Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 11
`
`
` Entered: November 16, 2016
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`IMPROVED SEARCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00797
`Patent 6,604,101 B1
`____________
`
`
`
`Before JONI Y. CHANG, PATRICK R. SCANLON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 11
`
`
` Entered: November 16, 2016
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`IMPROVED SEARCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00797
`Patent 6,604,101 B1
`____________
`
`
`
`Before JONI Y. CHANG, PATRICK R. SCANLON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`Petitioner, Google Inc. (“Google”), requests rehearing of the Board’s
`
`Decision (Paper 9) (“Decision”) declining to institute inter partes review of
`
`claims 1, 2, 4, 5, 22, 24, 27, and 28 as obvious in view of Fluhr ’971 and
`
`Fluhr ’98;2 claims 6, 7, and 25 as obvious in view of Fluhr ’97, Fluhr ’98,
`
`and Yamabana;3 and claim 28 as obvious in view of Fluhr ’97, Fluhr ’98,
`
`and Bian.4 Paper 10 (“Request for Rehearing” or “Req. Reh’g”). For the
`
`reasons that follow, Google’s Request for Rehearing is denied.
`
`
`
`1 Fluhr et al., Multilingual Database and Crosslingual Interrogation in a
`Real Internet Application: Architecture and Problems of Implementation,
`Cross-Language Text & Speech Retrieval: Papers from the 1997 AAAI
`Spring Symposium, Technical Report SS-97-05, (AAAI Press) 32 (1997)
`(“Fluhr ’97) (Ex. 1003).
`
`2 Fluhr et al., Distributed Cross-Lingual Information Retrieval,” Cross-
`Language Information Retrieval, 41 (Gregory Grefenstette ed., 1998)
`(“Fluhr ’98) (Ex. 1004).
`
`3 Yamabana et al., A Language Conversion Front-End for Cross-Language
`Information Retrieval, Cross-Language Information Retrieval, 93 (Gregory
`Grefenstette ed., 1998) (“Yamabana”) (Ex. 1005).
`
`4 Bian, Integrating Query Translation and Document Translation in a
`Cross-Language Information Retrieval System, Machine Translation and the
`Information Soup: Third Conference of the Association for Machine
`Translation in the Americas, AMTA’98, Langhorne, PA, USA, October 28–
`31, 1998 Proceedings, 250 (David Farwell et al. eds., Springer-Verlag Berlin
`Heidelberg 1998) (“Bian”) (Ex. 1006).
`
`2
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`Pursuant to 37 C.F.R. § 42.71(d):
`
`ANALYSIS
`
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`When reconsidering a decision on institution, we review the decision for an
`
`abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists
`
`where a “decision [i]s based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.
`
`Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
`
`Cir. 1988).
`
`Google contends that the Board erred in determining that the broadest
`
`reasonable interpretation of the claim 1 term “contextual search” requires
`
`“identification of relevant documents from the domain-unlimited set of
`
`documents available on the World Wide Web, based on words contained in
`
`the documents.” Req. Reh’g 1–8. Google further asserts that the Board
`
`abused its discretion in relying on this purportedly erroneous construction in
`
`declining to institute trial. Id. at 8–9.
`
`Google acknowledges that the Specification of the ’101 patent “refers
`
`often to Web search and lists a number of search engines that operate over
`
`the Web,” but contends that other portions of the Specification, the claim
`
`language, the file history, and the testimony of Dr. Oard presented to the
`
`3
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`Board in conjunction with the Petition necessitate a broader construction that
`
`is not limited to Web search. Req. Reh’g 3.
`
`We have considered, but do not find persuasive, Google’s assertions
`
`that we overlooked or misapprehended the portions of the record identified
`
`in the Request for Rehearing, or that we erred in construing “contextual
`
`search” to mean “identification of relevant documents from the
`
`domain-unlimited set of documents available on the World Wide Web,
`
`based on words contained in the documents.”
`
`Turning first to Google’s contention that our construction of
`
`“contextual search” overlooked the plain language of claim 1 and its
`
`dependent claims (Req. Reh’g 3–4), we observe that the Decision explicitly
`
`discusses the language Google asserts that we have overlooked, and explains
`
`how that language is consistent with, and even supports the Specification’s
`
`exclusive depiction of “contextual search” as a search performed on an
`
`domain-unlimited document set over the Web (see Decision 10).
`
`Furthermore, although Google is correct that the challenged claims “do not
`
`refer to Web search by name” (Req. Reh’g 4), as detailed in the Decision,
`
`the implicit definition set forth in the Specification, the language of the
`
`claims themselves, and the prosecution history support construing
`
`“contextual search” broadly, but reasonably, as “identification of relevant
`
`documents from the domain-unlimited set of documents available on the
`
`World Wide Web, based on the words contained in the documents” (see
`
`Decision, 8–12).
`
`4
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`Regarding Google’s contention that we overlooked the prosecution
`
`history for the ’101 patent, we direct Google to the discussion of the
`
`prosecution history set forth in the Decision, and in particular, to our
`
`observation that “the prosecution history explicitly states that ‘[i]ndependent
`
`claims 1, 9, 12, 19, 22 and 23 have herein been amended to further
`
`distinguish a feature of the present invention allowing input of a query in a
`
`first language or source language; and a contextual search of the Internet in
`
`a second or target language.’” Decision 11 (quoting Ex. 2002, 10).
`
`The portions of the prosecution history to which Google now points
`
`do not contradict or otherwise call into question the above-quoted statement
`
`by the Applicants, or our conclusions regarding the effect of the prosecution
`
`history on the interpretation of “contextual search.”
`
`Moreover, Google presents an incomplete and over-simplified
`
`assessment of the prosecution history for the ’101 patent. In particular,
`
`Google’s assertion that “[t]he changes from Web-specific terms to broader
`
`ones shows that Claim 1 and its dependent claims must cover something
`
`broader than only ‘Web search’” (Req. Reh’g 5) ignores the evolution of the
`
`claims during prosecution. For example, contrary to Google’s intimation
`
`(id. at 4–5), amendment of the preamble of claim 1 to recite “in a computer
`
`network” was not a broadening amendment, but a narrowing one. The
`
`preamble of claim 1 evolved during prosecution from reciting “search and
`
`retrieval of multilingual web documents” (Ex. 1010, 19), to encompass the
`
`“search and retrieval of multilingual documents” (id. at 62), before finally
`
`being narrowed to require “contextual search and retrieval of documents in a
`
`5
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`computer network” (id. at 92). Google does not account for the context or
`
`chronology of these amendments, or the Applicants’ statement that the
`
`amendments “distinguish a feature of the present invention allowing . . . a
`
`contextual search of the Internet. . .’” (Decision 11 (quoting Ex. 2002, 10.)).
`
`We are similarly unpersuaded by Google’s assertion that we
`
`overlooked Dr. Oard’s testimony that the search engine of claim 1 is not
`
`necessarily a Web search engine (Req. Reh’g 5) in construing the claim term
`
`“contextual search.” Dr. Oard’s comment, in footnote, that the “search
`
`engine in claim 1 is not limited to a Web search engine” because the
`
`’101 patent includes, in the description of the prior art, “an example of a
`
`search engine that was not designed to search Web sites—the Deja News
`
`service” (Ex. 1002 ¶ 109 n.13) is insufficient to support an expansive
`
`construction of the claim term “contextual search.” As an initial matter, we
`
`note that the description of the prior art does not set forth any embodiments
`
`of the claimed invention. In addition, Dr. Oard’s comment is not directed at
`
`the claim term “contextual search” (id.), and tellingly, Dr. Oard does not
`
`discuss Deja News in the portion of his declaration addressed to the
`
`construction of “contextual search,” or otherwise opine that reference to
`
`Deja News as an exemplary special search engine in the description of the
`
`prior art is relevant to the interpretation of the term “contextual search” see
`
`id. ¶¶ 79–81. Rather, Dr. Oard acknowledges that “Deja News was a service
`
`for searching Usenet newsgroups, a type of threaded discussion forum that
`
`was initially shared using store-and-forward techniques and that predates the
`
`6
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`World Wide Web” (Ex. 1002, 58 n.13), further calling into question its
`
`relevance to the challenged claims.
`
`Neither do we agree with Google that the claim term “contextual
`
`search,” as it is used in the ’101 patent, may encompass searches of
`
`domain-limited document collections. Google’s reliance on the
`
`exemplification of Deja News as a special search engine in the ’101 patent’s
`
`description of the prior art is again misplaced. The ’101 patent does not
`
`identify Deja News as an embodiment of the claimed invention, characterize
`
`the search performed by Deja News as “contextual search,” or equate the
`
`search methodology of the claimed invention to that of Deja News. See
`
`Ex. 1001, 2:1–4. Rather, as explained above, the ’101 patent confines its
`
`discussion of Deja News to two sentences in the description of the prior art.
`
`In contrast, and as explained in detail in the Decision, the ’101 patent
`
`repeatedly, consistently, and exclusively describes the claimed invention as
`
`an improved system and method for domain-unlimited Web search.
`
`Decision, 8–12.
`
`Google’s parallel assertion that the disclosure of “special search
`
`engines” in the description of the prior art supports a construction of
`
`contextual search that encompasses those search engines (Req. Reh’g 8) is
`
`similarly unavailing. Google does not identify any embodiments of the
`
`invention of the ’101 patent, preferred or otherwise, that perform a
`
`domain-limited search. See Req. Reh’g 5–9. Moreover, contrary to
`
`Google’s suggestion, the Federal Circuit’s decision in PPC Broadband, Inc.
`
`v. Corning Optical Communications RF, LLC, 815 F.3d 734, 741–43 (Fed.
`
`7
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`Cir. 2016), does not stand for the proposition that mention of a prior art
`
`system in the description of the prior art constitutes a disclosure of an
`
`embodiment of the claimed invention, or is otherwise relevant to claim
`
`construction. Indeed, the portions of the Specification of the patent-at-issue
`
`on which the Federal Circuit relied in PPC Broadband related to
`
`embodiments of the claimed invention set forth in the summary of invention
`
`and detailed description of the invention. 815 F.3d at 742–743. Critically,
`
`Google does not identify a single embodiment of the claimed invention set
`
`forth in the Specification of the ’101 patent that performs a search on a
`
`domain-limited document set. See Req. Reh’g 5–9.
`
`Lastly, contrary to Google’s speculation, and as made plain by our
`
`Decision, our construction of “contextual search” is not “based on Patent
`
`Owner’s broad assertions about the nature of Web search in its Preliminary
`
`Response” (Req. Reh’g 6), but rather, reflects the implicit definition set forth
`
`in the Specification, the claims themselves, and the prosecution history of
`
`the ’101 patent.
`
`Accordingly, because Google has not shown that we erred in
`
`construing “contextual search” to mean “identification of relevant
`
`documents from the domain-unlimited set of documents available on the
`
`World Wide Web, based on words contained in the documents,” Google has
`
`not established that we abused our discretion in declining to institute trial.
`
`
`
`
`
`8
`
`
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`CONCLUSION
`
`For the reasons given, Google has not demonstrated that we abused
`
`our discretion in denying institution of inter partes review of claims 1, 2, 4,
`
`5, 22, 24, 27, and 28 as obvious in view of Fluhr ’97 and Fluhr ’98; claims 6,
`
`7, and 25 as obvious in view of Fluhr ’97, Fluhr ’98, and Yamabana; or
`
`claim 28 as obvious in view of Fluhr ’97, Fluhr ’98, and Bian. Neither has
`
`Google shown that we misapprehended or overlooked matters raised in the
`
`Petition in our Decision.
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Google’s Request for Rehearing is denied.
`
`
`
`
`
`9
`
`
`
`10
`
`IPR2016-00797
`Patent 6,604,101 B1
`
`
`
`PETITIONER:
`
`Aaron P. Maurer
`David M. Krinsky
`WILLIAMS & CONNOLLY LLP
`amaurer@wc.com
`dkrinsky@wc.com
`
`
`PATENT OWNER:
`
`Keith E. Kline
`Wade C. Yamazaki
`CARR & FERRELL LLP
`kkline@carrferrell.com
`wyamazaki@carrferrell.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
