`Tel: 571-272-7822
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`Paper 32
`Entered: June 9, 2015
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`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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`I. INTRODUCTION
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`A. Background
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`Apple Inc., Google Inc., and Motorola Mobility LLC (collectively
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`“Petitioner”) filed a Petition (Paper 3, “Pet.”) to institute an inter partes
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`review of claims 19–35, 57–85, 96, and 99 of U.S. Patent 7,496,854 B2
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`(Ex. 1001, “the ’854 patent”). Pet 1; see 35 U.S.C. § 311. Arendi S.A.R.L.
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`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
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`Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 9, “Dec.”),
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`we instituted trial as to claims 19, 20, 22–26, 28–30, 57, 58, 60–74, 76–78,
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`85, and 96.
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`After the Decision to Institute, Patent Owner filed a Patent Owner
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`Response (Paper 16, “PO Resp.”) and Petitioner filed a Reply to the Patent
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`Owner Response (Paper 20, “Reply”). An oral hearing (Paper 31, “Tr.”)
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`was held on February 4, 2015.
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`B. Related Matters
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`Patent Owner has sued Petitioner for infringement of the ’854 patent
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`in Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.); Arendi
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`S.A.R.L. v. Google Inc., No. 1:13-cv-00919 (D. Del.); and Arendi S.A.R.L. v.
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`Motorola Mobility LLC, Case No. 1:12-cv-01601-LPS (D. Del.). Pet. 1;
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`Paper 6, 2–3. The ’854 patent is also the subject of a petition in IPR2014-
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`00207 filed by Petitioner. Id. at 3–4. We granted inter partes review as to
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`claims 1–12 and 36–49 of the ’854 patent in Apple Inc. et al v. Arendi
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`S.A.R.L., Case IPR2013-00207, slip op. at 23–24 (PTAB June 11, 2014)
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`(Paper 9).
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`C. The Asserted Ground
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`We instituted trial based on the ground of unpatentability set forth in
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`the table below. Dec. 16–18, 22.
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`Reference
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`Basis
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`Claims Challenged
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`Domini1
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`35 U.S.C. § 102(e)
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`19, 20, 22–26, 28–30, 57, 58, 60–74,
`76–78, 85, and 96
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`D. The ’854 Patent
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`The ’854 patent, titled “Method, System and Computer Readable
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`Medium for Addressing Handling From a Computer Program,” relates to
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`computer implemented processes for providing a computer program, such as
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`a word processing program or spreadsheet program, that is coupled to an
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`information management source, such as a database program or contact
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`management program. Ex. 1001, 1:19–50.
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`Figures 3 and 4 of the ’854 patent are reproduced below.
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`1 U.S. Patent No. 6,085,206, issued July 4, 2000, filed June 20, 1996 (Ex.
`1006, “Domini”)
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`
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`3
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`Figure 3 illustrates the inputting of a name to be searched into a document.
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`Figure 4 illustrates a retrieved address that is inserted into a document.
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`Ex. 1001, 2:51–57. The user types a name into the document. When the
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`user clicks on OneButton 42, the claimed process is launched, retrieving
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`name 40 from the document, searching a database for name 40, and inserting
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`the retrieved address associated with name 40 into the document as shown in
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`Figure 4. Id. at 5:60–6:5.
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`Figure 2 of the ’845 patent, illustrating a flow chart of a method for
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`address handling within a computer program, is reproduced below.
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`4
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`Figure 2 depicts a flow chart of the address handling process initiated by the
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`user clicking on OneButton 42 of Figure 4. At step 4, text typed by the user
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`in a document is analyzed for contact information. At step 6, if the
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`identified contact information includes a name, a search occurs in the
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`database at step 12. When the database finds a name with more than one
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`possible matching address, the user is prompted for a decision, and that
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`selected information is added to the document at step 22. Id. at 5:10–22,
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`6:4–5.
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`
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`Independent claim 19, reproduced below, is illustrative of the claimed
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`subject matter:
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`19. A method for information handling within a
`document created by a first application program
`comprising the steps of:
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`entering a first information in the first
`application program;
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`marking without user intervention the first
`information
`to alert
`the user
`that
`the first
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`information can be utilized in a second application
`program; and
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`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.
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`II. ANALYSIS
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`A. Claim Construction
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`The Board interprets claims of an unexpired patent using the broadest
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`reasonable construction in light of the specification of the patent in which
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`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
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`778 F.3d 1271, 1279–81 (Fed. Cir. 2015). Claim terms generally are given
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`their ordinary and customary meaning, as would be understood by one of
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`ordinary skill in the art in the context of the entire disclosure. See In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`1. “marking . . . the first information to alert the user”
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`The claim phrase “marking without user intervention the first
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`information to alert the user” appears in independent claims 19 and 25. In
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`the Decision to Institute, we preliminarily construed “marking without user
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`intervention the first information to alert the user” to mean that the first
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`information is detected and has some form of marking applied to it without
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`user intervention. Dec. 8. We also determined that “marking” included the
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`acts of highlighting, designating, or displaying the information in a separate
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`screen or window to draw a user’s attention. Id.
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`The parties do not dispute this preliminary construction. Based on the
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`record before us, we determine that “marking” includes highlighting,
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`designating, or displaying the information in a separate screen or window to
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`draw a user’s attention.
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`2. “performing an operation related to second information”
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`The claim phrase “performing an operation related to second
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`information,” appears in independent claims 19, 25, 57, 73, 85, and 96. In
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`the Decision to Institute, we determined that “performing an operation
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`related to second information” encompasses operations on pre-existing
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`information or new information that may be the second information itself or
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`related to the second information. Dec. 8–9. The parties do not dispute this
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`preliminary construction. Based on the complete record, we determine that
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`“performing an operation related to second information” includes operations
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`on pre-existing information or new information that may be the second
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`information itself or related to the second information.
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`3. “associated” and “second information associated with the
`first information from a second application program”
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`“Associated” appears in the claim phrase “second information
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`associated with the first information from a second application program”
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`recited in independent claims 19, 25, 57, 73, 85, and 96. In the Decision to
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`Institute, we determined preliminarily that “associated” is construed as
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`“connected or related” (Dec. 10) and that “second information associated
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`with the first information from a second application program” included
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`second information that is related to or connected with the first information
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`from a second application program (Dec. 11).
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`Patent Owner contends that because “associated” in dependent claim
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`64 describes searching for and retrieving the second information
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`“associated” with the first information, this indicates that the “association” is
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`equivalent to the association of a data in a database record. PO Resp. 16.
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`Thus, Patent Owner argues that the searching limitations found in dependent
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`claim 64 and independent claims 85 and 96 “requires that the association
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`between the first and second information is a ‘pre-existing relationship,’
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`such as, the association between field entries for a database record in a
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`database.” PO Resp. 18–19.
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`Patent Owner further contends that the ’854 patent discloses
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`embodiments that refer to a connection between a name and address, or
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`other pre-existing relationship that is akin to a database entry. PO Resp. 17
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`(citing Ex. 1001, 5:65–6:3). Patent Owner argues that the ’854 patent
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`embodiments refer to finding and inserting the second information, showing
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`that “there must be a pre-existing relationship for an action to be based upon
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`the second information, such as the act of insertion.” PO Resp. 17.
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`We are not persuaded by Patent Owner’s argument that a “pre-
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`existing” relationship is required for “second information associated with the
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`first information from a second application program” as recited in
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`independent claims 19, 25, 57, 73, 85, and 96. The ’854 specification refers
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`to related information that may match the searched data or data that
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`corresponds to part of a typed name. Ex. 1001, 3:63–67, 4:43–58; see
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`Dec. 10; Reply 11–12. Indeed, the ’854 patent written description states that
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`there may be “more than one possible contact/address match” to the first
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`information and that “the program displays menu choices to the user to let
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`him choose an appropriate answer” to insert. Ex. 1001, 4:46–49 (emphasis
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`added). Thus, Patent Owner has not demonstrated that a pre-existing
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`relationship is described in the ’854 specification.
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`Patent Owner’s arguments limiting the term “associated” to the
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`examples in the ’854 specification referring to databases also is not
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`commensurate in scope with the breadth of the claims or the broadest
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`reasonable interpretation. We must be careful not to read a particular
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`embodiment appearing in the written description into the claim if the claim
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`language is broader than the embodiment. See In re Van Geuns, 988 F.2d
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`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
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`not shown persuasively that a person of ordinary skill would have
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`understood the “second information associated with the first information
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`from a second application program” as being limited to a “pre-existing
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`relationship” between two pieces of information based on the claims,
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`embodiments, and examples in the ’854 specification. To the contrary, the
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`’854 specification describes that a program operation based on a name or
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`initials (the first information) could return more than one possible matching
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`second information for insertion. Ex. 1001, 4:43–58.
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`In sum, under the broadest reasonable interpretation, we do not
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`determine that “associated” as recited in “second information associated
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`with the first information from a second application program” is limited to a
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`pre-existing relationship. We determine that “associated” is construed as
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`“connected or related” and that that “second information associated with the
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`first information from a second application program” includes second
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`information that is related to or connected with the first information from a
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`second application program.
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`4. “application program”
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`In the Decision to Institute, we determined that “application program”
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`encompasses an independent executable program. Dec. 11–12. In so
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`determining, we rejected Patent Owner’s narrow construction of application
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`program as “an independently executable computer program designed to
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`assist in the performance of a specific task, such as word processing or
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`spreadsheet processing or contact management or e-mail or calendaring.”
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`Dec. 11–12; Prelim. Resp. 9.
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`Patent Owner contends that it agrees with our interpretation of an
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`“application program” as an independently executable program, but
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`interprets “independently executable program”2 in a manner that excludes
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`programs that do not have certain attributes. PO Resp. 8–15. Based on the
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`background section of the ’854 patent that refers to retrieval of information
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`from sources external to a word processor, such as a database or contact
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`management program, Patent Owner asserts that the claimed invention is
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`limited to obtaining information from an information management program
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`that can be used separately and independently from the word processor. PO
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`Resp. 11 (citing Ex. 1001, 1:34–37, 1:45–46).
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`Patent Owner’s interpretation of “application program” is based on
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`the commonly shared features of the example programs from the
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`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.”
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`10
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`specification. PO Resp. 13 (“Given that the specification identifies word
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`processors, spreadsheet programs, information management programs and
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`database programs as examples of application programs, the definition of an
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`‘application program’ can be construed from the commonly shared
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`features.”). Patent Owner relies on the Declaration of Dr. John Levy
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`(Ex. 2003), paragraphs 42–43, to support its interpretation that subsidiary
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`programs, which extend the functionality of the controlling application, are
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`not “independently executable computer programs” as recited in the claims.
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`PO Resp. 14–15.
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`We disagree with Patent Owner’s narrow interpretation. The term
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`“application program” does not appear in the specification of the ’854
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`patent. However, we are not persuaded that the term is limited by the
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`commonly shared features of the examples in the ’854 patent specification.
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`See Van Geuns, 988 F.2d at 1184 (“[L]imitations are not to be read into the
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`claims from the specification.”). Patent Owner has not provided sufficient
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`evidence to limit “application program” to programs that are not under the
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`control of another program or run synchronously under the control of a
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`separate application program (PO Resp. 13–14). We do not find Dr. Levy’s
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`testimony persuasive that the broadest reasonable interpretation of
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`“application program” by one of ordinary skill in the art at the time of the
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`invention is defined by “commonly shared features” of examples of
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`computer programs in the patent specification. See PO Resp. 11–15 (citing
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`Ex. 2003 ¶¶ 42–44); 25 (citing Ex. 2003 ¶¶ 18, 42–48)). Construing
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`application program as Patent Owner suggests improperly limits the claim
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`term to the embodiments and examples in the ’854 patent specification and
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`imports negative limitations unsupported by the intrinsic evidence.
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`Patent Owner has not shown that the broadest reasonable construction
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`of “application program” excludes subsidiary programs. See PO Resp. 11–
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`15; Reply 6–9. On the complete record, we determine that “application
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`program” is construed as an independent executable program.
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`B. Unpatentability Based on Domini (Ex. 1006)
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`Petitioner contends that claims 19, 20, 22–26, 28–30, 57, 58, 60–74,
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`76–78, 85, and 96 are anticipated by Domini. Pet. 30–39. Petitioner’s claim
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`chart provides citation to Domini, which Petitioner contends disclose the
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`corresponding claim limitations in claims 19, 20, 22–26, 28–30, 57, 58, 60–
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`74, 76–78, 85, and 96. Id.
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`1. Overview of Domini (Ex. 1006)
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`Domini discloses identifying and correcting spelling and grammar
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`errors in a document created by a word processing program. Ex. 1006,
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`Abstract, 4:65–5:11. Figure 1, below, shows an embodiment of the Domini
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`invention. Id. at 4:39–41.
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`Figure 1 depicts personal computer 10 connected by networks 12 and 13 to
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`remote computer 11. Id. at 7:13–16. Domini discloses that “[t]hose skilled
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`in the art will understand that program modules such as an operating system
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`36, application programs 37, and data are provided to the personal computer
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`10.” Id. at 7:41–43. Thus, personal computer 10 and remote computer 11
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`contain program modules, such as operating system 36 and application
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`programs 37. Id. at 6:33–42, 7:41–44. Domini states further that:
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`[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.
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`Id. at 7:46–52 (italics added).
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`In the spelling and grammar programs disclosed in Domini, the user
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`selects the “[s]pelling and [g]rammar” command to initialize the spell check
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`program. Id. at 16:13–16. Without user intervention, the spell check
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`program identifies misspelled words and presents them in red, bold typeface.
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`Id. at 17:27–33, 4:12–16. The spell check program also displays a list of
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`suggested corrections that may be selected and entered into the document by
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`the user. Id. at 1:42–44, 12:1–5, 12:61–64.
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`2. Anticipation based on Domini (Ex. 1006)
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`a. Application Programs
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`Patent Owner argues that Domini fails to teach the “second
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`application program” as recited in each of the challenged independent
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`claims, because the spell checker described in Domini is a “module” that
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`operates inside of a word processing document and not an “application
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`program” that is an “independent executable program” as the term is
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`construed. PO Resp. 23–24.
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`Patent Owner’s arguments and analysis are based on its proposed
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`claim interpretation that excludes subsidiary programs from “application
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`program” as recited in the challenged claims. PO Resp. 25 (contrasting
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`subsidiary programs with application programs and stating that it “would be
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`understood by one of ordinary skill in the art at the time of the invention, an
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`‘application program’ is an ‘independently executable program’ that is
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`independent of and not under the control of another program.” (citing
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`Ex. 2003 ¶¶ 42–48)). As discussed above, we do not construe “application
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`program” to exclude subsidiary programs based on characteristics of the
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`example programs described in the ’854 patent specification. See Section
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`II.A.4, supra.
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`We also are not persuaded by Patent Owner’s arguments and
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`testimony of Dr. Levy that the program modules in Domini that are
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`explicitly identified as “application programs” do not meet the claim
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`limitation for “application program.” PO Resp. 25–29. Dr. Levy’s narrow
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`interpretation of application program reads limitations into the claim (PO
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`Resp. 25) that are not supported by the ’854 specification. See Reply 8–9
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`(citing Ex. 1001, 7:25–8:7).
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`Patent Owner’s argument that one of ordinary skill in the art would
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`have understood spell checker program 37b to be a program module (PO
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`Resp. 27–28) and not an application program—as it is expressly described—
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`is not supported by a plain reading of the Domini disclosure. Patent
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`Owner’s arguments and evidence fail to address the term “application
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`program” as it is used in Domini and show that it differs from the
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`“application program” as recited in the challenged claims. Indeed, Dr. Levy
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`has not provided testimony that the term “application program” as used in
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`Domini (Ex. 1006, 7:41–52, Fig. 1) differs from or is inconsistent with
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`“application program” as recited in the challenged claims. See Tr. 35:13–20
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`(stating that Patent Owner’s expert found Domini consistent with Patent
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`Owner’s construction).
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`With respect to the “application programs” in Domini, Patent Owner
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`concedes that Domini discloses stand-alone spell checkers (PO Resp. 29–31
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`(citing Ex. 1006, 1:56–2:26; Ex. 2003 ¶ 24)), but argues that “a stand-alone
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`spell checker would not be capable of inserting text into a word processor”
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`(PO Resp. 30 (citing Ex. 2003 ¶¶ 24–25, 35)). We agree with Petitioner
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`(Reply 11), however, that Domini discloses incorporating changes into a
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`document by replacing words in the word processing document. Ex. 1006,
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`12:59–13:31, 14:42–67.
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`We disagree with Patent Owner’s narrow interpretation of the term
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`“application program” that excludes spell checker program 37b explicitly
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`disclosed in Domini (Ex. 1006, 7:46–52). PO Resp. 25–29. Instead, we find
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`that spell checker program 37b and other application programs in Domini
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`disclose the “application program” recited in the challenged claims. Based
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`on the complete record and in light of Patent Owner’s and Petitioner’s
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`arguments and evidence, we find, by a preponderance of the evidence, that
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`Domini discloses an “application program” as recited in the challenged
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`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”
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`Patent Owner’s argument that Domini fails to disclose “the second
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`information associated with the first information from the second application
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`program” is based on the erroneous claim construction that “associated”
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`requires a pre-existing relationship between the first and second information.
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`PO Resp. 31–34. Because we determined previously that “associated” is
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`construed as “connected or related” (see Section II.A.3, supra), we are not
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`persuaded by Patent Owner’s argument. Patent Owner’s argument that
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`Domini does not disclose a pre-existing relationship, “such as the
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`relationship between field entries of a database record” (PO Resp. 32) is
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`premised on an overly narrow interpretation of the claim term that is not
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`commensurate in scope with the challenged claims.
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`We also are not persuaded by Patent Owner’s contention that Domini
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`fails to disclose the “operation related to a second information” of “entering
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`additional data into a database” limitations of dependent claims 22–24, 28–
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`30, 60–62, and 76–78. PO Resp. 34–38. Patent Owner argues that
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`“Domini’s act of adding a (misspelled) word from the document (first
`
`information) into the dictionary is not an operation related to second
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`information. Rather, it is an operation relating to the first information.” PO
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`Resp. 37 (emphasis omitted).
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`We disagree. Patent Owner’s contention assumes erroneously that the
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`first and second information are not related and that “an operation related to
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`the second information” is limited to actions involving only the second
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`information. However, Patent Owner has not shown that “performing an
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`operation related to second information,” includes operations on pre-existing
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`information or new information that may be the second information itself or
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`related to the second information. See Section II.A.2, supra. Thus, the
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`operation could be on new information that is related to the second
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`information.
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`We find that the act of adding a related spelling of a word, such as a
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`plural form or alternate spelling of a word, to a dictionary or database is an
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`operation related to the second information as recited in the claims. See,
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`e.g., Reply 12–13 (discussing “neighbour” and “neighbor” as alternate
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`spellings that are related first and second information); Pet. 32 (citing
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`Ex. 1006, Fig. 3, 5, 7, 12:1–5, 12:61–64). In addition, the act of adding the
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`second information (e.g., alternate spelling) to the document is also an
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`“operation related to a second information.” Thus, we find that Domini’s
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`disclosure regarding the storing of first information in the dictionary is an
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`operation related to the second information. See Pet. 31–32.
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`Accordingly, we do not agree with Patent Owner that Domini fails to
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`disclose “an operation related to a second information” as required in
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`dependent claims 22–24, 28–30, 60–62, and 76–78. Based on the full
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`record, we find that Petitioner has shown by a preponderance of the evidence
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`that Domini discloses “the second information associated with the first
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`information from the second application program” as recited in independent
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`claims 19, 25, 57, 73, 85 and 96; and an “operation related to a second
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`information” of “entering additional data into a database” as recited in
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`dependent claims 22–24, 28–30, 60–62, and 76–78.
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`c. “searching, using the second application program, for
`the second information associated with the first
`information”
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`Patent Owner contends that that Domini fails to disclose “searching,
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`using the second application program, for the second information associated
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`with the first information” as recited in independent claims 85 and 96 and
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`dependent claims 64–69. PO Resp. 38–43. Patent Owner’s argument is that
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`Domini searches for the individual words in the document but does not
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`search for other information, such as “second information.” PO Resp. 40.
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`In the context of Domini’s spell checker program, Patent Owner argues that
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`Domini only determines whether the word is correctly spelled but is not
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`looking for second information.
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`We disagree with Patent Owner. Although Patent Owner
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`acknowledges that Domini provides suggested words, it argues that these
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`words are not searched for but instead are located in the Spell Return Buffer.
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`PO Resp. 42–43. We find that that Domini provides suggested words
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`obtained from the Spell Return Buffer as suggested corrections. Pet. 30
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`(citing Ex. 1006, Fig. 3, 1:42–44, 12:1–5). Patent Owner’s argument that
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`Domini does not describe explicitly searching for the suggested spelling
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`corrections ignores the fact that suggested corrections are retrieved and
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`displayed as part of the Domini spell checker process. Ex. 1006, Fig. 3,
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`1:42–44, 12:1–5. We also agree with Petitioner’s argument that the spell
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`check program has one or more dictionaries from which suggested
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`corrections are obtained. Pet. 35. In addition, Petitioner’s expert, Daniel A.
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`Menascé, Ph.D, testified persuasively that the Domini spell checker retrieves
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`possible words that are related to the words that a user types. See Ex. 1012,
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`Deposition of Daniel A. Menascé, Ph.D, 127:3–130:5.
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`Based on the complete record and the evidence and arguments
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`presented by Petitioner and Patent Owner, we find, by a preponderance of
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`the evidence, that Domini discloses “searching, using the second application
`
`program, for the second information associated with the first information” as
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`recited in independent claims 85 and 96 and dependent claims 64–69.
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`d. Conclusion
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`We have considered the evidence presented by Petitioner and Patent
`
`Owner. On the full record, we find that Petitioner has shown, by a
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`preponderance of the evidence, that Domini anticipates claims 19, 20, 22–
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`26, 28–30, 57, 58, 60–74, 76–78, 85, and 96.
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`C. Patent Owner’s Motion to Exclude Evidence
`
`Patent Owner moves to exclude the deposition transcript of
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`Petitioner’s expert, Dr. Daniel A. Menascé, Exhibit 1012. Paper 22.
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`Dr. Menascé was deposed by Patent Owner’s counsel on August 7, 2014 for
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`this proceeding and for proceedings IPR2014-00207 and IPR2014-00208.
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`Ex. 1012, 1. Patent Owner contends the Menascé transcript is improper
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`supplemental information that is not submitted in compliance with 37 C.F.R.
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`§ 42.123 and re-uses a previously used Exhibit number and should be
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`excluded. Paper 22, 2.
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`With respect to the mis-numbered Exhibit, we deny Patent Owner’s
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`motion to exclude the Exhibit for failing to meet numbering requirements of
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`37 C.F.R. § 62.63(c).
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`With respect to the transcript being improper supplemental
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`information, Petitioner argues and we agree that 37 C.F.R. § 42.53(f)(7)
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`states that deposition testimony must be filed by its proponent as an exhibit.
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`19
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`Paper 26, 3–4. Consistent with Petitioner’s position, the rule recently has
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`been clarified. See Amendments to the Rules of Practice for Trials Before
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`the Patent Trial and Appeal Board, 80 Fed. Reg. 28,561, 28,563 (May 19,
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`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
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`proponent’ in the second sentence.”). Because either party is permitted to
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`file testimony as an exhibit, Petitioner’s filing of the exhibit is proper.
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`Accordingly, we deny Patent Owner’s motion to exclude Exhibit 1012, the
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`deposition transcript of Petitioner’s expert, Dr. Daniel A. Menascé.
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`Patent Owner also seeks to exclude “Exhibit 1015,” Visual Studio
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`2012 (“VS2012”), filed as an attachment to the deposition transcript of John
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`V. Levy, Ph.D. (Ex. 1011).3 Paper 22, 10. Patent Owner implicitly
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`acknowledges that Petitioner’s Reply to Patent Owner’s Response does not
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`expressly discuss or rely on VS2012. Paper 22, 11. Because we do not
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`consider or rely on VS2012, or the portion of Dr. Levy’s testimony
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`discussing VS2012, in reaching our determinations in this Decision, Patent
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`Owner’s motion to exclude “Exhibit 1015” of Exhibit 1011 is dismissed as
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`moot.
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`III. CONCLUSION
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`Petitioner has demonstrated, by a preponderance of the evidence, that
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`claims 19, 20, 22–26, 28–30, 57, 58, 60–74, 76–78, 85, and 96 are
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`unpatentable as anticipated by Domini.
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`3 Although the attachment is labelled “Exhibit 1015,” VS2012 was not
`entered into the file as Exhibit 1015.
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that, based on a preponderance of the evidence, claims
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`19, 20, 22–26, 28–30, 57, 58, 60–74, 76–78, 85, and 96 of U.S. Patent No.
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`7,496,854 B2 are held unpatentable; and
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`FURTHER ORDERED that Patent Owner’s motion to exclude
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`“Exhibit 1015” is dismissed, and the motion to exclude Exhibit 1012, the
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`deposition transcript of Dr. Daniel A. Menascé is denied; and
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`FURTHER ORDERED that, because this is a Final Written Decision,
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`parties to this proceeding seeking judicial review of our Decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`For Petitioner:
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`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
`
`
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`