`U.S. PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`SPRING VENTURES LTD.
`Patent Owner
`____________
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`____________
`
`Record of Oral Hearing
`Held: October 18, 2018
`____________
`
`Before MICHAEL R. ZECHER, MINN CHUNG, and SCOTT E. BAIN,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SCOTT MCKEOWN, ESQUIRE
`Ropes & Gray LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20005-6807
`
`KENYA CHOW, ESQUIRE
`Ropes & Gray LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`ASIM M. BHANSALI, ESQUIRE
`Kwun, Bhansali, Lazarus
`555 Montgomery Street
`Suite 750
`San Francisco, CA 94111
`
`ANTONIO PAPAGEORGIOU, ESQUIRE
`SETH H. OSTROW, ESQUIRE
`Meister Seelig & Fein, LLP
`125 Park Avenue
`7th Floor
`New York, NY 10017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Friday, October 18,
`
`2018, commencing at 1:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`2
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE BAIN: Please be seated. This is case IPR 2017-01653.
`Judge Chung is remote. Judge Zecher is on my right. I am Judge Bain.
`Counsel, would you like to introduce yourselves?
`
`MR. MCKEOWN: Scott McKeown, Ropes and Gray, Your Honor,
`on behalf of Google. I am joined today by Kenya Chow also of Ropes and
`Gray and also at the counsel table is Asim Bhansali of Kwun, Bhansali and
`Lazarus. And client representative of Google, Jimi Sherwood is also here as
`well.
`
`JUDGE BAIN: Okay. Mr. McKeown, I hate to ask you to do it again
`but Mr. Chung can't hear you or Judge Chung can't hear you unless you turn
`on the mic.
`
`MR. MCKEOWN: Okay.
`
`JUDGE BAIN: So. Same with Patent Owner.
`
`MR. MCKEOWN: No problem. On behalf of petitioner, Google,
`Scott McKeown of Ropes and Gray. I’m joined today by Kenya Chow also
`of Ropes and Gray and at the counsel table Asim Bhansali of Kwan,
`Bhansali and Lazareth and I’m joined today by the Google representative,
`Jim Sherwood.
`
`JUDGE BAIN: Thank you.
`
`MR. OSTROW: Good afternoon, Your Honors. This is Seth Ostrow
`with the firm of Meister, Seelig and Fein representing the Patent Owner,
`Spring Ventures. I’m joined today by my colleague, back up counsel
`Antonio Papageorgiou who will also be doing some of the arguing on behalf
`of Spring Ventures and also with us today is Sarah Pfeiffer, an attorney with
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`3
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`our firm as well.
`
`JUDGE BAIN: Thank you. So each party has an hour of time in the
`hearing. Petitioner, if you would like to proceed please do so and let us
`know if you would like to reserve any time for rebuttal.
`
`MR. MCKEOWN: Good afternoon. I have two copies of the
`demonstratives if anyone would like them and I may approach?
`
`JUDGE BAIN: Yes, please. Thank you.
`
`MR. MCKEOWN: I will reserve 15 minutes for rebuttal, Your
`Honor.
`
`JUDGE BAIN: You may proceed.
`
`MR. MCKEOWN: Okay. Good afternoon. Again, Scott McKeown
`of Ropes and Gray on behalf of Google. I would like to start today just by
`talking a little bit about the ’094 patent itself. As the Board pointed out in its
`decision, page 4 of the decision institute, what this patent is about is
`providing a translation service for the Internet. So the idea here was that in
`the early days of the Internet and even today, the vast majority of the URL's
`are in English and navigating to those URL's is problematic for those that
`don’t speak English or for those that are using keyboards that are in a non-
`Latin character set. So the ’094 patent set out to providing translation
`service to solve that problem and then once that translation was done, to
`provide the top hit to the browser without additional user intervention.
`During the prosecution, it was made clear that that idea was not new.
`So the Breese reference showed that same top hit translation. The Osaku
`reference showed that same top hit translation in the context of using the
`browser address field.
`So what happened during the prosecution is some amendments were
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`4
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`introduced. And the amendments that were introduced were operably
`linking the translator entity to the translator input window and also enabling
`the translator input window to the overlay on the browser. So that was the
`amendment submitted during prosecution. And next we saw a notice of
`allowance where the Examiner said well, the overlaying window, that’s
`known and here is an additional reference Busey that shows exactly that.
`But what the Examiner couldn’t locate in the art was this concept of
`operably linking the translator window to a translator entity. So
`consequently that was the reason that the patent issued.
`And so now we are here in this IPR record and we know that top hit
`translation services were known. We also know that providing overlays
`were not. So it’s not surprising that in the IPR record, we also are showing
`that a top hit translation service is known, that’s Belfiore. And what’s
`missing is -- so Belfiore is describing there is a browser, you can go to that
`address field, you can type in a non URL and you get the top hit that
`corresponds to that URL as determined by a translation entity.
`So what is missing from the claims then is this concept of the window
`not being the URL address entry field. So what we have cited for that is the
`EchoSearch prior art. So EchoSearch was a standalone application that was
`designed for use with a browser that provides advance search features. For
`example a number of drop down menus, you could do Boolean searches, you
`could do multiples reach engine searches. You could select among the
`search engines and this was a product that was designed for use with a
`browser. And one of those drop down menus was selecting the number of
`hits results that you wanted. So what we are left with here and what has
`been argued in the briefing is that well, you know, we have demonstrated
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`5
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`that there is this window that is operably linked to a translator entity. We
`know from this record and the earlier record the translator entities --
`
`JUDGE BAIN: Counsel, could you talk a little bit more about the
`operative linking portion?
`
`MR. MCKEOWN: Sure.
`
`JUDGE BAIN: I mean, I think we are familiar with the prior art
`references and sort of the top level description of what they do but can you
`talk a little bit more about the --
`
`MR. MCKEOWN: Sure, I’m happy to jump into that next. But
`before I transition to that, what we are left talking about here in the vast
`majority of this briefing is the concept overlaying windows. That is the
`point of distinction that is being argued here is that well, this overlaying of
`windows is novel but the specification relies on windows, that can't be
`excluded from the claims and windows predates this patent by several
`decades.
`But let me get into your question, Judge Bain, on operably linking. So
`if we could jump to, let's see --
`
`JUDGE ZECHER: Now when you say operatively linking you mean
`the operatively coupled --
`
`MR. MCKEOWN: Coupled.
`
`
`JUDGE ZECHER: -- links operate in the claim?
`
`MR. MCKEOWN: Yes, sorry. If I’m using operably coupling, this is
`what is actually cited in the claim.
`
`JUDGE ZECHER: Would you say in a general sense just coupled to,
`you know, without any sort of qualifier ahead of it would be indirect or
`direct, right? It would be either or. So what does operably add to it?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`6
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`MR. MCKEOWN: I don’t know that operably adds anything other
`
`than its clarifying that it is a functional coupling so you are able to perform
`operations through the coupling.
`
`JUDGE BAIN: Now we are talking about software.
`
`MR. MCKEOWN: That’s correct.
`
`JUDGE BAIN: So one software module is coupled to another? I
`mean, does that simply mean that they interact and one operates --
`
`MR. MCKEOWN: Well, they have a mechanism of communicating.
`But let’s get into and maybe it's best to just jump to Patent Owner’s Slide 20
`where operatively coupled is being argued. Keep going.
`So in the briefing as you point out, Your Honor, there is this argument
`about operatively coupling and what it really distills down to is the argument
`that the Patent Owner is advancing is that the translator entity has to be a
`separate program, it has to be a separate application because a browser can't
`talk to itself is essentially the argument. But of course we have to look at the
`claim language itself and what is claimed is a translator entity. And an
`entity as all the experts agree is synonymous with a module. There are
`numerous computer software definitions in the record.
`So they didn’t claim an application, they didn’t claim a separate
`program, at least that’s the original claims, we can talk about the amended
`claim in a minute. And so they have made this argument with respect to, the
`browser cannot operably be coupled to itself or the browser cannot receive
`communications, so it is really the same argument and it hinges on this
`operatively coupled language and for support of their definition, their, the
`next slide which is Patent Owner’s Slide 17 points to this language on the
`margin there on the left hand side that sort of the conversation bubble there.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`7
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`
`They’ve picked, they plucked the sentence out of, I believe it is
`column six, and they say, well, it says software unit. So therefore I guess
`unit must somehow denote some kind of separation, but first of all, this is a
`statement out of the specification, it’s a preferred embodiment. It’s not in
`the claims but I think it is informative to read actually what follows after this
`blurb, and not only what follows after but right after the bold and underlined
`language, it’s a software unit that is integrated with the browser.
`So we already know that this software unit is part and parcel of the
`browser and if that weren’t clear enough, then let’s look at a little more
`detail in what column six is providing.
`
`JUDGE BAIN: Well, it’s not part and parcel of the browser, right? If
`it's for integrating with the browser --
`
`MR. MCKEOWN: Well, it becomes, Your Honor. And I think it is
`made clear so looking at line 28 so that’s that, you know, there is the full
`quote there and there is also providing in accordance with the preferred
`embodiment of the invention, a software unit for integrating with an existing
`browser. Comprising a first module adapted to be integrated with said
`browser. So we are talking about modules --
`JUDGE BAIN: So like a plug-in for example?
`MR. MCKEOWN: A plug-in might be an example of a module but
`what’s described later on in the specification at Column 9 is it is maybe a
`little more of a robust detail what this module could be, so the next slide if
`we can get column 9 up and this is a portion for the specification that has
`been briefed fairly substantially in the record. I think it is yes, down there.
`So starting at about line 13 I think. So in accordance with one
`preferred embodiment of the invention the translator is integrated as a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`8
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`module of the browser, alternatively or additionally a connection to the
`translator is patched into the browser. So these are segments of code, they're
`modules of code. They, you know, patch into a browser. Obviously when
`there is an update to a browser you get a code patch and you download it and
`it becomes part of your browser.
`So the problem with this claim definition aside from the fact that it is
`just not recited in the claims is that the specification makes clear that it is the
`exact opposite. There are modules that are incorporated into this code and if
`we could go back actually to the spec --
`JUDGE BAIN: Could I -- sorry, can we go back to the passage in the
`spec that you just quoted from for a moment? It’s not that the translator gets
`patched into the browser according to the spec, it’s a connection to the
`translator, and what’s the difference? Are you arguing those two things?
`MR. MCKEOWN: You’re referring -- so in accordance --
`JUDGE BAIN: The alternative embodiment. Alternatively or
`additionally the connection to the translator is patched into the browser.
`MR. MCKEOWN: Right. Well, so the first sentence is talking about
`full integration. The second sentence is saying alternatively you might have
`a different interpretation of that --
`JUDGE BAIN: A reference code or something?
`MR. MCKEOWN: -- of that integration. So for example further
`down it talks about hooks in the browser so you may have it in a sort of
`calling function so you’re communicating and utilizing functions of the
`browser through the hooks in the browser, through those object linking et
`cetera.
`JUDGE BAIN: To be clear, we are talking about alternative
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`9
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`embodiments here, right?
`MR. MCKEOWN: Well, it says alternatively or additionally in
`accordance -- so the first sentence in accordance with one preferred
`embodiment is the integration and then later it’s saying alternatively or
`additionally as part of -- presumably as part of that preferred embodiment.
`So the specification makes clear that the module can be a component
`of the browser, it need not be a separate program. And there is actually
`another citation in column 6 or, excuse me, this is column -- back at column
`12 of line 49 or thereabouts. So right there, yes.
`Alternatively we are talking about the translator here could be
`integrated into the operating system of the user’s computer. So why is that
`relevant? Well, that’s more, probably more relevant to this argument that
`the overlay has to be separate and apart from Windows. What is described
`in the specification in support of claims is the Windows operating system.
`So if we can integrate the translator into the Windows operating systems as a
`component of that operating system I’m not sure how we can get away from
`the fact that Windows mechanisms are used to enable the overlays.
`JUDGE ZECHER: Can I get you a little off track here and this
`probably goes more to the amendment than anything else, particularly the
`112 support, but is there any instance in the spec where it does describe the
`translator as being separate from the browser?
`MR. MCKEOWN: I believe there are, for example if you look right
`above where that highlight is on the screen, in accordance with one preferred
`embodiment of the invention, the translator or portion thereof is embodied as
`an external box. Presumably that would be separate but I don’t think anyone
`is arguing that the claims cover an external box. The claim as has been
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`10
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`brought out in the record covers both local and remote translators so there
`has been no argument that specific embodiments are excluded, so there is a
`number of features here in terms of preferred embodiments that you could
`pluck and argue are part of the claims but that’s just not how a claim
`construction works here. The name of the game here is claim and that is
`what we need to focus on.
`None of these embodiments are excluded and why we would pick one
`sentence out of this column without also arguing that the claims are also
`directed to an external box or the translator needs to be in connection with
`other devices for receiving updates. These are all listed as preferred
`embodiments and there is no rhyme or reason as to why we would pick one
`over another, aside from trying to distinguish over the art of record here. So
`that’s the issue with operatively coupled.
`The specification clearly covers code modules, code patches. There is
`no way to exclude those aspects of the claim from the broad language that is
`used. Had the Patent Owner wanted to exclude these embodiments, it could
`have done exactly what it has done in this motion to amend which is to
`change the language to require that and then we will talk about that. But
`that’s the issue as to operably linked.
`So let’s go back to this, the other remain argument that is in the briefs
`which is focuses around the word enabling, and maybe it is easier if we start
`with the actual claim which I believe is Petitioner’s Slide 3. So the first
`thing you will notice about this claim is -- perhaps not the first thing but
`something I will highlight is that the word enabling is used three times.
`You’ll see it in the preamble, a method of www page retrieval, retrieval for
`enabling a user to retrieve a desired webpage and just for, just so the record
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`11
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`is clear, we pointed out in the Petition the desired webpage is indefinite. We
`are accepting for purpose of this argument that desired webpage means a top
`hit but we are not in any way changing our opinion as to that language being
`indefinite.
`But getting back to the enabling point, so enabling is in the preamble,
`enabling is in element A. Enabling a translator input window to be overlaid
`on a portion of the browser and then we see it in B, enabling a translator
`entity having solved for operable, et cetera. And the argument as to enable
`is specific to A. We have got three instances of enabling and the argument
`from the Patent Owner is basically well, enabling means something very
`special in A but it doesn’t mean anything special in the preamble or in
`element B, so it might be easiest to look at those arguments on enabling
`which I believe, let's go to Patent Owner’s Slide 10.
`So this is their argument, enabling a translator input window. The
`actual claim language is on the left hand side. Their definition, the rewriting
`of that claim language is on the right hand side and so you will notice a
`couple changes here. Enabling has been replaced with activating. You will
`also notice that line 2 of the Patent Owner’s proposed construction talks
`about a software configuration so they're arguing that this is a function that’s
`specifically activated and has a specific configuration.
`And then finally in that same clause you will see there is a timing
`component of it. So whenever a user is able to enter, none of these features
`of course are in the claim. And again, this is a definition of enabling that is
`advanced as to one instance of the word. The other two instances
`presumably are given the claim meaning of enabling which just means to
`allow which is what the Board pointed out in its decision to institute.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`12
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`
`So where do they come up with this very detailed and narrow
`construction? If we look at Patent Owner’s Slide 11 there is that column 12
`again that has the translator entity being a separate box, it has the translator
`entity being part of the operating system, and they say well, you know, here
`is this sentence here that uses the word activate and so therefore that is what
`the claim means. But as we have already discussed, just because it is in the
`preferred embodiment doesn’t mean we can incorporate it into the claim,
`and these claims were drafted to cover all of the embodiments of the
`specification. There is no reason to limit it to just that sentence.
`And again, as the same section of that specification calls out a number
`of limitations to the preferred embodiment, well, why aren’t the claims
`construed to cover a translator that is an external box? That's a preferred
`embodiment. Why are we focusing on this one sentence? There is no
`explanation for that?
`JUDGE BAIN: Well, Counsel, can we move to the next limitation on
`the translator entity operatively coupled to the browser and to said translator
`input window? You rely on Belfiore for that limitation, right?
`MR. MCKEOWN: Belfiore in combination with EchoSearch.
`JUDGE BAIN: Could you explain precisely where that is in the
`references? That particular reference of those three?
`MR. MCKEOWN: Sure, so just so I’m clear, which aspect of the
`claim language?
`JUDGE BAIN: Well, the translator entity is operatively coupled to
`the browser and to said translator input window and I understand you spoke
`about the translator entity and how that’s described in the spec, but we do
`have three terms there. Translator entity and browser and translator input
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`13
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`window. Where is that in the art?
`MR. MCKEOWN: So we are looking at element B.
`JUDGE BAIN: Correct.
`MR. MCKEOWN: Okay. So Belfiore has a feature called auto
`search as you know and the way that auto search works is that there is one of
`two options. You can get search results automatically when you type in a
`non URL in the address window and you can get a redirect at the top result.
`So the auto search code in conjunction with the search engine is our
`translator engine. Our translator input window is the EchoSearch window.
`And so in combination the EchoSearch window because a user is
`employing EchoSearch for what is provided for advanced search
`functionality, a user of a browser having the Belfiore top hit result would
`necessarily want to include that in this helper program and this helper
`program, EchoSearch, also has a drop down menu where you can select a
`number of search results that you would want to get.
`JUDGE BAIN: So in other words, the code that’s used to execute the
`auto search function in Belfiore is the translator entity?
`MR. MCKEOWN: In combination with the search engine which is
`what is explained in the Petition. I can get you a page cite for that if you
`would like.
`JUDGE BAIN: The search engine as opposed to the browser software
`itself?
`MR. MCKEOWN: It’s the -- it’s both in combination. It’s the auto
`search code plus the search engine that are working together as, you know,
`as the translator entity.
`JUDGE BAIN: Okay. Then the search engine of Belfiore or the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`14
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`search engine of Koren?
`MR. MCKEOWN: Well, neither one specifies a particular search
`engine so, you know, when you use the auto search feature Belfiore you are
`calling a search engine, you may call more than one search engine. So it’s
`that cooperation, it’s that call to that search engine because the search engine
`is doing the translation and providing the result.
`JUDGE BAIN: Okay. And then you rely on Koren for the translator
`input window overlaid on the browser window, and how is that operatively
`coupled to the translator entity?
`MR. MCKEOWN: Well, in the modification or in the, excuse me, in
`the proposed combination the way the EchoSearch would work is you would
`use the input window of EchoSearch using the auto search functionality of
`Belfiore. So that would be the operable, you know, the operably linking to
`that browser.
`JUDGE BAIN: So the primary reference is Belfiore or Koren? Are
`you taking Koren's window and using that in Belfiore or are you taking the
`Koren system and just incorporating the auto search of Belfiore?
`MR. MCKEOWN: Well, we're -- what we are saying so a user of
`Belfiore, so you are using the Belfiore browser, it has this top hit feature.
`You now have this other software that you are using that provides advance
`search features. It has a drop down menu to limit the number of results that
`you would want back and what we are saying is someone that is using
`Belfiore that likes that top hit feature would want to modify EchoSearch to
`utilize the top hit feature.
`JUDGE BAIN: Okay. So it sounds like then you are incorporating
`that feature of Belfiore into Koren? That’s the combination?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`15
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`
`MR. MCKEOWN: Koren is utilizing that feature. I don’t know that
`in the ground we have called for any, you know, specific incorporation of it
`and EchoSearch would use the auto search feature plus, you know, the
`search engines to provide the translation.
`JUDGE BAIN: Right. Yes, I don’t mean to suggest there is a
`physical incorporation, I should have phrased that we are using the teaching
`of Belfiore in Koren's system.
`JUDGE ZECHER: Can we go from there to the rationale to combine?
`Because I’m looking at your Petition on page it looks like it is 86 where you
`start to hit on that and can you -- can you kind of elaborate to us? That
`seems to be a point of contention here. What I can gather here you’re
`somewhat relying on granting the teaching suggestion or motivation is one
`aspect of what you could do under KSR, basically saying that you are
`incorporating this EchoSearch functionality because it provides search and
`multi (inaudible) simultaneously. Is that the sole rationale or is that just kind
`of --
`
`MR. MCKEOWN: No. So what we have repeatedly referred to as
`EchoSearch is it’s an advanced search engine interface so that interface has a
`number of features, so it has the ability to search in a Boolean fashion. You
`can select search engines, particular search engines. You can also search
`multiple search engines so the motivation is a little bit of well, Echo was
`designed for use with a browser, it was designed to expand the feature set.
`So someone using that browser would use EchoSearch because that it is
`what it is designed for.
`But what would be missing is well, gee, I have this top hit feature in
`my browser. It would be nice to have it in EchoSearch too especially since
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`16
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`it has a drop down menu to select the number of results and I might want
`one result just like I’m used to using in Belfiore's and that’s the motivation.
`JUDGE ZECHER: So just to be clear, EchoSearch is just going to
`provide us with a list of hits, right? It’s not going to give us a single hit
`which is what we get from Belfiore.
`MR. MCKEOWN: Well, as -- right. In EchoSearch alone would not
`give the top hit, that’s correct.
`JUDGE ZECHER: Okay. But that, you're relying on the
`functionality from Belfiore to get that?
`MR. MCKEOWN: That’s correct.
`JUDGE ZECHER: Okay.
`MR. MCKEOWN: And maybe it is helpful to, you know, while we
`are talking about EchoSearch to look at the Patent Owner’s exhibit, so this is
`an exhibit they submitted with their Patent Owner response as 2045. And so
`this explains, you know, at the top there, this is an advanced search dialogue
`box and it shows in a bit more clarity towards the bottom there so there is
`the window which is the typical Microsoft window style window and then
`there is the data field in there and where, you know, we can do I think it says
`Magellan plus Linus that would be your Boolean search and then there is
`further drop down menus where you can select which search engines you are
`using.
`You can also search use net groups when you hit the scope of the drop
`down menu and so the next page of this reference shows the interface for
`selecting among the various search engines. So this is an advance search
`interface, this is why people wanted EchoSearch. And again, there is no
`dispute that this is an advanced search interface and it provides these
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`17
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`features. This comes straight from the Patent Owner’s own exhibit.
`So EchoSearch provided an expanded capability compared to
`Belfiore. Belfiore didn’t do any of these things. Belfiore used that address
`window. So the reason for using EchoSearch together with Belfiore is to
`provide these capabilities and it does also provide the ability to look at
`multiple search engines at the same time which although Belfiore describes,
`that sort of there is two prongs of the auto search. There is give me the top
`result and then there is do multiple search engines and give me a list. So that
`the two of them are separate and they're not explained as being used
`together. So there is multiple motivations here.
`JUDGE ZECHER: Just so I’m clear, how would you get to the top hit
`or the single hit without any further user interaction? Are you -- I think what
`I can gather from the briefs, your argument that you could set -- change
`some sort of setting in this combined system up front to say rather than give
`me a list --
`MR. MCKEOWN: Right, let’s stay on that.
`JUDGE ZECHER: -- of documents there in that window that you are
`talking about it would be a single hit.
`MR. MCKEOWN: Right. So the way it would work is you would go
`to this menu, you would type in your non URL in the top field. Down the
`bottom you would select one and then you would click search.
`JUDGE ZECHER: And so we are looking at that. Is there any
`indication that EchoSearch would actually just give us one there or is this --
`it says 30. Do we know what are their numbers? It’s always talking about
`multiples or?
`MR. MCKEOWN: Koren talks about the default was set to 10.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`18
`
`
`
`Appeal IPR 2017-01653
`Patent 8,661,094 B2
`
`
`JUDGE ZECHER: Okay.
`MR. MCKEOWN: So there are different settings. There is no
`description of one but again --
`JUDGE ZECHER: But it doesn’t specifically exclude them either?
`MR. MCKEOWN: Exactly. And what it teaches is a range of
`selections.
`JUDGE ZECHER: Okay.
`MR. MCKEOWN: And Belfiore teaches you might want one and if
`you are using that browser and you are using this additional software, you
`may not want to lose that functionality that’s between the two. So that’s,
`you know, that’s the motivation.
`JUDGE ZECHER: So EchoSearch you said that the preferred would
`be 10 but obviously you are seeing 30 here.
`MR. MCKEOWN: Well, the default is what’s described in Koren is
`that the default was set to 10.
`JUDGE ZECHER: And was that his kind of suggestion?
`MR. MCKEOWN: No, he’s -- well, what he described in the articles
`is that the default was set to 10 and that he found that annoying because he
`had to reset it. So, you know, presumably you could set this to a whole
`range of different numbers. So that’s, you know, that’s the advanced search
`interface.
`And maybe we can go back to Patent Owner’s Slide 13 to just get
`back to the enabling issue. You know, aside from pointing to that one
`sentence in the specification, they also say well, here is some extrinsic
`evidence and they’ll explain why we would look to extrinsic evidence.
`There is nothing confusing about the specification but here is a dictionary
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`
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
