throbber
Paper 33
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: June 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-00208
`Patent 7,917,843 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I. BACKGROUND
`
`
`
`Apple Inc., Google Inc., and Motorola Mobility LLC (collectively
`
`“Petitioner”) filed a request for inter partes review of claims 1–44 of U.S.
`
`Patent No. 7,917,843 B2 (“the ’843 patent”) (Ex. 1001) under 35 U.S.C.
`
`§§ 311–319. See Paper 1 (“Petition” or “Pet.”). On June 11, 2014, the
`
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`Board instituted an inter partes review of claims 1, 2, 8, 14–17, 20, 21, 23,
`
`
`
`24, 30, 36–39, 42, and 43 on an asserted ground of unpatentability for
`
`obviousness. Paper 8 (“Dec. on Inst.”).
`
`
`
`Subsequent to institution, Patent Owner Arendi S.A.R.L. filed a patent
`
`owner response (see Paper 17, “PO Resp.”). Petitioner filed a reply to the
`
`Patent Owner Response (see Paper 21, “Pet. Reply”). Patent Owner filed a
`
`motion to exclude evidence (Paper 24), Petitioner opposed (Paper 27), and
`
`Patent Owner replied (Paper 28).
`
`
`
`
`
`Oral hearing was held on February 4, 2015.1
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1, 2, 8, 14–17, 20, 21, 23, 24,
`
`30, 36–39, 42, and 43 of the ’843 patent are unpatentable.
`
`
`
`The Challenged Patent
`
`The ’843 patent relates to a computer program that receives
`
`information typed by a user into a document (as in a word processor) and
`
`searches an external source, such as a database, to determine if the typed
`
`information exists in the database. The computer program may add a user-
`
`selectable button to the word processor that causes execution of another
`
`program to receive the typed information and to search the database. Ex.
`
`1001, col. 3, ll. 35–54. Consequently, the user does not have to learn how to
`
`use and have access to the database. Id. at col. 1, ll. 43–49.
`
`Figure 3 of the ’843 patent is reproduced below.
`
`
`1 The record includes a transcript of the oral hearing. Paper 32.
`
`2
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`
`
`
`
`
`Figure 3 is said to be a screen shot that illustrates the inputting of a
`
`name to be searched and an address handling button within a word
`
`processor. Id. at col. 2, ll. 51–54. The user has typed the name of an
`
`existing contact 40. The user selects button 42, marked “OneButton.” In
`
`response, the program of the invention retrieves existing contact 40 from the
`
`document and searches a database for the name of the existing contact. Id.
`
`at col. 7, ll. 30–37.
`
`Figure 4 of the ’843 patent is reproduced below.
`
`3
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`
`
`
`
`
`Figure 4 is said to be a screen shot illustrating a retrieved address in a
`
`word processor. Id. at col. 2, ll. 55–57. The user has typed a name and new
`
`address of existing contact 44. The user selects “OneButton” 42 and the
`
`program of the invention retrieves existing contact 44 from the document
`
`and searches a database for the name of the existing contact. Id. at col. 8, ll.
`
`13–19.
`
`
`
`4
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
` Illustrative Claim
`
`
`
`1. A computer-implemented method for finding data
`related to the contents of a document using a first computer
`program running on a computer, the method comprising:
`
`displaying the document electronically using the first
`computer program;
`
`while the document is being displayed, analyzing, in a
`computer process, first information from the document to
`determine if the first information is at least one of a plurality of
`types of information that can be searched for in order to find
`second information related to the first information;
`
`retrieving the first information;
`
`providing an input device, configured by the first
`computer program, that allows a user to enter a user command
`to initiate an operation, the operation comprising (i) performing
`a search using at least part of the first information as a search
`term in order to find the second information, of a specific type
`or types, associated with the search term in an information
`source external to the document, wherein the specific type or
`types of second information is dependent at least in part on the
`type or types of the first information, and (ii) performing an
`action using at least part of the second information;
`
`in consequence of receipt by the first computer program
`of the user command from the input device, causing a search for
`the search term in the information source, using a second
`computer program, in order to find second information related
`to the search term; and
`
`if searching finds any second information related to the
`search term, performing the action using at least part of the
`second information, wherein the action is of a type depending at
`least in part on the type or types of the first information.
`
`
`5
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`Related Proceedings
`
`
`
`According to the parties, the ’843 patent is involved in the following
`
`lawsuits: Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.);
`
`Arendi S.A.R.L. v. Motorola Mobility LLC, No. 1:12-cv-01601-LPS (D.
`
`Del.); Arendi S.A.R.L. v. Yahoo! Inc., No. 1:13-cv-00920 (D. Del.); Arendi
`
`S.A.R.L. v. Google Inc., No. 1:13-cv-00919 (D. Del.); Arendi S.A.R.L. v.
`
`HTC Corp., No. 1:12-cv-01600 (D. Del.); Arendi S.A.R.L. v. Sony Mobile
`
`Communications (USA) Inc., No. 1: 12-cv-01602 (D. Del.); Arendi S.A.R.L.
`
`v. Nokia Corporation, No. 1:12-2cv-01599 (D. Del.); Arendi S.A.R.L. v.
`
`Blackberry Limited, No. 1:12-cv-01597 (D. Del.); Arendi S.A.R.L. v. LG
`
`Electronics Inc., No. 1:12-cv-015959 (D. Del.); and Arendi S.A.R.L. v.
`
`Samsung Electronics Co. Ltd., No. 1:12-cv01598 (D. Del.). According to
`
`Patent Owner, patents related to the ’843 patent are or were involved in the
`
`following inter partes reviews: IPR2014-00206, IPR2014-00207, IPR2014-
`
`00203, and IPR2014-00214. The Board denied inter partes review in
`
`IPR2014-00203 and IPR2014-00214. The Board instituted trial in IPR2014-
`
`00206 and IPR2014-00207.
`
`
`
`Prior Art
`
`Pandit
`
`US 5,859,636
`
`Jan. 12, 1999
`
`Ex. 1009
`
`
`
`
`
`
`
`
`
`6
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`Asserted Ground of Unpatentability
`
`
`
`The Board instituted inter partes review on the following asserted
`
`ground of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 19):
`
`claims 1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 on the ground of
`
`obviousness over Pandit.
`
`
`
`II. ANALYSIS
`
`Claim Interpretation
`
`Consistent with the statute and the legislative history of the Leahy-
`
`Smith America Invents Act (AIA), the Board will construe the claims of an
`
`unexpired patent using the broadest reasonable interpretation. 37 C.F.R.
`
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012). The claim language should be read in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art. In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
`Only terms which are in controversy need to be construed, and then
`
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because the
`
`meaning of claim terms is not in controversy in this trial proceeding, we do
`
`not construe any claim limitations for purposes of this Final Decision.
`
`
`
`Pandit
`
`Section 103(a) Patentability
`
`Each of the independent claims of the ’843 patent recites “performing
`
`a search . . . wherein the specific type or types of second information [found]
`
`is dependent at least in part on the type or types of the first information [used
`
`7
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`as a search term].” Petitioner submits (Pet. 50–51) that Pandit discloses
`
`
`
`performing a search in an information source external to the document,
`
`which is a further requirement of the claim. Petitioner submits that Pandit
`
`discloses adding an identified number to an address book. Pet. 51; Ex. 1009,
`
`col. 2, l. 56 – col. 3, l. 10, Figs. 1d, 1f.
`
`Figure 1f of Pandit is reproduced below.
`
`
`
`8
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`
`Figure 1f depicts a graphical representation of text on a video monitor.
`
`Ex. 1009, col. 1, ll. 59–60. The Figure shows that text (telephone number
`
`16) has been selected by the user and highlighted. Pull down menu 17
`
`(“Phone #”) in menu bar 13 has been selected, yielding pulled-down menu
`
`20. Links in pulled-down menu 20 allow the user to, for example, select the
`
`link “Add to address book. . .” in order to call a program to add the selected
`
`text (telephone number 16) to the address book. Id. at col. 2, l. 1 – col. 3, l.
`
`10.
`
`Petitioner applies the teachings of Pandit to the challenged claims.
`
`Pet. 48–55. In particular, Petitioner submits that Pandit discloses each
`
`limitation of illustrative claim 1 except for performing a search as specified
`
`in step (i) of the claim. Petitioner, however, submits further that in order to
`
`avoid multiple entries of the same address, it would have been obvious that
`
`the first step in adding to an address book is to search the address book to
`
`determine if an entry already exists with the entered information, and
`
`displaying any associated information that is located. Id. at 51. Petitioner
`
`refers to the Declaration of Dr. Menascé. Id. Dr. Menascé concurs:
`
`It would also have been obvious to a person of ordinary
`skill in the art at the relevant timeframe that the first step in
`adding to an address book is searching the address book to
`determine if an entry already exists with this information and
`displaying any associated information that is located. This
`would have been a matter of common sense to one of ordinary
`skill, in order to avoid multiple entries of the same address.
`
`Ex. 1002 ¶ 99.
`
`Pandit teaches further that, from pulled-down menu 20 (Ex. 1009, Fig.
`
`1f), programs that can be called may include a writeable computer database
`
`of telephone and telefax numbers. Id. at col. 3, ll. 1–3. Dynamically linked
`
`9
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`libraries may contain subroutines for implementing the invention with
`
`
`
`respect to telephone and telefax numbers. Id. at col. 4, ll. 20–31.
`
`We find it reasonable to presume, as a matter of common sense and at
`
`the time of the invention, that the subroutine in Pandit would search for
`
`duplicate telephone numbers and, upon locating a duplicate entry, both the
`
`first information and associated (or second) information, such as the name
`
`and/or address associated with the telephone number, would be displayed to
`
`the user. A person having a bound paper address book would look first to
`
`determine if a potential new contact had been entered previously. A
`
`computerized search for duplicate entries would be a search “in order to find
`
`the second information, of a specific type or types,” as claimed, in the same
`
`sense that the ’843 patent’s search is in order to find the second information.
`
`As shown, for example, in Figure 1 of the ’843 patent, a name (first
`
`information) can be searched for in a database (12), and more than one
`
`possible contact or address (containing second information) may be found to
`
`match with the first information (18). Ex. 1001, Fig. 1. The first and the
`
`second information are displayed to the user for user action (20). Id.
`
`Searching a database for a telephone number in Pandit’s system, and
`
`displaying results, would be no different in substance from searching a
`
`database for a name, and displaying results, in the disclosed example in the
`
`’843 patent. “What matters is the objective reach of the claim. If the claim
`
`extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 419 (2007).
`
`10
`
`
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`Patent Owner’s Response
`
`
`
`
`
`Relying on the Declaration of Dr. John V. Levy (Ex. 2002), Patent
`
`Owner argues, with respect to Pandit, that a person of ordinary skill in the
`
`art would expect that a template would be displayed by which the user can
`
`enter the name of the party having the telephone number. PO Resp. 26. The
`
`search for duplicates would be conducted based on the name entered by the
`
`user rather than based on the telephone number. Id. at 27; Ex. 2002 ¶ 27.
`
`Entry of a telephone number as depicted in Figure 1f of Pandit is,
`
`however, but one example of Pandit’s teachings with respect to entry of
`
`data. See Pet. 50–51; Pet. Reply 14. Text including, for example, e-mail
`
`addresses, nouns, verbs, names, and street addresses can also be recognized.
`
`Ex. 1009, col. 2, ll. 24–31. Pandit at Figures 1c and 1d depicts recognition
`
`and entry of an e-mail address into an address book. Pandit teaches further
`
`that the entry may be made into a “general address book database.” Id. at
`
`col. 2, ll. 57–61. Searching for duplicate names and displaying associated
`
`data also is within the scope of the claimed invention of the ’843 patent, as
`
`exemplified in Figure 1 of the patent. If a possible duplicate in the database
`
`is found for the name, the found data is displayed to the user. Ex. 1001, col.
`
`4, ll. 43–49, Fig. 1 (reference numerals 12, 18, 20).
`
`Moreover, with respect to Pandit’s Figure 1f example of entering a
`
`telephone number into an address book, we agree with Patent Owner that
`
`“‘[a] telephone number stored in a database by itself is of little use.’” PO
`
`Resp. 25 (quoting Ex. 2002 ¶ 21). The address database must include
`
`information associated with the telephone number (e.g., a name) as opposed
`
`to consisting of a mere list of telephone numbers. Although a human being
`
`entering a contact into a paper address book would not be expected to search
`
`11
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`for duplicate telephone number entries, it would have been obvious to the
`
`
`
`ordinary artisan to utilize a computerized search for duplicate telephone
`
`entries when entering a telephone number in an electronic address book
`
`database as taught by Pandit.
`
`Patent Owner submits that products having Contacts databases that
`
`were introduced in 2013 and 2014 do not automatically search for duplicate
`
`entries when a new contact is entered. “[T]he contact application simply
`
`stores a new entry without checking for duplicates.” PO Resp. 22. Patent
`
`Owner does not, however, provide a satisfactory explanation as to what
`
`relevance the allegation concerning more recent devices may have to what
`
`would have been obvious to one of ordinary skill in the art at the time of
`
`invention—on this record, November 10, 1998, the earliest-claimed priority
`
`date pursuant to 35 U.S.C. § 120. See Ex. 1001, col. 1, ll. 8–12. Further,
`
`Patent Owner does not allege that it would have been non-obvious in 2013 or
`
`2014 to search for duplicate entries when entering a contact into a database.
`
`The obviousness inquiry “not only permits, but requires,
`
`consideration of common knowledge and common sense.” DyStar
`
`Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed.
`
`Cir. 2006); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
`
`(Fed. Cir. 2009) (the obviousness analysis “may include recourse to logic,
`
`judgment, and common sense available to the person of ordinary skill that do
`
`not necessarily require explication in any reference or expert opinion”).
`
`Patent Owner argues, however, that “common sense” may only be applied
`
`when combining references that include all the required limitations, relying
`
`on K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed.
`
`Cir. 2014). PO Resp. 14–18.
`
`12
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`In Hear-Wear Technologies, the United States Court of Appeals for
`
`
`
`the Federal Circuit determined that the Board did not err in requiring record
`
`evidence to support a third-party assertion that the structural features of “a
`
`plurality of prongs that provide a detachable mechanical and electrical
`
`connection” was a known prior art element. 751 F.3d at 1365. In this case,
`
`however, a claimed structural feature is not missing from the applied prior
`
`art. The conclusion of obviousness follows from a benefit that readily would
`
`have been apparent to one of skill in the art at the time of the invention.
`
`That benefit is provided by the mere retrieval and display of useful, pre-
`
`existing information to a user, using known methods.
`
`“A person of ordinary skill is . . . a person of ordinary creativity, not
`
`an automaton.” KSR, 550 U.S. at 421. Accordingly, the obviousness
`
`inquiry must take account of the “routine steps” that a person of ordinary
`
`skill in the art would employ. Ball Aerosol & Specialty Container, Inc. v.
`
`Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Patent Owner’s
`
`expert admits that some database programs conduct a search for duplicates
`
`by default. Ex. 2002 ¶ 25; see also Pet. Reply 13. “[I]f a technique has been
`
`used to improve one device, and a person of ordinary skill in the art would
`
`recognize that it would improve similar devices in the same way, using the
`
`technique is obvious unless its actual application is beyond his or her skill.”
`
`KSR, 550 US at 417. We are not persuaded that retrieval and display of
`
`information was “uniquely challenging or difficult for one of ordinary skill
`
`in the art” (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
`
`(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19)).
`
`Upon review of the Petition and supporting evidence, as well as the
`
`Patent Owner Response and supporting evidence, we conclude that
`
`13
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`Petitioner has demonstrated, by a preponderance of the evidence, that claims
`
`1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 are unpatentable for
`
`obviousness over Pandit.
`
`
`
`Patent Owner’s Motion to Exclude Evidence
`
`Patent Owner moves to exclude Exhibit 1013, which is the deposition
`
`transcript of Petitioner’s expert, Dr. Daniel A. Menascé. Paper 24. Dr.
`
`Menascé was deposed by Patent Owner’s counsel on August 7, 2014, for
`
`this proceeding and for proceedings IPR2014-00206 and IPR2014-00207.
`
`Ex. 1013, 1. Patent Owner submits that the transcript is irrelevant to this
`
`proceeding and that the information should have been submitted as a request
`
`by Petitioner for entry of supplemental information.
`
`Although Petitioner does not appear to discuss or rely on any portion
`
`of the transcript in its Reply to Patent Owner’s Response, Petitioner filed the
`
`Exhibit with its Reply. Petitioner argues that 37 C.F.R. § 42.53(f)(7) states
`
`that deposition testimony must be filed by its proponent as an exhibit. Paper
`
`27, 3. Consistent with Petitioner’s position, the rule recently has been
`
`clarified. See Amendments to the Rules of Practice for Trials Before the
`
`Patent Trial and Appeal Board, 80 Fed. Reg. 28,561, 28,563 (May 19, 2015)
`
`(“To clarify that either party is permitted to file testimony as an exhibit, the
`
`Office amends 37 CFR 42.53(f)(7) to delete the phrase ‘by proponent’ in the
`
`second sentence.”). Because either party is permitted to file testimony as an
`
`exhibit, Petitioner’s filing of the exhibit is proper. Because we do not
`
`consider or rely on any content of Exhibit 1013 in making our
`
`determinations in this Decision, Patent Owner’s motion to exclude Exhibit
`
`1013 is dismissed as moot.
`
`14
`
`
`

`
`IPR2014-00208
`Patent 7,917,843 B2
`
`
`
`
`
`
`
`
`III. CONCLUSION
`
`Petitioner has demonstrated by a preponderance of the evidence that
`
`claims 1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 of the ’843
`
`patent are unpatentable for obviousness over Pandit.
`
`
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`
`
`ORDERED that claims 1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–
`
`39, 42, and 43 of the ’843 patent are unpatentable;
`
`
`
`FURTHER ORDERED that Patent Owner’s Motion to Exclude
`
`Evidence is dismissed; and
`
`
`
`FURTHER ORDERED that, because this is a final written
`
`decision, parties to the proceeding seeking judicial review of the decision
`
`must comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`15
`
`
`

`
`
`
`
`
`IPR2014-00208
`Patent 7,917,843 B2
`
`For Petitioner:
`
`
`David L. Fehrman
`Mehran Arjomand
`Morrison & Foerster LLP
`dfehrman@mofo.com
`marjomand@mofo.com
`
`Matthew A. Smith
`Zhuanjia Gu
`Turner Boyd LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`
`
`
`For Patent Owner:
`
`Robert M. Asher
`Bruce D. Sunstein
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`
`
`
`
`
`
`
`
`16

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