UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00846
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00846
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`GROUNDS 1-4 FAIL BECAUSE KOVATCH IS NOT PRIOR ART .......... 1
`A.
`Parus’s Antedating of Kovatch Should Not Be Rejected ..................... 2
`1.
`Mr. Kurganov’s testimony is supported by independent
`corroboration ............................................................................... 3
`Parus’s evidence meets both reduction to practice prongs ......... 5
`a.
`Parus’s evidence demonstrates an embodiment
`meeting all limitations of the challenged claims .............. 5
`The evidence demonstrates an embodiment having
`a computer meeting all claimed limitations ..................... 7
`The evidence demonstrates a constructed
`embodiment met limitations [1pre], [1.h]-[1.k] ............... 9
`The evidence demonstrates an embodiment
`meeting claim 9’s additional limitations ........................ 10
`The evidence demonstrates an embodiment
`meeting claim 14’s additional limitations ...................... 11
`The evidence demonstrates a working embodiment. ................ 12
`3.
`The reduction to practice dates are corroborated ...................... 13
`4.
`PETITIONERS’ REBUTTAL ARGUMENTS FAIL ................................... 13
`A.
`Petitioners Fail to Address Several Issues Regarding the
`purported Kovatch and Neal Combination Raised by Parus in
`Its POR ................................................................................................ 13
`1.
`The fact that neither Kovatch nor Neal disclose claim
`limitation 1(j) is indeed material ............................................... 14
`Neal does not disclose or teach accessing websites is
`material ...................................................................................... 15
`
`b.
`
`c.
`
`d.
`
`e.
`
`I.
`II.
`
`III.
`
`2.
`
`2.
`
`i
`
`
`
`3.
`
`4.
`
`5.
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`Kovatch does not disclose “website search methodology”
`that Petitioners rely on in their purported Kovatch/Neal
`combination ............................................................................... 15
`The example disclosed by Neal is relevant and
`demonstrates that Kovatch would not function properly if
`the teachings of Neal were applied to Kovatch ........................ 17
`The Internet is not pre-segmented into different websites,
`which are separately searched datasets, as Petitioners
`contend ...................................................................................... 18
`A POSITA Would Not Combine Kovatch and Neal .......................... 19
`1.
`Parus’s arguments regarding speeding up Kovatch are
`responsive to the Petition. ......................................................... 20
`Petitioners motivation to combine comes from the
`benefits of Neal, but Petitioners do not include any
`aspects of Neal that realize those benefits ................................ 21
`Petitioners are trying to make Kovatch more fault
`tolerant....................................................................................... 22
`IV. KURGANOV-262 IS NOT PRIOR ART ..................................................... 23
`V.
`CONCLUSION .............................................................................................. 25
`
`B.
`
`2.
`
`3.
`
`ii
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ATI Technologies ULC in LG Electronics, Inc. v. ATI Technologies
`ULC,
`IPR2015-00325 (PTAB) ............................................................................... 1, 5, 6
`UMC Elecs. Co. v. United States,
`816 F.2d 647 (Fed. Cir. 1987) .............................................................................. 1
`
`iii
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF EXHIBITS
`
`Description
`Order Denying Motion to Stay Pending Inter Partes Review, C.A.
`No. 6-18-cv-00201
`Exhibit A9 Kovatch Claim Chart 7076431
`Exhibit C Obviousness Claim Chart 7076431 (Corrected)
`Reserved
`Reserved
`Standing Order Re Scheduled Hearings in Civil Cases, 19-cv-00432
`Claim Construction Order, 1-20-cv-00351
`Claim Construction Order, 6-19-cv-00532
`Claim Construction Order, 6-18-cv-00308
`U.S. Patent No. 6,157,705 (Perrone)
`Defendants’ Corrected Invalidity Contentions, 6-19-cv-00432
`Excerpt of Case Docket Sheet, 6-19-cv-00278-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00514-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00515-ADA
`Markman Hearing Transcript, 6-19-cv-00432-ADA
`Claim Construction Order, 6-19-cv-00432-ADA
`Order Consolidating Cases, 6-19-cv-00432-ADA
`10/13/2020 Email from the Court
`Excerpt of Case Docket Sheet, 6:18-cv-00308-ADA
`Kurganov Declaration
`10/13/1998 Email from Alex Nash to Alex Kurganov et al
`4/22/1999 Email from Alex Kurganov to Susan Kelley et al
`www.pl PERL source code file
`RCRWireless Article on Webley
`mc_vm.c C source code file
`menuNew.grammar grammar file
`U.S. Patent No. 7,076,431 Reduction to Practice Chart
`U.S. Patent No. 9,451,084 Reduction to Practice Chart
`Wayback Machine page of Webley Homepage
`Wayback Machine page of Webley How to Use
`Wayback Machine page of Frequently Asked Questions
`webget.pl PERL source code file
`weather.ini file
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`2023
`2024
`2025
`2026
`2027
`2028
`2029
`2030
`2031
`2032
`2033
`
`iv
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`2034
`2035
`2036
`2037
`2038
`2039
`2040
`2041
`2042
`2043
`2044
`2045
`2046
`2047
`2048
`2049
`2050
`2051
`2052
`2053
`2054
`
`2055
`2056
`2057
`2058
`
`2059
`2060
`2061
`
`Wayback Machine page of Webley Index
`Nuance 6 Product Brochure
`mc_vr.c C source code file
`Wayback Machine page of Lernout & Hauspie’s Homepage
`Lernout & Hauspie Press Release
`Wayback Machine page of Nuance customers
`menuProto.grammar grammar file
`mcall.h C source code file
`url.pl PERL source code file
`html2csv.pl PERL source code file
`8/24/1999 email from Alex Kurganov to Valery Zhukov et al
`10/28/1999 email from Valery Zhukov to Alex Kurganov
`10/29/1999 email from Valery Zhukov to Alex Kurganov
`11/1/1999 email from Valery Zhukov to Alex Kurganov
`10/29/1999 email from Valery Zhukov to Alex Kurganov
`12/10/1999 email from Valery Zhukov to Alex Kurganov
`12/17/1999 email from Valery Zhukov to Alex Kurganov
`11/10/1999 email from Hal Poel to Susan Kelley et al
`Nuance Grammar Order Form
`12/9/1999 email from Alex Leykekhman to Alex Kurganov
`Attachment to 12/9/1999 email from Alex Leykekhman to Alex
`Kurganov that lists stock symbols
`11/29/1999 email from Alex Mansour to Alex Kurganov
`February, 2000 Webley Press Release
`12/14/1999 email from Valery Zhukov to Alex Kurganov
`CVS Source Code – Activity Log and Exhibit A to Malka
`Declaration
`Occhiogrosso Declaration
`Mulka Declaration
`Deposition Transcript of Martin Walker, Ph.D. – May 11, 2021
`
`v
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`I.
`
`INTRODUCTION
`Parus’s POR demonstrated that neither Kovatch nor Kurganov-262 is prior
`
`art, the Petition’s combination of Kovatch and Neal does not disclose all the required
`
`claim limitations, and a POSITA would not be motivated to combine Kovatch and
`
`Neal. Petitioners’ Reply does not demonstrate that Kovatch or Kurganov-262 are
`
`prior art. Infra §§ II, IV. Petitioners’ other arguments fail to demonstrate that the
`
`combination of Kovatch and Neal disclose all the required claim limitations, and that
`
`a POSITA would be motivated to combine Kovatch and Neal. Infra § III.
`
`Petitioners’ arguments in regards to the Kovatch and Neal combination in their
`
`Reply only undermine the Petitions’ arguments. Infra § III. Finally, Petitioners’
`
`arguments that the ’431 lacks written description are undermined by the disclosure
`
`of the patent. For these reasons, all Grounds from the Petition fail.
`
`II. GROUNDS 1-4 FAIL BECAUSE KOVATCH IS NOT PRIOR ART
`Petitioners’ fail to establish that the source code identified by Parus was
`
`inoperative for its intended purpose or that any of the elements of the Challenged
`
`Claims were not disclosed by the identified source code. Petitioners’ arguments are
`
`premised on an inaccurate review of the operative facts. As the PTAB observed in
`
`ATI Technologies, operation of a product is sufficient for reduction to practice. ATI
`
`Technologies ULC in LG Electronics, Inc. v. ATI Technologies ULC, IPR2015-
`
`00325 at 18; UMC Elecs. Co. v. United States, 816 F.2d 647, 652 (Fed. Cir. 1987).
`
`1
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`Parus adduced evidence in the form of Mr. Kurganov’s declaration, date stamped
`
`source code that showed operation of the product, and email correspondence
`
`showing that the product was operational. Evidence that shows a product would
`
`work for its intended purpose should be sufficient. Parus’s source code worked for
`
`its intended purpose as compiled and tested by Parus. The fact that Petitioners did
`
`not even challenge any of Mr. Kurganov’s assertions regarding the operation of the
`
`source code during his deposition shows the maturity of the source code.
`
`Parus’s Antedating of Kovatch Should Not Be Rejected
`A.
`Petitioners’ assertion that Parus’s antedating is conclusory is unfounded.
`
`(Paper 22, 2-5). Parus’s POR demonstrates that the ’431 and ’084 inventions were
`
`conceived and reduced to practice before Kovatch’s priority date. The POR,
`
`associated declarations, cited exhibits, and the declaration of Parus’s expert,
`
`Benedict Occhiogrosso, demonstrate that Parus conceived and reduced to practice
`
`the ’431 and ’084 inventions before Kovatch’s priority date.
`
`Contrary to Petitioner’s unfounded assertions, the POR does not improperly
`
`ask Petitioners and the Board to sift through 1,300+ pages of exhibits to assess
`
`whether the evidence could support Parus’s antedating as Petitioners contend.
`
`(Paper 22, 3).
`
`In its’ antedating materials, Parus included claim charts that used excerpts of
`
`the source code to demonstrate exactly which parts of the source code met the claim
`
`2
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`limitations in claim charts and included the entire source code files for Petitioners’
`
`inspection. Petitioner and its expert does not challenge whether the source code
`
`actually performs the Challenged Claims. Further, Parus included extensive source
`
`code versioning records to demonstrate that the versions of the source code that
`
`Parus cites, were in fact entered into the source code versioning system by
`
`12/31/1999. Finally, Parus provided email communication that showed that the
`
`system was complete.
`
`1. Mr. Kurganov’s testimony is supported by independent
`corroboration
`Petitioners allege that Mr. Kurganov’s testimony is uncorroborated. (Paper
`
`22, 6). This is not true. Parus provided a number of exhibits that corroborated Mr.
`
`Kurganov’s testimony, including contemporaneous email communications and
`
`source code. (Ex. 2020-2060). Mr. Mulka pulled the source code commits out of
`
`the source code versioning system while creating a detailed report of activity in the
`
`source code revision system. (Ex. 2058). Each of the entries in this report
`
`demonstrated that the files were indeed committed to the system by the relevant date.
`
`Petitioners found no substantive issues with this report. (Paper 22). Further, Mr.
`
`Mulka authenticated all of these files during his deposition. (Ex. 1052, 54:5-56:15).
`
`Mr. Kurganov recognized the files and detailed how they demonstrated that the code
`
`functioned for its intended purpose. (Ex. 2020, 2027, 2028). Petitioners had every
`
`3
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`opportunity to dispute Mr. Kurganov’s testimony, but chose not to. At his
`
`deposition, Petitioners did not challenge Mr. Kurganov’s testimony related to the
`
`functionality of the produced source code. (Ex. 1050). Parus asked Petitioners’
`
`expert, Dr. Martin Walker, if the code did not work for its intended purpose, and Dr.
`
`Walker indicated that he did not form an opinion as to whether the code functioned
`
`for its intended purpose.1 (Ex. 2061, 41:24-42:15; Ex. 1053). The source code
`
`worked for its intended purpose and practiced all of the elements of the Challenged
`
`Claims.
`
`Mr. Occhiogrosso examined Mr. Kurganov’s declaration and his exhibits and
`
`testified as a POSITA that the source code worked as Mr. Kurganov testified. (Ex.
`
`2059, ¶¶ 44-91). Petitioners have not challenged that analysis in any real way.
`
`Further, as previously discussed, Mr. Mulka created a detailed report of activity in
`
`the source code revision system demonstrating that Mr. Kurganov and Mr. Zhukov
`
`worked full time and consistently on the WA-II enhancements, which embody the
`
`Challenged Claims for at least a month and a half before the effective date of
`
`Kovatch.
`
`1 Dr. Walker testified that because the getWeather() was commented out, the code did not function for its intended
`purpose but could provide no opinion whether or not the defined function included defects.
`
`4
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`Parus’s evidence meets both reduction to practice prongs
`2.
`Contrary to Petitioners’ assertions, Parus’s evidence meets both reduction to
`
`practice prongs. For example, Parus’s POR and exhibits demonstrate its antedating
`
`case in a similar, but distinguishable manner over ATI Technologies. (ATI
`
`Technologies, IPR2015-00325). In ATI Technologies, the Board held that in order
`
`to establish reduction to practice, the inventor must establish (1) the inventor
`
`constructed an embodiment or performed a process that met all of the claim
`
`limitations; and (2) the invention would work for its intended purpose. (IPR2015-
`
`00325, Paper 62, 17 (citing to Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir.
`
`1998))).
`
`a.
`
`Parus’s evidence demonstrates an embodiment meeting
`all limitations of the challenged claims
`Parus’s evidence demonstrates an embodiment meeting all limitations of the
`
`challenged claims contrary to Petitioners’ assertions. (Paper 22, 9-12). For example,
`
`in ATI Technologies, for the first prong, ATI argued that the register-transfer level
`
`(“RTL”) code was a constructed embodiment of the claimed invention, which was a
`
`graphics processing system. (IPR2015-00325, Paper 21, 16). ATI provided an
`
`inventor declaration analyzing source code material in the form of RTL to show the
`
`operation of ATI’s product. (IPR2015-00325, Ex. 2006). ATI argued that RTL code
`
`itself constituted an actual reduction to practice. (IPR2015-00325, Paper 16, 16-21).
`
`5
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`The Board found that the RTL code was not a sufficient constructed
`
`embodiment because ATI had not demonstrated that “the design inferred by the RTL
`
`code was synthesized into a set of interconnected hardware devices.” (IPR2015-
`
`00325, Paper 62, 19). The Board noted that “ATI does not contend that the computer
`
`system executing the RTL code encompasses the claimed graphics processing
`
`system, but rather RTL code, alone, is an embodiment of the claimed system.”
`
`(IPR2015-00325, Paper 62, 25).
`
`Parus’s antedating case is distinguishable over ATI for two reasons. First, the
`
`source code alone is an actual reduction to practice of the claimed invention because
`
`unlike the RTL code in ATI Technologies, that only demonstrated the design of the
`
`system and was not synthesized into a set of interconnected hardware devices, the
`
`source code does not need to be synthesized into a physical embodiment and
`
`demonstrates the functionality of the Challenged Claims.
`
`Second, in the alternative and in contrast to ATI, where ATI provided RTL
`
`that describes the design of the circuits in the graphics processing system and needs
`
`to be synthesized into a physical embodiment, and argued that the RTL is a physical
`
`embodiment, Parus provides source code that defines the functionality of the system,
`
`and need not be synthesized into a physical embodiment, in addition to the claimed
`
`computer making up an actual reduction of practice of the system of the claims of
`
`the ’431 and ’084 patents.
`
`6
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`b.
`
`The evidence demonstrates an embodiment having a
`computer meeting all claimed limitations
`The evidence demonstrates an embodiment having a computer meeting all
`
`claimed limitations, contrary to Petitioners’ assertions. (Paper 22, 9-10). For
`
`example, Mr. Kurganov’s testimony and the evidence presented demonstrate that the
`
`claimed computer was embodied by a UNIX cluster of servers that was used to
`
`provide Parus’s Webley Assistant product. (Ex. 2020, ¶ 14; Ex. 2025). Petitioners’
`
`attempts to confuse the claimed computer with the computers that housed the source
`
`code versioning system have no merit. (Paper 22, 9). The source code that was
`
`identified by Mr. Kurganov was tested and provides evidence of a working reduction
`
`to practice on that UNIX cluster of servers.
`
`The working reduction to practice is a functional embodiment of the
`
`invention. As testified to by Mr. Kurganov and corroborated by contemporaneous
`
`evidence, the claimed computer, the Unix cluster of servers, executed the binary
`
`program which was the compiled and linked source code. Mr. Kurganov makes this
`
`clear in his declaration as well in his deposition testimony and email
`
`communications that the system was operational. (Ex. 2020, ¶¶ 20-102; Ex. 2021-
`
`2057; Ex. 1050, 21:17-22:8, 32:17-23). There is no limitation requiring the claimed
`
`computer to house the source code versioning system, and Petitioners provide no
`
`evidence to support their suggestion.
`
`7
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`Further, Petitioners attempt to insinuate that the claimed computer was
`
`required to compile and link the source code. (Paper 22, 9). Again, there is no
`
`limitation requiring the claimed computer to compile and link the source code into
`
`an executable binary program, and Petitioners provide no evidence to support their
`
`suggestion. The source code identified by Mr. Kurganov shows conclusively that
`
`the embodiment of the invention memorialized by the source code operated for its
`
`intended purpose. Petitioners do not even challenge that showing.
`
`The evidence shows that the alleged source was developed, compiled, and run
`
`on the claimed computer before Kovatch’s priority date. Petitioners argue that there
`
`is no evidence that corroborates that all the files Parus presented “could be or ever
`
`were used together on the same computer.” (Paper 22, 10). Mr. Kurganov provided
`
`evidence that walked through each source code file highlighting where the claimed
`
`functionality of the ’431 and ’084 patents could be found in the code. Petitioners
`
`identify absolutely no error in the source code or alleged failure in the operation of
`
`the source code. Petitioners did not challenge Mr. Kurganov’s or Mr.
`
`Occhiogrosso’s interpretation of the source code as performing any of the claim
`
`elements of the Challenged Claims. Further, Mr. Mulka compiled extensive source
`
`code versioning system records corroborating that Mr. Kurganov, and Mr. Zhukov,
`
`the other named inventor, worked on the WA-II enhancements until they were
`
`finished. When asked at his deposition, whether there was any reason to not believe
`
`8
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`Mr. Kurganov’s testimony, or whether he determined that the all the cited source
`
`code files could not be compiled together, Petitioners’ expert Dr. Walker refused to
`
`provide an opinion. (Ex. 2061, 41:24-42:15, 18:2-21).
`
`c.
`
`The evidence demonstrates a constructed embodiment
`met limitations [1pre], [1.h]-[1.k]
`Petitioners’ main argument regarding these claim limitations is that the call to
`
`the getWeather() function was commented out therefore it was never compiled.
`
`(Paper 22, 10-11). Neither Petitioners, nor Dr. Walker, provide any evidence that
`
`the getWeather() functionality was not working for its intended purpose at the time
`
`the source code file was committed to the source code versioning system. (Ex. 2061,
`
`41:24-42:15). Instead, Petitioners argue that because the call was commented out in
`
`this particular source code commit, then it must have never worked. The
`
`getWeather() function is less than a page in length. If there was an error in the code,
`
`Dr. Walker could have quickly analyzed and identified it. In his deposition, Dr.
`
`Walker admitted he did not have an opinion whether the code worked for its intended
`
`purpose or not. The idea that the code never worked because the call was
`
`commented out in this particular source code commit is unsupported.
`
`Petitioners provide no evidence demonstrating the getWeather() functionality
`
`did not work for its intended purpose. They cannot because the evidence
`
`demonstrates that the getWeather() functionality did indeed work. Mr. Kurganov’s
`
`9
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`testimony and the evidence provided in his declaration demonstrated what the lines
`
`of code did in the getWeather() function. (Ex. 2020, ¶¶ 22-28; Ex. 2027-2028, 5-8).
`
`Petitioners failed to find any fault with Mr. Kurganov’s explanation of the source
`
`code itself, which had only 1 line commented out.
`
`Instead, Petitioners rely on the commented out call to getWeather() and then
`
`conclude it never worked. Dr. Walker testified that it is common to comment out
`
`code when it is not working. But Dr. Walker failed to acknowledge that it is also
`
`common to comment out code when it is working in order to work on another part
`
`of the system that may not be working. Further, Petitioners fail to acknowledge that
`
`the source code in the version control system is just the main line of source code.
`
`Any developer could have had the source code checked out on their own machine,
`
`uncomment the code, and compile and execute the getWeather() functionality.
`
`d.
`
`The evidence demonstrates an embodiment meeting
`claim 9’s additional limitations
`Petitioners’ claim that evidence does not demonstrate an embodiment meeting
`
`claim 9’s limitations is not true. (Paper 22, 11-12). Claim 9 adds the limitation that
`
`“said computer is further configured to periodically search said internet to identify
`
`new web sites and to add said new web sites to said plurality of web sites.” Mr.
`
`Kurganov explained that the url.pl file “would be used on the computer to grab any
`
`URL and return its content for further processing and determination if that url
`
`10
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`contains useful information and should be added as a source.” (Ex. 2020, ¶ 44). He
`
`also testified that the file was used in conjunction with a search engine to periodically
`
`search said internet to identify new web sites. Id. Petitioners do not point to any
`
`evidence undermining Mr. Kurganov’s testimony because looking at the url.pl file
`
`and Mr. Kurganov’s testimony, it is clear that the url.pl was used in the manner that
`
`Mr. Kurganov testified to meet this claim limitation.
`
`e.
`
`The evidence demonstrates an embodiment meeting
`claim 14’s additional limitations
`The evidence demonstrates an embodiment meeting claim 14’s additional
`
`limitations. For example, the email shows a script that creates a database table when
`
`run. (Ex. 2057). Mr. Kurganov’s testimony confirms that understanding. (Ex. 2020,
`
`¶ 82). Petitioners attempt to demonstrate that Mr. Occhiogrosso did not corroborate
`
`Mr. Kurganov’s testimony. (Paper 22, 12). This is a mischaracterization of Mr.
`
`Occhiogrosso’s testimony. Mr. Occhiogrosso clearly pointed out an error in his
`
`declaration, and indicated that the evidence he relied on was the evidence that he
`
`cited (Ex. 2027, 49-51) in his declaration. (Ex. 1051, 112:6-14). The evidence that
`
`Mr. Occhiogrosso relied on is the same email that shows a script that creates a
`
`database table when run. Thus, Mr. Occhiogrosso testimony is sufficient and did
`
`corroborate Mr. Kurganov’s testimony, contrary to Petitioners’ allegations. (Paper
`
`22, 12).
`
`11
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`The evidence demonstrates a working embodiment.
`3.
`Contrary to Petitioners’ assertions, the evidence demonstrates a working
`
`embodiment. (Paper 22, 13-16). For the second prong, Parus demonstrated the
`
`system worked for its intended purpose. (Ex. 2020; Ex. 2027-2028; Ex. 2021-2057).
`
`For example, Parus provided an inventor declaration, exhibits, and associated source
`
`code that delineated how the claimed system functioned for its intended purpose and
`
`practiced the various elements of the Challenged Claims. Id. Mr. Kurganov’s
`
`testimony regarding the source code, emails between Mr. Kurganov and Mr.
`
`Zhukov, and a press release, all included in Mr. Kurganov’s declaration, demonstrate
`
`a working embodiment.
`
`For example, in Mr. Kurganov’s declaration, he refers to the voice response
`
`system that practices the elements of the Challenged Claims as “web agents.” (Ex.
`
`2020, ¶¶ 12, 112-119). On August 24, 1999, an email between the two inventors
`
`demonstrate that they were working on these web agents. (Ex. 2020, ¶ 112; Ex.
`
`2044). By December 17, 1999, another email between the two inventors
`
`demonstrate that the web agents were completed. (Ex. 2020, ¶ 114; Ex. 2050).
`
`Specifically in that email, Mr. Zhukoff stated that, amongst his accomplishments for
`
`the year, he had “[d]esigned/developed/implemented stock quote, weather, flight
`
`delays agents.” (Ex. 2020, ¶ 114, Ex. 2050 at 1). Those functions, which track the
`
`source code identified by Mr. Kurganov, were operational. Further, Mr. Kurganov
`
`12
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`pointed to a press release advertising the system enhancements to customers, which
`
`was published in February 2020. (Ex. 2020, ¶ 118; Ex. 2056). The timing of that
`
`press release is consistent with having a working system in December 1999. Again,
`
`Petitioners and Petitioners’ expert have not provided any challenge as to whether the
`
`identified source code would operate in the manner described by Mr. Kurganov.
`
`(Paper 22; Ex. 2061, 41:24-42:15; Ex. 1053).
`
`The reduction to practice dates are corroborated
`4.
`As already discussed, Mr. Mulka pulled the source code commits out of the
`
`source code versioning system while creating a detailed report of activity in the
`
`source code revision system. (Ex. 2060; Ex. 2058). Each of the entries in this report
`
`corroborated that the files were indeed committed to the system by the relevant date.
`
`Petitioners found no issues with this report. (Paper 22). Finally, Mr. Mulka
`
`authenticated all of these files during his deposition. (Ex. 1052, 54:5-56:15).
`
`III. PETITIONERS’ REBUTTAL ARGUMENTS FAIL
`Petitioners’ counter arguments to the arguments that Parus advanced in the
`
`POR, only highlight weaknesses in the Petition.
`
`A.
`
`Petitioners Fail to Address Several Issues Regarding the
`purported Kovatch and Neal Combination Raised by Parus in Its
`POR
`Instead of attempting to rebut issues regarding the purported Kovatch and
`
`Neal combination that Parus raised in its POR, Petitioners ignore, mischaracterize,
`
`13
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`and claim that these arguments do not matter. Petitioners are wrong. The issues
`
`raised by Parus go to the very heart of purported Kovatch and Neal combination, and
`
`ignoring them proves fatal to Petitioners case.
`
`1.
`
`The fact that neither Kovatch nor Neal disclose claim
`limitation 1(j) is indeed material
`It is an undisputed fact that neither Kovatch nor Neal disclose the sequentially
`
`accessing a plurality of pre-selected web sites until the information to be retrieved is
`
`found or all web site have been accessed claim limitation. (Paper 2, 12-15, 32).
`
`Petitioners claim that the fact Kovatch does not disclose this limitation is immaterial.
`
`(Paper 22, 16). Kovatch’s lack of disclosure of claim limitation 1(j) is indeed
`
`material because adding it to Kovatch goes against the stated goal of Kovatch.
`
`(Paper 14, 22).
`
`For example, Kovatch explains that “[t]he intent of the system is to be able to
`
`come up with a single choice destination amongst the many offered within the
`
`system.” (Ex. 1005, 4:29-30 (emphasis added); Paper 14, 22). In its POR, Parus
`
`noted that in Kovatch the “Anita Language Engine in conjunction with [the] Anita
`
`Query Engine identify destination nodes and the applications available to the user.”
`
`(Paper 14, 22). Parus further pointed out that “the Anita Query Engine maps
`
`commands to applications which are destination nodes in the tree.” Id. Parus also
`
`14
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`noted that all of the applications, such as the weather application, are mapped to
`
`single destination URLs. (Paper 14, 20-23).
`
`Petitioners argue that it would be obvious to add the functionality of claim
`
`limitation 1(j) to Kovatch, which would add a plurality of pre-selected destinations
`
`to Kovatch, while completely ignoring and not explaining why a POSITA would
`
`modify Kovatch in a manner that is completely opposite of Kovatch’s stated goal.
`
`(Paper 2, 12-15, 32). Kovatch’s lack of disclosure of claim limitation 1(j) is indeed
`
`material, and Petitioners failure to explain why a POSITA would modify Kovatch
`
`in the manner they suggest is fatal to their case.
`
`2.
`
`Neal does not disclose or teach accessing websites is
`material
`Parus argued the importance of Neal not disclosing or teaching accessing
`
`websites because neither Kovatch nor Neal disclosed claim 1(j), and Petitioners’
`
`purported combination of Kovatch and Neal leaves many questions unanswered, and
`
`Parus wanted to foreclose any wavering by Petitioners in an attempt to answer these
`
`unanswered questions.
`
`3.
`
`Kovatch does not disclose “website search methodology”
`that Petitioners rely on in their purported Kovatch/Neal
`combination
`Parus did not mischaracterize Neal and the Petition when it argued that Neal
`
`teaches away from keyword matching as a search strategy. The Petition clearly
`
`states that “[a] POSA would have been motivated to apply Neal’s above-described
`
`15
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`hierarchical ordering and search techniques when retrieving information from web
`
`sites in Kovatch’s HeyAnita system.” (Paper 2, 13-14). Neal explains that its search
`
`strategies, which Petitioners alleged they were relying on, “may include one or more
`
`of the following: exact search, stem search, soundex search, and fuzzy logic search.”
`
`(Ex. 1007, 3:30-32). Neal is the only reference advanced by Petitioners that teaches
`
`any searching techniques, and the only way to search a web page would be a
`
`keyword matching strategy. If Petitioners are relying on Kovatch for the searching
`
`of data on a web page, which Petitioners now claim, then all grounds fail because
`
`Kovatch does not teach any search methodology. (Paper 22, 17).
`
`For example, Petitioners now argue that Kovatch is relied upon “for a teaching
`
`of searching web sites” and refer to “Kovatch’s website search methodology,” but
`
`there is no disclosure of website searching in Kovatch. (See Ex. 1005; Paper 22,
`
`17). Petitioners are now relying on Kovatch’s web parser to “search each individual
`
`website.” Id. But a web parser, parses the HTML tags on a web page to expose or
`
`render the data to the user; it does not search any data, and Kovatch’s web parser is
`
`no different.
`
`In the purported Kovatch/Neal combination, Petitioners fail to explain how
`
`the system would search for the desired information once the web parser converts
`
`the unstructured HTML data into meaningful structured data. The only reasonable
`
`interpretation of the Petition is that Petitioners are relying on Neal to search this
`
`16
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`structured data to get the requested information, and Parus’s arguments focused on
`
`the fact that once the HTML data is converted to text by
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
