`Trials@uspto.gov
`571-272-7822
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`Date Entered: June 9, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
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`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
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`I. BACKGROUND
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`
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`Apple Inc., Google Inc., and Motorola Mobility LLC (collectively
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`“Petitioner”) filed a request for inter partes review of claims 1–44 of U.S.
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`Patent No. 7,917,843 B2 (“the ’843 patent”) (Ex. 1001) under 35 U.S.C.
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`§§ 311–319. See Paper 1 (“Petition” or “Pet.”). On June 11, 2014, the
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`Board instituted an inter partes review of claims 1, 2, 8, 14–17, 20, 21, 23,
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`24, 30, 36–39, 42, and 43 on an asserted ground of unpatentability for
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`obviousness. Paper 8 (“Dec. on Inst.”).
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`Subsequent to institution, Patent Owner Arendi S.A.R.L. filed a patent
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`owner response (see Paper 17, “PO Resp.”). Petitioner filed a reply to the
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`Patent Owner Response (see Paper 21, “Pet. Reply”). Patent Owner filed a
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`motion to exclude evidence (Paper 24), Petitioner opposed (Paper 27), and
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`Patent Owner replied (Paper 28).
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`Oral hearing was held on February 4, 2015.1
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons that follow, we determine that Petitioner has shown by
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`a preponderance of the evidence that claims 1, 2, 8, 14–17, 20, 21, 23, 24,
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`30, 36–39, 42, and 43 of the ’843 patent are unpatentable.
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`The Challenged Patent
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`The ’843 patent relates to a computer program that receives
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`information typed by a user into a document (as in a word processor) and
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`searches an external source, such as a database, to determine if the typed
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`information exists in the database. The computer program may add a user-
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`selectable button to the word processor that causes execution of another
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`program to receive the typed information and to search the database. Ex.
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`1001, col. 3, ll. 35–54. Consequently, the user does not have to learn how to
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`use and have access to the database. Id. at col. 1, ll. 43–49.
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`Figure 3 of the ’843 patent is reproduced below.
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`1 The record includes a transcript of the oral hearing. Paper 32.
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`2
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`Figure 3 is said to be a screen shot that illustrates the inputting of a
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`name to be searched and an address handling button within a word
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`processor. Id. at col. 2, ll. 51–54. The user has typed the name of an
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`existing contact 40. The user selects button 42, marked “OneButton.” In
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`response, the program of the invention retrieves existing contact 40 from the
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`document and searches a database for the name of the existing contact. Id.
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`at col. 7, ll. 30–37.
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`Figure 4 of the ’843 patent is reproduced below.
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`3
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`Figure 4 is said to be a screen shot illustrating a retrieved address in a
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`word processor. Id. at col. 2, ll. 55–57. The user has typed a name and new
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`address of existing contact 44. The user selects “OneButton” 42 and the
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`program of the invention retrieves existing contact 44 from the document
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`and searches a database for the name of the existing contact. Id. at col. 8, ll.
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`13–19.
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`Patent 7,917,843 B2
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` Illustrative Claim
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`
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`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:
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`displaying the document electronically using the first
`computer program;
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`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;
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`retrieving the first information;
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`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;
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`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
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`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.
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`Related Proceedings
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`According to the parties, the ’843 patent is involved in the following
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`lawsuits: Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.);
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`Arendi S.A.R.L. v. Motorola Mobility LLC, No. 1:12-cv-01601-LPS (D.
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`Del.); Arendi S.A.R.L. v. Yahoo! Inc., No. 1:13-cv-00920 (D. Del.); Arendi
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`S.A.R.L. v. Google Inc., No. 1:13-cv-00919 (D. Del.); Arendi S.A.R.L. v.
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`HTC Corp., No. 1:12-cv-01600 (D. Del.); Arendi S.A.R.L. v. Sony Mobile
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`Communications (USA) Inc., No. 1: 12-cv-01602 (D. Del.); Arendi S.A.R.L.
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`v. Nokia Corporation, No. 1:12-2cv-01599 (D. Del.); Arendi S.A.R.L. v.
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`Blackberry Limited, No. 1:12-cv-01597 (D. Del.); Arendi S.A.R.L. v. LG
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`Electronics Inc., No. 1:12-cv-015959 (D. Del.); and Arendi S.A.R.L. v.
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`Samsung Electronics Co. Ltd., No. 1:12-cv01598 (D. Del.). According to
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`Patent Owner, patents related to the ’843 patent are or were involved in the
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`following inter partes reviews: IPR2014-00206, IPR2014-00207, IPR2014-
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`00203, and IPR2014-00214. The Board denied inter partes review in
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`IPR2014-00203 and IPR2014-00214. The Board instituted trial in IPR2014-
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`00206 and IPR2014-00207.
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`Prior Art
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`Pandit
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`US 5,859,636
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`Jan. 12, 1999
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`Ex. 1009
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`Patent 7,917,843 B2
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`Asserted Ground of Unpatentability
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`The Board instituted inter partes review on the following asserted
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`ground of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 19):
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`claims 1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 on the ground of
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`obviousness over Pandit.
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`II. ANALYSIS
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`Claim Interpretation
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`Consistent with the statute and the legislative history of the Leahy-
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`Smith America Invents Act (AIA), the Board will construe the claims of an
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`unexpired patent using the broadest reasonable interpretation. 37 C.F.R.
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`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
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`(Aug. 14, 2012). The claim language should be read in light of the
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`specification as it would be interpreted by one of ordinary skill in the art. In
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`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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`Only terms which are in controversy need to be construed, and then
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`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because the
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`meaning of claim terms is not in controversy in this trial proceeding, we do
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`not construe any claim limitations for purposes of this Final Decision.
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`Pandit
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`Section 103(a) Patentability
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`Each of the independent claims of the ’843 patent recites “performing
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`a search . . . wherein the specific type or types of second information [found]
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`is dependent at least in part on the type or types of the first information [used
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`as a search term].” Petitioner submits (Pet. 50–51) that Pandit discloses
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`
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`performing a search in an information source external to the document,
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`which is a further requirement of the claim. Petitioner submits that Pandit
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`discloses adding an identified number to an address book. Pet. 51; Ex. 1009,
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`col. 2, l. 56 – col. 3, l. 10, Figs. 1d, 1f.
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`Figure 1f of Pandit is reproduced below.
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`Figure 1f depicts a graphical representation of text on a video monitor.
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`Ex. 1009, col. 1, ll. 59–60. The Figure shows that text (telephone number
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`16) has been selected by the user and highlighted. Pull down menu 17
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`(“Phone #”) in menu bar 13 has been selected, yielding pulled-down menu
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`20. Links in pulled-down menu 20 allow the user to, for example, select the
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`link “Add to address book. . .” in order to call a program to add the selected
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`text (telephone number 16) to the address book. Id. at col. 2, l. 1 – col. 3, l.
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`10.
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`Petitioner applies the teachings of Pandit to the challenged claims.
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`Pet. 48–55. In particular, Petitioner submits that Pandit discloses each
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`limitation of illustrative claim 1 except for performing a search as specified
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`in step (i) of the claim. Petitioner, however, submits further that in order to
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`avoid multiple entries of the same address, it would have been obvious that
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`the first step in adding to an address book is to search the address book to
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`determine if an entry already exists with the entered information, and
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`displaying any associated information that is located. Id. at 51. Petitioner
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`refers to the Declaration of Dr. Menascé. Id. Dr. Menascé concurs:
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`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.
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`Ex. 1002 ¶ 99.
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`Pandit teaches further that, from pulled-down menu 20 (Ex. 1009, Fig.
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`1f), programs that can be called may include a writeable computer database
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`of telephone and telefax numbers. Id. at col. 3, ll. 1–3. Dynamically linked
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`libraries may contain subroutines for implementing the invention with
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`respect to telephone and telefax numbers. Id. at col. 4, ll. 20–31.
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`We find it reasonable to presume, as a matter of common sense and at
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`the time of the invention, that the subroutine in Pandit would search for
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`duplicate telephone numbers and, upon locating a duplicate entry, both the
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`first information and associated (or second) information, such as the name
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`and/or address associated with the telephone number, would be displayed to
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`the user. A person having a bound paper address book would look first to
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`determine if a potential new contact had been entered previously. A
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`computerized search for duplicate entries would be a search “in order to find
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`the second information, of a specific type or types,” as claimed, in the same
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`sense that the ’843 patent’s search is in order to find the second information.
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`As shown, for example, in Figure 1 of the ’843 patent, a name (first
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`information) can be searched for in a database (12), and more than one
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`possible contact or address (containing second information) may be found to
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`match with the first information (18). Ex. 1001, Fig. 1. The first and the
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`second information are displayed to the user for user action (20). Id.
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`Searching a database for a telephone number in Pandit’s system, and
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`displaying results, would be no different in substance from searching a
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`database for a name, and displaying results, in the disclosed example in the
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`’843 patent. “What matters is the objective reach of the claim. If the claim
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`extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 419 (2007).
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`Patent Owner’s Response
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`Relying on the Declaration of Dr. John V. Levy (Ex. 2002), Patent
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`Owner argues, with respect to Pandit, that a person of ordinary skill in the
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`art would expect that a template would be displayed by which the user can
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`enter the name of the party having the telephone number. PO Resp. 26. The
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`search for duplicates would be conducted based on the name entered by the
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`user rather than based on the telephone number. Id. at 27; Ex. 2002 ¶ 27.
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`Entry of a telephone number as depicted in Figure 1f of Pandit is,
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`however, but one example of Pandit’s teachings with respect to entry of
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`data. See Pet. 50–51; Pet. Reply 14. Text including, for example, e-mail
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`addresses, nouns, verbs, names, and street addresses can also be recognized.
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`Ex. 1009, col. 2, ll. 24–31. Pandit at Figures 1c and 1d depicts recognition
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`and entry of an e-mail address into an address book. Pandit teaches further
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`that the entry may be made into a “general address book database.” Id. at
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`col. 2, ll. 57–61. Searching for duplicate names and displaying associated
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`data also is within the scope of the claimed invention of the ’843 patent, as
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`exemplified in Figure 1 of the patent. If a possible duplicate in the database
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`is found for the name, the found data is displayed to the user. Ex. 1001, col.
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`4, ll. 43–49, Fig. 1 (reference numerals 12, 18, 20).
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`Moreover, with respect to Pandit’s Figure 1f example of entering a
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`telephone number into an address book, we agree with Patent Owner that
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`“‘[a] telephone number stored in a database by itself is of little use.’” PO
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`Resp. 25 (quoting Ex. 2002 ¶ 21). The address database must include
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`information associated with the telephone number (e.g., a name) as opposed
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`to consisting of a mere list of telephone numbers. Although a human being
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`entering a contact into a paper address book would not be expected to search
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`for duplicate telephone number entries, it would have been obvious to the
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`ordinary artisan to utilize a computerized search for duplicate telephone
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`entries when entering a telephone number in an electronic address book
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`database as taught by Pandit.
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`Patent Owner submits that products having Contacts databases that
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`were introduced in 2013 and 2014 do not automatically search for duplicate
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`entries when a new contact is entered. “[T]he contact application simply
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`stores a new entry without checking for duplicates.” PO Resp. 22. Patent
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`Owner does not, however, provide a satisfactory explanation as to what
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`relevance the allegation concerning more recent devices may have to what
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`would have been obvious to one of ordinary skill in the art at the time of
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`invention—on this record, November 10, 1998, the earliest-claimed priority
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`date pursuant to 35 U.S.C. § 120. See Ex. 1001, col. 1, ll. 8–12. Further,
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`Patent Owner does not allege that it would have been non-obvious in 2013 or
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`2014 to search for duplicate entries when entering a contact into a database.
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`The obviousness inquiry “not only permits, but requires,
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`consideration of common knowledge and common sense.” DyStar
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`Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed.
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`Cir. 2006); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
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`(Fed. Cir. 2009) (the obviousness analysis “may include recourse to logic,
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`judgment, and common sense available to the person of ordinary skill that do
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`not necessarily require explication in any reference or expert opinion”).
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`Patent Owner argues, however, that “common sense” may only be applied
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`when combining references that include all the required limitations, relying
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`on K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed.
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`Cir. 2014). PO Resp. 14–18.
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`In Hear-Wear Technologies, the United States Court of Appeals for
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`the Federal Circuit determined that the Board did not err in requiring record
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`evidence to support a third-party assertion that the structural features of “a
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`plurality of prongs that provide a detachable mechanical and electrical
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`connection” was a known prior art element. 751 F.3d at 1365. In this case,
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`however, a claimed structural feature is not missing from the applied prior
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`art. The conclusion of obviousness follows from a benefit that readily would
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`have been apparent to one of skill in the art at the time of the invention.
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`That benefit is provided by the mere retrieval and display of useful, pre-
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`existing information to a user, using known methods.
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`“A person of ordinary skill is . . . a person of ordinary creativity, not
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`an automaton.” KSR, 550 U.S. at 421. Accordingly, the obviousness
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`inquiry must take account of the “routine steps” that a person of ordinary
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`skill in the art would employ. Ball Aerosol & Specialty Container, Inc. v.
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`Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Patent Owner’s
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`expert admits that some database programs conduct a search for duplicates
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`by default. Ex. 2002 ¶ 25; see also Pet. Reply 13. “[I]f a technique has been
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`used to improve one device, and a person of ordinary skill in the art would
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`recognize that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill.”
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`KSR, 550 US at 417. We are not persuaded that retrieval and display of
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`information was “uniquely challenging or difficult for one of ordinary skill
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`in the art” (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
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`(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19)).
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`Upon review of the Petition and supporting evidence, as well as the
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`Patent Owner Response and supporting evidence, we conclude that
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`Petitioner has demonstrated, by a preponderance of the evidence, that claims
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`1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 are unpatentable for
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`obviousness over Pandit.
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`Patent Owner’s Motion to Exclude Evidence
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`Patent Owner moves to exclude Exhibit 1013, which is the deposition
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`transcript of Petitioner’s expert, Dr. Daniel A. Menascé. Paper 24. Dr.
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`Menascé was deposed by Patent Owner’s counsel on August 7, 2014, for
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`this proceeding and for proceedings IPR2014-00206 and IPR2014-00207.
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`Ex. 1013, 1. Patent Owner submits that the transcript is irrelevant to this
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`proceeding and that the information should have been submitted as a request
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`by Petitioner for entry of supplemental information.
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`Although Petitioner does not appear to discuss or rely on any portion
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`of the transcript in its Reply to Patent Owner’s Response, Petitioner filed the
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`Exhibit with its Reply. Petitioner argues that 37 C.F.R. § 42.53(f)(7) states
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`that deposition testimony must be filed by its proponent as an exhibit. Paper
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`27, 3. Consistent with Petitioner’s position, the rule recently has been
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`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)
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`(“To clarify that either party is permitted to file testimony as an exhibit, the
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`Office amends 37 CFR 42.53(f)(7) to delete the phrase ‘by proponent’ in the
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`second sentence.”). Because either party is permitted to file testimony as an
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`exhibit, Petitioner’s filing of the exhibit is proper. Because we do not
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`consider or rely on any content of Exhibit 1013 in making our
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`determinations in this Decision, Patent Owner’s motion to exclude Exhibit
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`1013 is dismissed as 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 1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 of the ’843
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`patent are unpatentable for obviousness over Pandit.
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that claims 1, 2, 8, 14–17, 20, 21, 23, 24, 30, 36–
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`39, 42, and 43 of the ’843 patent are unpatentable;
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`FURTHER ORDERED that Patent Owner’s Motion to Exclude
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`Evidence is dismissed; and
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`FURTHER ORDERED that, because this is a final written
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`decision, parties to the proceeding seeking judicial review of the decision
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`must comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`IPR2014-00208
`Patent 7,917,843 B2
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`For Petitioner:
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`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
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`For Patent Owner:
`
`Robert M. Asher
`Bruce D. Sunstein
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
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`16