Trials@uspto.gov
`571-272-7822
`
`Paper No. 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.
`____________
`
`IPR2020-00847
`Patent 9,451,084 B2
`____________
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE,
`and SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`Paper No. 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.
`____________
`
`IPR2020-00847
`Patent 9,451,084 B2
`____________
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE,
`and SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`
`35 U.S.C. § 318(a)
`
`
`
`IPR2020-00847
`Patent 9,451,084 B2
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`
`INTRODUCTION
`I.
`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, 10, and 14 of U.S. Patent No. 9,451,084 B2 (Ex. 1001,
`“the ’084 patent”). Paper 2 (“Pet.”). Parus Holdings, Inc., (“Patent Owner”)
`filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We
`authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response
`(Paper 7, “Reply to POPR”), and Patent Owner filed a Sur-reply (Paper 8,
`“Sur-reply to POPR”). After considering these filings by both parties, we
`instituted an inter partes review of claims 1, 2, 4–7, 10, and 14 of the ’084
`patent on all grounds of unpatentability alleged in the Petition. Paper 9
`(“Institution Decision” or “Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response.
`Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 22 (“Reply”).
`Patent Owner filed a Sur-reply. Paper 24 (“Sur-reply”).
`An oral hearing was held on July 27, 2021, and a transcript of the
`hearing is included in the record. Paper 30 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine Petitioner has established by a preponderance of the
`evidence that claims 1, 2, 4–7, 10, and 14 of the ’084 patent are
`unpatentable.
`
`A.
`
`Related Proceedings
`The parties identify the following district court proceedings as related
`to the ’084 patent: Parus Holdings Inc. v. Apple, Inc., No. 6:19-cv-00432
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`(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., et al.,
`No. 6:19-cv-00438 (W.D. Tex.); Parus Holdings Inc. v. Google LLC, No.
`6:19-cv-00433 (W.D. Tex.); and Parus Holdings Inc. v. LG Electronics,
`Inc., et al., No. 6:19-cv-00437 (W.D. Tex.). Pet. –x–1; Paper 5, 1.
`The parties also identify the following PTAB proceedings that may
`affect or be affected by a decision in this proceeding: IPR2020-00686;
`IPR2020-00687; and IPR2020-00846.2 Pet. –xi–; Paper 5, 1–2.
`
`B.
`
`The ’084 Patent (Ex. 1001)
`The ’084 patent, titled “Robust Voice Browser System and Voice
`Activated Device Controller,” issued September 20, 2016. Ex. 1001, codes
`(54), (45). The ’084 patent relates to a “robust and highly reliable system
`that allows users to browse web sites and retrieve information by using
`conversational voice commands.” Id. at 1:35–38. Systems disclosed by the
`’084 patent allow devices connected to a network to be controlled by
`conversational voice commands spoken into any voice enabled device
`interconnected with the network. Id. at 3:37–41. Systems disclosed by the
`’084 patent also allow users to access and browse web sites when the users
`do not have access to computers with Internet access, by providing users
`with a voice browsing system to browse web sites using conversational
`voice commands spoken into voice enabled devices, such as wireline or
`
`
`1 Petitioner includes its mandatory notices in the preamble section of its
`Petition, where the preamble section is paginated using lower case Roman
`numerals (i.e., ‘i’, ‘ii’, . . . ‘xii’).
`2 Petitioner references a concurrently filed IPR challenging U.S. Patent No.
`7,076,431, which is IPR2020-00846.
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`wireless telephones. Id. at 3:29–32, 3:52–59. The users’ spoken commands
`are converted into data messages by a speech recognition software engine,
`and are transmitted to the user’s desired web site over the Internet. Id. at
`3:60–65. Responses sent from the web site are received and converted into
`audio messages via a speech synthesis engine or a pre-recorded audio
`concatenation application, and finally transmitted to the user’s voice enabled
`device. Id. at 3:65–4:3. The disclosed voice browsing system maintains a
`database containing a list of information sources (e.g., Internet web sites),
`with rank numbers assigned to the information sources. Id. at 3:17–20, 4:5–
`20. The ’084 patent explains that:
`the voice browser system and method uses a web site polling and
`ranking methodology that allows the system to detect changes in
`web sites and adapt to those changes in real-time. This enables
`the voice browser system of a preferred embodiment to deliver
`highly reliable information to users over any voice enabled
`device. This ranking system also enables the present invention
`to provide rapid responses to user requests. Long delays before
`receiving responses to requests are not tolerated by users of
`voice-based systems, such as telephones. When a user speaks
`into a telephone, an almost immediate response is expected. This
`expectation does not exist for non-voice communications, such
`as email transmissions or accessing a web site using a personal
`computer. In such situations, a reasonable amount of
`transmission delay is acceptable. The ranking system . . .
`implemented by a preferred embodiment of the present invention
`ensures users will always receive the fastest possible response to
`their request.
`Id. at 4:4–21. Figure 1 of the ’084 patent, reproduced below, illustrates a
`voice browsing system. Id. at 4:29–30.
`
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`Figure 1 illustrates a voice browsing system. Id. at 4:29–30.
`Voice browsing system 118 illustrated in Figure 1 includes media
`servers 106 (which may contain a speech recognition engine), database 100,
`web browsing servers 102, and firewalls 104 and 108. Id. at 5:10–18, 6:10–
`12, 6:20–23, 20:26–34. Voice browsing system 118 connects on one side to
`voice-enabled device 112 (e.g., a telephone) through public switched
`telephone network 106, and to individual websites 114 through internet 110
`on the other side. Id. at 19:56–20:38.
`Specifically, a user of the voice browsing system establishes a
`connection between voice enabled device 112 and media server 106 by, e.g.,
`calling a telephone number associated with the voice browsing system. Id.
`at 19:59–62. Once the connection is established, media server 106 initiates
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`an interactive voice response (IVR) application that plays audio messages to
`the user presenting a list of options, such as, “stock quotes,” “flight status,”
`“yellow pages,” “weather,” and “news.” Id. at 19:62–67. The user selects
`the desired option (e.g., “yellow pages”) by speaking the name of the option
`into the voice-enabled device 112. Id. at 20:4–18. The system asks the user
`further details of the user’s search, and the user speaks into telephone 112
`the details of the user’s search (e.g., looking for “restaurants,” types of
`restaurants, zip codes for the restaurants). Id. Media server 106 uses the
`speech recognition engine to interpret the user’s speech commands; for
`example, media server 106 may identify keywords in the user’s speech. Id.
`at 6:60–7:2, 20:19–21. Media server 106 then uses the recognized keywords
`to search website records stored in database 100, retrieves an appropriate
`web site record from the database, and provides the record to the web
`browsing server 102. Id. at 6:65–7:2, 20:20–23. Information then is
`retrieved from the responding web site and transmitted to media server 106,
`for conversion into audio messages—performed by a speech synthesis
`software or by selecting among a database of prerecorded voice responses
`contained within database 100. Id. at 20:35–46.
`Database 100 contains sets of records for each web site accessible by
`the voice browsing system. Id. at 5:17–20. Figure 2, reproduced below,
`illustrates an example of web site record 200 in the database. Id. at 4:31–32,
`5:19–20.
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`Figure 2 illustrates an example of a web site record in database 100. Id. at
`4:31–32, 5:19–20.
`Each web site record 200 contains rank number 202 of the web site,
`associated Uniform Resource Locator (URL) 204 for the website, and
`command 206 that enables an extraction agent to generate proper requests to
`the web site and to format data received from the web site. Id. at 5:20–25.
`For each category searchable by a user, database 100 may list several web
`sites, each with a different rank number. Id. at 20:47–50. As an example,
`three different web sites may be listed as searchable under the category of
`“restaurants,” and each of those web sites will be assigned a rank number
`such as 1, 2, or 3. Id. at 20:50–53. The web site with the highest rank (i.e.,
`rank=1) will be the first web site accessed by web browsing server 102. Id.
`at 20:53–55. If the information requested by the user cannot be found at this
`first web site, web browsing server 102 will then search the second ranked
`web site and so forth down the line, until the requested information is
`retrieved or no more web sites are left to be checked. Id. at 20:55–59.
`
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`C.
`
`Illustrative Claim
`Petitioner challenges claims 1, 2, 4–7, 10, and 14, of which sole
`independent claim 1 is illustrative. Claim 1 is reproduced below with
`Petitioner’s claim element identified in brackets:
`1. [Preamble] A system for acquiring information from one or
`more sources maintaining a listing of web sites by receiving
`speech commands uttered by users into a voice-enabled device
`and for providing information retrieved from the web sites to
`the users in an audio form via the voice-enabled device, the
`system comprising:
`
`
`[1.a] at least one computing device, the computing device
`operatively coupled to one or more networks;
`[1.b] at least one speaker-independent speech-recognition
`device,
`the speaker-independent speech-recognition
`device operatively connected to the computing device and
`configured to receive the speech commands;
`[1.c] at least one speech-synthesis device, the speech-
`synthesis device operatively connected to the computing
`device;
`[1.d] memory operatively associated with the computing
`device with at least one instruction set for identifying the
`information to be retrieved, the instruction set being
`associated with the computing device, the instruction set
`comprising:
`a plurality of web site addresses for the listing of web sites,
`each web site address identifying a web site containing the
`information to be retrieved;
`[1.e] at least one recognition grammar associated with the
`computing
`device,
`each
`recognition
`grammar
`corresponding to each instruction set and corresponding to
`a speech command, the speech command comprising an
`information request provided by the user, [1.f] the
`speaker-independent
`speech-recognition
`device
`configured to receive the speech command from the users
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`
`the
`to select
`the voice-enabled device and
`via
`corresponding recognition grammar upon receiving the
`speech command;
`[1.g] the computing device configured to retrieve the
`instruction set corresponding to the recognition grammar
`provided by the speaker-independent speech-recognition
`device;
`[1.h] the computing device further configured to access at
`least one of the plurality of web sites identified by the
`instruction set to obtain the information to be retrieved,
`[1.i] wherein the computing device is further configured
`to periodically search via the one or more networks to
`identify new web sites and to add the new web sites to the
`plurality of web sites, [1.j] the computing device
`configured to access a first web site of the plurality of web
`sites and, if the information to be retrieved is not found at
`the first web site, the computer configured to access the
`plurality of web sites remaining in an order defined for
`accessing the listing of web sites until the information to
`be retrieved is found in at least one of the plurality of web
`sites or until the plurality of web sites have been accessed;
`[1.k] the speech synthesis device configured to produce an
`audio message containing any retrieved information from
`the plurality of web sites, and
`the speech synthesis device further configured to transmit the
`audio message to the users via the voice-enabled device.
`Ex. 1001, 24:2–59 (limitation numbering designated by Petitioner; see
`Pet. 75–77 (“CLAIMS LISTING APPENDIX”)).
`
`D. Instituted Challenges to Patentability
`
`We instituted inter partes review of claims 1, 2, 4–7, 10, and 14 of the
`’084 patent on the following challenges. Dec. 2–3, 48.
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`
`Claim(s) Challenged
`1, 2, 4–7, 10, 14
`14
`1, 2, 4–7, 10, 14
`14
`
`35 U.S.C. §
`103(a)3
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Kurganov-2624, Chakrabarti5
`Kurganov-262, Chakrabarti,
`DeSimone6
`Kovatch7, Chakrabarti, Neal8
`Kovatch, Chakrabarti, Neal,
`DeSimone
`
`
`Petitioner relies, inter alia, on two Declarations from Stuart J. Lipoff
`(Exs. 1002, 1057), and a Declaration from Dr. Martin Walker (Ex. 1053) to
`support its challenges. Relevant to our disposition of this case, Patent
`Owner relies on a Declaration from Benedict Occhiogrosso. Ex. 2059.
`
`II. ANALYSIS
`
`A. Claim Construction
`Petitioner filed its Petition on April 18, 2020. Pet. 74, 80. Based on
`that filing date, we apply the same claim construction standard that is
`applied in civil actions under 35 U.S.C. § 282(b), which is articulated in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See
`83 Fed. Reg. 51,340 (Oct. 11, 2018) (applicable to inter partes reviews filed
`on or after November 13, 2018).
`
`
`3 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 ’084
`patent was filed before March 16, 2013, the effective date of the relevant
`amendment, the pre-AIA version of § 103 applies.
`4 US 2001/0047262 A1, published November 29, 2001 (Ex. 1004).
`5 US 6,418,433 B1, issued July 9, 2002 (Ex. 1008).
`6 US 5,787,470, issued July 28, 1998 (Ex. 1009).
`7 WO 2001/050453 A2, published July 12, 2001 (Ex. 1005).
`8 US 6,324,534 B1, issued November 27, 2001 (Ex. 1007).
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`Under Phillips, claim terms are afforded “their ordinary and
`customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention.” Id. at 1313. Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`In the Petition, Petitioner does not advance a specific construction for
`any claim term. See Pet. 5. Similarly, Patent Owner proposes no express
`constructions in the Patent Owner Response. See PO Resp. 18.
`On the fully developed record, we determine that it is not necessary to
`provide an express construction for any claim term for purposes of resolving
`the controversy. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the
`extent necessary to resolve the controversy.’”) (quoting Vivid Techs.,
`200 F.3d at 803).
`
`B. Level of Ordinary Skill in the Art
`Petitioner describes a person having ordinary skill in the art as having
`“a Bachelor’s degree in electrical engineering, computer science or a related
`field, and at least two years of experience with voice interfaces and
`information processing. More education could substitute for less experience,
`and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not
`contest Petitioner’s definition of the skilled artisan. See generally, PO Resp.
`Neither party argues that the outcome of this case would differ based
`on our adoption of any particular definition of one of ordinary skill in the art.
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`Moreover, the level of ordinary skill in the art is also reflected by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
`the art does not give rise to reversible error ‘where the prior art itself reflects
`an appropriate level and a need for testimony is not shown.’”); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent
`Appeals and Interferences did not err in concluding that the level of ordinary
`skill in the art was best determined by the references of record).
`Thus, on the complete record, we accept Petitioner’s assessment of the
`level of one of ordinary skill in the art.
`
`C. Asserted Obviousness based on Kurganov-262 and Chakrabarti
`(Ground 1)
`Petitioner asserts that claims 1, 2, 4–7, 10, and 14 would have been
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combined
`teachings of Kurganov-262 and Chakrabarti. Pet. 6–25. For support,
`Petitioner relies on declaration testimony from Stuart J. Lipoff (Ex. 1002).
`
`1. Overview of Kurganov-262
`The ’084 patent claims priority to Application No. 09/776,996
`through a chain of continuation applications. Ex. 1001, code (63).
`Kurganov-262 is the publication of Application No. 09/776,996. Ex. 1004,
`code (21). Petitioner indicates that the disclosure in Kurganov-262 is
`substantially identical to that of the ’084 patent. Pet. 11. Patent Owner
`states that “Kurganov-262 is the priority document for the [ʼ084] Patent and
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`provides disclosure of each and every claim element of the challenged
`claims.” PO Resp. 19.
`
`2. Overview of Chakrabarti
`Chakrabarti discloses a “[s]ystem and method for focused web
`crawling.” Ex. 1008, code (54). Chakrabarti discloses that the system
`generates a database of Web pages that is focused on a predefined topic or
`topics, for subsequent efficient searching of the database by users. Id. at
`2:56–60. The system is illustrated in Figure 1, reproduced below.
`
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`Figure 1 is a block diagram of a system for focused Web crawling, showing
`an example Web page table entry and associated link table entry in an
`exploded relationship to a crawl database. Id. at 3:65–67.
`Figure 1 illustrates system 10 for focused Web crawling. Id. at 4:13–
`14. System 10 includes a digital processing apparatus (e.g., computer 12)
`that accesses the World Wide Web via Internet 13. Id. at 4:14–16.
`Computer 12 includes focused crawler 14, which may be executed by a
`processor within computer 12 as a series of computer-executable
`instructions. Id. at 4:26–28. Focused crawler 14 accesses topic analyzer 28.
`Id. at 4:61–62. Topic analyzer 28 compares the content of a Web page with
`a predefined topic or topics and generates a response representative of how
`relevant the Web page is to the topic. Id. at 4:63–65.
`System 10 generates crawl database 30 that solely contains
`information on Web pages that pertain to the topic or topics of interest. Id.
`at 5:14–17. Crawl database 30 includes Web page table 32 that includes
`corresponding link tables 34, each of which is an edge table relative to Web
`page table 32. Id. at 5:17–21. Web page table 32 includes Uniform
`Resource Locator (URL) field 36 that represents a Web page URL. Id. at
`5:31–34. Link table 34 is further associated with URL field 36. Id. at 6:16–
`17.
`
`Chakrabarti discloses that, using system 10, a user can generate a
`query for information using keyboard 22 or mouse 24, and in response a
`conventional browser or searcher 58 associated with computer 12 accesses
`crawl database 30 to retrieve a list of relevant Web pages therefrom. Id. at
`6:35–40. Browser 58 responds to the query with Web pages relevant to the
`predefined topic. Id. at 6:44–46.
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`3. The Parties’ Contentions Regarding Independent Claim 1
`Petitioner asserts that claim 1 would have been obvious over the
`combined disclosures of Kurganov-262 and Chakrabarti. Pet. 6–25.
`Specifically, Petitioner notes that Kurganov-262 is the publication of
`application 09/776,996––within the priority chain of the ʼ084 patent––but
`“is [35 U.S.C. §] 102(b) prior art because the challenged claims are not
`entitled to priority earlier than 2004.” Pet. 11. Petitioner contends that the
`limitation recited in sole independent claim 1 that requires periodic search
`and identification of “new web sites and to add the new web sites to the
`plurality of web sites”––limitation 1.i––lacks written description support in
`application 09/776,996. Id. at 6, 76. Thus, according to Petitioner, because
`the full scope of the claim 1 does not have written description support in
`application 09/776,996, “no challenged claim is entitled to the benefit of
`application 09/776,996’s filing date” under 35 U.S.C. § 120. Id. at 6.
`Regarding the actual disclosure of Kurganov-262, Petitioner details
`how it believes this reference discloses each and every limitation recited in
`claim 1 except for “limitation 1.i.” Pet. 11–19. Petitioner asserts limitation
`1.i is taught by Chakrabarti, and that the skilled artisan “would have had
`multiple reasons to modify Kurganov-262’s information-retrieval system to
`periodically search for new web sites as Chakrabarti teaches.” Id. at 19–23.
`Specifically, Petitioner asserts that the skilled artisan would have been
`motivated to apply Chakrabarti’s crawling techniques to Kurganov-262’s
`system “to achieve the benefits Chakrabarti discusses of adding ‘relevant,
`valuable’ web page addresses to make the information-retrieval database
`‘comprehensive’ to increase the likelihood of finding a user’s requested
`information.” Id. at 21. Petitioner also asserts that Chakrabarti’s focused
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`crawling techniques would have been well-suited to Kurganov-262’s system
`because the systems of these references “use a database of web site listings
`categorized by relevance to particular topics” and such techniques
`“enhance[] the ‘efficient’ use of a topic-categorized information-retrieval
`database like Kurganov-262’s.” Id. at 22. Petitioner asserts that
`incorporating Chakrabarti’s crawling techniques into Kurganov-262’s
`system would have been “nothing more than the predictable use of prior-art
`elements according to their established functions.” Id. (citing KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
`Patent Owner advances no specific arguments contesting Petitioner’s
`assertions regarding the respective disclosures of Kurganov-262 and
`Chakrabarti, or Petitioner’s proffered motivations to combine the teaching of
`these references. PO Resp. 31–36. Rather, Patent Owner argues that
`Kurganov-262 is not prior art because the challenged claims have written
`description support in the ʼ084 patent, 9 thus entitling these claims to a
`priority date preceding that of Kurganov-262’s publication (November 29,
`2001). Id. Specifically, Patent Owner points to the ʼ084 patent’s Abstract
`and Summary of the Invention, and its disclosure that the inventive system
`“dynamically adapt[s] to changes in the rapidly evolving web sites that exist
`on the Internet.” Id. at 31–32 (citing Ex. 1001, Abstract, 3:13–16, 21:42–
`
`
`9 The panel recognizes that the relevant issue for determining whether
`Kurganov-262 is prior art is whether the application 09/776,996 contains
`written description support for the challenged claims. However, when
`identifying such support, Patent Owner cites to disclosure in the ’084 patent,
`which both parties agree has the same disclosure (but for the claims) as
`Kurganov-262 and application 09/776,996. Following the parties’
`convention, we also cite to the ’084 patent.
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`44). Patent Owner also points to three paragraphs within Kurganov-262
`which purport to include “getting information from Lycos and Yahoo, which
`include[s] web crawling functionality.” Id. at 32 (citing Ex. 1004 ¶¶ 30, 39,
`42). 10 Based on these disclosures, Patent Owner asserts that the skilled
`artisan would have understood that a web search system would include the
`ability to identify new web sites or engage in web crawling, and would need
`to adapt to the changing Internet by identifying new web sites. Id. at 32
`(citing Ex. 2059 ¶¶ 44–91, 149).
`Patent Owner also asserts that the first and second embodiments
`described in the ʼ084 patent––one browsing web sites and the other
`browsing devices––“are not exclusive” and that the skilled artisan would
`have understood that the description for browsing devices “is equally
`applicable to web sites and to the first embodiment system for browsing web
`sites.” PO Resp. 32. Patent Owner alleges that “the devices in the second
`embodiment may in fact be web sites, and operate similarly to the first
`embodiment.” Id. at 33. Patent Owner also alleges that “[w]ithout
`‘identify[ing] new websites’ it would be impossible for the system to
`‘dynamically adapt to changes in the rapidly evolving web sites that exist on
`the Internet’” as discussed in the ʼ084 patent. Id. at 33–34. Patent Owner
`then explains how it believes the ʼ084 patent’s discussion of “polling” and
`“pinging” the devices of the first embodiment would apply equally to the
`web sites of the second embodiment. Id. at 34.
`Petitioner responds that most of Patent Owner’s arguments simply
`rehash the Preliminary Response arguments that we rejected in our
`
`
`10 These paragraphs correspond to Ex. 1001, 5:47–66, 7:48–10:25, 18:53–
`19:46.
`
`17
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`Patent 9,451,084 B2
`
`institution decision, and give us no reason to reconsider our earlier
`determinations. Reply 1. Petitioner also asserts that the Declaration that
`Patent Owner relies on for support “merely parrots the [Patent Owner
`Response] verbatim,” and is thus entitled to little or no probative weight. Id.
`at 1–2 (citing Ex. 2059 ¶¶ 150–153). Petitioner contends that Patent Owner
`provides no evidence that the skilled artisan would have recognized that the
`ʼ084 patent’s web search system would include the ability to identify new
`websites or engage in web crawling, and “[e]ven if web crawling were
`known and obvious to add to what is described, obviousness is insufficient
`for written description.” Id. at 2 (citing Ex. 1049, 84–87; Ex. 1057 ¶¶ 2–3).
`Petitioner also asserts that Patent Owner has not produced evidence to
`support its argument that limitation 1.i was reduced to practice, and “[e]ven
`if it had, that is irrelevant to written description in the parent specification.”
`Id. at 2–3.
`Petitioner furthermore disagrees with Patent Owner’s assertion that
`dynamic adaptation to changes in web sites would not be possible without
`identifying new websites because such changes occur “within known
`websites.” Id. at 3. Petitioner also disagrees with Patent Owner’s argument
`that “the ‘second embodiment’ ‘could never detect a new device’ unless it
`polls devices not in the database” because, according to Petitioner, “[t]he
`specification directly refutes this––the second embodiment polls ‘devices . . .
`listed in database 508.’” Id. (citing Ex. 1001, 23:26–44). Petitioner also
`explains why it believes Patent Owner’s assertions regarding “polling” of
`websites is unsupported and erroneous. Id. at 4.
`In response, Patent Owner asserts that the support for limitation 1.i
`“comes from the knowledge of one of ordinary skill in the art and the
`
`18
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`IPR2020-00847
`Patent 9,451,084 B2
`
`Kurganov application’s disclosure of its second embodiment.” Sur-reply 1.
`Patent Owner also asserts that “[t]he polling of devices . . . in the second
`embodiment is not limited to known devices” because the application
`expressly discloses adding new devices and if that “were restricted to known
`devices, new devices could never be added.” Id. at 1–2; see also id. at 3
`(advancing a similar argument). Patent Owner also asserts that “the
`disclosure of polling or pinging devices 500 should be understood [to] refer
`to the IP addresses or potential locations of devices, not [the] devices
`themselves.” Id. at 3.
`
`4. Obviousness Analysis of Claim 1
`A description adequate to satisfy 35 U.S.C. § 112, first paragraph,
`“must ‘clearly allow persons of ordinary skill in the art to recognize that [the
`inventor] invented what is claimed.’ In other words, the test for sufficiency
`is whether the disclosure of the application relied upon reasonably conveys
`to those skilled in the art that the inventor had possession of the claimed
`subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted, alteration
`in original).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious to a person of
`ordinary skill in the art at the time the invention was made. KSR, 550 U.S.
`at 406. Obviousness is resolved based on underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`19
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`IPR2020-00847
`Patent 9,451,084 B2
`
`skill in the art; and (4) objective evidence of nonobviousness. See Graham
`v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We have analyzed both parties’ arguments and evidence consistent
`with these legal principles and, on the complete record, find Petitioner has
`met its burden to establish by a preponderance of the evidence that
`Kurgonov-262 is prior art to the subject matter of claim 1, and that
`Kurgonov-262 and Chakrabarti render this subject matter obvious under
`35 U.S.C. § 103. Our analysis begins with a discussion of written
`description because it relates to the threshold issue of whether Kurganov-
`262 is prior art to the ʼ084 patent, even though the ʼ996 application which
`published as Kurganov-262 appears in the ʼ084 patent’s priority chain.
`Ex. 1001, code 63.
`
`Written Description of “Limitation 1.i”
`
`We are persuaded by Petitioner’s arguments that sufficient written
`description support does not exist in the ʼ996 application for “limitation 1.i”
`which requires the computing device to be “configured to periodically
`search via the one or more networks to identify new web sites and to add the
`new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine
`that Kurganov-262 is available as prior art against the challenged claims.
`On the complete record, Patent Owner fails to direct us to specific
`disclosure within the ʼ996 application that evinces written description for
`limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to
`describe with adequate precision a computing device configured to
`periodically search the network(s) to identify new web sites and add such
`new web sites to the plurality of web sites that are accessed. See PO Resp.
`31–34.
`
`20
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`
`For example, Patent Owner provides several citations to the ʼ084
`patent that lack specificity regarding limitation 1.i. Id. at 31–32. Patent
`Owner then points to the ʼ084 patent disclosure that
`In the preferred [second] embodiment, the devices 500 appear as
`‘web sites’ connected to the network 502. This allows a network
`interface system, such as a devic
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