Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date: October 19, 2021
`
`
`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.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00846
`Patent 7,076,431 B2
`____________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`Paper 31
`Date: October 19, 2021
`
`
`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.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00846
`Patent 7,076,431 B2
`____________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`
`I.
`INTRODUCTION
`Background and Summary
`A.
`Google LLC, Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., LG Electronics Inc., and LG Electronics U.S.A., Inc.
`(collectively, “Petitioner”) filed a Petition requesting an inter partes review
`of claims 1, 2, 4–7, 9, 10, 13, and 14 of U.S. Patent No. 7,076,431 B2
`(Ex. 1001, “the ’431 patent”). Paper 2 (“Pet.”). Parus Holdings, Inc.
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6
`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted this
`proceeding. Paper 9 (“Dec.”).
`Patent Owner filed a Patent Owner’s Response (Paper 14, “PO
`Resp.”), Petitioner filed a Reply to the Patent Owner’s Response (Paper 22,
`“Reply”), and Patent Owner filed a Sur-reply to the Reply (Paper 24, “Sur-
`reply”). An oral argument was held in this proceeding and IPR2020-00847
`on July 27, 2021. Paper 30 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1,
`2, 4–7, 9, 10, 13, and 14. Based on the record before us, Petitioner has
`proved, by a preponderance of the evidence, that claims 1, 2, 4–7, 9, 10, 13,
`and 14 are unpatentable.
`
`
`Related Matters
`B.
`The parties identify the following district court proceedings as related
`to the ’431 patent: Parus Holdings Inc. v. Apple, Inc., No. 6:19-cv-00432
`(W.D. Tex.); Parus Holdings Inc. v. Amazon.com, Inc., No. 6:19-cv-00454
`(W.D. Tex.); Parus Holdings Inc. v. Samsung Electronics Co., Ltd.,
`No. 6:19-cv-00438 (W.D. Tex.); Parus Holdings Inc. v. Google LLC,
`
`2
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`IPR2020-00846
`Patent 7,076,431 B2
`No. 6:19-cv-00433 (W.D. Tex.); and Parus Holdings Inc. v. LG Electronics,
`Inc., No. 6:19-cv-00437 (W.D. Tex.). Pet. xi; Paper 5, 1. The case against
`LG Electronics, 6:19-cv-00437, has been transferred to the United States
`District Court for the Northern District of California. Ex. 1032. The
`remaining cases have been consolidated. Ex. 2017. We refer the
`consolidated cases collectively as “the Texas case.”
`The parties also identify the following inter partes review
`proceedings: Apple Inc. v. Parus Holdings, Inc., IPR2020-00686
`(challenging the ’431 patent) and Apple Inc. v. Parus Holdings, Inc.,
`IPR2020-00687 (challenging U.S. Patent No. 9,451,084 (“the ’084 patent”))
`(“the Apple IPRs”); and Google LLC v. Parus Holdings, Inc., IPR2020-
`00847 (challenging the ’084 patent). Pet. xii–xiii; Paper 5, 1–2.
`
`The ’431 Patent
`C.
`The ’431 patent describes a system that allows users to browse web
`sites and retrieve information using conversational voice commands.
`Ex. 1001, 1:20–23. Figure 1, reproduced below, illustrates an example:
`
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`IPR2020-00846
`Patent 7,076,431 B2
`
`Figure 1 is a block diagram of a voice browsing system. Id. at 4:16–17.
`Figure 3, reproduced below, shows additional details of media server 106, a
`component shown in Figure 1:
`
`
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`IPR2020-00846
`Patent 7,076,431 B2
`
`
`Figure 3 is a block diagram of Figure 1’s media server 106. Id. at 4:20–21.
`Media server 106 includes speech recognition engine 300, speech
`synthesis engine 302, Interactive Voice Response (IVR) application 304, call
`processing system 306, and telephony and voice hardware 308 to
`communicate with Public Switched Telephone Network (PTSN) 116. Id. at
`
`5
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`IPR2020-00846
`Patent 7,076,431 B2
`5:62–6:1. When a user speaks into voice enabled device 112 (e.g., a
`wireline or wireless telephone), speech recognition engine 300 converts
`voice commands into data messages. Id. at 6:4–8. Media server 106 uses
`results (e.g., keywords) generated by speech recognition engine 300 to
`retrieve web site record 200 stored in database 100 that can provide the
`information requested by the user. Id. at 6:44–50. Media server 106 selects
`the web site record of highest rank and transmits it to web browsing server
`102 along with an identifier indicating what information is being requested.
`Id. at 6:52–56. Speech synthesis engine converts the data retrieved by web
`browsing server 102 into audio messages that are transmitted to voice
`enabled device 112. Id. at 6:57–60.
`According to the ’431 patent, with its system,
`[u]sers are not required to learn a special language or command
`set in order to communicate with the voice browsing system of
`the present invention. Common and ordinary commands and
`phrases are all that is required for a user to operate the voice
`browsing system. The voice browsing system recognizes
`naturally spoken voice commands and is speaker-independent;
`it does not have to be trained to recognize the voice patterns of
`each individual user. Such speech recognition systems use
`phonemes to recognize spoken words and not predefined voice
`patterns.
`Id. at 4:34–43.
`Claim 1, reproduced below (bracketed numbering added to track the
`numbering used in the Petition), is illustrative of the invention:
`1. A system for retrieving information from pre-selected
`web sites by uttering speech commands into a voice enabled
`device and for providing to users retrieved information in an
`audio form via said voice enabled device, said system
`comprising:
`
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`IPR2020-00846
`Patent 7,076,431 B2
`[1a] a computer, said computer operatively connected to
`the internet;
`[1b] a voice enabled device operatively connected to said
`computer, said voice enabled device configured to
`receive speech commands from users;
`[1c] at least one speaker-independent speech recognition
`device, said speaker-independent speech
`recognition device operatively connected to said
`computer and to said voice enabled device;
`[1d] at least one speech synthesis device, said speech
`synthesis device operatively connected to said
`computer and to said voice enabled device;
`[1e] at least one instruction set for identifying said
`information to be retrieved, said instruction set
`being associated with said computer, said
`instruction set comprising:
`a plurality of pre-selected web site addresses, each
`said web site address identifying a web site
`containing said information to be retrieved;
`[1f] at least one recognition grammar associated with
`said computer, each said recognition grammar
`corresponding to each said instruction set and
`corresponding to a speech command;
`said speech command comprising an information request
`selectable by the user;
`[1g] said speaker-independent speech recognition device
`configured to receive from users via said voice
`enabled device said speech command and to select
`the corresponding recognition grammar upon
`receiving said speech command;
`[1h] said computer configured to retrieve said instruction
`set corresponding to said recognition grammar
`selected by said speaker-independent speech
`recognition device;
`
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`IPR2020-00846
`Patent 7,076,431 B2
`[1i] said computer further configured to access at least
`one of said plurality of web sites identified by said
`instruction set to obtain said information to be
`retrieved,
`[1j] said computer configured to first access said first
`web site of said plurality of web sites and, if said
`information to be retrieved is not found at said first
`web site, said computer configured to sequentially
`access said plurality of web sites until said
`information to be retrieved is found or until said
`plurality of web sites has been accessed;
`[1k] said speech synthesis device configured to produce
`an audio message containing any retrieved
`information from said pre-selected web sites, and
`said speech synthesis device further configured to
`transmit said audio message to said users via said
`voice enabled device.
`
`
`Evidence
`D.
`Petitioner relies on the references listed below.
`Reference
`Date
`WO 01/50453 A2
`July 12, 2001
`
`Kovatch
`
`Exhibit No.
`1005
`
`Neal
`
`US 6,324,534 B1
`
`Nov. 27, 2001
`
`Chakrabarti
`
`US 6,418,433 B1
`
`July 9, 2002
`
`DeSimone
`
`US 5,787,470
`
`July 28, 1998
`
`Kurganov-262 US 2001/0047262 A1 Nov. 29, 2001
`
`1007
`
`1008
`
`1009
`
`1004
`
`
`Petitioner also relies on the Declaration of Stuart J. Lipoff (Ex. 1002),
`the Declaration of Martin Walker (Ex. 1053), and the Reply Declaration of
`Mr. Lipoff (Ex. 1057).
`
`8
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`IPR2020-00846
`Patent 7,076,431 B2
`Patent Owner relies on the Declaration of Alexander Kurganov
`(Ex. 2020), the Declaration of Benedict Occhiogrosso (Ex. 2059), and the
`Declaration of Paul Mulka (Ex. 2060).
`
`
`The Instituted Grounds of Unpatentability
`E.
`Claim(s) Challenged
`35 U.S.C. §
`References/Basis
`1, 2, 4–7, 10, 13, 14
`103(a)1
`Kovatch, Neal
`1, 2, 4–7, 9, 10, 13, 14
`103(a)
`Kovatch, Neal, Chakrabarti
`14
`103(a)
`Kovatch, Neal, DeSimone
`Kovatch, Neal, Chakrabarti,
`14
`103(a)
`DeSimone
`9
`103(a)
`Kurganov-262, Chakrabarti
`14
`103(a)
`Kurganov-262, DeSimone2
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`For petitions filed after November 13, 2018, we construe claims
`“using the same claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. 282(b), including construing the
`claim in accordance with the ordinary and customary meaning of such claim
`as understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see also Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’431
`patent was filed before March 16, 2013, the effective date of the relevant
`amendment, the pre-AIA version of § 103 applies.
`2 In its listing of grounds, Petitioner includes Chakrabarti in its combination
`with Kurganov-262 and DeSimone. Pet. 2. This appears to be a
`typographical error, as Petitioner’s analysis of claim 14 includes only
`Kurganov-262 and DeSimone. Id. at 63–68.
`
`9
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`IPR2020-00846
`Patent 7,076,431 B2
`In the Petition, Petitioner contended that we should give the claim
`terms their plain and ordinary meaning, and did not identify any claim term
`for construction. Pet. 6.
`In its Response, “Patent Owner relies upon no specialized meanings
`or disclaimers.” PO Resp. 18.
`Based on the record before us, we do not find it necessary to provide
`express claim constructions for any terms. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(noting that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`In the Institution Decision (Dec. 27–28), we noted that the District
`Court in the Texas case provided the following constructions (Ex. 2016, 2):
`Claim(s) Term
`Texas Court’s Construction
`1
`“voice enabled device”
`Plain and ordinary meaning,
`where the plain and ordinary
`meaning is not limited to
`wireline or wireless telephone,
`IP phone, wireless PDA, or
`other wireless device, and
`where the voice enabled device
`contains an audio input (e.g., a
`microphone)
`“speech recognition device that
`recognizes spoken words
`without adapting to individual
`speakers or using predefined
`voice patterns”
`“the words, phrases, and/or
`sounds a user can say that will
`be recognized by the speech
`recognition engine”
`
`“speaker-independent speech
`recognition device”
`
`1, 5, 6
`
`1
`
`“recognition grammar”
`
`10
`
`
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`IPR2020-00846
`Patent 7,076,431 B2
`Claim(s) Term
`1, 7, 9,
`“web site”
`10, 13,
`14
`1
`
`1
`
`1
`
`1
`
`“select the corresponding
`recognition grammar upon
`receiving [said/the] speech
`command”
`“instruction set for
`identifying [said/the]
`information to be retrieved”
`“access at least one of
`[said/the] plurality of web
`sites identified by [said/the]
`instruction set to obtain
`[said/the] information to be
`retrieved”
`“said computer configured to
`first access said first web site
`of said plurality of web sites
`and, if said information to be
`retrieved is not found at said
`first web site, said computer
`configured to sequentially
`access said plurality of web
`sites until said information to
`be retrieved is found or until
`said plurality of web sites has
`been accessed”
`
`Texas Court’s Construction
`Plain and ordinary meaning
`
`Plain and ordinary meaning
`
`Not subject to § 112, ¶ 6. Plain
`and ordinary meaning
`
`Plain and ordinary meaning
`
`Not subject to § 112, ¶ 6. Plain
`and ordinary meaning
`
`
`Similar to what we observed in the Institution Decision (Dec. 28), we see
`nothing inconsistent between these constructions and our analysis of the
`claims, below. Nevertheless, neither party contends that these constructions
`have any bearing on our application of the claims to the prior art.
`
`
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`IPR2020-00846
`Patent 7,076,431 B2
`B.
`Patent Owner’s Earlier Conception and Reduction to Practice
`Arguments are Improperly Incorporated by Reference and Will Not
`Be Considered
`Patent Owner contends that the inventors of the ’431 patent conceived
`of their invention before January 4, 2000, the filing date of U.S. Prov. No.
`60/174,371 (Ex. 1006), the provisional application to which Kovatch claims
`the benefit. PO Resp. 31; see also Ex. 1005, code (30).
`“Conception is the formation, in the mind of the inventor, of a definite
`and permanent idea of the complete and operative invention, as it is
`thereafter to be applied in practice.” Cooper v. Goldfarb, 154 F.3d 1321,
`1327 (Fed. Cir. 1998) (citing Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367, 1376 (Fed. Cir. 1986)). “A reduction to practice can be
`either a constructive reduction to practice, which occurs when a patent
`application is filed, or an actual reduction to practice.” Id. (citing Hybritech,
`802 F.2d at 1376). “In order to establish an actual reduction to practice, the
`inventor must prove that: (1) he constructed an embodiment or performed a
`process that met all the limitations of the [claim]; and (2) he determined that
`the invention would work for its intended purpose.” Id. “Where a party is
`first to conceive but second to reduce to practice, that party must
`demonstrate reasonable diligence toward reduction to practice from a date
`just prior to the other party’s conception to its reduction to practice.”
`Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996).
`“In an inter partes review, the burden of persuasion is on the
`petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35
`U.S.C. § 316(e), and that burden never shifts to the patentee.” Dynamic
`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). Petitioner also bears an initial burden of production to go forward
`
`12
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`IPR2020-00846
`Patent 7,076,431 B2
`with prior art that would render the challenged claims obvious. Id. at 1379.
`Petitioner has met that burden by providing detailed allegations that Kovatch
`and Neal (and for claim 9, Chakrabarti) teach each limitation of the
`challenged claims and that an ordinarily skilled artisan would have been
`motivated to combine teachings of the prior art and would have reasonably
`expected success doing so. Pet. 6–44. The burden of production then
`shifted to Patent Owner to argue or produce evidence that Kovatch is not
`prior art. See Dynamic Drinkware, 800 F.3d at 1380; see also In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–76 (Fed. Cir. 2016) (“In Dynamic
`Drinkware, we noted that, in the context of establishing conception and
`reduction to practice for the purposes of establishing a priority date, the
`burden of production can shift from the patent challenger to the patentee.
`800 F.3d at 1379. This is because a patent challenger has the burden of
`producing evidence to support a conclusion of unpatentability under § 102 or
`§ 103, but a patentee bears the burden of establishing that its claimed
`invention is entitled to an earlier priority date than an asserted prior art
`reference.”); Mahurkar, 79 F.3d at 1577 (“Had Dr. Mahurkar not come
`forward with evidence of an earlier date of invention, the Cook catalog
`would have been anticipatory prior art under section 102(a) because
`Dr. Mahurkar’s invention date would have been the filing date of his
`patent.”).
`Patent Owner alleges, without meaningful explanation in the
`Response, that the inventors conceived of their invention no later than
`July 12, 1999, and reduced it to practice in a prototype no later than
`December 31, 1999. PO Resp. 31–32. Patent Owner avers generally to
`“time-stamped source code, emails, documents, and the testimony of Paul
`Mulka and Benedict Occhiogrosso” as evidence that corroborates testimony
`
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`Patent 7,076,431 B2
`of Alexander Kurganov, but does not cite to any such evidence or testimony
`with specificity. Id.
`Patent Owner further alleges that, to the extent reduction to practice is
`found in a prototype supported by computer source code dated January 7,
`2000, the inventors worked diligently between January 4 and January 7.
`Id. at 32. In support of this argument, Patent Owner cites generally to large
`portions of its supporting declarations. Id. (citing Ex. 2020 ¶¶ 103–119;
`Ex. 2059 ¶¶ 44–91; Ex. 2060 ¶¶ 1–6). According to Patent Owner, it “relies
`on the source code revision logs and emails, as well as the testimony of Paul
`Mulka,” which “shows that from December 1999 to early January 2000, the
`inventors were employed full-time on the Webley Assistant project, and
`every file, or file modification they committed to the source code revision
`system, was for the Webley Assistant project.” Id. at 33. Patent Owner
`further argues that “[t]his activity logged in the source code revision system
`was directed toward and reasonably necessary for a reduction to practice.”
`Id. In the Response, Patent Owner does not cite to any evidence with
`specificity to support these arguments. Patent Owner further argues that “all
`of the diligence activity here by the inventors was related to the claimed
`subject matter and other enhancements to the voice browser in which the
`claimed subject matter operated.” Id. at 34 (citing generally to Ex. 2058;
`Ex. 2060). Patent Owner concludes that “the source code revision logs
`shows that the activity during the diligence period was directed toward and
`reasonably necessary for a reduction to practice,” but does not explain the
`basis for this conclusion or cite to any evidence to support it. Id.
`According to our rules, “[a]rguments must not be incorporated by
`reference from one document into another document.” 37 C.F.R.
`§ 42.6(a)(3). For example, the Board has explained that “parties that
`
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`IPR2020-00846
`Patent 7,076,431 B2
`incorporate expert testimony by reference in their petitions, motions, or
`replies without providing explanation of such testimony risk having the
`testimony not considered by the Board.” Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing
`Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB
`Aug. 29, 2014) (Paper 12) (informative)).
`Petitioner argues that the case made in Patent Owner’s Response is
`“conclusory in fashion,” “does not [] identify particular exhibits where the
`‘source code’ and unidentified ‘documents’ can be found, and never explains
`the relevance of any evidence or how it maps to any challenged claim.”
`Reply 1. Instead, Petitioner argues, Patent Owner “improperly seeks to
`make its antedating case in pages of block-cited argument provided in non-
`word-count-limited declarations which cannot be incorporated by reference
`into the” PO Response. Id. In support of its argument, Petitioner cites to the
`Federal Circuit’s non-precedential case, General Access Solutions, Ltd. v.
`Sprint Spectrum L.P., 811 Fed. Appx. 654 (Fed. Cir. 2020).
`In General Access, the Federal Circuit affirmed a Board decision
`declining to consider arguments on prior conception when those arguments
`were not substantively presented in the patent owner’s briefing and, instead,
`merely directed the Board to arguments and evidence presented in an
`inventor declaration and attached claim charts. Gen. Access, 811 Fed. Appx.
`at 656–57. The Federal Circuit noted the “policy goals” of our rule
`prohibiting such incorporation by reference, including minimizing
`overlooked arguments, eliminating abuse, and avoiding situations where the
`Board is “forced to ‘play archeologist with the record’ and search for
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`arguments that might have made outside of the parties’ briefing.” Id. at 657
`(quoting Rules of Practice for Trials Before the Patent Trial and Appeal
`Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77
`Fed. Reg. 48,612, 48,617 (Aug. 14, 2012)). The Federal Circuit explained
`that the patent owner “had to present a case to establish prior conception of
`every claim limitation,” and that patent owner’s “briefing failed to meet this
`burden.” Id. at 658.
`We determine that Patent Owner has not presented its arguments
`regarding prior conception and reduction to practice in its Response or Sur-
`reply; rather, Patent Owner presents its arguments in several declarations
`and improperly incorporates those arguments by reference into its Response
`and Sur-reply, in violation of Rule 42.6(a)(3). See, e.g., PO Resp. 32 (citing
`Ex. 2059 ¶¶ 44–91; Ex. 2060 ¶¶ 1–6; Ex. 2020 ¶¶ 103–119).
`As to conception, the Patent Owner Response includes two paragraphs
`making a conclusory allegation, without specificity, that the named inventors
`conceived of “the claimed subject matter” while working on a system named
`“the Webley Assistant.” PO Resp. 31–32. Patent Owner cites to a single
`paragraph of Mr. Kurganov’s Declaration, without explaining its relevance.
`Id. (citing Ex. 2020 ¶ 13). Patent Owner argues that Mr. Kurganov’s
`testimony regarding a conception date of July 12, 1999, is “corroborated by
`the time-stamped source code, emails, documents, and the testimony of Paul
`Mulka and Benedict Occhiogrosso.” Id. at 31–32. Patent Owner does not
`cite to any of this evidence with specificity. Patent Owner’s Response does
`not attempt to map any evidence to any limitation of any claim of the ’431
`patent. Nor does the Response point to where such argument and evidence
`might be found, in declarations or otherwise. Rather, Patent Owner invites
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`us to read the Kurganov, Mulka, and Occhiogrosso declarations and
`construct for ourselves a case for conception of ten claims.
`In the Sur-reply, to rebut Petitioner’s arguments that Patent Owner
`had not met its burden of production in the PO Response, Patent Owner
`argues that “[i]n 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 limitations in claim charts and included the entire
`source code files for Petitioners’ inspection.” Sur-reply 2–3. The Patent
`Owner Response does not reference any claim charts. Indeed, the Sur-reply
`does not indicate where, in the record, the claim charts can be found.
`Although none of Patent Owner’s briefing indicates what “antedating
`materials” include such claim charts, both the Kurganov Declaration and the
`Occhiogrosso Declaration appear to provide element-by-element comparison
`of aspects of the alleged Webley Assistant to claims of the ’431 patent, and
`Mr. Kurganov’s declaration references Exhibits 2027 and 2028, one of
`which, Exhibit 2027, appears to be a claim chart mapping claims of the ’431
`patent to the Webley System. See Ex. 2020 ¶¶ 21–83; Ex. 2059 ¶¶ 47–69;
`Ex. 2027; Ex. 2028. Although Patent Owner has not been specific, these
`materials appear to be Patent Owner’s arguments explaining the
`correspondence of the evidence to the limitations of the claims. Thus, Patent
`Owner seeks to incorporate at least 84 paragraphs (46 pages) of argument
`from declarations and 50 pages of claim charts into the Response and/or the
`Sur-reply to support its allegations of prior conception. This is improper
`under Rule 42.6(a)(3), and Patent Owner’s arguments regarding prior
`conception will be disregarded.
`As to reduction to practice, Patent Owner argues that “[t]he evidence
`produced in Mr. Kurganov’s declaration, along with the accompanying
`
`17
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`IPR2020-00846
`Patent 7,076,431 B2
`exhibits, demonstrate that the enhancements to the Webley Assistant
`reduced the ’431 and ’084 inventions to practice in a prototype no later than
`December 31, 1999, five days before Kovatch’s earliest filing date of
`January 4, 2000.” PO Resp. 32. Patent Owner does not further explain this
`contention or cite to any evidence to support it.
`As an alternative, Patent Owner contends that the invention was
`reduced to practice in a prototype on January 7, 2000, when a “grammar file
`was entered into the source code revision system.” Id. Patent Owner
`provides no further explanation. Instead, Patent Owner cites generally to the
`Occhiogrosso, Mulka, and Kurganov declarations. Id. (citing Ex. 2059
`¶¶ 44–91; Ex. 2060 ¶¶ 1–6; Ex. 2020 ¶¶ 103–119). Even here, it is not clear
`whether Patent Owner cites to these declarations to support its reduction to
`practice argument or to show diligence between Kovatch’s January 4, 2000,
`date and January 7, 2000. Id.
`Petitioner responds that Patent Owner has not made its case for
`reduction to practice in its Response, opting instead to incorporate its
`arguments by reference to multiple declarations, claim charts, and other
`evidence. Reply 3–5. Petitioner also provides argument as to specific
`deficiencies in the evidence, should we consider the declarations, claim
`charts, source code, and emails in the record not addressed with specificity
`in the Response. Id. at 5–12.
`As to Petitioner’s arguments in the Reply that Patent Owner did not
`support its reduction to practice case in the Response, Patent Owner argues
`that it “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.” Sur-reply 3. Patent
`Owner does not provide a citation to support this argument. Later, Patent
`
`18
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`IPR2020-00846
`Patent 7,076,431 B2
`Owner argues that “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,” and that “[e]ach of the entries in this
`report demonstrated that the files were indeed committed to the system by
`the relevant date.” Id. (citing Ex. 2058). Patent Owner provides no further
`explanation of Mr. Mulka’s testimony or the activity log of Exhibit 2058,
`which may or may not be the “Exhibit A” referenced in, but not attached to,
`Mr. Mulka’s declaration. Ex. 2060 ¶ 6 (referencing “CVS records between
`December 1, 1999 and January 10, 2000 (attached as Exhibit A)”).
`Similarly, Patent Owner argues, without citation, that it “provided email
`communication that showed that the system was complete.” Sur-reply 3.
`As noted above, Patent Owner must introduce evidence that the
`constructed embodiment met all the limitations of the claims at issue. See
`Cooper, 154 F.3d at 1327. In the Sur-reply, Patent Owner argues that its
`evidence demonstrates such an embodiment, but does not explain where this
`is shown. Sur-reply 5–10. Rather, the Sur-reply contains empty assertions,
`without citation, that “the source code alone is an actual reduction to practice
`of the claimed invention”; “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”; and “[t]he evidence demonstrates an embodiment having a
`computer meeting all claimed limitations, contrary to Petitioners’
`assertions.” Id. at 5–7. Patent Owner argues that “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.” Id. at 7 (citing Ex. 2020 ¶ 14; Ex. 2025). In the
`
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`IPR2020-00846
`Patent 7,076,431 B2
`cited testimony, Mr. Kurganov testifies that source code of the first version
`of the Webley Assistant was implemented on a UNIX cluster of servers, but
`says nothing of the later Webley Assistant that appears to be the basis of
`Patent Owner’s allegations of reduction to practice.4 Ex. 2020 ¶ 14. In any
`case, Mr. Kurganov does not testify here regarding any claims of the ’431
`patent. Patent Owner then argues that “Mr. Kurganov makes this clear in his
`declaration as well in his deposition testimony and email communications
`that the system was operational.” Sur-reply 7. Here, Patent Owner cites,
`without specificity, to 80 paragraphs of declaration testimony and 36 email
`and source code exhibits. Id. (citing Ex. 2020 ¶¶ 20–102; Exs. 2021–2057;
`Ex. 1050, 21:17–22:8, 32:17–23)). This is another example of improper
`incorporation by reference, and Patent Owner’s assertions of reduction to
`practice will be disregarded.
`As noted above, as part of its showing for an actual reduction to
`practice, Patent Owner must introduce evidence that the invention worked
`for its intended purpose. See Cooper, 154 F.3d at 1327. Patent Owner did
`not contend in its Response that the invention allegedly reduced to practice
`
`
`4 To show conception and reduction to practice, Patent Owner appears to
`rely on a later version of the Webley Assistant, namely, “the WA-II
`enhancements, which embody the Challenged claims.” Sur-reply 4. Patent
`Owner does not explain the relevance of the earlier first version of the
`Webley Assistant, “WA I,” discussed in Mr. Kurganov’s declaration
`(Ex. 2020 ¶ 14).
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`IPR2020-00846
`Patent 7,076,431 B2
`worked for its intended purpose. Petitioner pointed this out in the Reply.
`Reply 13–15.5
`Responding to Petitioner, Patent Owner argues that Mr. Mulka
`authenticated unspecified source code files and that “Mr. Kurganov
`recognized the files and detailed how they demonstrated that the code
`functioned for its intended purpose.” Sur-reply 3. Here, Patent Owner cites
`generally to the entirety of Mr. Kurganov’s declaration (Ex. 2020), as well
`as the claim charts of Exhibits 2027 and 2028. Id. Patent Owner continues,
`arguing that “Mr. Occhiogrosso examined Mr. Kurganov’s declaration and
`his exhibits and testified as a [person of ordinary skill in the art] that the
`source code worked as Mr. Kurganov testified.” Id. at 4 (citing Ex. 2059,
`¶¶ 44–91). Patent Owner does not provide further explanation or argument;
`rather, the detailed explanation of the evidence is contained in
`Mr. Occhiogrosso’s declaration rather than the Response or Sur-reply. This
`is an improper incorporation of over 150 paragraphs of argument from two
`declarations, as well as over 50 pages of claim charts.
`
`5 Patent Owner argues in several instances that Petitioner has not proved that
`the Webley System or source code did not work. See, e.g., Sur-reply 4 (“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 cod
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