Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 33
`Entered: July 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC
`Petitioner,
`
`v.
`
`VEVEO, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00715
`Patent 8,433,696 B2
`____________
`
`
`Before JONI Y. CHANG, MINN CHUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 33
`Entered: July 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC
`Petitioner,
`
`v.
`
`VEVEO, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00715
`Patent 8,433,696 B2
`____________
`
`
`Before JONI Y. CHANG, MINN CHUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2017-00715
`Patent 8,433,696 B2
`
`
`I. INTRODUCTION
`
`Comcast Cable Communications, LLC (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–31 (the “challenged claims”) of
`U.S. Patent No. 8,433,696 B2 (Ex. 1001, “the ’696 patent”). Paper 2
`(“Pet.”). Veveo, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”). We instituted an inter partes review of all of the
`challenged claims. Paper 8 (“Dec. Inst.”).
`Patent Owner filed a Response (Paper 22, “PO Resp.”) and Petitioner
`filed a Reply (Paper 25, “Pet. Reply”). A hearing was held on April 23,
`2018, a transcript of which has been entered into the record (Paper 30,
`“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We base our decision on
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Having reviewed the arguments of the parties and the supporting evidence,
`we find that Petitioner has demonstrated by a preponderance of the evidence
`that each of the challenged claims is unpatentable.
`
`A. The ’696 Patent
`The ’696 patent discloses methods and systems for “processing a
`search query entered by a user of a device having a text input interface with
`overloaded keys” in order to “identif[y] an item from a set of items.”
`Ex. 1001, Abstract. The claims are directed towards methods and systems
`designed to search for “content items” using such overloaded keys. Id. at
`claims 1 and 15. Figure 1 of the ’696 patent shows an example of an
`overloaded keypad with each key being associated with more than one
`alpha-numeric character. The ’696 patent explains that a “user enters a
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`character using an ambiguous text input interface, e.g., using a keypad with
`overloaded keys where a single key press is performed for each character
`entered” and “an incremental search system determines and displays results
`that match the input character.” Id. at 5:4–13. For example, “[t]he
`exemplary terms ‘TOON’, ‘TOM’, ‘TOMMY’, which can be search terms
`entered by a television viewer to identify television content, are mapped to
`the numeric equivalents of their prefix strings: ‘T’(8), ‘TO’(86),
`‘TOO’(866), ‘TOON’(8666), ‘TOMMY’(86669).” Id. at 5:60–66. The
`results for “TOON” are mapped to overloaded inputs “8,” “86,” “866,” and
`“8666,” and, based on that mapping, the system “enables incremental search
`processing by enabling even a single character entered by the user to retrieve
`relevant results.” Id. at 5:66–6:2.
`The ’696 patent also discloses that “an ordering scheme is preferably
`used to order the results to improve accessibility to results expected to be
`more of interest to the user.” Id. at 5:13–20. If the user does not find the
`desired results, he or she can continue to enter more characters to the search
`query. Id. at 5:55–57. Then “the system will perform the search based on
`the cumulative substring of characters of the search query entered by the
`user up to that point.” Id. at 5:57–59.
`
`B. Challenged Claims
`Petitioner challenges claims 1–31 of the ’696 patent. Claims 1 and 15
`are independent and are substantially similar, the difference being that
`claim 1 recites a method and claim 15 recites a system. Claim 1 is
`illustrative and is reproduced below.
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`1. A method, comprising:
`
`associating subsets of content items with corresponding
`strings of one or more overloaded keys of a keypad so that the
`subsets of content items are directly mapped to the corresponding
`strings of one or more overloaded keys by a direct mapping,
`wherein at least one over loaded key of the one or more
`overloaded keys is associated with a plurality of alphabetical
`and/ or numerical symbols;
`
`ranking content items within at least one of the subsets of
`content items according to one or more ordering criteria;
`
`subsequent to the associating and ranking, receiving entry
`of a first overloaded key;
`
`selecting and presenting a first of the subsets of content
`items that is associated with the first overloaded key based on the
`direct mapping;
`
`subsequent to receiving entry of the first overloaded key,
`receiving entry of a second overloaded key the same as or
`different than the first overloaded key, the second overloaded key
`forming a string with the first overloaded key; and
`
`selecting and presenting a second of the subsets of content
`items that is associated with the string of overloaded keys formed
`by the first overloaded key and the second overloaded key based
`on the direct mapping.
`Ex. 1001, 7:62–8:20.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent. 37 C.F.R. § 42.100(b). Consistent with that standard, we assign
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`be construed, and only to the extent necessary to resolve the controversy.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`The initial “associating” step of claim 1 reads as follows:
`associating subsets of content items with corresponding strings
`of one or more overloaded keys of a keypad so that the subsets
`of content items are directly mapped to the corresponding strings
`of one or more overloaded keys by a direct mapping, wherein at
`least one over loaded key of the one or more overloaded keys is
`associated with a plurality of alphabetical and/ or numerical
`symbols;
`Ex. 1001, 7:63–8:3.
`The “associating” step of claim 1 recites the terms “content item” and
`“direct mapping,” among others. In our Decision Instituting Inter Partes
`Review, we construed preliminarily the terms “content item” and “direct
`mapping.” See Dec. Inst. 5–10.
`1. “Content Item”
`We construed preliminarily the term “content item” to mean “an item
`which contains information and is identifiable and selectable from a set of
`items through use of a search query.” Dec. Inst. 6–8.
`In its Response, Patent Owner argues that our construction “fails to
`distinguish between a ‘content item’ and its associated descriptors.” PO
`Resp. 14. Patent Owner argues that our construction “allows Petitioner to
`improperly blur the lines between content items and their associated
`descriptors,” and points to testimony from Petitioner’s declarant, Dr. Fox,
`where he states that a “[c]ontent item can be the same as a descriptor if the
`descriptor is a long thing,” such as a list of titles. Id. at 15 (quoting
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`Ex. 2008, 67:1–21). Patent Owner proposes instead construing “content
`item” as “an identifiable and searchable item having one or more associated
`descriptors.” Id.
`Petitioner argues that Patent Owner’s proposed construction of
`“content item” is inconsistent with Patent Owner’s proposed construction of
`“direct mapping,” is contradicted by Patent Owner’s litigation position, and
`improperly imports a limitation (“associated descriptors”) from the
`specification into the claim. Pet. Reply 10–12.
`We agree with Petitioner that Patent Owner’s proposed construction
`improperly imports a limitation from the specification into the claim.
`Merely because a particular embodiment describes the association of
`“descriptors” with “content items” for purposes of searching and retrieving
`those content items, does not justify importing that limitation into the claim
`language. Claim 1, as written, does not recite “descriptors,” and it would be
`error to import this limitation into the broader claim. See Superguide Corp.
`v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“it is important
`not to import into a claim limitations that are not part of the claim. For
`example, a particular embodiment appearing in the written description may
`not be read into a claim when the claim language is broader than the
`embodiment”). The specification provides examples showing how
`“descriptors” are associated and used with “content items.” See, e.g.,
`Ex. 1001, 2:11–19, 3:19–22. A person of ordinary skill in the art reading the
`claims in light of the specification would therefore understand that “content
`items” are not “descriptors.”
`Although Patent Owner points to the same or similar disclosures in
`the specification, Patent Owner does not explain why such disclosures limit
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`the term “content item” to require “having one or more associated
`descriptors.” See PO Resp. 15 (citing Ex. 1001, 2:7–12, 3:5–8). For
`example, Patent Owner does not argue that it was acting as its own
`lexicographer or it disavowed the full scope of the term in the specification
`or during prosecution. See GE Lighting Sols., LLC v. AgiLight, Inc., 750
`F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution
`history only compel departure from the plain meaning in two instances:
`lexicography and disavowal.”). Therefore, we do not agree with Patent
`Owner that the term “content item” requires “having one or more associated
`descriptors.”
`Moreover, we do not rely on the particular testimony of Dr. Fox
`criticized by Patent Owner. See PO Resp. 15–16 (quoting Ex. 2008, 67:1–
`21, 71:21–72:15). At oral argument, Patent Owner’s counsel indicated that
`our construction would be appropriate if we did not agree with Dr. Fox’s
`interpretation. Tr. 25:7–13.
`Accordingly, based on the complete record, in this final decision, we
`adopt our preliminary construction of “content item” to mean “an item
`which contains information and is identifiable and selectable from a set of
`items through use of a search query.”
`2. “Direct Mapping”
`We construed preliminarily the term “direct mapping” to mean
`“matching each alphanumeric character of a descriptor identifying a content
`item with its corresponding numeric key equivalent on an overloaded
`keypad.” Dec. Inst. 8–10.
`In its Response, Patent Owner argues that our preliminary
`construction describes “indirect mapping” instead of the claimed “direct
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`mapping.” PO Resp. 8. Patent Owner argues, “the claim explicitly requires
`that the content items themselves—and not their associated descriptors—are
`directly mapped to strings of overloaded keys.” Id. at 9. Patent Owner also
`argues that our preliminary construction fails to account for the mapping of
`prefix strings of overloaded keys to content items. Id. Patent Owner asserts
`that “the Board should construe ‘direct mapping’ to require mapping content
`items directly to corresponding prefix strings made up of overloaded keys.”
`Id. at 13 (citing Ex. 2009 ¶ 41).
`Petitioner argues that the evidence cited by Patent Owner, specifically
`Figures 5 and 7 of the ’696 patent and the accompanying descriptions, does
`not support Patent Owner’s proposed construction. Pet. Reply 2–5.
`Petitioner argues that neither Figure 5 nor Figure 7 depicts the direct
`mapping of content items. Id. at 3–5. Rather, Petitioner argues, Figures 5
`and 7 show the mapping of descriptors, not content items. Tr. 7:5–26.
`Petitioner argues that Patent Owner’s expert, Dr. Kerschberg, admitted that
`Figure 5 does not show content items. Pet. Reply 3. Petitioner also argues
`that Dr. Kerschberg testified that Figure 7 “is not intended to show [selecting
`and presenting a first of the subsets of content items].” Id. (quoting
`Ex. 1007, 33:10–23). Petitioner also points out that the ’696 patent
`specification does not mention or define specifically “direct mapping,” as
`this term was added to the claims by amendment. Tr. 9:6–7.
`Moreover, at oral argument, Patent Owner’s counsel admitted that the
`search results in Figure 8-B of the ’696 patent showed “representations of
`content items,” not the content items themselves. Tr. 29:15–26. Patent
`owner’s counsel agreed that the search results provided to the user were in
`the form of language and were not the actual content items. Id. at 33:6–19.
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`Patent Owner’s counsel also conceded he was “not really sure” how one
`could map strings of overloaded keys to content items without using
`descriptors. Id. at 36:9–15.
`As we explained in our Decision on Institution, we believe the key to
`understanding claim 1 lies in understanding what it means by “associating . .
`. content items with . . . overloaded keys . . . so that the . . . content items are
`directly mapped to the corresponding strings of one or more overloaded
`keys.” Dec. Inst. 9 (quoting Ex. 1001, 7:63–67). The ’696 patent provides
`an explanation of what it means by “associating.” The ’696 patent explains,
`“[t]he search query is directed at identifying an item from a set of [content]
`items. Each of the [content] items has one or more associated descriptors.
`The descriptors can include words in the name of the [content] item or other
`information relating to the [content] item.” Ex. 1001, 3:5–8 (emphasis
`added). The ’696 patent goes on to explain that, “[t]he system dynamically
`identifies a group of one or more [content] items from the set of [content]
`items having one or more descriptors matching the search query as the user
`enters each character of the search query.” Id. at 3:19–22 (emphasis added).
`The ’696 patent thus makes clear that it is the descriptors of the content
`items that directly match the search query, and not the content items
`themselves that directly match the search query as Patent Owner argues.
`Accordingly, based on the complete record, in this final decision, we
`adopt our preliminary construction of “direct mapping” to mean “matching
`each alphanumeric character of a descriptor identifying a content item with
`its corresponding numeric key equivalent on an overloaded keypad.”
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`B. Level of Ordinary Skill in the Art
`Petitioner argues a person having ordinary skill in the art at the time
`of the alleged invention would have had at least a bachelor’s degree in
`computer science and at least two years of experience in the field of search-
`query processing, designing, constructing, and/or testing systems that utilize
`data and/or information search techniques. Pet. 19 (citing Ex. 1006 ¶¶ 40–
`45).
`
`Patent Owner argues a person of ordinary skill in the art would have
`had a bachelor’s degree in computer science and two years of experience in
`the field of search-query processing with particular experience analyzing,
`constructing and testing systems that utilize data and/or information search
`techniques. PO Resp. 8 (citing Ex. 2009 ¶¶ 16–17).
`The parties essentially agree on the level of ordinary skill in the art.
`We, therefore, find that a person of ordinary skill in the art in the field of the
`’685 patent is a person who has a bachelor’s degree in computer science and
`at least two years of experience in the field of search-query processing, with
`experience analyzing, designing, constructing, and/or testing systems that
`utilize data and/or information search techniques.
`
`C. Prior Art References and Alleged Grounds of Unpatentability
`Petitioner relies upon the following references:
`(1) U.S. Patent Application Publication No. US 2004/0133564 A1,
`published July 8, 2004 (“Gross”) (Ex. 1003);
`(2) U.S. Patent No. 6,529,903 B2, issued March 4, 2003 (“Smith”)
`(Ex. 1004); and
`(3) U.S. Patent No. 8,051,450 B2, filed October 16, 2003; issued
`November 1, 2011 (“Robarts”) (Ex. 1005).
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`Petitioner asserts the following grounds of unpatentability:
`Ground 1: Claims 1–10, 12–24, and 26–31 are unpatentable under 35
`U.S.C. § 103(a) as obvious over the combination of Gross and Smith.
`Pet. 35–58.
`Ground 2: Claims 11 and 25 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the combination of Gross, Smith and Robarts.
`Pet. 58–60.1
`
`D. Overview of Prior Art References
`1. Gross (Ex. 1003)
`Gross pertains to incremental searching a variety of search targets,
`such as digital files, emails, email attachments, Web pages, databases, and
`the like. Ex. 1003 ¶ 10. Gross teaches generating indexes that contain
`content information and attribute information corresponding to the search
`targets. Id. ¶ 11. The index includes a data structure that associates
`character strings found with a file or document with the search targets. Id.
`¶¶ 40, 46. The search is performed incrementally so that the results (i.e., the
`identification of the corresponding search targets) are provided or narrowed
`substantially, immediately after each character in a search string is entered
`by a user. Id. ¶ 10.
`
`
`1 The Petition also asserted a third ground of unpatentability on which we
`declined to institute—that claims 1–31 were unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the combination of Gross and Robarts. Pet. 60–87.
`Subsequent to the Supreme Court’s decision in SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348, 1359–60 (2018), we issued an Order (Paper 32) that the
`parties may file a request for rehearing after the final written decision in this
`case to request supplemental briefing, discovery, and/or oral argument on
`ground 3.
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`Figure 2B of Gross is set out below.
`
`
`Figure 2B, shown above, illustrates an exemplary search lookup
`operation in Gross. At state 202B one or more search characters or strings
`are received. Ex. 1003 ¶ 48. At state 204B the character or character strings
`are located in the word file, which is part of the fixed index. Id. ¶¶ 46, 48.
`At state 206B the pointer or pointers for the character or character strings in
`the occur-offsets file are located. Id. At state 208B document occurrence
`information is read from the occur file using the located pointers. Id. The
`occur-offsets file and occur file are also part of the fixed index. Id. ¶ 46. At
`state 210B the search results are presented to the user. Id. ¶ 48. The search
`results are displayed in the list pane or area, and the view area or pane
`displays the contents of the first item or a selected item from the list area.
`Id.
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`
`Figure 2B thus illustrates the search lookup operation in Gross. Gross
`also describes that
`[i]n one optional embodiment, the index stores
`“prefix” entries, which further enhances the speed
`of incremental filtering or searching. For example,
`in addition to bare or complete words, such as
`“dog,” common prefixes, such as “d” or “do”, are
`stored as well. The “d” prefix entry contains
`information indicating which documents or files
`contain a word or character string starting with “d”.
`By preparing this information during indexing, the
`response for the first letter or two of a filtering or
`search operation is greatly enhanced as compared to
`a standard inverted index, which would have to
`locate thousands of matches at the time of receiving
`the user query, thereby resulting in slow filtering
`operations.
`
`
`Id. ¶ 51.
`Gross also describes a “sort” file provided for each attribute column.
`The sort files are cached sort orders for the documents or files in the fixed
`index, when sorted by that column. Id. ¶ 52. The user can optionally
`specify that a particular attribute is to be used as a default sort key when
`presenting a document list. Id. Thus, for example, the user can specify that,
`as a default sort for email, emails should be automatically sorted and ordered
`according to date/time received. Id. In this example, the precomputed
`default sort list, also referred to as a master sort list, would then be sorted
`according to date/time, and the master sort list would be almost instantly
`presented with the pre-computed sort list when the user clicks on the email
`tab. Id.
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`Gross explains that its user terminal 104 can be a
`computer-networkable wireless phone. Id. ¶ 60. Petitioner concedes,
`however, that Gross does not disclose explicitly an overloaded keypad
`environment for indexing and searching. Pet. 23.
`2. Smith (Ex. 1004)
`Smith relates to providing search results in response to an ambiguous
`search query provided by a user. Ex. 1004, 1:17–18. Smith explains that
`devices such as wireless telephones typically have a data input interface
`(e.g., a keypad) wherein a particular action by the user (e.g., pressing a key)
`may correspond to more than one alphanumeric character. Such a keypad is
`illustrated below in Figure 5B of Smith.
`
`
`
`
`
`Figure 5B of Smith shows an alphanumeric keypad. Figure 5A of
`Smith, set out below, illustrates a technique for providing search results in
`response to an ambiguous search query from such a keypad.
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`Figure 5A of Smith begins with generating an alphanumeric index
`(stage 510) from terms associated with search targets, such as documents.
`Ex. 1004, 5:1–2. Smith explains that such documents could contain other
`types of information for indexing in addition to alphanumeric strings, such
`as phonetic or audiovisual information. Id. at 4:29–31, 5:63–6:3. The
`alphanumeric terms are translated into numbers using mapping information
`(stage 520) corresponding to the keys on a telephone handset. Id. at 4:59–
`5:7. A numeric index is then generated (stage 530) that maps the numbers of
`the keypad to the information contained in the alphanumeric index. Id. at
`5:20–22. When a numeric query is received 540 from the user’s keypad, a
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`comparison is made between the numeric query and the numeric index
`(stage 550). Id. at 5:33–35. Search results are then generated based on this
`comparison (stage 560), which are then provided to the user 570. Id. at
`5:36–43.
`3. Robarts (Ex. 1005)
`Robarts provides an interactive television network with an electronic
`program guide (EPG) that facilitates both simple and complex searches.
`Ex. 1005, Abstract; 1:13–16. Robarts discloses a system for presenting a list
`of choices of television programming based upon entry of characters from a
`remote control handset. Id. at 4:37–55. For example, Robarts describes
`receiving entry of characters via a keypad, where the keys represent both
`numbers and letters, and incrementally displaying results based on the
`entered characters. Id. at 4:46–55, 19:11–20.
`Robarts also describes associating program and network names with
`identification numbers via mapping prior to a search. Id. at 18:66–19:9.
`Robarts also shows examples of query results provided in an ordered list. Id.
`at 18:1–56.
`
`E. Obviousness Over Gross and Smith
`Petitioner contends that claims 1–10, 12–24, and 26–31 of the ’696
`patent would have been obvious over the combined teachings of Gross and
`Smith. Pet. 35–58. Claims 1 and 15 are independent and substantially
`similar. Claim 1 is illustrative.
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`1. Independent Claims 1 and 15
`a. “associating subsets of content items with
`corresponding strings . . . ;”
`With respect to the recited limitation “associating subsets of content
`items with corresponding strings of one or more overloaded keys of a
`keypad so that the subsets of content items are directly mapped to the
`corresponding strings of one or more overloaded keys by a direct mapping
`of . . . alphabetical and/or numerical symbols,” Petitioner relies on Gross’
`teaching of an index engine that indexes emails and files and stores the
`indexes in a data repository. Pet. 36 (citing Ex. 1003 ¶ 38). Petitioner
`asserts that Gross’ index engine creates an index that includes a data
`structure that associates files, documents, and the like with character strings.
`Id. As Gross explains, “for each word or character string found with a file or
`document, the index stores which fields of which documents or files contain
`that word or character string.” Ex. 1003 ¶ 40. In addition, Gross teaches
`that, in one embodiment,
`the index stores “prefix” entries, which further
`enhances the speed of incremental filtering or
`searching. For example, in addition to bare or
`complete words, such as “dog,” common prefixes,
`such as “d” or “do”, are stored as well. The “d”
`prefix entry contains information indicating which
`documents or files contain a word or character
`string starting with “d”. By preparing
`this
`information during indexing, the response for the
`first letter or two of a filtering or search operation is
`greatly enhanced . . . .
`
`Ex. 1003 ¶ 51.
`Although Petitioner concedes that Gross does not disclose explicitly
`“overloaded keys of a keypad,” Petitioner relies on Smith’s teaching of a
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`numeric index in an overloaded keypad environment to provide search
`results in response to an ambiguous search query. Pet. 38–39. Petitioner
`points to Smith’s translating alphanumeric terms in an index into their
`numeric equivalents using mapping information corresponding to a standard
`(overloaded) telephone handset. Id. (citing Ex. 1004, 5:5–19). In this way,
`Petitioner argues, once such words (i.e., alphanumeric terms) have been
`indexed in the combined Gross/Smith system, content items are directly
`mapped to corresponding strings of overloaded keys. Id. at 39 (citing
`Ex. 1006 ¶¶ 90–91). Petitioner argues it would have been obvious to
`combine Gross’ alphanumeric prefix indexing system on a wireless phone
`with Smith’s overloaded keypad environment with numeric index for the
`purpose of providing relevant search results in response to an ambiguous
`search query. Id. (citing Ex. 1004, 2:1–3; Ex. 1006 ¶¶ 90–94).
`Patent Owner argues that the proposed combination of Gross and
`Smith does not directly map content items to strings of overloaded keys. PO
`Resp. 37–43. Patent Owner argues that in Gross, search strings are only
`indirectly mapped to the underlying content items. Id. at 38. Patent Owner
`argues that Petitioner’s proposed combination of Gross with Smith does not
`solve the problem because Petitioner does not explain how to replace the
`index of Gross with the Smith index and still have a working, operable
`system. Id. at 39.
`Patent Owner’s argument, however, is inconsistent with our
`construction of “direct mapping,” which is “matching each alphanumeric
`character of a descriptor identifying a content item with its corresponding
`numeric key equivalent on an overloaded keypad.” Moreover, Gross
`explains that a fixed index as a single file can be used to match attributes as
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`search criteria to target files. See Ex. 1003 ¶ 45; Ex. 1009 ¶¶ 24–25. Smith
`also describes using a single index to match search characters from a user’s
`input device with target documents without the need for translations. See
`Ex. 1004, 6:6–14; Ex. 1006 ¶ 91; Ex. 1009 ¶ 28. Smith also shows a
`numeric index that maps content items such as documents directly to
`corresponding strings of one or more overloaded keys. See Ex. 1004,
`Fig. 5C; Ex. 1006 ¶ 91.
`Patent Owner also argues that the claims “require mapping content
`items directly to corresponding prefix strings made up of overloaded keys.
`This is evidenced by the requirement that the claimed system select and
`present results that are ‘associated with the first overloaded key based on the
`direct mapping.’” PO Resp. 43. Patent Owner argues that Smith’s index
`“does not include prefixes,” and thus “there is no disclosure in Smith of
`‘enabling even a single character entered by the user to retrieve relevant
`results.’” Id. at 44; see also id. at 48. Patent Owner argues there is no
`evidence of record demonstrating how the proposed Gross/Smith
`combination would have performed an incremental search. PO Resp. 44.
`Thus, Patent Owner argues, Gross’ system using Smith’s index would have
`been incapable of meeting the claim limitations “because Gross would be
`searching for single-character and two-character prefixes in an index that
`does not contain such prefixes.” Id. at 47; see also id. at 48.
`We disagree with Patent Owner. First, Patent Owner is arguing the
`Gross and Smith references separately, as opposed to arguing against the
`combined teachings of Gross and Smith. See In re Keller, 642 F.2d 413, 426
`(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references
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`individually where, as here, the rejections are based on combinations of
`references.”).
`Here, Petitioner is combining Gross’ teaching of an index that
`includes a data structure associating files, documents, and the like with
`character strings to provide for incremental searching and presentation of
`results substantially immediately after each character in a search string is
`entered by a user, with Smith’s teaching of a numeric index to provide
`search results in response to an ambiguous search query by translating
`alphanumeric terms in an index into their numeric equivalents using
`mapping information corresponding to a standard telephone handset. See
`Pet. 36–39.
`Second, the ’696 patent claims do not recite the term “prefix” nor are
`“prefixes” discussed in the specification. Rather, claim 1 recites
`“associating subsets of content items with corresponding strings of one or
`more overloaded keys of a keypad so that the subsets of content items are
`directly mapped to the corresponding strings” and “selecting and presenting .
`. . the subsets of content items that is associated with the . . . overloaded key
`based on the direct mapping.” Ex. 1001, 7:63–66, 8:8–10. Thus, Patent
`Owner’s arguments that the claims “require mapping content items directly
`to corresponding prefix strings made up of overloaded keys,” and Smith’s
`index “does not include prefixes,” are flawed substantively. See PO Resp.
`43–44 (emphasis added). Moreover, Petitioner relies on Gross, not Smith, to
`teach incremental searching (i.e., the use of individual characters or prefixes
`of search terms to return results). See, e.g., Pet. 36–37 (citing Ex. 1003
`¶ 51). Thus, Patent Owner’s criticism that Smith does not include prefixes is
`misplaced.
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`Furthermore, Smith recognizes that a single alphanumeric character
`term can correspond to a particular location document. Figure 4A of Smith,
`shown below, illustrates such an alphanumeric index.
`
`
`Smith’s Figure 4A, shown above, provides an example of an index
`where an individual alphanumeric term “3” corresponds to a particular
`location, Document 1. Ex. 1004, 4:32–40. Smith also explains that the
`alphanumeric terms in an index are translated into their numeric equivalents
`using mapping information corresponding to a standard telephone
`(overloaded) handset. Id. at 5:4–7. For example, Smith explains, the
`alphanumeric term “car” is translated by mapping separately the letter “c” to
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`the number “2,” the letter “a” to the number “2,” and mapping the letter “r”
`to the number “7.” Id. at 5:10–13. Figure 5A of Smith shows that after
`receiving a numeric query (540), and comparing the numeric query to the
`numeric index (550), a search result is generated based on the comparison
`(560). Ex. 1004, Fig. 5A, 4:63–65. These teachings of Smith, at the very
`least, suggest to a person of ordinary skill in the art that Smith’s indexing
`system is capable of operating using incremental (
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