Trials@uspto.gov
`Tel: 571-272-7822
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`
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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.
`
`ARRENDI S.A.R.L.,
`Patent Owner.
`_______________
`
`Case IPR2014-00207
`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 review of
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`claims 1–18, 36–56, 86–95, 97, 98, 100, and 101 of U.S. Patent 7,496,854 B2 (Ex.
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`1001, “the ’854 patent”). Pet 1; see 35 U.S.C. § 311. Arendi S.A.R.L. (“Patent
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`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Pursuant to 35
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`U.S.C. § 314, in our Decision to Institute (Paper 9, “Dec.”), we instituted this trial
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`as to claims 1–12 and 36–49. Dec. 23–24.
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`After the Decision to Institute, Patent Owner filed a Patent Owner Response
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`(Paper 16, “PO Resp.”) and Petitioner filed a Reply to the Patent Owner Response
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`(Paper 20, “Reply”). An oral hearing (Paper 31, “Tr.”) was held on February 4,
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`2015.
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`B. Related Matters
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`Patent Owner has sued Petitioner for infringement of the ’854 patent in
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`Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.); Arendi S.A.R.L. v.
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`Google Inc., No. 1:13-cv-00919 (D. Del.); and Arendi S.A.R.L. v. Motorola
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`Mobility LLC, Case No. 1:12-cv-01601-LPS (D. Del.). Pet. 1; Paper 6, 2–3. The
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`’854 patent is also the subject of a petition in IPR2014-00206, also filed by
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`Petitioner. Id. at 3–4. We instituted inter partes review as to claims 19, 20, 22–26,
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`28–30, 57, 58, 60–74, 76–78, 85, and 96 of the ’854 patent in Apple Inc. v. Arendi
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`S.A.R.L., Case IPR2014-00206, slip op. at 22 (PTAB June 11, 2014) (Paper 9).
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`C. References Relied Upon
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`Petitioner relies upon the following prior art references:
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` 2
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`Reference
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`U.S. Patent No. 6,085,206 (“Domini”)
`U.S. Patent No. 6,377,965 (“Hachamovitch”)
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`D. The Alleged Grounds of Unpatentability
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`Exhibit
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`Ex. 1007
`Ex. 1008
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`We instituted this trial based on the ground of unpatentability set forth in the
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`table below. Dec. 14–16, 17–22, 23.
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`Reference
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`Basis
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`Claims Challenged
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`Domini
`Hachamovitch
`Hachamovitch
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`35 U.S.C. § 102(e)
`35 U.S.C. § 102(e)
`35 U.S.C. § 103(a)
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`1–12, 36–38, 40–45, and 49
`1–12 and 36–49
`3–5, 9–11, 38–41, and 45–48
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`E. The ’854 Patent
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`The ’854 patent, titled “Method, System and Computer Readable Medium
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`for Addressing Handling From a Computer Program,” relates to computer
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`implemented processes for providing a computer program, such as a word
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`processing program or spreadsheet program, that is coupled to an information
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`management source, such as a database program or contact management program.
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`Ex. 1001, 1:19–50.
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`Figures 3 and 4 of the ’854 patent are reproduced below.
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`Figure 3 illustrates the inputting of a name to be searched into a document. Figure
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`4 illustrates a retrieved address that is inserted into a document. Ex. 1001, 2:51–
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`57. The user types a name into the document. When the user clicks on OneButton
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`42, the claimed process is launched, retrieving name 40 from the document,
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`searching a database for name 40, and inserting the retrieved address associated
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`with the name 40 into the document as shown in 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 address
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`handling within a computer program, is reproduced below.
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`
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`Figure 2 depicts a flow chart of the address handling process initiated by the user
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`clicking on OneButton 42 of Figure 4. At step 4, text typed by the user in a
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`document is analyzed for contact information. At step 6, if the identified contact
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`information includes a name, a search occurs in the database at step 12. When the
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`database finds a name with more than one possible matching address, the user is
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`prompted for a decision, and that selected information is added to the document at
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`step 22. Id. at 5:10–22, 6:4–5.
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`
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`Independent claim 1, reproduced below, is illustrative of the claimed subject
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`1. A method for information handling within a
`document created using a first application program
`comprising the steps of:
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`matter:
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`entering a first information in the first application
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`program;
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`first
`the
`intervention
`marking without user
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`information to alert the user that the first information can
`be utilized in a second application program; and
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`responding to a user selection by inserting a
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`second information into the document, the second
`information associated with the first information from a
`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 they
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`appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d
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`1271, 1279–81 (Fed. Cir. 2015). Claim terms generally are given their ordinary
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`and customary meaning, as would be understood by one of ordinary skill in the art
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`in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`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 information to
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`alert the user” appears in independent claims 1 and 7. In the Decision to Institute,
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`we preliminarily construed “marking without user intervention the first information
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`to alert the user” to mean that the first information is detected and has some form
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`of marking applied to it without user intervention claim. Dec. 7–8. We also
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`determined that “marking” included the acts of highlighting, designating, or
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`displaying the information in a separate screen or window to draw a user’s
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`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, designating,
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`or displaying the information in a separate screen or window to draw a user’s
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`attention.
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`2. “associated”
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`“Associated” appears in the claim phrase “second information associated
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`with the first information from a second application program” recited in each of the
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`challenged independent claims 1, 7, 36, and 43. In the Decision to Institute, we
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`determined preliminarily that “associated” is construed as “connected or related.”
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`Dec. 9–10.
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`Patent Owner contends that because “associated” in dependent claim 3
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`describes searching for the second information “associated” with the first
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`information, this indicates that the “association” is equivalent to the association of
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`a data in a database record. PO Resp. 16–17. Patent Owner argues that the context
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`of the claims and embodiments of the ’854 patent “requires that the association
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`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
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`Resp. 20. Patent Owner further contends that the ’854 patent embodiments refer to
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`finding and inserting the second information, such that “there must be a pre-
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`existing relationship for an action to be based upon the second information, such as
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`the act of insertion.” PO Resp. 17–18 (citing Ex. 1001, 5:65–6:3).
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`We are not persuaded by Patent Owner’s argument that a “pre-existing”
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`relationship is required for “second information associated with the first
`
`information from a second application program.” The ’854 specification refers to
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`related information that may match the searched data or data that corresponds to
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`part of a typed name. Ex. 1001, 3:63–67, 4:43–58. Indeed, the ’854 patent written
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`description states that there may be “more than one possible contact/address
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`match” to the first information and that “the program displays menu choices to the
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`user to let him choose an appropriate answer” to insert. Ex. 1001, 4:46–49
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`(emphasis 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 examples in
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`the ’854 specification referring to databases also is not commensurate in scope
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`with the breadth of the claims or the broadest reasonable interpretation. We must
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`be careful not to read a particular embodiment appearing in the written description
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`into the claim if the claim language is broader than the embodiment. See In re Van
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`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (stating that “limitations are not to be
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`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 understood the
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`“second information associated with the first information from a second
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`application program” as being limited to a “pre-existing relationship” between two
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`pieces of information based on the claims, embodiments, and examples in the ’854
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`specification. To the contrary, the ’854 specification describes that a program
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`operation based on a name or initials (the first information) could return more than
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`one possible matching second information for insertion. Ex. 1001, 4:43–58.
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`In sum, under a broadest reasonable interpretation, we do not find 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
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`“second information associated with the first information from a second
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`application program” includes second information that is related to or connected
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`with the first information from a second application program.
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`3. “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. 10. In so determining, we
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`rejected Patent Owner’s narrow proposed construction of application program as
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`“an independently executable computer program designed to assist in the
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`performance of a specific task, such as word processing or spreadsheet processing
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`or contact management or e-mail or calendaring.” Prelim. Resp. 9; Dec. 10.
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`Patent Owner contends that it agrees with our interpretation (PO Resp. 11)
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`of an “application program” as an independently executable program, but attempts
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`to interpret “independently executable program”1 in a manner that excludes
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`programs with certain attributes. See PO Resp. 10–16. Based on the background
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`section of the ’854 patent that refers to retrieval of information from sources
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`external to a word processor, such as a database or contact management program,
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`Patent Owner asserts that the claimed invention is limited to obtaining information
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`from an information management program that can be used separately and
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`independently from the word processor. PO Resp. 12 (citing Ex. 1001, 1:34–37,
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`1:45–46).
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`
`1 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. 10–11. Patent Owner does not explain how “independent” differs
`from “independently” and defines the term “independent” as part of its analysis.
`Id. at 10–11. For purposes of this Decision, we address Patent Owner’s
`contentions as if they apply to both “independent” and “independently.”
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`Patent Owner’s interpretation of “application program” is based on the
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`commonly shared features of the example programs from the specification. PO
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`Resp. 14 (“Given that the specification identifies word processors, spreadsheet
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`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
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`Declaration of Dr. John Levy (Ex. 2003), paragraphs 42–43, to support its
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`interpretation that subsidiary programs, which extend the functionality of the
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`controlling application, are not “independently executable computer programs” as
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`recited in the claims. PO Resp. 12.
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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 patent.
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`However, we are not persuaded that the term is limited by the commonly shared
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`features of the examples in the ’854 patent specification. See Van Geuns, 988 F.2d
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`at 1184 (“[L]imitations are not to be read into the claims from the specification.”).
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`Patent Owner has not provided sufficient evidence to limit “application program”
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`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
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`find Dr. Levy’s 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 computer
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`programs in the patent specification. See PO Resp. 11–16 (citing Ex. 2003 ¶¶ 42–
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`44). Construing “application program” as Patent Owner suggests improperly limits
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`the claim term to the embodiments and examples in the ’854 patent specification
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`and imports negative limitations unsupported by the intrinsic evidence.
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`Patent Owner has not shown that the broadest reasonable construction of
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`“application program” excludes subsidiary programs. See PO Resp. 11–16; Reply
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`6–10. On the full record, we determine that “application program” is construed as
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`an independent executable program.
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`B. Unpatentability Based on Domini (Ex. 1007)
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`Petitioner contends that Domini anticipates claims 1–12, 36–38, 40–45, and
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`49 under 35 U.S.C. § 102(e). Pet. 31–39.
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`1. Domini (Ex. 1007)
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`Domini discloses identifying and correcting spelling and grammar errors in a
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`document created by a word processing program. Ex. 1007, Abstract, 4:65–5:11.
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`Figure 1, below, shows an embodiment of the invention. Id. at 4:39–41.
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`Figure 1 depicts personal computer 10 connected by networks 12 and 13 to remote
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`computer 11. Id. at 7:13–16. Domini discloses that “[t]hose skilled in the art will
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`understand that program modules such as an operating system 36, application
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`programs 37, and data are provided to the personal computer 10.” Id. at 7:41–43.
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`Thus, personal computer 10 and remote computer 11 contain program modules,
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`such as operating system 36, application programs 37. Id. at 6:33–42, 7:41–44.
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`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 (emphasis added).
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`In the spelling and grammar programs disclosed in Domini, the user selects
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`the “Spelling and Grammar” command to initialize the spell check program. Id. at
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`16:13–16. Without user intervention, the spell check program identifies misspelled
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`words and presents them in red, bold typeface. Id. at 17:27–33, 4:12–16. The
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`spell check program also displays a list of suggested corrections that may be
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`selected and entered into the document by the user. Id. at 1:42–44, 12:1–5, 12:61–
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`64.
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`2. Anticipation based on Domini (Ex. 1007)
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`a. “application program”
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`Patent Owner argues that the spell checker program in Domini is a “module”
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`operating under the control of the first application program and fails to disclose the
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`“second application program” as recited in claims 1–12, 36–38, 40–45, and 49. PO
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`Resp. 30–35.
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`Patent Owner’s arguments and analysis are based on its proposed claim
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`interpretation that excludes subsidiary programs from “application program” as
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`recited in the challenged claims. PO Resp. 30–31 (contrasting subsidiary programs
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`with application programs and stating that it “would be understood by one of
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`ordinary skill in the art at the time of the invention, an ‘application program’ is an
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`‘independently executable program’ that is independent of and not under the
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`control of another program.” (citing Ex. 2003 ¶¶ 42–48)). As discussed above, we
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`do not construe “application program” to exclude subsidiary programs based on
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`characteristics of the example programs in the ’854 patent specification. See
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`Section II.A.3, supra. Accordingly, we are not persuaded by Patent Owner’s
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`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
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`“application program.” PO Resp. 30–35. Dr. Levy’s narrow interpretation of
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`application program reads limitations into the claim (PO Resp. 30), that are not
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`supported by the ’854 specification. See Reply 8–9 (citing Ex. 1001, 7:25–8:7).
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`Patent Owner’s argument that one of ordinary skill in the art would have
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`understood spell checker program 37b to be a program module (PO Resp. 30–31)
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`and not an application program—as it is expressly described—is not supported by
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`a plain reading of the Domini disclosure. Patent Owner’s arguments and evidence
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`fail to address the term “application program” as it is used in Domini and show that
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`it differs from the “application program” as recited in the challenged claims.
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`Indeed, Dr. Levy has not provided testimony that the term “application program”
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`as used in Domini (Ex. 1007, 7:41–52, Fig. 1) differs from or is inconsistent with
`
`“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 Owner’s
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`construction).
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`With respect to application programs in Domini, Patent Owner concedes that
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`Domini discloses stand-alone spell checkers (PO Resp. 35–36 (citing Ex. 1007,
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`1:56–2:26; Ex. 2003 ¶ 24)), but argues that “a stand-alone spell checker would not
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`be capable of inserting text into a word processor” (PO Resp. 36 (citing Ex. 2003
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`¶¶ 24–25, 35)). We agree with Petitioner (Reply 11), however, that Domini
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`discloses incorporating changes into a document by replacing words in the word
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`processing document. Ex. 1007, 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 disclosed
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`in Domini (Ex. 1007, 7:46–52). PO Resp. 25–29. We find that spell checker
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`program 37b and other application programs in Domini disclose the “application
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`program” recited in the challenged claims. Based on the complete record, we find
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`that Domini discloses an “application program.” Based on the complete record and
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`in light of Patent Owner’s and Petitioner’s arguments and evidence, we find, by a
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`preponderance of the evidence, that Domini discloses an “application program” as
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`recited in the challenged claims.
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`b. “the second information associated with the first information
`from the second application program”
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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 its claim construction that “associated’ requires a pre-
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`existing relationship between the first and second information. PO Resp. 37–39.
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`Because we determined previously that “associated” is construed as “connected or
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`related” (Section II.A.2, supra), we are not persuaded by Patent Owner’s
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`argument. Patent Owner’s argument that Domini does not disclose a pre-existing
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`relationship, “such as the relationship between field entries of a database record”
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`(PO Resp. 37) is premised on an overly narrow interpretation of the claim term that
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`is not commensurate in scope with the challenged claims.
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`c. searching in response to a user selection
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` Patent Owner contends that dependent claims 3, 9, 38, and 45, require that
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`searching for second information is initiated or prompted by a user selection. PO
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`Resp. 39–40. Claim 1 of the ’854 patent recites “responding to a user selection by
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`inserting a second information into the document.” Claim 3, which depends from
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`claim 1, requires that “the step of inserting further comprises: searching using the
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`second application, for the second information associated with the first information
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`and retrieving the second information.” Patent Owner argues that Petitioner has
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`failed to show that Domini discloses searching as a result of a user selection,
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`because the suggested substitute terms for insertion are already obtained when the
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`user makes the selection. PO Resp. 40–41 (citing Pet. 31–32).
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` Petitioner responds that Patent Owner’s interpretation of the claim
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`limitation is improper as it excludes disclosed embodiments of the ’854 invention.
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`Reply 13 (citing Ex. 1001, Fig. 1, 4:46–50). Petitioner argues that claims 3, 9, 38,
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`and 45 “simply state that insertion must be done in response to user selection” and
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`“[t]here is no required ordering between searching and user selection to insert.”
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`Reply 13–14.
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`Based on the record, we are not persuaded the Petitioner has shown by a
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`preponderance of the evidence that the searching steps of claims 3, 9, 38, and 45,
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`occur in response to a user selection. Dependent claims 3, 9, 38, and 45, and the
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`claims that depend therefrom, provide additional limitations on the insertion step
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`that takes place in response to a user’s selection. The evidence cited by Petitioner
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`refers only to insertion of the already retrieved suggestions. See Pet. 31–36 (claim
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`chart showing claims 3, 9 and 38 and applying same analysis to claim 45).
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`Accordingly, we find that Petitioner has not shown by a preponderance of the
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`evidence that dependent claims 3–5, 9–11, 38, 40, 41, and 45 are anticipated by
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`Domini.
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`d. Conclusion
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`Based on the complete record and the evidence and argument presented by
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`Petitioner and Patent Owner, we find, by a preponderance of the evidence, that
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`Domini anticipates claims 1, 2, 6–8, 12, 36, 37, 42–44, and 49. Petitioner has not
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`shown by a preponderance of the evidence that Domini anticipates claims 3–5, 9–
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`11, 38, 40, 41, and 45.
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`C. Unpatentability Based on Hachamovitch (Ex. 1008)
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`Petitioner contends that Hachamovitch anticipates claims 1–12 and 36–49
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`under 35 U.S.C. § 102(e). Pet. 40–45. In addition, Petitioner contends that claims
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`3–5, 9–11, 38–41, and 45–48 are obvious under 35 U.S.C. § 103(a) in view of
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`Hachamovitch. Pet. 45–49.
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`1. Hachamovitch (Ex. 1008)
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`Hachamovitch discloses a word completion utility that automatically
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`predicts word completion for data entry in a data file, such as a word processor or
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`email application. Ex. 1008, 4:10–13. The word completion system is used in
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`conjunction with an individual application program or operates independently
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`across multiple application programs. Id. at 4:21–25. The user’s partially typed
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`word is compared to the name-completion pairs and if a match is found within the
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`list a suggestion list will be presented to a user. Id. at 4:58–5:6. A suggested word
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`is presented to the user in a pop-up user interface within a word processing
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`application as shown in Figs. 2A and 2B below.
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`Figure 2A illustrates a word completion suggestion where the name completion
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`pair is tied to a date or system parameter. Id. at 10:18-21; 10: 57-61. Figure 2B
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`illustrates a word completion suggestion where the name-completion pair is tied to
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`predefined properties, such as an initial capitalized letter. Id. at 11: 4-14. Once a
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`word completion is displayed, the user may accept the word completion using an
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`acceptance keystroke (e.g. tab or enter). Once accepted, the word completion
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`utility replaces the partial data entry with the completion entry in the data file. Id.
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`at 5:7-10; 7:4-5.
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`2. Anticipation Based on Hachamovitch (Ex. 1008)
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`Petitioner argues that Hachamovitch fails to disclose or teach a “second
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`application program” as recited in independent claims 1, 7, 36, and 43, because the
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`word completion utility is a subsidiary program that cannot be used independently
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`of the host application. PO Resp. 41–42 (citing Ex. 1008, Fig. 1; Ex. 2003 ¶¶ 27–
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`29). Patent Owner’s arguments are based on its proposed claim interpretation that
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`excludes subsidiary programs from the “second application program” recited in the
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`challenged claims. PO Resp. 41–44. As discussed above, we disagree that the
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`construction of application program excludes subsidiary programs that are
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`deployed within other applications or synchronously accessed by multiple
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`applications. See Section II.A.3, supra.
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`Based on the record, we find that Petitioner has shown that Hachamovitch
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`discloses that the word completion utility can be deployed as a “stand-alone”
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`“application-independent” utility. Pet. 38 (Ex. 1008, 7:65–8:5). Hachamovitch
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`states that “[t]o deploy the word completion system as an application-independent
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`utility, an interface is defined within each application program through which the
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`word completion utility may communicate with each application program.” Ex.
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`1008, 8:6–9. Although the utility described in Hachamovitch operates through the
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`application program, the reference expressly states that the utility can be part of the
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`application program or operates independent of the applications as a “stand-alone”
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`utility. Ex. 1008, 7:65–8:5. We find that the preponderance of the evidence
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`indicates that “stand-alone” utility in Hachamovitch is an “application program” as
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`recited in the claims.
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`We have reviewed Petitioner and Patent Owner’s argument and evidence.
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`We find that Petitioner has shown by a preponderance of the evidence that
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`Hachamovitch anticipates claims 1–12 and 36–49. In addition, Petitioner has
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`shown by a preponderance of the evidence that claims 3–5, 9–11, 38–41, and 45–
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`48 are obvious in view of Hachamovitch.
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`D. Patent Owner’s Motion to Exclude Evidence
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`Patent Owner moves to exclude the deposition transcript of Petitioner’s
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`expert, Dr. Daniel A. Menascé, Exhibit 1014. Paper 23. Dr. Menascé was deposed
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`by Patent Owner’s counsel on August 7, 2014 for this proceeding and for
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`proceedings IPR2014-00206 and IPR2014-00207. Ex. 1014, 1. Patent Owner
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`contends the Menascé transcript is irrelevant and improper supplemental
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`information that is not submitted in compliance with 37 C.F.R. § 42.123. Paper
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`22, 9–12.
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`With respect to Exhibit 1014, Petitioner argues and we agree that 37 C.F.R.
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`§ 42.53(f)(7) states that deposition testimony must be filed by its proponent as an
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`exhibit. 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 the
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`Patent Trial and Appeal Board, 80 Fed. Reg. 28,561, 28,563 (May 19, 2015) (“To
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`clarify that either party is permitted to file testimony as an exhibit, the Office
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`amends 37 CFR 42.53(f)(7) to delete the phrase ‘by proponent’ in the second
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`sentence.”). Because either party is permitted to file testimony as an exhibit,
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`Petitioner’s filing of the exhibit is proper. Accordingly, we deny Patent Owner’s
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`motion to exclude Exhibit 1014, the deposition transcript of Petitioner’s expert, Dr.
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`Daniel A. Menascé.
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`Patent Owner also seeks to exclude “Exhibit 1015,” Visual Studio 2012
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`(“VS2012”), filed as an attachment to the deposition transcript of John V. Levy,
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`Ph.D. (Ex. 1013).2 Paper 23, 4–8. Patent Owner implicitly acknowledges that
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`Petitioner’s Reply to Patent Owner’s Response does not expressly discuss or rely
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`on VS2012. Paper 23, 5. Because we do not consider or rely on VS2012, or the
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`portion of Dr. Levy’s testimony discussing VS2012, in reaching our
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`determinations in this Decision, Patent Owner’s motion to exclude “Exhibit 1015”
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`of Exhibit 1013 is dismissed as moot.
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`2 Although the attachment is labelled “Exhibit 1015,” VS2012 was not entered into
`the file as Exhibit 1015.
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`III. CONCLUSION
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`Petitioner has demonstrated, by a preponderance of the evidence, that claims
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`1–12 and 36–49 are unpatentable based on the following grounds of
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`unpatentability:
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`(1) Claims 1, 2, 6–8 12, 36, 37, 42–44, and 49 under 35 U.S.C. § 102(e) as
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`anticipated by Domini;
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`(2) Claims 1–12 and 36–49 under 35 U.S.C. § 102(e) as anticipated by
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`Hachamovitch;
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`(3) Claims 3–5, 9–11, 38–41, and 45–48 under 35 U.S.C. § 103(a) for
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`obviousness over Hachamovitch.
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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 1–12 and
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`36–49 of U.S. Patent No. 7,496,854 B2 are held unpatentable; and
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`FURTHER ORDERED that Patent Owner’s motion to exclude “Exhibit
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`1015” is dismissed, and the motion to exclude Exhibit 1014, the deposition
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`transcript of Dr. Daniel A. Menascé, is denied; and
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`FURTHER ORDERED that, because this is a Final Written Decision, parties
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`to this proceeding seeking judicial review of our Decision must comply with the
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`notice and service requirements of 37 C.F.R. § 90.2.
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`IPR2014-00207
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`For Petitioner:
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`David L. Fehrman
`dfehrman@mofo.com
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`Mehran Arjomand
`marjomand@mofo.com
`
`Matthew A. Smith
`smith@turnerboyd.com
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`Zhuanjia Glu
`gu@turnerboyd.com
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`
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`For Patent Owner:
`
`Robert Asher
`rasher@sunsteinlaw.com
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`Bruce Sunstein
`bsunstein@sunsteinlaw.com
`
`
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