`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`ARGOS USA LLC, DOLE FOOD COMPANY, INC., THE GILLETTE
`COMPANY, LLC, MILACRON LLC, PLY GEM INDUSTRIES, INC.,
`REVLON CONSUMER PRODUCTS CORPORATION, CALPINE
`CORPORATION, WATTS WATER TECHNOLOGIES, INC., LIBERTY
`MUTUAL INSURANCE COMPANY, INTERNATIONAL PAPER
`COMPANY, STATE INDUSTRIAL PRODUCTS CORP., BASSETT
`FURNITURE INDUSTRIES, INC.,
`Petitioners,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`Case No. IPR2021-00771
`
`Patent No. 7,231,379
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,231,379
`
`
`
`
`
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`

`

`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`TABLE OF CONTENTS
`
` 
`
` 
`
`INTRODUCTION ............................................................................................. 1 
`
`  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ........................... 2 
`
`A.  Real Party-In-Interest .................................................................................... 2 
`
`B.  Related Matters .............................................................................................. 3 
`
`C.  Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 5 
`
`D.  Service Information ....................................................................................... 5 
`
`  SUMMARY OF THE ’379 PATENT ............................................................... 5 
`
`A.  Description of the Alleged Invention of the ’379 Patent .............................. 5 
`
`B.  Summary of the Prosecution History of the ’379 Patent .............................. 9 
`
`  REQUIREMENTS FOR INTER PARTES REVIEW ..................................... 11 
`
`A.  Grounds for Standing .................................................................................. 11 
`
`B. 
`
`Identification of Challenge and Relief Requested ...................................... 11 
`
`C.  Level of Skill of a Person Having Ordinary Skill in the Art ....................... 12 
`
`D.  Claim Construction ...................................................................................... 12 
`
`1. 
`
`2. 
`
`“keyword” ................................................................................................ 12 
`
`“jumping” ................................................................................................. 14 
`
`  THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
`CLAIMS OF THE ’379 PATENT ARE UNPATENTABLE ................................. 15 
`
`A.  Ground 1: Wesemann renders claims 1, 2, and 7 obvious .......................... 15 
`
`1.  Claim 1 ..................................................................................................... 17 
`
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`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
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`2.  Claim 2 ..................................................................................................... 31 
`
`3.  Claim 7 ..................................................................................................... 33 
`
`B.  Ground 2: Wesemann in view of Rajaraman renders Claims 3-6 obvious . 41 
`
`1.  Claims 3-4 ................................................................................................ 44 
`
`2.  Claims 5-6 ................................................................................................ 49 
`
`C.  Ground 3: Fratkina renders claims 1, 2, and 7 obvious .............................. 54 
`
`1.  Claim 1 ..................................................................................................... 56 
`
`2.  Claim 2 ..................................................................................................... 64 
`
`3.  Claim 7 ..................................................................................................... 65 
`
`D.  Ground 4: Fratkina in view of Rajaraman renders Claims 3-6 obvious .... 70 
`
`  CONCLUSION .............................................................................................. 71 
`
`
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`ii
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`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`EXHIBIT LIST
`
`Description
`U.S. Patent 7,231,379 to Parikh et al. (’379 Patent)
`File History of U.S. Patent 7,231,379 to Parikh et al. (’379 File
`History)
`Guada’s Combined Opposition to Defendants’ Motion to
`Dismiss, Guada Techs LLC. v. Netflix, Inc. (Dkt. No. 20, No.
`2:16-cv-1153-RWS-RSP)
`U.S. Pat. No. 6,731,724 to Wesemann et al. (“Wesemann”)
`U.S. Pat. No. 6,366,910 to Rajaraman et al. (“Rajaraman”)
`U.S. Pat. No. 7,539,656 to Fratkina et al. (“Fratkina”)
`Declaration of Dr. Padhraic Smyth (“Smyth”)
`RESERVED
`Dr. Padhraic Smyth Curriculum Vitae
`JOHN E. HOPCROFT, JEFFREY D. ULLMAN & ALFRED V. AHO,
`DATA STRUCTURE AND ALGORITHMS 75–106, 155–197,
`306–346 (Addison-Wesley 1983)
`Donald, B. Crouch, Carolyn J. Crouch & Glenn Andreas, The
`Use Of Cluster Hierarchies in Hypertext Info. Retrieval,
`HYPERTEXT ‘89 PROC., ACM PRESS, at 225-237, 1989
`Yvan Leclerc, Steven W. Zucker, Denis Leclerc, A Browsing
`Approach to Documentation, IEEE COMPUTER, IEEE PRESS,
`June 1982, at 46–49
`Ricky E. Savage, James K. Habinek, Thomas W. Barnhart,
`The Design, Simulation, and Evaluation of a Menu Driven
`User Interface, PROC. OF THE 1982 CONF. ON HUMAN FACTORS
`IN COMPUTING SYS., ACM PRESS, March 1982, at 36–40
`RICARDO BAEZA-YATES, BERTHIER RIBIERO-NETO, MODERN
`INFO. RETRIEVAL 24-41 (ACM Press 1999)
`
`Exhibit
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`
`
`iii
`
`

`

`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`Daniel Cunliffe, Carl Taylor, and Douglas Tudhope, Query-
`Based Navigation in Semantically Indexed Hypermedia, PROC.
`OF THE EIGHTH ACM CONF. ON HYPERTEXT, ACM PRESS,
`1997, at 87–95
`the Cheap,
`Hornstein, Telephone Voice Interfaces on
`PROCEEDINGS OF THE UBLAB ‘94 CONF., 1994, at 134–147.
`Paul De Bra, et al., Info. Retrieval in Distrib. Hypertexts,
`RIAO 1994, at 481–491, 1995
`U.S. Pat. No. 6,198,939 to Holmstrom
`Karen Sparck Jones, A Look Back And A Look Forward,
`PROCEEDINGS OF THE 11TH ACM SIGIR INT’L CONF. ON RSCH.
`AND DEV. IN INFO. RETRIEVAL ACM Press, 1988, 14 pages
`Gerard Salton, Anita Wong, and Chung-Shu Yang, A Vector
`Space Model For Automatic Indexing, COMMC’NS OF THE
`ACM, 1975 18(11), at 613–620
`Jinxi Xu and W. Bruce Croft, Query Expansion Using Local
`And Global Document Analysis, PROCEEDINGS OF THE 19TH
`ACM SIGIR INT’L CONF. ON RSCH AND DEV. IN INFO.
`RETRIEVAL ACM, 1996, at 4–11
`Carolyn J. Crouch, A Cluster-Based Approach to Thesaurus
`Construction, PROC. OF THE 11TH ACM SIGIR INT’LCONF. ON
`RSCH AND DEV. IN INFO. RETRIEVAL, ACM, 1988, at 309–320
`Hinrich Schütze and Jan O. Pedersen, A Cooccurrence-Based
`Thesaurus And Two Applications to Information Retrieval, 1
`INTELLIGENT MULTIMEDIA INFO. RETRIEVAL SYS. AND MGMT.,
`, 1994 at 266–274
`Güntzer et al., Automatic Thesaurus Construction by Machine
`Learning from Retrieval Sessions, 25 INFO. PROC. & MGMT.
`No. 3, 1998, at 265–273, 1998
`Mostafa et al., A Multilevel Approach
`to Intelligent
`Information Filtering: Model, Sys., and Evaluation, 15 ACM
`TRANSACTIONS ON INFO. SYS. NO. 4, 1997, at 368–399, 1997
`U.S. Patent No. 6,006,225 to Bowman et al.
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`
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`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`Ex. 1027
`
`Ex. 1028
`
`Ex. 1029
`
`Gerald Salton, The Evaluation Of Automatic Retrieval
`Procs.—Selected Test Results Using the SMART Sys.,
`AMERICAN DOCUMENTATION, 16(3), 1965, at 209–222
`Larry Fitzpatrick, Mei Dent, Automatic Feedback Using Past
`Queries: Social Searching?, 31 ACM SIGIR FORUM 1997, at
`306-313
`U.S. Pat. No. 6,453,315 to Weissman (“Weissman”)
`
`
`
`v
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`

`

`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`
`
`INTRODUCTION
`
`Petitioners respectfully requests an Inter Partes Review (“IPR”) of claims 1-
`
`7 (collectively, the “Challenged Claims”) of U.S. Patent 7,231,379 (“the ’379
`
`Patent”). The ’379 Patent broadly claims the use of keywords for searching a
`
`hierarchical network or menu tree organized as an ordered pattern. There are only
`
`two concepts related to navigation of hierarchical systems in the claims, and they are
`
`both obvious in view of the prior art.
`
`First, when a user inputs a given keyword, the claimed method causes the
`
`system to “jump” the user to the node or vertex associated with that keyword,
`
`without requiring the user to traverse through each intervening step in the
`
`hierarchical network. The allowance of the ’379 Patent was largely based on this
`
`“jumping” concept. However, as shown by the Wesemann and Fratkina prior art
`
`references, such “jump[ing]” between different nodes was well-known in
`
`hierarchically arranged systems before the filing of the ’379 Patent in 2002. See,
`
`e.g., Wesemann (EX1004), Abstract; see also, e.g., Smyth Decl. (EX1007), ¶¶36-40,
`
`49, 55-56, 84.
`
`Neither Wesemann nor Fratkina was cited during prosecution of the ’379
`
`Patent.
`
`
`
`1
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`

`

`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`Second, the ’379 Patent includes four claims related to using a thesaurus to
`
`search synonyms of user inputs and updating that thesaurus to understand new
`
`synonyms. However, such thesaurus searching and updating had already been
`
`significantly developed by the 1990s, and these thesaurus limitations fail to add
`
`anything new over the prior art. Smyth, ¶¶41-45, 69-76.
`
`Navigating hierarchical trees was not novel in 2002, and the claims of the ’379
`
`Patent fail to include any limitations that would make it a non-obvious improvement
`
`over what had already been practiced for years before the filing of the patent. See
`
`§ V; see also Smyth, generally, ¶¶31-93.
`
`Petitioners, therefore, respectfully request institution of inter partes review of
`
`the Challenged Claims.
`
` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest
`
`Argos USA LLC, Dole Food Company, Inc., The Gillette Company, LLC,
`
`Proctor & Gamble Company, Big Commerce, Inc., Milacron LLC, Ply Gem
`
`Industries, Inc., Revlon Consumer Products Corporation, Calpine Corporation,
`
`Watts Water Technologies, Inc., Liberty Mutual Insurance Company, International
`
`Paper Company, State Industrial Products Corp., and Bassett Furniture Industries,
`
`Inc. are the real parties-in-interest.
`
`
`
`2
`
`

`

`B. Related Matters
`
`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`The ’379 Patent is the subject of the following district court cases:
`
`Plaintiff
`
`Defendant
`Argos USA LLC
`Ply Gem Industries, Inc.
`
`Litigation Number
`1-20-cv-00993
`1-20-cv-01718
`
`Venue
`
`Guada
`Technologies,
`LLC
`
`1-20-cv-01143
`1-20-cv-01000
`
`Milacron LLC
`Revlon Consumer
`Products Corporation
`Dole Food Company, Inc. 1-20-cv-00869
`The Gillette Company
`1-20-cv-00999
`LLC
`Rolled Alloys, Inc.
`
`1-20-cv-01432
`
`District of
`Delaware
`
`
`Guada has asserted the ’379 Patent in over fifty other closed cases that are not
`
` 
`
`listed here.
`
`The above cases involving Petitioners are in their early stages and no
`
`scheduling orders have yet issued. At institution, the investment by the court will
`
`be nominal, and it is unlikely the court’s trial dates will precede the final written
`
`decision. Therefore, the Fintiv factors weigh in favor of institution.1
`
`The ’379 Patent was the subject of the following terminated petitions for IPR:
`
`Petitioner
`
`
`PO
`
`Case Number
`
`1 Petitioners request additional briefing to address any changed circumstances in
`
`these cases.
`
`
`
`3
`
`

`

`Unified Patents Inc.
`BloomReach Inc. et al.
`Oracle Corp.
`
`Guada Technologies, LLC
`
`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`IPR2017-01039
`IPR2019-01304
`IPR2020-00598
`
`
`
`The PTAB instituted IPR in the BloomReach petition based on substantially
`
`the same prior art and citations used here. BloomReach, IPR2019-01304, Paper 11.
`
`Petitioners have therefore demonstrated a reasonable likelihood that they will prevail
`
`on at least one ground for at least the same reasons found by the PTAB in the
`
`BloomReach IPR.
`
`The General Plastic factors weigh in favor of institution given the volume of
`
`PO’s litigation activity asserting the ’379 Patent. See § II.B. Although three earlier
`
`petitions have challenged the ’379 Patent, none of those proceedings received a final
`
`determination. Further, the Board instituted IPR based on substantially similar
`
`grounds raised here. Most importantly, there is no relationship between the prior
`
`petitioners (sued over two years ago) and Petitioners here. Petitioners had not even
`
`received notice letters when the prior IPR was filed. Thus, the Petitioners here are
`
`not similarly situated to the prior petitioners. See Bayerische Motoren Werke
`
`Aktiengesellschaft and BMW of N. Am., LLC v. Paice LLC & the Abell Found., Inc.,
`
`IPR2020-01396, Paper 13 (citing General Plastic Industrial Co., Ltd., v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential)).
`
`
`
`4
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`

`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`Lead Counsel
`Joshua A. Griswold, Reg. No. 46,310
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 214-292-4034
`Fax: 877-769-7945
`Email: IPR00012-0119IP1@fr.com
`
`D.
`
`Service Information
`
`Backup counsel
`Ricardo J. Bonilla, Reg. No. 65,190
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 214-292-4012
`Fax: 877-769-7945
`PTABInbound@fr.com
`
`Please address correspondence/service to the above-listed address. Petitioners
`
`consent to email service at IPR00012-0119IP1@fr.com (referencing No. 00012-
`
`0119IP1
`
`and
`
`cc’ing
`
`PTABInbound@fr.com,
`
`griswold@fr.com
`
`and
`
`rbonilla@fr.com).
`
` SUMMARY OF THE ’379 PATENT
`A. Description of the Alleged Invention of the ’379 Patent
`
`The ’379 Patent relates to methods for searching a hierarchical “menu tree”
`
`of nodes or vertices. ’379 Patent, 2:22-30, 3:5-28. The Applicants’ allegedly novel
`
`take on this concept is a search system that “jumps” users to different nodes on a
`
`hierarchical tree without traversing through intervening nodes. See, e.g., ’379 File
`
`History, at 47 (“Appellant’s claimed invention solves the inadequacies of prior art
`
`systems, by allowing the system to cause the user to ‘jump’ from one node in the
`
`
`
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`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
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`hierarchy to another node that is not directly connected to that node, without having
`
`to traverse through every intervening node in the path.”). In prosecution, Patent
`
`Owner (PO) construed “jumping,” used in both independent claims 1 and 7, to mean
`
`“a direct traversal from one node or vertex to another node or vertex that is not
`
`directly connected to it (i.e., without traversal through any intervening nodes or
`
`vertices or to a node or vertex whose only least common ancestor with that node or
`
`vertex is the root node or vertex).”2,3 ’379 File History, at 89. The ’379 Patent asserts
`
`that jumping may occur laterally (i.e., across branches of the hierarchical tree) and/or
`
`vertically (i.e., up or down a corresponding hierarchical tree branch). See, e.g., ’379
`
`Patent, 12:49-56, 14:54-63. An example of jumping explained by the ’379 Patent is
`
`reproduced in reference to Figure 2:
`
`[W]hen a response to a verbal description is provided by a user, possible
`keywords are identified in the response and used to search the index
`and identify any node to which the response may be directed,
`irrespective of the hierarchy. Thus, a user response of “an orange” to a
`
`
`
`2 For the purposes of this Petition, Petitioners do not contest this construction of
`
`“jumping.” Petitioners do not agree to PO’s proposed construction(s) of other terms
`
`or phrases in any other proceedings.
`
`3 Emphasis added throughout unless otherwise noted.
`
`
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`6
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`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
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`verbal description located above the “fruit” node 202 in the hierarchy,
`for example, “What would you like to buy today?” would cause the
`system to identify “orange” as a key word from the response, search the
`index, and directly identify node [](206) as the node whose verbal
`description should be presented next, thereby avoiding the need to
`traverse intervening nodes, for example, through the “fruit” node
`(202)[], at all. This illustrates an example of a simple jump according
`to the invention.
`
`
`Id., 6:7-21, Fig. 2.
`
`
`
`The ’379 Patent does not require the system to jump between nodes without
`
`traversing the hierarchy as PO argued during the BloomReach proceedings. While
`
`the method of claim 1 occurs in the context of “a system,” neither claims 1 nor 7
`
`(which does not even mention a system) include this limitation. Instead, the
`
`specification makes clear that the object of the invention is to improve the user
`
`navigation experience by allowing a user to jump between vertices that are not
`
`directly connected. See, e.g., ’379 Patent, at 3:29-34 (“In overview, in accordance
`
`
`
`7
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`

`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
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`with the teachings of our invention, the user can navigate the graph or tree in a way
`
`that allows them [the users] to skip from one vertex to another vertex[] where the
`
`vertices may not be connected together by an edge. This eliminates the necessity for
`
`making many choices.”). During prosecution, PO repeatedly argued that it was the
`
`user experience of “jumping” between remote nodes that distinguished the claims
`
`over the prior art. ’379 File History, at 90 (“Appellant’s claimed invention solves
`
`the inadequacies of the prior art systems, by allowing the user to ‘jump’ from one
`
`node in the hierarchy to another node that is not directly connected to that node”).
`
`PO made clear that the system merely “jump[s] the user to a node.” Id., at 58 (the
`
`alleged invention “solves these inadequacies of the prior art systems, by allowing
`
`the system to cause the user to ‘jump’ from one node in the hierarchy to another
`
`node”), at 64 (in the alleged invention, “the system[] jumps the user to a node”). In
`
`every case, the user jumps to a non-adjacent node without traversing the intervening
`
`nodes. See Smyth, ¶ 48.
`
`As discussed herein, this concept of “jumping” to and from different nodes or
`
`vertices in a hierarchical system without traversing through intervening nodes or
`
`vertices was well known prior to the filing of the ’379 Patent. For example,
`
`Wesemann, cited below, discloses both lateral and vertical jumping through a
`
`hierarchical network, and Fratkina, also cited below, teaches that users may skip
`
`over parts of a hierarchical menu.
`
`
`
`8
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`

`

`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`Claims 3-6 of the ’379 Patent further recite a method for using a thesaurus
`
`function to identify words input by a user as being synonymous with keywords.
`
`Additional synonyms for keywords may be added to the thesaurus and associated
`
`with nodes as users input new words while navigating the system. See ’379 Patent
`
`(EX1001), 9:65-10:2, 10:41-43. As discussed herein, these concepts were also
`
`known prior to the filing of the ’379 Patent. See Smyth, ¶¶41-45, 69-76. For
`
`example, Rajaraman, cited below, teaches each of these limitations in the context of
`
`hierarchical searching. See § V.B.
`
`B.
`
`Summary of the Prosecution History of the ’379 Patent
`
`The application that resulted in the ’379 Patent was filed on November 19,
`
`2002. See ’379 Patent. For purposes of this proceeding, Petitioners assume that the
`
`priority date for the Challenged Claims is November 19, 2002. The original
`
`application included 26 claims, but was reduced to seven claims due to a restriction
`
`requirement. ’379 File History, at 180-189. These seven claims were not amended
`
`from their original application during prosecution. Id., at 74, 139, 164, 181.
`
`During prosecution, the Applicants focused on the “jumping” concept of
`
`claims 1 and 7, insisting that “jumping” required a “system jumping the user” (as
`
`opposed to a user manually traversing) from one node to a second, non-adjacent
`
`node based on an input from a user, without traversing through intervening nodes in
`
`the path. Id., 62-64 (emphasis in original); see also, e.g., id., 89-90, 127-30, 133,
`
`
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`9
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`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
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`156. The Applicants distinguished prior art that they argued presented the user with
`
`a complete hierarchy of nodes that required the user to select a desired node to cause
`
`the jump. See id., 64. For example, the Applicants distinguished a U.S. Patent No.
`
`5,812,134 to Pooser et al. (“Pooser”) because the user selected the desired node from
`
`the fully displayed hierarchy “instead of the system selecting the ‘jumped’ to node.”
`
`Id. at 63 (emphasis in original); see also id. at 65 (“The system jumps the user to
`
`another node which is not directly connected to the first node because[ ] of the
`
`association.”) (emphasis in original), 95-99 (distinguishing Pooser). The Applicants
`
`made only general and conclusory remarks for claims 3-6. See, e.g., id., 135, 160.
`
`The claimed “jumping” feature, therefore, appears to have led to allowance of
`
`independent claims 1 and 7. But, as discussed below, this concept was already well-
`
`known in the prior art. For instance, Wesemann—not cited during prosecution—
`
`emphasizes that a feature in its system is that users do not have to go through “in-
`
`between” menu states. Unlike the cited prior art distinguished by the Applicants,
`
`Wesemann (as well as Fratkina) uses interactive voice response systems (like those
`
`disclosed in the ’379 Patent) that automatically “jump”—no graphical display is
`
`present from which a user makes a selection to cause the jump. See, e.g., Wesemann,
`
`3:50-56.
`
`
`
`10
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`

`

` REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing
`
`Case No. IPR2021-00771
`U.S. Patent No. 7,231,379
`
`
`Petitioners certify that the ’379 Patent is available for IPR and that the
`
`Petitioners are not barred or estopped from requesting IPR challenging the claims of
`
`the ’379 Patent.
`
`B.
`
`Identification of Challenge and Relief Requested
`
`In view of the prior art and evidence, claims 1-7 of the ’379 Patent are
`
`unpatentable and should be cancelled. Based on the prior art references identified
`
`below, IPR of the Challenged Claims should be granted.
`
`Proposed Grounds of Unpatentability
`
`Ground 1: Claims 1, 2, and 7 are obvious under § 103(a) over U.S. Pat. No.
`6,731,724 to Wesemann et al. (“Wesemann”)
`
`Ground 2: Claims 3-6 are obvious under § 103(a) over U.S. Pat. No. 6,731,724
`to Wesemann in view of U.S. Pat. No. 6,366,910 to Rajaraman et al. (“Rajaraman”)
`
`Ground 3: Claims 1, 2, and 7 are obvious under § 103(a) over U.S. Pat No.
`7,539,656 to Fratkina et al. (“Fratkina”)
`
`Ground 4: Claims 3-6 are obvious under § 103(a) over U.S. Pat. No. 7,539,656
`to Fratkina in view of U.S. Pat. No. 6,366,910 to Rajaraman et al. (“Rajaraman”)
`
`
`
` §
`
` V identifies where each element of the Challenged Claims is found in the prior art.
`
`The exhibit numbers of the supporting evidence relied upon to support the challenges
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`are provided in the Exhibit List above and the relevance of the evidence to the
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`challenges raised are provided in §V.
`
`C. Level of Skill of a Person Having Ordinary Skill in the Art
`
`As explained by Petitioners’ expert, Dr. Padhraic Smyth, a person having
`
`ordinary skill in the art (“PHOSITA”) at the time of the ’379 Patent would have been
`
`a person having the equivalent of a bachelor’s degree in computer science, electrical
`
`engineering, or a similar discipline, and at least one year of experience working with
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`technology related to information retrieval and database searching, or an equivalent
`
`amount of similar work experience or education, with additional education
`
`substituting for experience and vice versa. Smyth, ¶¶28-30.
`
`D. Claim Construction
`
`Pursuant to 37 C.F.R. § 42.200, the claims of the ’379 Patent shall be
`
`construed in this proceeding “using the same claim construction standard that would
`
`be used to construe the claim[s] in a civil action.” As such, the claims should be
`
`interpreted according to the principles outlined in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc).
`
`1.
`
`“keyword”
`
`The ’379 Patent teaches that each node in the hierarchy is associated with a
`
`verbal description (whether audible or written) and that “[e]ach such description
`
`contains ‘key’ words that are deemed to be of importance and other words that
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`can be disregarded.” ’379 Patent, 4:32-41, 1:49-52 (audible or written). The patent
`
`teaches:
`
`For example, one node may have the associated verbal description
`“Would you like to make a reservation?” In this description, there is
`only one “key” word—“reservation” deemed important, so all of the
`other words in the description can be ignored.
`
`Id., 4:37-41. Other nodes may have verbal descriptions with multiple keywords.
`
`For example, the verbal description “Is the reservation for a domestic or international
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`flight?” is described as having two additional keywords, “domestic” and
`
`“international.” Id., 4:44-51. The word “flight” could be a keyword if the system
`
`includes non-air travel options, but it could also be an ignored term if, for example,
`
`the system is only for airline reservations. Id.
`
`The ’379 Patent describes an index that associates keywords with nodes. Id.,
`
`4:62-5:7. This index allows searching the menu tree of nodes by keyword regardless
`
`of where in the hierarchy the user is currently located, allowing them to jump to a
`
`node matching the keyword. Id., 5:7-12. The patent teaches that the specific format
`
`described for the index is only for illustration and “that other techniques for
`
`interrelating data, such as hash tables, direct or indirect indexing, etc. can be
`
`substituted in a straightforward manner.” Id., 5:23-27.
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`The ’379 Patent describes embodiments based on an interactive voice
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`response (“IVR”) system in which a user responds vocally to prompts, and
`
`“keywords” are identified from the user’s speech. Id., 6:63-7:9. Importantly, the
`
`’379 Patent explicitly teaches that a keyword can be more than just a single word
`
`and can also include other forms of information, such as specific data patterns:
`
`Note, there is no requirement for a [] ‘keyword’ to be a single word,
`in some implementations, keywords could be single words, phrases of
`two or more words, or even some other form of information like a
`specific data pattern.
`
`Id., 7:5-9.
`
`Accordingly, “keyword” should be construed as “one or more words or
`
`pieces of information, such as a specific data pattern, that is associated with at
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`least one node or vertex.”
`
`2.
`
`“jumping”
`
`As discussed above in the Summary of the ’379 Patent, the Applicants during
`
`prosecution construed “jumping” to mean “a direct traversal from one node or
`
`vertex to another node or vertex that is not directly connected to it (i.e., without
`
`traversal through any intervening nodes or vertices or to a node or vertex whose
`
`only least common ancestor with that node or vertex is the root node or vertex).”
`
`See § III.A-B (detailing Applicant’s explicit definition during prosecution).
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`Petitioners note that this jumping may occur laterally (i.e., across branches of the
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`hierarchical tree) or vertically (i.e., up or down a hierarchical tree branch). See, e.g.,
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`’379 Patent, 12:49-56, 14:54-63. Given Applicant’s repeated assertions regarding
`
`this term during prosecution, for purpose of this IPR, Petitioners adopt Applicant’s
`
`construction of “jumping.” The PTAB likewise adopted Petitioners’ construction,
`
`which PO did not dispute. BloomReach, IPR2019-01304, Paper 11, at 8.
`
`Consistent with the Applicant’s description of the purported invention during
`
`prosecution, this construction does not require that the system jump between nodes
`
`or vertices. ’379 File History, 90 (“Applicant’s claimed invention . . . allow[s] the
`
`user to ‘jump.’”). In contrast with the prosecution history, however, PO incorrectly
`
`asserted during the BloomReach IPR matter that the terms “jumping to the [at least
`
`one node/vertex]” should be construed as “the system jumping to the [at least one
`
`node/vertex].” For the reasons discussed in § III, the ’379 Patent does not require
`
`the system to jump.
`
` THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’379 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Wesemann renders claims 1, 2, and 7 obvious
`
`U.S. Patent No. 6,731,724 to Wesemann et al. (“Wesemann”) was filed on
`
`June 22, 2001, and is prior art to the ’379 Patent under 35 U.S.C. § 102(e) (pre-AIA).
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`Wesemann. Wesemann was not cited during prosecution of the ’379 Patent. See
`
`’379 Patent.
`
`Wesemann is in the same field of endeavor as, and is pertinent to, the ’379
`
`Patent. As mentioned above, the ’379 Patent relates to methods for navigating a
`
`hierarchical system of nodes, exemplified in the context of a “menu-type automated
`
`telephone voice response system.” Id., 3:49-58; see also id., 3:5-14, 4:18-51, 5:13-
`
`22, 13:32-52, 17:52-57. The ’379 Patent purports to solve problems related to
`
`inefficiencies in navigating through nodes in hierarchical networks by allowing users
`
`to “jump” to a node in a hierarchy without traversing intervening nodes. Id.,
`
`Abstract, 2:22-30, 2:37-39, 3:35-37, 5:7-12, See also generally Examples 1-9, id.
`
`5:40-12:48. Like the ’379 Patent, Wesemann relates to improving the efficiency of
`
`navigating through menu-type hierarchy systems. See Wesemann, 2:45-65
`
`(identifying the inefficiency of “expend[ing] time . . . to move systematically
`
`through a hierarchy of levels or menu states . . . even when a user already knows
`
`what the final menu state will be” as a problem in the art); see also id., 2:9-19, 8:46-
`
`52. And Wesemann teaches solving this problem in the same manner as the ’379
`
`Patent purports to do, by teaching a system which enables users to “jump from one
`
`menu state to another menu state of the telephone service system without having to
`
`enter input for each menu state between the first and the second menus states.”
`
`Wesemann, Abstract; see also id., 3:10-14, 3:54-56 (“[T]he invention enables a user
`
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`to jump over ‘in between’ menu states, from a first menu state to a second menu
`
`state with only a single user input.”), 12:25-30, 12:43-48, 12:53-58, 16:13-15; cf.
`
`’379 Patent, Abstract, 2:22-30. Therefore, Wesemann is analogous prior art to the
`
`claimed invention of the ’379 Patent. See Smyth, ¶47.
`
`1.
`
`Claim 1
`
`in a system having multiple navigable nodes
`1. A method performed
`interconnected in a hierarchical arrangement comprising:
`Wesemann teaches navigation methods performed in a system having multiple
`
`navigable nodes, referred to as “menu states” or “levels,” interconnected in a
`
`hierarchical arrangement:
`
`The voice-enabled user interface maps the hierarchy of menu states
`and corresponding prompts of the telephone service system within a
`template. . . . A user can jump from one menu state to another menu
`state by providing input that the voice-enabled user interface associates
`with a corresponding menu state. The voice-enabled user interface
`generates output that causes the telephone service system to transition
`to the menu state that corresponds with the user input. Once the
`telephone service system is in the appropriate menu state, the voice-
`enabled user interface transmits a DTMF translation of the user input
`to the telephone service system so that it can be processed.
`
`Wesemann, 3:33-46; see also id., Abstract, 10:40-64, Figs. 5-6. The user may
`
`navigate the menu hierarchy by systematically moving between nodes