Filed on behalf of: Elastic N.V.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`ELASTIC N.V.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2021-00875
`Patent No. 7,231,379
`_____________________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,231,379
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`Page
`INTRODUCTION ........................................................................................... 1
`A.
`The ’379 Patent ..................................................................................... 2
`B.
`The Prosecution History ........................................................................ 4
`C.
`The Prior Reviews of the ’379 patent ................................................... 5
`D.
`The Relevant Field and Art ................................................................... 7
`1. Wesemann ......................................................................................... 8
`2. Fratkina ............................................................................................. 8
`3. Rajaraman ......................................................................................... 9
`The Level of Skill in the Art ................................................................. 9
`E.
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a) ...................... 9
`III. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(A)(1) ....................... 10
`A.
`Real Party-In-Interest (§42.8(b)(1)): ................................................... 10
`B.
`Related Matters (§42.8(b)(2)) ............................................................. 10
`C.
`Lead and Back-Up Counsel (§42.8(b)(3)) .......................................... 11
`D.
`Service Information (§42.8(b)(4)): ...................................................... 11
`IV. STATEMENT OF PRECISE RELIEF REQUESTED ................................. 12
`V.
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3) ................... 13
`1.
`“node” ............................................................................................. 13
`2.
`“vertex” ........................................................................................... 13
`3.
`“keyword” ....................................................................................... 14
`4.
`“jumping” ........................................................................................ 15
`i
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`

`

`“verbal description” ........................................................................ 15
`5.
`VI. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
`CLAIMS OF THE ’379 PATENT ARE UNPATENTABLE ...................... 16
`A. Ground 1: Wesemann renders claims 1, 2, and 7 obvious .................. 16
`1. Claim 1 ............................................................................................ 19
`2. Claim 2 ............................................................................................ 30
`3. Claim 7 ............................................................................................ 32
`B. Ground 2: Wesemann in view of Rajaraman renders Claims 3-6
`obvious ................................................................................................ 38
`1. Claims 3-4 ....................................................................................... 40
`2. Claims 5-6 ....................................................................................... 45
`C. Ground 3: Fratkina renders claims 1, 2, and 7 obvious ...................... 50
`1. Claim 1 ............................................................................................ 51
`2. Claim 2 ............................................................................................ 59
`3. Claim 7 ............................................................................................ 60
`D. Ground 4: Fratkina in view of Rajaraman renders Claims 3-6
`obvious ................................................................................................ 65
`VII. THE BOARD SHOULD NOT DENY INSTITUTION UNDER ITS
`SECTION 314(a) DISCRETION .................................................................. 66
`A.
`Factors 1 & 2: Elastic is unrelated to prior petitioners ....................... 68
`B.
`Factors 3-5: This petition poses no unfairness to Patent Owner ......... 69
`C.
`Factors 6 & 7: This petition increases the efficiency of the Board .... 70
`D. Additional Factors: Discretionary denial would be unfair to Elastic .. 71
`VIII. CONCLUSION .............................................................................................. 72
`IX. CERTIFICATE OF COMPLIANCE ............................................................ 73
`ii
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`

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`PAYMENT OF FEES UNDER 37 C.F.R. §§42.15(A) AND 42.103 ........... 74
`X.
`XI. APPENDIX – LIST OF EXHIBITS .............................................................. 75
`
`
`
`iii
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`

`

`
`
`I.
`
`INTRODUCTION
`Petitioner Elastic N.V. (“Elastic” or “Petitioner”) respectfully requests inter
`
`partes review of claims 1-7 of U.S. Patent 7,231,379 (“the ’379 patent”).
`
`The ’379 patent is directed to keywords for searching a hierarchical network.
`
`The keywords correspond to points on that network, called “nodes” or “vertices.”
`
`The claims involve two obvious concepts.
`
`First, when a user inputs a keyword, the system “jumps” the user to the node
`
`or vertex for that keyword, without requiring the user to traverse intervening points.
`
`The ’379 patent was allowed largely on this “jumping.” However, as shown in the
`
`prior art references Wesemann and Fratkina, “jumping” was well-known by 2002.
`
`See EX1004 Abstract; EX1007 ¶¶36-40, 49, 55-56, 84. Neither reference was cited
`
`during prosecution.
`
`Second, the ’379 patent includes four claims related to using and updating a
`
`thesaurus for synonyms to user inputs. However, these thesaurus steps had already
`
`been developed by the 1990s. EX1007 ¶¶41-45, 69-76.
`
`“Jumping” was not novel, and the ’379 patent did not improve on “jumping”
`
`in a non-obvious way. EX1007 ¶¶31-93. Accordingly, Elastic respectfully requests
`
`that the Board institute inter partes review and cancel the challenged claims.
`
`1
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`

`

`A. The ’379 Patent
`The ’379 patent relates to searching a hierarchical “menu tree” of nodes or
`
`vertices. EX1001, 2:22-30, 3:5-28. Its purported novelty is “jumping” between
`
`those nodes without traversing intervening nodes. EX1002, 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 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 and litigation, 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).”1,2 EX1003, 18; EX1002, 89. The ’379 patent
`
`asserts that jumping may occur across network branches or along a branch.
`
`EX1001, 12:49-56, 14:54-63. Jumping is illustrated:
`
`[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
`
`
`
`1 For this petition, Petitioner accepts this construction of “jumping.”
`
`2 Emphasis added throughout unless noted.
`
`2
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`

`

`may be directed, irrespective of the hierarchy. Thus, a user
`response of “an orange” to a 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)[.]
`
`
`
`Id., 6:7-21, Fig.2.
`
`The ’379 patent does not require the system to jump, contrary to what PO
`
`argued during a prior IPR involving the ’379 patent. E.g., IPR2019-01304, Paper 6,
`
`2 n.1. A system is merely the context of Claim 1; claim 7 does not mention “a
`
`system.” Instead, the invention is about allowing a user to jump between non-
`
`adjacent vertices. EX1001, 3:29-34 (“In overview, in accordance 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
`
`3
`
`

`

`vertices may not be connected together by an edge.”). PO argued that the user’s
`
`“jumping” made the claims patentable. EX1002, 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 stressed that the system causes the “user to ‘jump.’”
`
`Id., 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”).
`
`Claims 3-6 of the ’379 patent further recite using a thesaurus to identify user
`
`words as synonymous with network keywords. Synonyms may be added to the
`
`thesaurus and associated with nodes as users input new words. Id., 9:65-10:2,
`
`10:41-43.
`
`B.
`The Prosecution History
`The application that resulted in the ’379 patent was filed on November 19,
`
`2002. See EX1001. Elastic assumes that November 19, 2002 is the priority date for
`
`the challenged claims.
`
`During prosecution, the Applicants traversed rejections by stressing the
`
`“jumping” of claims 1 and 7, from one node to a second, non-adjacent node based
`
`on an input from a user, insisting that the user was jumped over intervening nodes
`
`in the network path. EX1002, 62-64, 89-90, 127-30, 133, 156. For example, PO
`
`4
`
`

`

`distinguished U.S. Patent No. 5,812,134 because, in that patent, the user had to
`
`select a node from the graphically displayed hierarchy “instead of the system
`
`selecting the ‘jumped’ to node.” Id., 63 (emphasis in original); see also id., 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. The
`
`Applicants made only conclusory remarks for claims 3-6. Id., 135, 160. “Jumping”
`
`thus led to the allowance of claims 1 and 7.
`
`But, as discussed below, “jumping” was known. For instance, Wesemann—
`
`not cited during prosecution—emphasizes that users can skip “in-between” menu
`
`states. Fratkina and Rajaraman were likewise not cited during prosecution. Unlike
`
`the Examiner’s references, this Petition’s prior art uses interactive voice response
`
`systems (like those disclosed in the ’379 patent) so that the user does not and does
`
`not need to select a node from a graphical display—the user is automatically
`
`“jumped” to the appropriate node. E.g., EX1004, 3:50-56.
`
`C. The Prior Reviews of the ’379 patent
`Four inter partes reviews have been sought against the ’379 patent. In each
`
`proceeding, a substantially identical petition was filed, each supported by a
`
`substantially identical declaration by Professor Padhraic Smyth. Two reviews
`
`terminated before institution; one, shortly after. The fourth is pending. On March
`
`5
`
`

`

`21, 2017, IPR2017-01039 was sought by Unified Patents Inc. Three months later,
`
`the parties moved to terminate, and, a month after that, the Board terminated.
`
`On July 11, 2019, IPR2019-01304 was sought by BloomReach, Inc. Six
`
`months later, the Board instituted inter partes review, finding that “Petitioner has
`
`demonstrated a reasonable likelihood that it will prevail on its challenge to at least
`
`one claim of the ’379 patent.” EX1027, at 20. This petition adopts the grounds
`
`from the BloomReach petition on which the Board instituted review. Two months
`
`after the BloomReach institution, the parties moved to terminate the review, as the
`
`Board granted a month later.
`
`Third, on February 19, 2020, IPR2020-00598 was sought by Oracle Corp.
`
`Five months later, the parties moved to terminate. The Board terminated shortly
`
`thereafter.
`
`Fourth, on April 7, 2021, IPR2021-00771 was sought by Argos USA LLC
`
`and several other entities. The Board has not decided whether to institute this
`
`review. Should the Board institute while this Petition is pending, Elastic will
`
`promptly move for joinder. Elastic has fully adopted the positions and grounds of
`
`the Argos petitioners.
`
`6
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`

`

`D. The Relevant Field and Art
`As explained in the Declaration of Professor Padhraic Smyth (EX1007) and
`
`addressed in further detail below (Section VI), the claims would have been obvious
`
`to a skilled artisan back in 2002.
`
`Before 2002, skilled artisans knew how to use keywords to navigate nodes
`
`or vertices arranged in hierarchical or branching structures. EX1007 ¶32. The ’379
`
`patent recognized automated telephone voice response as a “familiar” application.
`
`EX1001, 1:40-45. The ’379 patent acknowledges that “travers[ing] the network in
`
`the most efficient manner possible” is desirable. Id., 1:23-26; see id., 2:9-18.
`
`Furthermore, as Professor Smyth describes, before November 19, 2002,
`
`introductory computer science courses covered the representation of
`
`interconnected nodes in a hierarchical network as described in the ’379 patent.
`
`EX1007 ¶33. In such representations, a root node connects to children nodes, and
`
`so on. EX1007 ¶34. Contrary to the ’379 patent’s assertions, menu navigation
`
`search systems were known that, upon receiving certain input from a user, would
`
`generate a suggested node to which users could choose to jump. EX1007 ¶39.
`
`Professor Smyth also describes thesaurus use in information retrieval in the
`
`1960s. EX1007 ¶41. By 2002, thesauruses had been advantageously integrated into
`
`automated analysis of text. EX1007 ¶42. For example, logs of past user searches in
`
`the system had been compiled into programmatically implemented thesauruses.
`
`7
`
`

`

`EX1007 ¶43. Thesauruses had been applied to multiple users to learn more
`
`synonyms and to avoid returning no results to users inputting a previously unused
`
`term. EX1007 ¶44.
`
`1. Wesemann
`
`Wesemann teaches a voice-enabled user interface for navigating a hierarchy
`
`of menu states. EX1004 Abstract, 2:45-65, 3:50-55, Fig.6. The hierarchy of
`
`“levels” or “menu states” are mapped in a network. EX1004, 8:35-39. A user may
`
`navigate a network of a telephone service system by speaking into a telephone.
`
`EX1004, 3:28-29, 4:58-60, 6:56-58. Speech recognition software interprets the
`
`user’s input, and that input is compared against template user inputs. Id., 6:56-64,
`
`8:37-63. The system then determines what menu state the user likely desires and
`
`directly “jumps” the user to that menu state without traversing “in-between” nodes.
`
`See, e.g., id., 10:13-18, 11:47-56, 11:65-12:12, 12:25-42.
`
`2.
`
`Fratkina
`
`Fratkina discloses a system for an automated, multi-step dialogue with users.
`
`EX1007 ¶77. Fratkina discloses taxonomies of parent, child, and sibling nodes
`
`through which a user may navigate with the assistance of a dialogue engine.
`
`EX1006, 4:42-5:19, 6:65-7:5, 14:42-67; 22:19-29, 26:26-27:27, Figs.4-5, 10-12.
`
`8
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`

`

`3.
`
`Rajaraman
`
`Rajaraman teaches a “general purpose search” (GPS) that generates results
`
`for nodes that, as in the ’379 patent, are hierarchical. EX1005 Abstract, 1:5-7,
`
`1:66-67, 2:9-22, 2:57-3:7, Figs.4, 13. Rajaraman also teaches a “special terms file”
`
`that “lists various words (i.e., ‘Good Terms’) that are synonymous with
`
`classification names.” EX1005, 7:22-26, Fig.7. Rajaraman’s “index builder”
`
`accesses the special terms file (thesaurus) during a search, and then it assigns
`
`synonymous terms, which it calls “Good Terms,” to expand search results. Id.,
`
`8:26-30, Fig.9; see id., 9:7-45, Fig.11.
`
`E.
`The Level of Skill in the Art
`According to Professor Padhraic Smyth, a Professor of Computer Science at
`
`University of California, Irvine, a person having ordinary skill in the art
`
`(“PHOSITA”) in 2002 would have had a bachelor’s degree in computer science or
`
`electrical engineering and at least one year of work on information retrieval and
`
`database searching, or the equivalent experience and education. EX1007 ¶¶28-30.
`
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a)
`Elastic certifies that the ’379 patent is available for IPR and that Petitioner is
`
`not barred or estopped from requesting IPR challenging the claims of the ’379
`
`patent.
`
`9
`
`

`

`III. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(A)(1)
`A. Real Party-In-Interest (§42.8(b)(1)):
`Petitioner certifies that Elastic N.V. is the real party-in-interest.
`
`B. Related Matters (§42.8(b)(2))
`Pursuant to 37 C.F.R. §42.8(b)(2), Petitioner states that, to the best of
`
`Petitioner’s knowledge, the ’379 patent is presently the subject of the following
`
`patent infringement lawsuits:
`
` Guada Technologies LLC v. Ply Gem Industries, Inc., 1-20-cv-01718
`
`(D. Del.)
`
` Guada Technologies LLC v. GAF Materials LLC, 1-20-cv-01719 (D.
`
`Del.)
`
` Guada Technologies LLC v. Flowserve US, Inc., 1-20-cv-01431 (D.
`
`Del.)
`
` Guada Technologies LLC v Rolled Alloys, Inc., 1-20-cv-01432 (D.
`
`Del.)
`
` Guada Technologies LLC v. Milacron LLC, 1-20-cv-01143 (D. Del.)
`
` Guada Technologies LLC v. Argos USA LLC, 1-20-cv-00993 (D.
`
`Del.)
`
` Guada Technologies LLC v. Procter & Gamble Co., 1-20-cv-00999
`
`(D. Del.)
`
`10
`
`

`

` Guada Technologies LLC v. Revlon Consumer Products Corp., 1-20-
`
`cv-01000 (D. Del.)
`
` Guada Technologies LLC v. Dole Food Co. Inc., 1-20-cv-00869 (D.
`
`Del.)
`
`A substantially similar petition has been filed against the ’379 patent,
`
`docketed as IPR2021-00771, by Argos USA LLC and several other entities. The
`
`Board has not decided whether to institute IPR2021-00771. If the Board institutes
`
`IPR2021-00771 while this petition is pending, Elastic intends to promptly move
`
`for joinder to IPR2021-0077.
`
`C. Lead and Back-Up Counsel (§42.8(b)(3))
`Petitioner designates Matthew A. Argenti (Reg. No. 61,836) as lead counsel for
`
`this matter and designates Michael T. Rosato (Reg. No. 52,182) as back-up counsel
`
`for this matter.
`
`D.
`Service Information (§42.8(b)(4)):
`Postal mailings and hand-deliveries for lead and back-up counsel should be
`
`addressed to: Wilson Sonsini Goodrich & Rosati, 701 Fifth Avenue, Suite 5100,
`
`Seattle, WA 98104-7036 (Telephone: 206-883-2529; Fax: 206-883-2699).
`
`Pursuant to 37 C.F.R. §42.8(b)(4), Elastic N.V. consents to e-mail service at:
`
`margenti@wsgr.com; mrosato@wsgr.com.
`
`11
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`

`

`For compliance with 37 C.F.R. §42.10(b), a Power of Attorney is also filed
`
`concurrently herewith.
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`Elastic requests review of claims 1-7 of the ’379 patent under 35 U.S.C.
`
`§311 and AIA §6 under these grounds:
`
`Ground Claims
`
`Description
`
`1
`
`2
`
`3
`
`4
`
`1-2 and 7 Obvious under §103(a) over U.S. Patent No. 6,731,724 to
`Wesemann et al. (“Wesemann”)
`
`3-6
`
`Obvious under §103(a) over U.S. Patent No. 6,731,724 to
`Wesemann et al. (“Wesemann”) in view of U.S. Pat. No.
`6,366,910 to Rajaraman et al. (“Rajaraman”)
`
`1-2 and 7 Obvious under §103(a) over U.S. Patent No. 7,539,656 to
`Fratkina et al. (“Fratkina”)
`
`3-6
`
`Obvious under §103(a) over U.S. Patent No. 7,539,656 to
`Fratkina et al. (“Fratkina”) in view of U.S. Pat. No.
`6,366,910 to Rajaraman et al. (“Rajaraman”)
`
`Section VI identifies where each element of the challenged claims is found
`
`in the prior art and the relevance of the evidence to the challenges raised. 37 C.F.R.
`
`§42.104(b)(4)-(5).
`
`12
`
`

`

`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3)
`Pursuant to 37 C.F.R. §42.100(b), 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.”
`
`1.
`
`“node”
`
`All seven claims use the term “node.” Referring to Figure 1, the ’379 patent
`
`states, “[t]he individual boxes 102-120 are referred to as ‘nodes’ and each
`
`represents a specific choice or option in the hierarchy.” EX1001, 4:22-26. Thus, a
`
`“node” is “a specific choice or option in a hierarchy.”
`
`2.
`
`“vertex”
`
`Claim 7 uses the term “vertex” or “vertices.” “Node” and “vertex” are used
`
`interchangeably throughout the specification and prosecution history. E.g., EX1001,
`
`2:5-9 (“In general, there will also be a combination of vertices or nodes in the graph
`
`that best represent or are closest to the goal the user is trying to accomplish.”);
`
`EX1002, 47-48 (describing jumping as direct traversal “from one node or vertex to
`
`another node or vertex”). The only apparent distinction in the patent between a
`
`“node” and a “vertex” is that a “vertex” is a node in a hierarchy that can be
`
`represented as a graph: “A graph structure is a collection of points, called
`
`‘vertices,’ and a collection of lines, called ‘edges.’” EX1001, 1:27-35. Therefore, a
`
`13
`
`

`

`“vertex” is “a specific choice or option in a hierarchy that can be represented in a
`
`graph.”
`
`3.
`
`“keyword”
`
`The ’379 patent teaches that each node in the hierarchy is associated with a
`
`verbal description and that “[e]ach such description contains ‘key’ words that are
`
`deemed to be of importance and other words that can be disregarded.” Id., 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.
`
`The ’379 patent describes an index that associates keywords with nodes. Id.,
`
`4:62-5:7. This index allows the nodes to be searched by keyword and the user to
`
`jump to a node by matching the keyword. Id., 5:7-12. The ’379 patent allows for a
`
`“keyword” that is more than a single word or even is a “data pattern”:
`
`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.
`
`14
`
`

`

`Accordingly, a “keyword” is “one or more words or pieces of information,
`
`such as a specific data pattern, that is associated with at least one node or vertex.”
`
`4.
`
`“jumping”
`
`During prosecution, PO 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).” EX1002, 89; see EX1002, 47 (“Appellant’s claimed invention …
`
`allow[s] the system to cause the user to ‘jump’ from one node in the hierarchy to
`
`another node that is not directly connected to that node, without having to traverse
`
`through every intervening node in the path....”).
`
`Consistent with the prosecution history, “jumping” does not require that the
`
`system jump between nodes. EX1002, 90 (“Applicant’s claimed invention ...
`
`allow[s] the user to ‘jump.’”). Deviating from the prosecution history, PO asserted,
`
`during the BloomReach IPR, that “jumping” should be construed as “the system
`
`jumping.” IPR2019-01304 Paper 6, 2 n.1.
`
`5.
`
`“verbal description”
`
`The ’379 patent teaches that each node has a verbal description for the
`
`node’s associated subject matter. Id., 3:37-43, 4:32-41. Petitioners adopt the
`
`15
`
`

`

`patent’s express definition of “verbal description” as “a set of words relating to the
`
`subject matter whether presented audibly or in written form.” Id., 1:50-52.
`
`VI. 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-
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`AIA). EX1004. Wesemann was not cited during prosecution. See EX1002.
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`Wesemann is in the same field as, and is pertinent to the problem solved by,
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`the ’379 patent. The ’379 patent relates to navigating a hierarchical network of
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`nodes, like a “menu-type automated telephone voice response system.” EX1001,
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`3:49-58, see id., 3:5-14. The ’379 patent purports to solve inefficiencies in
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`navigating a hierarchical network by allowing users to “jump” to a node without
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`traversing intervening nodes. Id., Abstract, 2:22-30. Wesemann also relates
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`increases the efficiency of menu-type hierarchy systems. EX1004, 2:45-65
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`(identifying the problem of “expend[ing ] time ... to move systematically through a
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`hierarchy of levels or menu states ... even when a user already knows what the
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`final menu state will be”). Wesemann enables users to “jump from one menu state
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`to another menu state of the telephone service system without having to enter input
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`for each menu state between the first and the second menus states.” EX1004
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`16
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`Abstract; see id., 3:54-56 (“[T]he invention enables a user to jump over ‘in
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`between’ menu states, from a first menu state to a second menu state with only a
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`single user input.”). Therefore, Wesemann is analogous prior art.
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`As Wesemann describes, a jump need not be between connected nodes, even
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`if, as the prior institution decision notes, “Wesemann’s ‘jump’ may refer to a
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`transition across multiple connected nodes.” EX1027, 19. Wesemann describes
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`two examples:
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` “For example, from main menu 610 a user can state ‘123’ and the user will
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`automatically be transferred to extension 123.” EX1004, 12:30-32 (emphasis
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`added).
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` “Alternatively, a user can jump from home laptop sales 652 to home
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`computer support 646 by speaking ‘home computer support.’” Id., 12:32-34
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`(emphasis added).
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`As such, Wesemann allows “a user to jump to any level or state in a menu
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`hierarchy.” Id., 3:10-14.
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`
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`Wesemann’s jumping is the jumping claimed in the ’379 patent. EX1007
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`¶51. In the ’379 patent, jumping is accomplished by using an index to match
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`keywords (that the user speaks) with their associated nodes. Id. “An index, as
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`described more fully below, associating these keywords with the nodes containing
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`them is then created….” EX1001, 5:2-7. Wesemann does what the ’379 patent
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`17
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`

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`does, but instead of having merely an index, it also retains the menu hierarchy as a
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`“template.” EX1007 ¶51. Wesemann “includ[es] all menu prompts associated with
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`menu states of the menu hierarchy.” EX1004, 12:25-30. That association, between
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`menu prompts and menu states, is Wesemann’s index, as the skilled artisan would
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`recognize. EX1007 ¶51. Wesemann then “enables a user to jump from one menu
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`state to another menu state without having to enter input for every ‘in between’
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`menu state.” Id. Just like the ’379 patent, Wesemann matches the users’ spoken
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`keywords with the menu prompt of the appropriate menu state. EX1007 ¶51. So,
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`although Wesemann can involve a transition across multiple connected nodes, it
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`additionally describes a jump directly from one node to another. EX1007 ¶51.
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`Moreover, as Professor Smyth declares, the PHOSITA would have found
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`Wesemann’s “template,” which maps acceptable responses to each of Wesemann’s
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`menu states (otherwise known as nodes), to be like the ’379 patent’s “index,”
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`which maps keywords to the nodes of the ’379 patent. EX1007 ¶51; EX1001, 5:2-4
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`(“An index . . . associating these keywords with the nodes containing them is then
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`created.”), 6:7-11 (“[W]hen a response to a verbal description is provided by a
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`user, possible keywords are identified in the response and used to search the index
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`and identify any node to which the response may be directed ... .”). Further, a
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`PHOSITA would have found equivalence between (a) how Wesemann compares
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`the user’s spoken words to the “acceptable inputs and requests” stored in the
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`18
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`

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`template for an interactive voice response telephone system and (b) how the ’379
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`patent compares a user’s spoken words to keywords stored in an index for the ’379
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`patent’s interactive voice response telephone system. EX1007 ¶51.
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`1.
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`Claim 1
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`A method performed in a system having multiple navigable nodes
`1.
`interconnected in a hierarchical arrangement comprising:
`Wesemann teaches navigation of a hierarchical network of nodes, referred to
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`as “menu states” or “levels”:
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`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.
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`EX1004, 3:33-46; see id. Abstract, 10:40-64, Figs.5-6. The user may jump to
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`different nodes without transitioning through intervening menu states. Id., 9:66-
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`10:20; see also id., 1:13-19, 11:65-12:12, 12:53-13:2, Fig.5. A PHOSITA would
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`understand that the menu states in Wesemann as nodes in the hierarchal
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`arrangement. EX1007 ¶48-49.
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`Wesemann illustrates a computer sales organization’s telephone system. Id.,
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`10:40-64, 11:32-46, 11:6512:42, Fig.6. A caller may navigate through multiple
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`19
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`

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`interconnected menus, such as support, sales, and a personnel directory. Id., 10:40-
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`45. These menus may have their own submenus. For example, the sales menu has
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`different submenus for home, business, and refurbished computers, and each of
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`these menus has a submenu for laptops and desktops. Id., Fig.6. The menu and
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`submenus constitute multiple nodes interconnected in a hierarchical arrangement.
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`See id., 10:62-64 (“Main menu 610 and each of the submenus 620-674 comprise
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`discrete menu states of menu hierarchy 600.”). Wesemann’s computer sales
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`organization menu is similar in structure to the flight system menu example
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`described in the ’379 patent:
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`Wesemann:
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`Id., Fig.6.
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`
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`20
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`

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`’379 patent:
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`
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`EX1001 Fig.6.
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`[1(a)] at a first node, receiving an input from a user of the system, the input
`containing at least one word identifiable with at least one keyword from among
`multiple keywords,
`Wesemann teaches a system that receives a user input, including spoken
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`words, at a “menu state” (node) of a hierarchical arrangement of menu states.
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`EX1004 Abstract, 3:28-30, 6:56-64, 11:47-12:6, 12:43-52 (“The process ... to jump
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`from one menu state to another state is made possible by mapping the menu
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`hierarchy 600 within a template of the invention and by tracking all menu state
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`changes as they occur ... ). For example, the system may receive at a main menu
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`state 610 spoken words from a user, such as “refurbished laptop sales.” Id., 11:65-
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`12:6. The template 232 maps “acceptable responses and inputs” (keywords) with
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`21
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`

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`each of the menu states. Id., 7:15-17 (“A template, such as template 232, maps all of
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`the menu states of a telephone menu system and all of the corresponding prompts
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`and acceptable responses and inputs.”), 8:56-63, 12:13-16. The user’s spoken input
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`is analyzed by software and the closest keyword stored is identified. Id., 6:56-64,
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`7:6-14, 12:13-21, 12:45-52. The mapping of inputs to nodes allows the system to
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`“jump” to the node corresponding to that keyword. Id., 12:25-36.
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`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.
`Id., 3:28-43; see also id., 10:65-11:16, 12:13-16 (“The voic