patent discloses
`
`embodiments that refer to a connection between a name and address, or
`
`other pre-existing relationship that is akin to a database entry. PO Resp. 17
`
`(citing Ex. 1001, 5:65–6:3). Patent Owner argues that the ’854 patent
`
`embodiments refer to finding and inserting the second information, showing
`
`that “there must be a pre-existing relationship for an action to be based upon
`
`the second information, such as the act of insertion.” PO Resp. 17.
`
`We are not persuaded by Patent Owner’s argument that a “pre-
`
`existing” relationship is required for “second information associated with the
`
`first information from a second application program” as recited in
`
`independent claims 19, 25, 57, 73, 85, and 96. The ’854 specification refers
`
`to related information that may match the searched data or data that
`
`corresponds to part of a typed name. Ex. 1001, 3:63–67, 4:43–58; see
`
`Dec. 10; Reply 11–12. Indeed, the ’854 patent written description states that
`
`there may be “more than one possible contact/address match” to the first
`
`information and that “the program displays menu choices to the user to let
`
`him choose an appropriate answer” to insert. Ex. 1001, 4:46–49 (emphasis
`
`added). Thus, Patent Owner has not demonstrated that a pre-existing
`
`relationship is described in the ’854 specification.
`
`8
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`Patent Owner’s arguments limiting the term “associated” to the
`
`examples in the ’854 specification referring to databases also is not
`
`commensurate in scope with the breadth of the claims or the broadest
`
`reasonable interpretation. We must be careful not to read a particular
`
`embodiment appearing in the written description into the claim if the claim
`
`language is broader than the embodiment. See In re Van Geuns, 988 F.2d
`
`1181, 1184 (Fed. Cir. 1993) (stating that “limitations are not to be read into
`
`the claims from the specification”). In the present case, Patent Owner has
`
`not shown persuasively that a person of ordinary skill would have
`
`understood the “second information associated with the first information
`
`from a second application program” as being limited to a “pre-existing
`
`relationship” between two pieces of information based on the claims,
`
`embodiments, and examples in the ’854 specification. To the contrary, the
`
`’854 specification describes that a program operation based on a name or
`
`initials (the first information) could return more than one possible matching
`
`second information for insertion. Ex. 1001, 4:43–58.
`
`In sum, under the broadest reasonable interpretation, we do not
`
`determine that “associated” as recited in “second information associated
`
`with the first information from a second application program” is limited to a
`
`pre-existing relationship. We determine that “associated” is construed as
`
`“connected or related” and that that “second information associated with the
`
`first information from a second application program” includes second
`
`information that is related to or connected with the first information from a
`
`second application program.
`
`9
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`4. “application program”
`
`In the Decision to Institute, we determined that “application program”
`
`encompasses an independent executable program. Dec. 11–12. In so
`
`determining, we rejected Patent Owner’s narrow construction of application
`
`program as “an independently executable computer program designed to
`
`assist in the performance of a specific task, such as word processing or
`
`spreadsheet processing or contact management or e-mail or calendaring.”
`
`Dec. 11–12; Prelim. Resp. 9.
`
`Patent Owner contends that it agrees with our interpretation of an
`
`“application program” as an independently executable program, but
`
`interprets “independently executable program”2 in a manner that excludes
`
`programs that do not have certain attributes. PO Resp. 8–15. Based on the
`
`background section of the ’854 patent that refers to retrieval of information
`
`from sources external to a word processor, such as a database or contact
`
`management program, Patent Owner asserts that the claimed invention is
`
`limited to obtaining information from an information management program
`
`that can be used separately and independently from the word processor. PO
`
`Resp. 11 (citing Ex. 1001, 1:34–37, 1:45–46).
`
`Patent Owner’s interpretation of “application program” is based on
`
`the commonly shared features of the example programs from the
`
`
`2 Patent Owner suggests that the Decision to Institute’s use of the term
`“independent” rather than “independently” in construing “‘application
`program’ to encompass an independent executable program” (Dec. 11) was a
`typographical error. PO Resp. 9–10. Patent Owner does not explain how
`“independent” differs from “independently” and defines the term
`“independent” as part of its analysis. Id. at 10. For purposes of this
`Decision, we address Patent Owner’s contentions as if they apply to both
`“independent” and “independently.”
`
`10
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`IPR2014-00206
`Patent 7,496,854 B2
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`specification. PO Resp. 13 (“Given that the specification identifies word
`
`processors, spreadsheet programs, information management programs and
`
`database programs as examples of application programs, the definition of an
`
`‘application program’ can be construed from the commonly shared
`
`features.”). Patent Owner relies on the Declaration of Dr. John Levy
`
`(Ex. 2003), paragraphs 42–43, to support its interpretation that subsidiary
`
`programs, which extend the functionality of the controlling application, are
`
`not “independently executable computer programs” as recited in the claims.
`
`PO Resp. 14–15.
`
`We disagree with Patent Owner’s narrow interpretation. The term
`
`“application program” does not appear in the specification of the ’854
`
`patent. However, we are not persuaded that the term is limited by the
`
`commonly shared features of the examples in the ’854 patent specification.
`
`See Van Geuns, 988 F.2d at 1184 (“[L]imitations are not to be read into the
`
`claims from the specification.”). Patent Owner has not provided sufficient
`
`evidence to limit “application program” to programs that are not under the
`
`control of another program or run synchronously under the control of a
`
`separate application program (PO Resp. 13–14). We do not find Dr. Levy’s
`
`testimony persuasive that the broadest reasonable interpretation of
`
`“application program” by one of ordinary skill in the art at the time of the
`
`invention is defined by “commonly shared features” of examples of
`
`computer programs in the patent specification. See PO Resp. 11–15 (citing
`
`Ex. 2003 ¶¶ 42–44); 25 (citing Ex. 2003 ¶¶ 18, 42–48)). Construing
`
`application program as Patent Owner suggests improperly limits the claim
`
`term to the embodiments and examples in the ’854 patent specification and
`
`imports negative limitations unsupported by the intrinsic evidence.
`
`11
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`Patent Owner has not shown that the broadest reasonable construction
`
`of “application program” excludes subsidiary programs. See PO Resp. 11–
`
`15; Reply 6–9. On the complete record, we determine that “application
`
`program” is construed as an independent executable program.
`
`B. Unpatentability Based on Domini (Ex. 1006)
`
`Petitioner contends that claims 19, 20, 22–26, 28–30, 57, 58, 60–74,
`
`76–78, 85, and 96 are anticipated by Domini. Pet. 30–39. Petitioner’s claim
`
`chart provides citation to Domini, which Petitioner contends disclose the
`
`corresponding claim limitations in claims 19, 20, 22–26, 28–30, 57, 58, 60–
`
`74, 76–78, 85, and 96. Id.
`
`1. Overview of Domini (Ex. 1006)
`
`Domini discloses identifying and correcting spelling and grammar
`
`errors in a document created by a word processing program. Ex. 1006,
`
`Abstract, 4:65–5:11. Figure 1, below, shows an embodiment of the Domini
`
`invention. Id. at 4:39–41.
`
`
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`12
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`Figure 1 depicts personal computer 10 connected by networks 12 and 13 to
`
`remote computer 11. Id. at 7:13–16. Domini discloses that “[t]hose skilled
`
`in the art will understand that program modules such as an operating system
`
`36, application programs 37, and data are provided to the personal computer
`
`10.” Id. at 7:41–43. Thus, personal computer 10 and remote computer 11
`
`contain program modules, such as operating system 36 and application
`
`programs 37. Id. at 6:33–42, 7:41–44. Domini states further that:
`
`[t]he application programs 37 may include a number of
`different programs such as a word processing program 37a, a
`spell checker program 37b, and a grammar checker program
`37c. In the preferred personal computer 10, the local hard disk
`drive 20 is used to store data and programs, including the
`operating system and programs.
`
`Id. at 7:46–52 (italics added).
`
`In the spelling and grammar programs disclosed in Domini, the user
`
`selects the “[s]pelling and [g]rammar” command to initialize the spell check
`
`program. Id. at 16:13–16. Without user intervention, the spell check
`
`program identifies misspelled words and presents them in red, bold typeface.
`
`Id. at 17:27–33, 4:12–16. The spell check program also displays a list of
`
`suggested corrections that may be selected and entered into the document by
`
`the user. Id. at 1:42–44, 12:1–5, 12:61–64.
`
`2. Anticipation based on Domini (Ex. 1006)
`
`a. Application Programs
`
`Patent Owner argues that Domini fails to teach the “second
`
`application program” as recited in each of the challenged independent
`
`claims, because the spell checker described in Domini is a “module” that
`
`operates inside of a word processing document and not an “application
`
`13
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`program” that is an “independent executable program” as the term is
`
`construed. PO Resp. 23–24.
`
`Patent Owner’s arguments and analysis are based on its proposed
`
`claim interpretation that excludes subsidiary programs from “application
`
`program” as recited in the challenged claims. PO Resp. 25 (contrasting
`
`subsidiary programs with application programs and stating that it “would be
`
`understood by one of ordinary skill in the art at the time of the invention, an
`
`‘application program’ is an ‘independently executable program’ that is
`
`independent of and not under the control of another program.” (citing
`
`Ex. 2003 ¶¶ 42–48)). As discussed above, we do not construe “application
`
`program” to exclude subsidiary programs based on characteristics of the
`
`example programs described in the ’854 patent specification. See Section
`
`II.A.4, supra.
`
`We also are not persuaded by Patent Owner’s arguments and
`
`testimony of Dr. Levy that the program modules in Domini that are
`
`explicitly identified as “application programs” do not meet the claim
`
`limitation for “application program.” PO Resp. 25–29. Dr. Levy’s narrow
`
`interpretation of application program reads limitations into the claim (PO
`
`Resp. 25) that are not supported by the ’854 specification. See Reply 8–9
`
`(citing Ex. 1001, 7:25–8:7).
`
`Patent Owner’s argument that one of ordinary skill in the art would
`
`have understood spell checker program 37b to be a program module (PO
`
`Resp. 27–28) and not an application program—as it is expressly described—
`
`is not supported by a plain reading of the Domini disclosure. Patent
`
`Owner’s arguments and evidence fail to address the term “application
`
`program” as it is used in Domini and show that it differs from the
`
`14
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`“application program” as recited in the challenged claims. Indeed, Dr. Levy
`
`has not provided testimony that the term “application program” as used in
`
`Domini (Ex. 1006, 7:41–52, Fig. 1) differs from or is inconsistent with
`
`“application program” as recited in the challenged claims. See Tr. 35:13–20
`
`(stating that Patent Owner’s expert found Domini consistent with Patent
`
`Owner’s construction).
`
`With respect to the “application programs” in Domini, Patent Owner
`
`concedes that Domini discloses stand-alone spell checkers (PO Resp. 29–31
`
`(citing Ex. 1006, 1:56–2:26; Ex. 2003 ¶ 24)), but argues that “a stand-alone
`
`spell checker would not be capable of inserting text into a word processor”
`
`(PO Resp. 30 (citing Ex. 2003 ¶¶ 24–25, 35)). We agree with Petitioner
`
`(Reply 11), however, that Domini discloses incorporating changes into a
`
`document by replacing words in the word processing document. Ex. 1006,
`
`12:59–13:31, 14:42–67.
`
`We disagree with Patent Owner’s narrow interpretation of the term
`
`“application program” that excludes spell checker program 37b explicitly
`
`disclosed in Domini (Ex. 1006, 7:46–52). PO Resp. 25–29. Instead, we find
`
`that spell checker program 37b and other application programs in Domini
`
`disclose the “application program” recited in the challenged claims. Based
`
`on the complete record and in light of Patent Owner’s and Petitioner’s
`
`arguments and evidence, we find, by a preponderance of the evidence, that
`
`Domini discloses an “application program” as recited in the challenged
`
`claims.
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`b. “the second information associated with the first
`information from the second application program” and
`“operation related to a second information” of “entering
`additional data into a database”
`
`Patent Owner’s argument that Domini fails to disclose “the second
`
`information associated with the first information from the second application
`
`program” is based on the erroneous claim construction that “associated”
`
`requires a pre-existing relationship between the first and second information.
`
`PO Resp. 31–34. Because we determined previously that “associated” is
`
`construed as “connected or related” (see Section II.A.3, supra), we are not
`
`persuaded by Patent Owner’s argument. Patent Owner’s argument that
`
`Domini does not disclose a pre-existing relationship, “such as the
`
`relationship between field entries of a database record” (PO Resp. 32) is
`
`premised on an overly narrow interpretation of the claim term that is not
`
`commensurate in scope with the challenged claims.
`
`We also are not persuaded by Patent Owner’s contention that Domini
`
`fails to disclose the “operation related to a second information” of “entering
`
`additional data into a database” limitations of dependent claims 22–24, 28–
`
`30, 60–62, and 76–78. PO Resp. 34–38. Patent Owner argues that
`
`“Domini’s act of adding a (misspelled) word from the document (first
`
`information) into the dictionary is not an operation related to second
`
`information. Rather, it is an operation relating to the first information.” PO
`
`Resp. 37 (emphasis omitted).
`
`We disagree. Patent Owner’s contention assumes erroneously that the
`
`first and second information are not related and that “an operation related to
`
`the second information” is limited to actions involving only the second
`
`information. However, Patent Owner has not shown that “performing an
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`operation related to second information,” includes operations on pre-existing
`
`information or new information that may be the second information itself or
`
`related to the second information. See Section II.A.2, supra. Thus, the
`
`operation could be on new information that is related to the second
`
`information.
`
`We find that the act of adding a related spelling of a word, such as a
`
`plural form or alternate spelling of a word, to a dictionary or database is an
`
`operation related to the second information as recited in the claims. See,
`
`e.g., Reply 12–13 (discussing “neighbour” and “neighbor” as alternate
`
`spellings that are related first and second information); Pet. 32 (citing
`
`Ex. 1006, Fig. 3, 5, 7, 12:1–5, 12:61–64). In addition, the act of adding the
`
`second information (e.g., alternate spelling) to the document is also an
`
`“operation related to a second information.” Thus, we find that Domini’s
`
`disclosure regarding the storing of first information in the dictionary is an
`
`operation related to the second information. See Pet. 31–32.
`
`Accordingly, we do not agree with Patent Owner that Domini fails to
`
`disclose “an operation related to a second information” as required in
`
`dependent claims 22–24, 28–30, 60–62, and 76–78. Based on the full
`
`record, we find that Petitioner has shown by a preponderance of the evidence
`
`that Domini discloses “the second information associated with the first
`
`information from the second application program” as recited in independent
`
`claims 19, 25, 57, 73, 85 and 96; and an “operation related to a second
`
`information” of “entering additional data into a database” as recited in
`
`dependent claims 22–24, 28–30, 60–62, and 76–78.
`
`17
`
`
`
`

`

`IPR2014-00206
`Patent 7,496,854 B2
`
`
`c. “searching, using the second application program, for
`the second information associated with the first
`information”
`
`Patent Owner contends that that Domini fails to disclose “searching,
`
`using the second application program, for the second information associated
`
`with the first information” as recited in independent claims 85 and 96 and
`
`dependent claims 64–69. PO Resp. 38–43. Patent Owner’s argument is that
`
`Domini searches for the individual words in the document but does not
`
`search for other information, such as “second information.” PO Resp. 40.
`
`In the context of Domini’s spell checker program, Patent Owner argues that
`
`Domini only determines whether the word is correctly spelled but is not
`
`looking for second information.
`
`We disagree with Patent Owner. Although Patent Owner
`
`acknowledges that Domini provides suggested words, it argues that these
`
`words are not searched for but instead are located in the Spell Return Buffer.
`
`PO Resp. 42–43. We find that that Domini provides suggested words
`
`obtained from the Spell Return Buffer as suggested corrections. Pet. 30
`
`(citing Ex. 1006, Fig. 3, 1:42–44, 12:1–5). Patent Owner’s argument that
`
`Domini does not describe explicitly searching for the suggested spelling
`
`corrections ignores the fact that suggested corrections are retrieved and
`
`displayed as part of the Domini spell checker process. Ex. 1006, Fig. 3,
`
`1:42–44, 12:1–5. We also agree with Petitioner’s argument that the spell
`
`check program has one or more dictionaries from which suggested
`
`corrections are obtained. Pet. 35. In addition, Petitioner’s expert, Daniel A.
`
`Menascé, Ph.D, testified persuasively that the Domini spell checker retrieves
`
`possible words that are related to the words that a user types. See Ex. 1012,
`
`Deposition of Daniel A. Menascé, Ph.D, 127:3–130:5.
`
`18
`
`
`
`

`

`IPR2014-00206
`Patent 7,496,854 B2
`
`
`Based on the complete record and the evidence and arguments
`
`presented by Petitioner and Patent Owner, we find, by a preponderance of
`
`the evidence, that Domini discloses “searching, using the second application
`
`program, for the second information associated with the first information” as
`
`recited in independent claims 85 and 96 and dependent claims 64–69.
`
`d. Conclusion
`
`We have considered the evidence presented by Petitioner and Patent
`
`Owner. On the full record, we find that Petitioner has shown, by a
`
`preponderance of the evidence, that Domini anticipates claims 19, 20, 22–
`
`26, 28–30, 57, 58, 60–74, 76–78, 85, and 96.
`
`C. Patent Owner’s Motion to Exclude Evidence
`
`Patent Owner moves to exclude the deposition transcript of
`
`Petitioner’s expert, Dr. Daniel A. Menascé, Exhibit 1012. Paper 22.
`
`Dr. Menascé was deposed by Patent Owner’s counsel on August 7, 2014 for
`
`this proceeding and for proceedings IPR2014-00207 and IPR2014-00208.
`
`Ex. 1012, 1. Patent Owner contends the Menascé transcript is improper
`
`supplemental information that is not submitted in compliance with 37 C.F.R.
`
`§ 42.123 and re-uses a previously used Exhibit number and should be
`
`excluded. Paper 22, 2.
`
`With respect to the mis-numbered Exhibit, we deny Patent Owner’s
`
`motion to exclude the Exhibit for failing to meet numbering requirements of
`
`37 C.F.R. § 62.63(c).
`
`With respect to the transcript being improper supplemental
`
`information, Petitioner argues and we agree that 37 C.F.R. § 42.53(f)(7)
`
`states that deposition testimony must be filed by its proponent as an exhibit.
`
`19
`
`
`
`

`

`IPR2014-00206
`Patent 7,496,854 B2
`
`
`Paper 26, 3–4. Consistent with Petitioner’s position, the rule recently has
`
`been clarified. See Amendments to the Rules of Practice for Trials Before
`
`the Patent Trial and Appeal Board, 80 Fed. Reg. 28,561, 28,563 (May 19,
`
`2015) (“To clarify that either party is permitted to file testimony as an
`
`exhibit, the Office amends 37 CFR 42.53(f)(7) to delete the phrase ‘by
`
`proponent’ in the second sentence.”). Because either party is permitted to
`
`file testimony as an exhibit, Petitioner’s filing of the exhibit is proper.
`
`Accordingly, we deny Patent Owner’s motion to exclude Exhibit 1012, the
`
`deposition transcript of Petitioner’s expert, Dr. Daniel A. Menascé.
`
`Patent Owner also seeks to exclude “Exhibit 1015,” Visual Studio
`
`2012 (“VS2012”), filed as an attachment to the deposition transcript of John
`
`V. Levy, Ph.D. (Ex. 1011).3 Paper 22, 10. Patent Owner implicitly
`
`acknowledges that Petitioner’s Reply to Patent Owner’s Response does not
`
`expressly discuss or rely on VS2012. Paper 22, 11. Because we do not
`
`consider or rely on VS2012, or the portion of Dr. Levy’s testimony
`
`discussing VS2012, in reaching our determinations in this Decision, Patent
`
`Owner’s motion to exclude “Exhibit 1015” of Exhibit 1011 is dismissed as
`
`moot.
`
`III. CONCLUSION
`
`Petitioner has demonstrated, by a preponderance of the evidence, that
`
`claims 19, 20, 22–26, 28–30, 57, 58, 60–74, 76–78, 85, and 96 are
`
`unpatentable as anticipated by Domini.
`
`
`3 Although the attachment is labelled “Exhibit 1015,” VS2012 was not
`entered into the file as Exhibit 1015.
`
`20
`
`
`
`

`

`IPR2014-00206
`Patent 7,496,854 B2
`
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that, based on a preponderance of the evidence, claims
`
`19, 20, 22–26, 28–30, 57, 58, 60–74, 76–78, 85, and 96 of U.S. Patent No.
`
`7,496,854 B2 are held unpatentable; and
`
`FURTHER ORDERED that Patent Owner’s motion to exclude
`
`“Exhibit 1015” is dismissed, and the motion to exclude Exhibit 1012, the
`
`deposition transcript of Dr. Daniel A. Menascé is denied; and
`
`FURTHER ORDERED that, because this is a Final Written Decision,
`
`parties to this proceeding seeking judicial review of our Decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`
`21
`
`
`
`

`

`IPR2014-00206
`Patent 7,496,854 B2
`
`
`For Petitioner:
`
`David L. Fehrman
`dfehrman@mofo.com
`
`Mehran Arjomand
`marjomand@mofo.com
`
`Matthew A. Smith
`smith@turnerboyd.com
`
`Zhuanjia Glu
`gu@turnerboyd.com
`
`For Patent Owner:
`
`Robert Asher
`rasher@sunsteinlaw.com
`
`Bruce Sunstein
`bsunstein@sunsteinlaw.com
`
`
`
`22
`
`
`
`

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