Trials@uspto.gov
`571-272-7822
`
`
` Paper 33
` Date: December 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHEGG INC., MATCH GROUP, LLC, AND RPX CORPORATION,
`Petitioner,
`
`v.
`
`NETSOC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01165
`Patent 9,978,107 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
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`Patent 9,978,107 B2
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`
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
`For the reasons discussed herein, we determine that Petitioner has shown, by
`a preponderance of the evidence, that claims 1–11 of U.S. Patent
`No. 9,978,107 B2 (Ex. 1001, “the ’107 patent”) are unpatentable.
`
`A. Procedural Background
`Chegg, Inc., Match Group, LLC, and RPX Corporation (collectively,
`“Petitioner”)1 filed a Petition requesting inter partes review of claims 1–11
`(“the challenged claims”) of the ’107 patent pursuant to 35 U.S.C. § 312,
`along with the supporting Declaration of Benjamin Goldberg, Ph.D. Paper 4
`(“Pet.”); Ex. 1004. NETSOC, LLC (“Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 12 (“Prelim. Resp.”). Pursuant to 35 U.S.C.
`§ 314(a), on December 5, 2019, we instituted inter partes review on the
`grounds of:
`Claims Challenged 35 U.S.C. § References
`1–3, 5–8, 10, 11
`103(a)2
`Beaudoin3, Shubov4
`
`
`1 Petitioner identifies IAC/InterActiveCorp, Humor Rainbow, Inc.,
`PlentyOfFish Media, ULC, and Match Group, Inc. as other real parties-in-
`interest. Pet. 1.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, and was effective
`March 16, 2013. Because the ’107 patent’s effective filing date predates the
`AIA’s amendments to § 103, this decision refers to the pre-AIA version of
`§ 103.
`3 US 7,096,193 B1, issued August 22, 2006, claiming priority to Provisional
`Application No. 60/135,522, filed on May 21, 1999. Ex. 1005.
`4 US Pub. No. 2002/0038233 Al, published March 28, 2002. Ex. 1006.
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`4, 9
`
`103(a)
`
`Beaudoin, Shubov, Herz5
`
`Pet. 5; Paper 14 (“Inst. Dec.” or “Dec.”).
`
`Patent Owner filed a Patent Owner Response (“PO Resp.”). Paper 20.
`
`Petitioner filed a Reply (“Pet. Reply”) to the Patent Owner Response. Paper
`22. Patent Owner filed a Sur-Reply (“PO Sur-Reply”). Paper 24.
`An oral hearing was held on September 9, 2020. A transcript of the
`hearing is included in the record. Paper 31 (“Tr.”).
`
`B. Related Proceedings
`
`The parties identify these proceedings involving the ’107 patent:
`NetSoc, LLC v. Match Group, Inc., 2:18-cv-00217 (E.D. Tex.); NetSoc, LLC
`v. Match Group, LLC et al., 3:18-cv-01809 (N.D. Tex.); NetSoc, LLC v.
`Chegg Inc., 1:18-cv-10262 (S.D.N.Y.); NetSoc, LLC v. LinkedIn Corp.,
`1:18-cv-12215 (S.D.N.Y.); NetSoc, LLC v. Quora, Inc., 1:18-cv-12250
`(S.D.N.Y.); and NetSoc, LLC v. Yahoo! Inc., 1:18-cv-12267 (S.D.N.Y.).
`Pet. 1–3; Paper 7, 2. The parties indicate that NetSoc, LLC v. Teladoc
`Health, Inc., 2:18-cv-00542 (E.D. Tex.) involves U.S. Patent No. 7,565,344
`(“the ’344 Patent”), which is related to the ’107 patent. Pet. 2; Paper 7, 2.
`Petitioner and Patent Owner also identify another petition, IPR2019-
`01171 (“the -01171 proceeding”), challenging the patentability of claims 1–
`11 of the ’107 patent. Pet. 1; Paper 7, 3. The final written decision in the
`-01171 proceeding is being issued concurrently with this decision.
`
`C. The ’107 Patent
`
`The ’107 patent is entitled “Method and System for Establishing and
`Using a Social Network to Facilitate People in Life Issues” and issued on
`
`5 US Pub. No. 2004/0019579 Al, published January 29, 2004. Ex. 1007.
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`May 22, 2018 from an application filed on December 18, 2015. Ex. 1001,
`codes (22), (45), (54). The ’107 patent claims priority as a continuation or
`continuation-in-part of several applications, and claims priority to
`provisional application No. 60/499,543, filed on September 3, 2003. Id.,
`codes (60), (63).
`The ’107 patent is directed to “applications and implementations of a
`social network to facilitate individuals to resolve various life issues.” Ex.
`1001, code (57). Under its embodiments, a social network may be
`established and used to assist individuals with issues to be resolved at a
`particular geographic location, including maintaining a list of participants
`who can assist in resolving issues at that location. Id. at 2:17–23. Users
`may submit inquiries to the service, and the service may select which
`participants are best suited to respond to inquiries. Id. at 3:39–41.
`
`The invention of the ’107 patent includes several embodiments, such
`as those depicted in Figures 3 and 4, reproduced below.
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`Figures 3 and 4, above, are implementations of the invention, such as those
`depicted in Figures 1 and 2. Ex. 1001, 1:50–55, 6:46–50, 7:63–82. The
`embodiment shown in Figure 3 may be implemented, in part, in accordance
`with the example below.
`A person may need to relocate to Chicago. The person may be
`in need of a special heart medication. What the person may
`need to know is how much the medication will cost in Chicago,
`and how readily available the new medication is. Under an
`embodiment such as described in FIGS. 1–3, the user may
`access service 110, select “medical category” through UI 212,
`enter an inquiry “I need to check the availability of my heart
`medicine in Chicago, and its price . . .” and then send the
`message. The service 110 will receive the message, locate the
`geographic information (Chicago) and make a selection of who
`should receive the information. In one example, the service 110
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`may send the inquiry to the Chamber of Commerce in Chicago.
`In another example, the service 110 may send the inquiry to one
`or more identified doctors or cardiologists.
`Ex. 1001, 7:44–58 (bolding omitted). Under the embodiment depicted in
`Figure 4, as part of step 410, biographical information about participants is
`maintained, step 420 provides for a user-interface that displays a plurality of
`categories that may be selected, and at step 430, category and selection
`criteria are received from the user. Id. at 8:3–5, 21–23, 26–27. At step 440,
`participants are identified based on the category and selection criteria; in
`step 450, the matching participants are presented to the user; at step 460, the
`user is presented with biographies of the user-selected participants; and at
`step 470, the user is enabled to communicate with the selected participants.
`Id. at 8:36–52.
`Figure 5A, reproduced below, presents another embodiment of a
`method of implementation for issue resolution. Ex. 1001, 9:13–17.
`
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`As shown in Figure 5A, above, an association is formed between issue
`resolvers and categories (step 510); a user-interface is displayed with the
`categories (step 520); a user selects a category (step 530); a message is
`received from the user containing an explanation of the issue that falls
`within the category (step 540); the user’s message is routed to a participant
`by the service that may use a database to determine the association between
`the category and assigned participant (step 550); and the performance of the
`particular issue resolver is tracked (step 560). Ex. 1001, 9:21–59. As part of
`step 550, the user may submit an email, but the recipient of the email is not
`known to the user. Id. at 9:55–57.
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`Challenged claims 1 and 6 of the ’107 patent are independent. Claim
`
`1, an illustrative independent claim of the ’107 patent, is reproduced below,
`with sub-paragraphing added to the limitations for reference purposes.
`1. A method for establishing a social network, the method being
`implemented on a network computer system and comprising:
`[a] maintaining a list comprising a plurality of participants,
`wherein each participant in the plurality of participants corresponds to
`one or more individuals, wherein the list also includes information
`associated with at least one of each participant or the one or more
`individuals that correspond to each participant;
`[b] presenting a user with an interface from which the user
`makes a selection of a category from a plurality of categories;
`[c] in response to receiving the selection of the category by the
`user, displaying, for the user, some of the information associated with
`each of multiple participants from the plurality of participants which
`match the selection of the category by the user, while shielding
`contact information associated with each of the multiple participants;
`[d] wherein displaying some of the information associated with
`each of the multiple participants is based at least in part on a rating of
`individual participants in the plurality of participants;
`[e] enabling the user to send an inquiry message to one or more
`of the multiple participants, while shielding the contact information
`from the user, the contact information including any messaging
`identifier that is associated with each of the one or more participants;
`[f] tracking a response time of each of the one or more
`participants who received the message from the user; and
`[g] updating the rating associated with each of the one or more
`participants based at least in part on the tracked response time.
`Ex. 1001, 17:15–48.
`
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`II. ANALYSIS
`A. The Parties’ Arguments
`In our Decision on Institution, we concluded that the arguments and
`evidence advanced by Petitioner demonstrated a reasonable likelihood that at
`least one claim of the ’107 patent would have been obvious. Inst. Dec. 19–
`40. Here, we determine whether Petitioner has established by a
`preponderance of the evidence that the challenged claims are obvious.
`35 U.S.C. § 316(e). We previously instructed Patent Owner that “any
`arguments for patentability not raised in the response may be deemed
`waived.” Paper 15, 7; see also 37 C.F.R. § 42.23(a) (“Any material fact not
`specifically denied may be considered admitted.”); In re Nuvasive, Inc., 842
`F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding Patent Owner waived an
`argument addressed in the Preliminary Response by not raising the same
`argument in the Patent Owner Response). Additionally, the Board’s Trial
`Practice Guide states that the Patent Owner Response “should identify all the
`involved claims that are believed to be patentable and state the basis for that
`belief.” Consolidated Trial Practice Guide (“TPG”), 66 (November, 2019).6
`We have reviewed arguments and evidence advanced by Petitioner to
`support its unpatentability contentions, and Patent Owner chose not to
`address certain limitations in its Patent Owner Response. We determine that
`Petitioner has demonstrated by a preponderance of the evidence that claims
`1–11 of the ’107 patent are obvious.
`
`
`6 Available at https://go.usa.gov/xpvPF.
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`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`had a “Bachelor of Science degree in computer science or a similar technical
`field together with 2 years of educational practicum or work experience in
`the field of software development (including programming for client-server
`systems, databases and networks), or related areas.” Pet. 8. In support,
`Dr. Goldberg testifies that a person of skill would have been familiar with
`the technologies, such as user interfaces, databases, networks, etc.,
`“underlying existing social networks, including participant matching
`systems,” and would have understood how to implement such systems.
`Ex. 1004 ¶ 11.
`Patent Owner asserts that “[a] person of ordinary skill in the art is
`defined as having a bachelor’s degree in Computer Science, or highly related
`field, and would have had at least four years’ experience in computer
`networking, especially in social networking systems.” PO Resp. 3–4. Patent
`Owner further contends that, in the alternative, that “a non-degreed
`practitioner with eight years of experience in developing social networking
`systems would also be considered one of ordinary skill in the art.” Id. at 4.
`We have reviewed the relevant technology and claims of the ’107
`patent, as well as the technology of the asserted prior art, and we adopt
`Petitioner’s proposed skill level because it is commensurate with the
`relevant technology.
`Patent Owner’s proposed construction is similar to that proposed by
`Petitioner to the extent that it requires the person of ordinary skill to have
`familiarity with social networking systems. However, Petitioner’s proposed
`years of experience and years of familiarity with social networking systems
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`is less. This, however, does not affect the determinations made here. See
`Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (If
`prior art renders claims obvious to a person of ordinary skill with lesser
`qualifications, then a person with more qualifications would also find
`obviousness). Additionally, in the Decision on Institution, we also adopted
`Petitioner’s proposed qualifications. See Inst. Dec. 16–17. In the Decision,
`we requested that the parties address what impact, if any, the different levels
`of proposed qualifications had on the obviousness analysis. Id. at 17 n. 6.
`Neither Petitioner nor Patent Owner identified any differences in their
`obviousness analysis due to differences in the qualifications of a person of
`ordinary skill in the art. See generally, PO Resp.; Pet. Reply; PO Sur-Reply.
`
`C. Claim Construction
`The Board interprets claim terms in accordance with the standard used
`in federal district court in a civil action involving the validity or
`infringement of a patent. See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
`codified at 37 C.F.R. § 42.100(b) (2019)). Under the principles set forth by
`our reviewing court, the “words of a claim ‘are generally given their
`ordinary and customary meaning,’” as would be understood by a person of
`ordinary skill in the art in question at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`
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`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1015, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`“contact information”
`In the Decision on Institution, we construed the term “contact
`information” to include “information, such as an email address, mailing
`address, or telephone number, that permits one entity to communicate
`directly with another entity.” Inst. Dec. 19.
`We explained that independent claims 1 and 6 recite “the contact
`information includ[es] any messaging identifier that is associated with one
`of more participants.” See Inst. Dec. 18 (citing Ex. 1001, 17:38–42, 18:28–
`32). The ’107 patent specification states that in an embodiment of the
`invention that a service handling a request from a user may be forwarded to
`the identified participant (Ex. 1001, 8:55–57), where
`In such an embodiment, an email address or other contact
`information may be shielded from the user. In one variation, it
`is also possible to shield the identity of the participant, or the
`end person who will be communicating with the user.
`Ex. 1001, 8:57–61. That is, “contact information,” such as an email address,
`is differentiated from a participant’s identity.
`The ’107 patent specification also refers to biographies that may be
`stored under an embodiment of the invention, where the biographies include
`“email addresses (or [instant messaging] IM tags or other contact
`information) to enable the individuals behind the biographies to meet each
`other.” Ex. 1001, 15:25–28. Additionally, in a user interface, the biography
`page includes “Contact Information” that includes “What is the best way for
`someone . . . to contact . . .?” and “They can email me directly at . . . .” Id.
`
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`at 6:57–58, Fig. 6D. These specification portions further support that
`contact information is identified as messaging identifiers, such as an email
`address.
`Thus, in institution, we construed the term in accordance with the
`intrinsic record which indicates that the type of information included as
`“contact information” is that which allows a user to directly contact a
`participant. Inst. Dec. 19. No party challenged the construction in the
`Decision on Institution. PO Resp. 3–7; Pet. Reply 8–12; Tr. 12:18–13:6,
`23:5–17. We see no reason to deviate from that construction. Therefore, we
`adopt the construction of the term “contact information” to include
`“information, such as an email address, mailing address, or telephone
`number, that permits one entity to communicate directly with another
`entity.”
`
`“in response to receiving the selection of the category by the user,
`displaying, for the user, some of the information associated with each of
`multiple participants from the plurality of participants which match the
`selection of the category by the user”
`Patent Owner argues that some of Petitioner’s asserted prior art does
`
`not teach this claim limitation because the asserted prior art does not
`disclose displaying participant information in response to the selection of the
`category by the user. See PO Resp. 12–14. Patent Owner contends that in
`the asserted prior art, the claimed display does not occur as a result of the
`user category selection, but rather results from a subsequent process where
`there are intervening steps. See id.; see also PO Sur-Reply 67 (“Patent
`
`
`7 Patent Owner’s Sur-Reply lacks accurate page numbers for the majority of
`its pages. We have assumed that the page beginning with the text “I. Claims
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`Owner asserts that Beaudoin does not teach ‘in response to’ as there are
`intervening steps before display.”). Accordingly, Patent Owner’s arguments
`are premised on interpreting the claim limitation term “in response to” to
`mean that a user’s selection of a category has to directly result in the display
`of participant information and there cannot be any intervening steps.
`
`Patent Owner argues that the plain meaning of the term “in response
`to” is “as a reaction to.” PO Sur-Reply 4. Patent Owner refers to a
`dictionary definition of “response” as “a reaction to something that has
`happened.” Id. at 9 (citing Ex. 2035). Patent Owner contends that “in
`response to” cannot mean a “but for” relationship because “the remainder of
`the claim includes language that makes clear the information being
`displayed ‘match[es] the selection of the category by the user.’” Id. at 6.
`Patent Owner contends that its position that the term “in response to” does
`not cover intervening steps, “does not depend on ‘limitations that do not
`appear in the claim,’ but rather is based on the common and well understood
`meaning of the term and the ‘107 patent’s specification.” Id. at 7. Patent
`Owner further refers to limitation 1[g], which recites, “updating the rating
`associated with each of the one or more participants based at least in part on
`the tracked response time.” Id. at 12. Patent Owner argues that “the
`inventor intentionally used modifying language (based at least in part) when
`addressing an issue of causality in one part of the claim” but “omitted such
`language (in response to) in another part of the claim,” which implies that
`“had the inventor intended ‘displaying . . . some of the information” to be an
`
`
`1–11 of the ‘107 Patent Are Not Obvious Over the Petition Art” is marked
`accurately as page 2, and we assume that sequential page numbers apply to
`the remaining pages of the Sur-Reply. See generally PO Sur-Reply.
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`indirect result to receiving the selection of the category, [and] the inventor
`would have claimed that.” Id. at 12–13.
`
`Patent Owner further argues that Petitioner’s assertion that the
`specification has embodiments with an intervening step is flawed, and in the
`referenced portion of the ’107 patent specification the module selects
`participants using information of a database, and there is no intervening step
`between receiving the category selection and displaying. PO Sur-Reply 8
`(citing Ex. 1001, 6:33–42). Patent Owner argues that, even if there is an
`embodiment in the ’107 patent which has an intervening step, that is not the
`claimed embodiment, and the patent includes other embodiments without
`intervening steps. Id. at 8–9 (citing Ex. 1001, 2:37–42, 2:48–53). Patent
`Owner asserts that courts “do not usurp the dictionary when the claim term
`is clean and unambiguous,” and the claim terms should be read in the
`context of the claims and patent. Id. at 10. Patent Owner cites to Ex parte
`Cragun, arguing that in that case the Board found that “in response to”
`connotes a direct cause-and-effect relationship. Id. at 11–12 (citing Ex Parte
`Cragun, Appeal No. 2013-001903 (PTAB Sept. 16, 2015)).
`
`Petitioner asserts that the claims do not require “that ‘displaying . . .
`information associated with each of multiple participants’ be directly in
`response to receiving the category selection by the user.” Pet. Reply 5.
`Petitioner contends that the claim language does not require direct
`responsiveness, and the display of information is in response to the category
`selection, that is, the display would not have occurred but for the user
`making the category selection. Id. Petitioner asserts that the ’107 patent
`specification includes an embodiment that discloses intervening steps
`between category selection and the display of information. Id. at 5–6 (citing
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`Ex. 1001, 6:33–42). Petitioner further contends that Patent Owner
`advocated for the adoption of the plain and ordinary meaning of the term “in
`response to” and that other courts have applied the Phillips standard and
`determined that the ordinary meaning of the term does not require a direct
`response. Id. at 6–7 (citing Optis Wireless Tech., LLC v. Huawei Device
`Co., No. 2:17-CV-123-JRG-RSP, 2018 WL 476054, at *33 (E.D. Tex. Jan.
`18, 2018); Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns LLC, No.
`11-2684-JWL, 2014 WL 5089402, at *25 (D. Kan. Oct. 9, 2014);
`Progressive Semiconductor Sols. LLC v. Qualcomm Techs., Inc., No. 8:13-
`CV-01535-ODW, 2014 WL 4385938, at *8–9 (C.D. Cal. Sept. 4, 2014)).
`
`Considering claim 1, we discern no claim language requiring that a
`response to “receiving the selection of the category by the user” be limited to
`a direct response. See Ex. 1001, 17:27–28. Contrary to Patent Owner’s
`argument, we also do not discern that the recital of limitation 1[g] (“updating
`the rating . . . based at least in part on the tracked response time”) implicates
`an intent that the omission of similar language in claim element 1[c] should
`be construed to mean that the limitation should be interpreted in a more
`limited manner. PO Sur-Reply 12–13. That is, we do not discern an
`interrelationship or overlap between the terms, or meanings of the terms, of
`the respective claim limitations such that they be considered in combination.
`
`Turning to the ’107 patent specification, Petitioner’s arguments rely,
`in part, on the ’107 patent specification’s disclosure of an embodiment
`where
`The UI 212 may provide a form, or a template (such as for use
`with a messaging application) to enable a person to enter the
`inputs. The category specification may correspond to a list of
`categories, each of which are selectable. When the category is
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`selected by the user, the module 210 receives the category as
`input.
`In response to receiving the input through the UI 212, the
`module 210 selects participants using the information of the
`database 214. Then the module 210 sends messages 222 to
`selected participants, where the messages may include the
`inquiry content 213, or content based on the inquiry content
`213. The number of messages sent 222 may be one or more.
`In an embodiment, the module 210 may receive the bios 40
`from recipients of messages 222. The module 210 then sends a
`compilation 242 (or aggregation) of the bios [biographies] to
`the user.
`Ex. 1001, 6:27–43. We find that this disclosure in a ’107 patent
`embodiment provides support for Petitioner’s argument that there are
`intervening steps between user category selection and the display of
`information on participants. See Pet. Reply 5. The specification portion
`above refers to a description of an implementation using components of the
`network service, with the steps of the implementation illustrated in Figure 3.
`See Ex. 1001, 1:48–52, 6:27–50; see infra 5. As disclosed and depicted, a
`user is presented with a category that can be selected, and upon selection,
`participants are selected and the module sends messages 222 to those
`participants. See id. Participants then may respond with bios (id. at Fig. 3,
`step 360), which are then sent to users for display (id. at 6:40–43, Fig. 3,
`step 370). Thus, in this embodiment of the ’107 patent, there are intervening
`steps which occur between category selection by the user and the display of
`participant information to the user.
`
`Patent Owner argues that the Petitioner’s reliance on embodiments
`with intervening steps is flawed because in the referenced portion of the
`specification “all that is being made clear . . . is that in the embodiment
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`being described, ‘the module 210 selects participants using the information
`of the database 212’ ‘in response to receiving the input through the UI
`212,’” and there is no intervening step between receiving the category
`section and displaying. PO Sur-Reply 8 (citing Ex. 1001, 6:33–42). Patent
`Owner appears to misconstrue the ’107 patent specification in its argument.
`As above, the specification states that upon receiving the user input, the
`module selects participants from the database, but there is no display to users
`at that step, as Patent Owner argues. See Ex. 1001, 6:27–43. Instead, the
`module sends messages to selected participants, and then may receive the
`bios from the participants, which then may be sent and displayed to users.
`Id.
`We also do not find persuasive Patent Owner’s argument that the ’107
`
`patent includes several embodiments that do not have intervening steps
`between user category selection and the display of participant information,
`and those are the embodiments claimed. PO Sur-Reply 8–9. We do not find
`the argument persuasive because “there is a strong presumption against a
`claim construction that excludes a disclosed embodiment.” See In re Katz
`Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir.
`2011). “[W]here claims can reasonably [be] interpreted to include a specific
`embodiment, it is incorrect to construe the claims to exclude that
`embodiment, absent probative evidence on the contrary.” Oatey Co. v. IPS
`Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008). As above, we discern no
`limitation recited in claim 1 requiring that there be a direct response to
`“receiving the selection of the category by the user.” And Patent Owner
`provides only a conclusory statement that certain embodiments are the ones
`claimed, but does explain why the claim language would not also apply to
`
`
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`Patent 9,978,107 B2
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`the embodiment Petitioner identifies, which has intervening steps.
`Therefore, Patent Owner’s argument is unsupported in view of the language
`of claim 1.
`
`Patent Owner also argues that the Board found a direct cause-and-
`effect relationship for the term “in response to” in Cragun. PO Sur-Reply
`11–12. On the other hand, Petitioner points to several cases where courts
`determined that no direct response was required. See Pet. Reply 6–7.
`Interpreting claim terms under Phillips involves considering specifics of the
`intrinsic record. See Phillips at 1312–15. In American Calcar, Inc. v.
`American Honda Motor Co., which is relied upon in Cragun, the Federal
`Circuit considered the intrinsic record to affirm a finding of an automatic
`response construction, but noted that in that particular case “the specification
`fails to disclose any embodiment that requires any type of user interaction
`prior to identification of a service provider.” Am. Calcar, Inc. v. Am. Honda
`Motor Co., 651 F.3d 1318, 1340 (Fed. Cir. 2011); see also Cragun, Appeal
`No. 2013-001903, at 3–4. Here, we find Cragun and American Calcar are
`distinguishable because the ’107 patent specification includes an
`embodiment covering a non-direct response to a category selection.
`
`Finally, we do not find persuasive Patent Owner’s argument that its
`proffered dictionary definition of “response” as “a reaction to something that
`has happened” precludes a response that is not direct. See PO Sur-Reply 2,
`5, 9. Rather, we agree with Petitioner that, even under the selected
`dictionary definition, the definition allows for reactions that occur as a result
`of an action, even if there are intervening steps, because the reaction would
`nonetheless happen. See Tr.10:26–11:12.
`
`
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`Patent 9,978,107 B2
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`
`“one or more users of the network computer system”
`Claim 4 depends from claim 1 and further requires “identifying
`
`information for another participant that matches the category selection of the
`user based on a referral provided by one or more users of the network
`computer system.” Ex. 1001, 17:56–60. Claim 9 recites a similar limitation,
`without the word “network.” Id. at 18:48–52.
`
`Petitioner’s arguments on the merits are based on an interpretation of
`the claim term “one or more users of the network computer system” used in
`claim 4, with similar issues raised for claim 9. Pet. 65–66, 69; Pet. Reply
`18–20. Patent Owner presents an argument on the claim construction issue
`in its Sur-Reply and at oral hearing, which Petitioner argues is waived
`because the argument was not raised in Patent Owner’s Response. PO Sur-
`Reply 22; Tr.19:25–20:1. Because the claim term needs to be addressed to
`evaluate Petitioner’s contentions on the merits, we will address it here.
`Petitioner argues that the phrase “one or more users of the network
`computer system” includes “participants of the network computer system,
`not just a user of the system seeking to have an issue resolved, e.g., the
`claimed ‘user’ in claim 1.” Pet. Reply 18; see also Pet. 66. Petitioner
`asserts that: 1) the ’107 patent provides an example of referrals where
`participants refer other participants; 2) one of ordinary skill in the art would
`have understood that “one or more users of the network computer system” is
`not limited to either a participant or user; and 3) there is a lack of antecedent
`basis for “one or more users” such that it is “a new entity . . . not tied to ‘the
`user’ or ‘the one or more partici