Paper No. ___
`Filed: April 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————————————————
`
`ELASTIC N.V.,
`Petitioner,
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`_____________________________
`
`Case IPR2021-00875
`Patent No. 7,231,379
`—————————————————
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`
`Filed: April 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————————————————
`
`ELASTIC N.V.,
`Petitioner,
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`_____________________________
`
`Case IPR2021-00875
`Patent No. 7,231,379
`—————————————————
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`
`
`B.
`
`b)
`
`GROUNDS 1-2 (WESEMANN AND RAJARAMAN): PATENT
`OWNER PRESENTS NO SUBSTANTIVE REBUTTAL ............................ 2
`A.
`Patent Owner misrepresents the grounds, which are not
`identical to the Bloomreach petition .................................................... 3
`Patent Owner lacks a substantive rebuttal ............................................ 5
`a)
`The Board is not bound by the Bloomreach
`decision ............................................................................ 5
`Patent Owner presents no rebuttal beyond relying
`on the Bloomreach decision ............................................ 7
`GROUNDS 3-4 (FRATKINA AND RAJARAMAN): PATENT
`OWNER’S ARGUMENTS ARE UNSUPPORTED BY THE
`CHALLENGED CLAIMS OR PRIOR ART ............................................... 10
`A.
`The claims do not exclude intermediate verification steps ................ 11
`B.
`Fratkina discloses embodiments lacking intermediate
`verification steps ................................................................................. 14
`III. CONCLUSION ............................................................................................. 17
`IV. CERTIFICATE OF COMPLIANCE ........................................................... 18
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`-i-
`
`
`
`Patent Owner responds to institution by restyling and refiling its preliminary
`
`response. Compare Paper 6 (“POPR”), with Paper 9 (“Response”). Thus, the
`
`Board has already substantively read and rejected what Patent Owner has to say.
`
`Patent Owner did not cross-examine Elastic’s expert witness, nor does it proffer
`
`supporting expert testimony of its own despite all grounds turning on what would
`
`have been obvious to a person of ordinary skill in the art. The record remains
`
`effectively the same as when the Board preliminarily found a reasonable likelihood
`
`of unpatentability. Patent Owner presents no new basis—whether argument or
`
`evidence—for the Board to not cancel the claims.
`
`Responding to Grounds 1-2, Patent Owner stands only on a prior IPR’s
`
`institution decision. But Elastic had no hand in the different petition that led to
`
`that analysis. More importantly, Patent Owner’s reliance on that institution
`
`decision is premised on the false assertion that Elastic’s petition presents identical
`
`grounds as the earlier IPR. It does not. And, as the Board noted when instituting
`
`here, Elastic addressed the substantive issue raised in the previous institution
`
`decision with clarifying explanation. In any event, Patent Owner has not identified
`
`any substantive issue regarding the analysis actually presented in Elastic’s
`
`petition—no missing claim limitation, no challenge to the explanation of
`
`obviousness—and has now waived the opportunity to do so.
`
`For Grounds 3-4, Patent Owner relies on an illogical attempt to add a
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`-1-
`
`
`
`requirement to claim 1 that would exclude intermediate verification steps from its
`
`node jumping method. That implied claim construction is wrong and lacks support
`
`in the recited claim text, specification, and prosecution. Absent reading this
`
`unstated requirement into the claims, Elastic prevails under the claim constructions
`
`proposed in the petition, none of which are disputed by Patent Owner. But, in any
`
`case, the Fratkina reference describes embodiments lacking intermediate
`
`verification steps. And even if the prior art did not so describe, it still suggested
`
`omitting them. It certainly did not, as Patent Owner maintains, “teach away.”
`
`I.
`
`GROUNDS 1-2 (WESEMANN AND RAJARAMAN): PATENT OWNER PRESENTS
`NO SUBSTANTIVE REBUTTAL
`The petition demonstrates that claims 1, 2, and 7 are obvious in view of
`
`Wesemann (Ground 1) and claims 3-6 are obvious in view of the combination of
`
`Wesemann and Rajaraman (Ground 2). Patent Owner’s response runs just half a
`
`page and is limited to the single argument that these grounds should be rejected
`
`because the Board in a different proceeding found grounds based on these
`
`references lacking when deciding (and granting) institution. Response, 7. Patent
`
`Owner contends Grounds 1 and 2 are copied from that proceeding and “advance[]
`
`no new argument.” Id. Yet the Board already recognized at institution this is not
`
`accurate, and in any event the outcome in this case is not compelled by the
`
`preliminary determinations of the prior institution decision. Having waived any
`
`substantive response to the merits of Grounds 1 and 2, Patent Owner’s
`-2-
`
`
`
`misrepresentation of the content of the grounds should be rejected and the
`
`challenged claims should be found unpatentable.
`
`A.
`
`Patent Owner misrepresents the grounds, which are not identical
`to the Bloomreach petition
`Patent Owner argues that the Board should adopt previous preliminary and
`
`non-final views as expressed in a decision granting institution. Response 7 (citing
`
`IPR2019-01304, “Bloomreach”). According to the Bloomreach institution
`
`decision, the petitioners there had not shown a reasonable likelihood of prevailing
`
`against the ’379 patent on their Wesemann grounds. Response, 7 (citing IPR2019-
`
`01304). This argument is premised on Patent Owner’s assertion that Elastic is “in
`
`fact advancing the same exact failed argument down to the very letter” as what
`
`was argued in the petition that won the prior institution. Id.; see also id., 4
`
`(asserting Elastic is “literally copying the [prior] Petitioner’s argument word for
`
`word”).1 Patent Owner misrepresents the petition.
`
`Contrary to Patent Owner’s characterization, Elastic’s grounds are not
`
`merely copied from the Bloomreach petition. The petition here, among other
`
`things, clarifies Wesemann’s disclosure of the claimed “jumping” limitation in a
`
`1 All emphasis added unless otherwise noted.
`
`-3-
`
`
`
`way the prior petition did not. Compare, e.g., Pet., 16-19, with IPR2019-01304,
`
`Paper 2 at 16-17. For example, Elastic’s petition emphasizes multiple examples of
`
`Wesemann’s disclosure of node jumping as well as explaining the importance of
`
`the equivalence between Wesemann’s template and the ’379 patent’s index. Pet.,
`
`17-19. It also elaborates on how Wesemann jumps using a template. Id., 17-19,
`
`26-29. As explained in Elastic’s petition, Wesemann uses its template as the ’379
`
`patent uses its index. Id. The supporting expert witness declaration submitted with
`
`Elastic’s petition likewise provides testimonial evidence beyond what was before
`
`the Board in the Bloomreach IPR. Compare EX1007 ¶51, with IPR2019-01304,
`
`EX1007, ¶51.
`
`The institution decision here recognized that Elastic’s petition addresses the
`
`specific issue that caused the Board in Bloomreach to view the Wesemann grounds
`
`with skepticism. First, the Board here acknowledged that the institution decision
`
`in IPR2019-01304 found no reasonable likelihood of prevailing on the Wesemann
`
`grounds based on the jumping limitation. Paper 7 (“Institution Decision”), 14.
`
`The institution decision went on to recognize that “Petitioner addresses this issue
`
`in this Petition,” pointing to the petition’s discussion of examples in Wesemann
`
`that involve jumping between nodes that are not directly connected, without
`
`traversal through intervening nodes or to a node whose only least common
`
`ancestor is the root node. Id. (citing Pet., 28-29). The Board thus expressly (and
`
`-4-
`
`
`
`accurately) notified Patent Owner of the error in characterizing Elastic’s grounds
`
`as identical to those in the Bloomreach petition, yet Patent Owner again depends
`
`on the false assertion in its response.
`
`As the sole argument Patent Owner presents regarding Grounds 1 and 2
`
`relies entirely on the false characterization that those grounds are identical to the
`
`Wesemann grounds from the Bloomreach petition, it should be rejected on that
`
`basis.
`
`Patent Owner lacks a substantive rebuttal
`B.
`Beyond the misguided assertion that Grounds 1 and 2 present the “exact
`
`failed argument down to the very letter” as what the Bloomreach decision
`
`addressed, Patent Owner presents no substantive argument. Response, 7. Even if
`
`the grounds were the same as in the Bloomreach petition (and as explained above,
`
`they are not), Patent Owner identifies no authority for the proposition that the
`
`Board must carry that preliminary finding over to a final decision in this case.
`
`Indeed, Patent Owner’s response fails to identify any basis to do so as it does not
`
`identify even a single claim element alleged to be lacking in the prior art.
`
`The Board is not bound by the Bloomreach decision
`a)
`As an initial matter, Patent Owner’s contention that the Board should reject
`
`Grounds 1 and 2 simply because the Bloomreach institution decision made a
`
`preliminary finding of no reasonable likelihood of unpatentability is without merit.
`
`-5-
`
`
`
`Patent Owner cites no supporting authority for this proposition. Response, 7.
`
`Rather, as the Federal Circuit has held, a panel is not bound by preliminary
`
`findings. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016)
`
`(“[T]he Board is not bound by any findings made in its institution decision.”).2
`
`The Board has likewise applied this Federal Circuit holding to reject patent
`
`owner’s arguments invoking preliminary findings from other proceedings. E.g.,
`
`Apple Inc. v. Personalized Media Comm’ncs, LLC, IPR2016-01520, Paper 40, 6
`
`(Sept. 19, 2019) (citing Trivascular).
`
`In addition, principles of fairness and the public interest in reaching a final
`
`decision on unpatentability also undermine Patent Owner’s position. First, Elastic
`
`was not a party in the Bloomreach IPR. As Patent Owner does not dispute, the real
`
`parties-in-interest in the prior IPR were BloomReach, Inc., UncommonGoods,
`
`LLC, BSN Sports, LLC, and Varsity Brands Holding Co., Inc. IPR2019-01304,
`
`2 While this legal standard applies equally to the institution decision in this
`
`proceeding, the record is devoid of any reason for the Board to reach a different
`
`conclusion than at institution because, as discussed below, Patent Owner’s
`
`response provides no arguments or evidence to make the record any different than
`
`it was prior to institution.
`
`-6-
`
`
`
`Paper 2 at 2. Because Elastic had no hand in the prior petition, the Board should
`
`not punish Elastic for that petition’s lack of clarity. Moreover, Patent Owner has
`
`not proffered any evidence of a connection between Elastic and the prior
`
`petitioners. Second, the Bloomreach decision granted institution. The Board
`
`expressly contemplated revising its preliminary views on Wesemann during the
`
`post-institution trial phase. See IPR2019-01304, Paper 11, 19-20 (“We will make a
`
`final determination upon review of further briefing and evidence by the parties
`
`regarding this issue.”). But the parties settled before a final decision could be
`
`reached. IPR2019-01304, Paper 16. This case presents an opportunity for the
`
`Board to now reach a final decision, assessing the grounds and evidence presented
`
`in this IPR.
`
`b)
`
`Patent Owner presents no rebuttal beyond relying on
`the Bloomreach decision
`Patent Owner’s response is entirely directed to arguing that the Board should
`
`simply adopt the preliminary determination of the Bloomreach decision – Patent
`
`Owner fails to address the substance of Elastic’s petition. Having declined to do
`
`so, Patent Owner waives substantively rebutting unpatentability under Grounds 1
`
`and 2.
`
`As discussed above, Wesemann discloses the claim term “jumping.” Pet.
`
`17-19 (citing, inter alia, EX1004, 3:10-14, 12:25-34; EX1007, ¶51); 26-29. In the
`
`institution decision, the Board agreed, citing examples of jumping that the
`-7-
`
`
`
`Bloomreach decision did not quote. Institution Decision, 14; see also IPR2019-
`
`01304, Paper 11 at 18-20. These newly quoted examples include the jump to
`
`extension 123 and the jump to home computer support 646. Institution Decision,
`
`14. The institution decision also recognized that Patent Owner’s preliminary
`
`response “does not directly respond to these assertions.” Id.
`
`Yet despite this, Patent Owner’s response adds substantively nothing to the
`
`administrative record that it did not already contribute through its preliminary
`
`response. Patent Owner moreover has never disputed, through its own, free-
`
`standing analysis, that Wesemann and Rajaraman combine to make all claims
`
`obvious. Compare Response, 7, with POPR, 7. Patent Owner’s response does not
`
`identify a single limitation that is purported to be missing from the prior art, nor
`
`does it challenge the rationale to combine Wesemann and Rajaraman provided in
`
`the petition. Nor does Patent Owner proffer expert testimony rebutting Professor
`
`Padhraic Smyth’s opinions that skilled artisans would have found the claims
`
`obvious over Wesemann and Rajaraman. Id. Having failed to provide a
`
`substantive rebuttal, Patent Owner has waived the opportunity to do so. See, e.g.,
`
`Mobile Tech, Inc. v. Sennco Sols., Inc., IPR2017-02199, Paper 23, 23-24 (April 9,
`
`2019) (“Patent Owner has not raised arguments specifically about this limitation in
`
`its Patent Owner Response; therefore any such arguments are waived.”) (citing
`
`Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1330 (Fed. Cir 2017); In re
`
`-8-
`
`
`
`Nuvasive, 842 F.3d 1376, 1381 (Fed. Cir. 2016)). Indeed, “Patent Owner has
`
`waived all arguments for patentability not raised in Patent Owner Response.”
`
`Apple Inc. v. LBT IP I LLC, IPR2020-01193, Paper 41, 15 n.8 (Mar. 2, 2022).
`
`Moreover, to the extent Patent Owner’s intent was to adopt arguments
`
`it made in the Bloomreach IPR for the present proceeding (or the Board’s
`
`own analysis from the Bloomreach decision) without actually including it in
`
`its response here, that would amount to an improper incorporation by
`
`reference. 37 C.F.R. §42.6(a)(3) (“Arguments must not be incorporated by
`
`reference from one document into another document.”); Bozeman Fin. LLC
`
`v. Fed. Reserve Bank of Atl., 955 F.3d 971, 977-978 (Fed. Cir. 2020)
`
`(finding patent owner response arguments that only incorporated by
`
`reference arguments made in separate CBM review of related patent failed to
`
`raise issue for the challenged patent); IdeaVillage Prods., Corp. v. Choon’s
`
`Design, LLC, IPR2015-01139, Paper 6, 14 (noting that reliance on
`
`institution decision in previous IPR “at best amounts to improper
`
`incorporation by reference”).3
`
`3 In view of the Board’s recognition in the institution decision that Elastic’s
`
`petition addresses the deficiency noted in the Bloomreach decision, as well as
`
`(continued...)
`
`-9-
`
`
`
`For the above reasons, the Board should cancel all claims of the ’379 patent
`
`under Grounds 1-2.
`
`II. GROUNDS 3-4 (FRATKINA AND RAJARAMAN): PATENT OWNER’S
`ARGUMENTS ARE UNSUPPORTED BY THE CHALLENGED CLAIMS OR PRIOR
`ART
`The Board should also cancel all claims of the ’379 patent based on Grounds
`
`3-4, which present obviousness over Fratkina alone or in combination with
`
`Rajaraman. Patent Owner argues that “Fratkina explicitly teaches away from the
`
`claims by requiring a confirmation step.” Response, 3. According to Patent
`
`Owner, the challenged claims “teach making the jump to one node with just one
`
`entry of one word, with no intermediate verification step.” Id.; see also id., 6
`
`(citing EX1001, 22:50-57). Fratkina purportedly cannot meet this so-called claim
`
`teaching because, as Patent Owner argues, “it would not have been obvious to
`
`remove the verification step disclosed in Fratkina.” Id., 6. According to Patent
`
`(...continued from previous page)
`
`recognition that Patent Owner’s preliminary response did not respond to those
`
`assertions (Institution Decision, 14), Patent Owner’s decision to merely resubmit
`
`its preliminary response argument a second time could fairly be viewed effectively
`
`conceding unpatentability.
`
`-10-
`
`
`
`Owner, not only does Fratkina disclose a verification step, but it also “specifically
`
`requires confirmation.” Id., 5. Yet Patent Owner is wrong on two points: (1) the
`
`claims do not “teach” or otherwise require exclusion of an intermediate verification
`
`step, and (2) regardless of the scope of the claims, Fratkina does not require an
`
`intermediate verification step, let alone teach away from excluding one.
`
`The claims do not exclude intermediate verification steps
`A.
`Patent Owner’s argument relies on what it purports that the claims “teach.”
`
`Citing all steps recited in claim 1, apparently as a gestalt, Patent Owner infers that
`
`the claims exclude intermediate verification steps. See Response, 6 (citing
`
`EX1001, 22:50-57). Absent this purported exclusion from the claims, Patent
`
`Owner does not address, let alone rebut, Elastic’s mapping of the claims to
`
`Fratkina. See id., 4-7; see also, e.g., Pet., 51-59 (mapping Fratkina to claim 1).
`
`Because Patent Owner’s interpretation of the claims is unsupported and wrong,
`
`Patent Owner’s response cannot rebut the petition’s Fratkina grounds.
`
`As explained in the petition, the “jumping” limitation should be construed to
`
`necessarily exclude only “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.” Pet., 15. Patent Owner does not dispute this construction. See
`
`generally Response. Indeed, this construction is copied from the applicant’s
`
`construction proffered repeatedly in prosecution:
`
`-11-
`
`
`
`“jumping” in this context being defined both explicitly, and by
`implication, in the specification 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).
`
`E.g., EX1002, 47, 58, 90; Pet, 15. The applicant stressed that this construction was
`
`the definition of jumping that “would be understood by a person of ordinary
`
`understanding in the field.” EX1002, 94. Under this construction, which Patent
`
`Owner cannot deny, Fratkina and Rajaraman make the claims obvious. See, e.g.,
`
`Pet., 51-59.
`
`Nevertheless, despite implicitly conceding that Elastic’s construction of
`
`“jumping” is correct, Patent Owner seeks to import a requirement into the claims
`
`that they “teach making the jump to one node with just one entry of one word, with
`
`no intermediate verification step.” Response, 6 (citing EX1001, 22:50-57 (i.e., all
`
`of claim 1 except preamble)). Yet neither claim 1 nor the specification can be read
`
`to exclude intermediate verification steps. The claim recites only, in relevant part,
`
`“jumping to the at least one node.” E.g., EX1001, 22:57. It does not mention
`
`intermediate steps, exclusion or otherwise. The specification likewise offers no
`
`support for excluding intermediate verification steps from the scope of the claims.
`
`To the contrary, as the specification expressly alleges, “[a]ll manner of vertical
`
`-12-
`
`
`
`and lateral jumps from multiple nodes to multiple nodes are possible.” EX1001,
`
`12:50-60. Without more, the specification does not exclude jumps having
`
`intermediate verification steps from the category of all manner of jumps.
`
`The specification not only offers no support for interpreting the claims to
`
`exclude intermediate verification steps, it also appears to contemplate that jumps
`
`can include intermediate verification steps. Patent Owner insists that systems
`
`using “follow-up questions to confirm the dialog engine’s understanding of the
`
`user’s input” fall outside the claims. Response, 5-6 (citing, inter alia, EX1006,
`
`26:8-14). But such systems are consistent with the specification’s description of
`
`the invention. The ’379 patent describes systems that “make it possible to jump
`
`laterally from one vertex to another if the navigation enters a wrong branch of the
`
`tree or if the user changes his goal.” EX1001, 3:35-40. So too elsewhere: “where
`
`in the tree the system jumps if the user rejects the initial meaning(s) offered by
`
`the system can be handled different ways in different implementations.” EX1001,
`
`10:45-55. The patent thus contemplates that, when a “user rejects the initial
`
`meaning(s) offered by the system,” that rejection “can be handled.” See id.
`
`Accordingly, by Patent Owner’s own logic the specification does not support
`
`reading the ’379 patent claims to exclude intermediate verification steps.
`
`Beyond the base assertion that the claims “teach making the jump … with no
`
`intermediate verification step” (Response, 6), Patent Owner provides no claim
`
`-13-
`
`
`
`construction or reasoned analysis explaining why this would be so. Elastic cannot
`
`guess at Patent Owner’s logic, nor does Patent Owner’s response satisfy the burden
`
`of demonstrating why the Board should interpret the term as proposed. Consol. Tr.
`
`Pract. Guide 46 (PTAB Nov. 2019) (“Each party bears the burden of providing
`
`sufficient support for any construction advanced by that party.”). Nor does Patent
`
`Owner dispute that Fratkina satisfies claim 1 absent such a requirement.
`
`Accordingly, once Patent Owner’s attempt to read an unclaimed requirement
`
`into claim 1 is rejected, Grounds 3 and 4 render the claims obvious.
`
`B.
`
`Fratkina discloses embodiments lacking intermediate verification
`steps
`Even if the claims are interpreted to exclude intermediate verification steps,
`
`Patent Owner is wrong in its contention that Fratkina “requires confirmation.”
`
`Response, 5. It does not.
`
`Patent Owner’s argument amounts to an assertion that the claims include a
`
`negative limitation (i.e., exclusion of an intermediate verification step). The
`
`Federal Circuit has held that “a reference need not state a feature’s absence in order
`
`to disclose a negative limitation.” AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d
`
`1358, 1367 (Fed. Cir. 2019). But beyond mere absence, Fratkina discloses the
`
`exclusion of intermediate verification steps because it “describes a reason to
`
`exclude the relevant limitation.” See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d
`
`1344, 1351 (Fed. Cir. 2012). That reason need only be “describing alternative
`-14-
`
`
`
`features of the patented invention.” See Inphi Corp. v. Netlist, Inc., 805 F.3d 1350,
`
`1356 (Fed. Cir. 2015).
`
`Fratkina describes the alternative features of including or excluding
`
`intermediate verification steps. For example, Fratkina discloses a “goal parameter”
`
`that “governs whether or not the user is asked to verify the conclusions inferred by
`
`the system.” EX1006, 34:1-3, cited at Pet., 58. This user verification is an
`
`intermediate verification step, as Patent Owner essentially admits in arguing that
`
`follow-up questions are such steps. See Response, 5-6. But in Fratkina, user
`
`verification is described as an alternative feature, in that the disclosed system
`
`determines “whether or not” to ask for it. EX1006:34:103. Fratkina thus describes
`
`the alternative of not asking for user verification (i.e., the absence of what is,
`
`according to Patent Owner, an intermediate verification step). Fratkina therefore
`
`satisfies the claims even under Patent Owner’s unsupported misreading of what the
`
`claims require.
`
`Fratkina likewise discloses omitting an intermediate verification step in
`
`other examples. For example, Fratkina’s “dialog engine can always use confirmed
`
`nodes to advance goals,” especially “in the course of a single dialog.” EX1006,
`
`33:49-52, cited at Pet. 58. Patent Owner concedes that, as Fratkina discloses,
`
`confirmed nodes are “automatically accepted as true.” Response, 5. Thus, even if
`
`Fratkina discloses sometimes using intermediate verification steps, it also describes
`
`-15-
`
`
`
`omitting those steps.
`
`Even if Fratkina discloses intermediate verification steps, they are described
`
`as alternatives, not requirements. These alternatives are highlighted by Patent
`
`Owner’s own quotes from Fratkina. Additional portions of Fratkina quoted by
`
`Patent Owner further highlight that to the extent Fratkina discloses intermediate
`
`verification steps they are described as alternative options. For example,
`
`Fratkina’s “nodes may be verified by asking follow-up questions.” EX1006, 26:8-
`
`14, quoted at Response, 5. Fratkina’s “autocontextualization, being an automatic
`
`process, can make mistakes” and “[u]ser preference information, though human-
`
`entered, may be outdated,” so “it may not be safe to assume that correct concept
`
`tags have been extracted.” Id., 33:52-57, quoted at Response, 5. Likewise,
`
`“sometimes other information can not be fully trusted.” Id., quoted at Response, 5.
`
`This language confirms that Fratkina describes both including and excluding
`
`intermediate verification steps.
`
`Moreover, even if Fratkina did not explicitly describe embodiments lacking
`
`intermediate verification steps, it does not (as Patent Owner contends) teach away
`
`from excluding those steps. See, e.g., Response, 4 (“Fratkina explicitly teaches
`
`away from Claims 1, 2, and 7”). Teaching away cannot be found when a reference
`
`“does not criticize, discredit, or otherwise discourage investigation into the
`
`invention claimed.” Galderma Lab’s, L.P. v. Tolmar, Inc., 737 F.3d 731, 739
`
`-16-
`
`
`
`(Fed. Cir. 2013) (reversing finding of teaching away). Patent Owner cites no
`
`aspect of Fratkina criticizing, discrediting, or otherwise discouraging investigation
`
`into excluding intermediate verification steps. Rather, Fratkina suggests that,
`
`although difficult, it “is a good practice during taxonomy building to avoid
`
`branches that are likely to be difficult to choose between.” EX1006, 27:25-27,
`
`cited at Pet. 58. Fratkina thus suggests designing taxonomies to obviate
`
`intermediate verification steps. Because of the exacting legal standard for teaching
`
`away, this suggestion prevents such a finding.
`
`For the above reasons, the Board should cancel all claims of the ’379 patent
`
`under Grounds 3-4.
`
`III. CONCLUSION
`For the reasons above, claims 1-7 of the ’379 patent are unpatentable.
`
`Elastic respectfully requests that the Board enter a final written decision cancelling
`
`all challenged claims.
`
`Date: April 14, 2022
`
`Respectfully submitted,
`
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`
`-17-
`
`
`
`IV. CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. §42.24(d), the undersigned certifies that this Reply
`
`complies with the type-volume limitation of 37 C.F.R. §42.24(c). The word count
`
`application of the word processing program used to prepare this Petition indicates
`
`that the Reply contains 3,641 words, excluding the parts of the brief exempted by
`
`37 C.F.R. §42.24(c).
`
`Date: April 14, 2022
`
`Respectfully submitted,
`
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`
`-18-
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing Petitioner’s Reply to Patent Owner Response was
`
`served on this 14th day of April, 2022, on the Patent Owner at the correspondence
`
`address of the Patent Owner as follows:
`
`Sanjay Pant
`Gautham Bodepudi
`PRA LAW
`spant@pralawllc.com
`gbodepudi@outlook.com
`
`Date: April 14, 2022
`
`Respectfully submitted,
`
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`
`-19-
`
`
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