Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 18
`Entered: October 24, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELASTIC N.V., OHIO FARMERS INSURANCE COMPANY,
`and PREGIS LLC,
`Petitioners,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2021-008751
`Patent 7,231,379 B2
`____________
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Elastic N.V., Ohio Farmers Insurance Company, and Pregis LLC
`
`
`1 Ohio Farmers Insurance Company and Pregis LLC, who filed a petition in
`IPR2022-00217, have been joined as Petitioners in this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`Paper 18
`Entered: October 24, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELASTIC N.V., OHIO FARMERS INSURANCE COMPANY,
`and PREGIS LLC,
`Petitioners,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2021-008751
`Patent 7,231,379 B2
`____________
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Elastic N.V., Ohio Farmers Insurance Company, and Pregis LLC
`
`
`1 Ohio Farmers Insurance Company and Pregis LLC, who filed a petition in
`IPR2022-00217, have been joined as Petitioners in this proceeding.
`
`
`
`IPR2021-00875
`Patent 7,231,379 B2
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`(“Petitioners”) challenge the patentability of claims 1‒7 of U.S. Patent
`No. 7,231,379 B2 (Ex. 1001, “the ’379 patent”). This Final Written Decision
`is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, we determine Petitioners have shown by a
`preponderance of the evidence that claims 1‒7 of the ’379 patent are
`unpatentable.
`
`BACKGROUND
`I.
`Procedural History
`A.
`Elastic N.V. filed a Petition (Paper 2, “Pet.”) requesting an inter
`partes review of claims 1‒7 of the ’379 patent. Elastic N.V. filed a
`Declaration of Dr. Padhraic Smyth (Ex. 1007) with its Petition. Guada
`Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”).
`We instituted an inter partes review of the challenged claims,
`applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioners would prevail with
`respect to at least one challenged claim. Paper 7 (“Inst. Dec.”). In the
`Institution Decision, we determined Elastic N.V. demonstrated a reasonable
`likelihood of prevailing as to at least one challenged claim, and we instituted
`trial on all claims and all grounds in the Petition. Inst. Dec. 25.
`Patent Owner filed a Patent Owner’s Response (Paper 9, “PO Resp.”),
`and Elastic N.V. filed a Reply to Patent Owner’s Response (Paper 10,
`“Reply”). Patent Owner did not file a sur-reply to Petitioner’s Reply.
`Ohio Farmers Insurance Company and Pregis LLC filed a Petition
`requesting inter partes review of claims 1‒7 of the ’379 patent and a motion
`for joinder to this proceeding in IPR2022-00217. We granted the motion for
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`joinder and joined Ohio Farmers Insurance Company and Pregis LLC as
`Petitioners in this proceeding. See IPR2022-00217, Paper 9.
`An oral hearing was held on July 26, 2022, and a copy of the hearing
`transcript has been entered into the record. Paper 17 (“Tr.”).
`Real Parties in Interest
`B.
`Elastic N.V. identifies itself as a real party in interest. Pet. 10. Ohio
`Farmers Insurance Company and Pregis LLC, who joined as Petitioners,
`identify the following entities as real parties in interest: Ohio Farmers
`Insurance Company d/b/a Westfield, Westfield Insurance Company,
`Westfield National Insurance Company, and Pregis LLC. See IPR2022-
`00217, Paper 2. Patent Owner identifies itself as a real party in interest.
`Paper 4, 1.
`
` Related Matters
`C.
`On May 3, 2021, Petitioners indicated that Patent Owner had asserted
`the ’379 patent in the following matters:
`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.);
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`Guada Technologies LLC v. Argos USA LLC, 1-20-cv-00993
`•
`(D. Del.);
`Guada Technologies LLC v. The Gillette Company LLC, 1-20-
`•
`cv-00999 (D. Del.);
`•
`Guada Technologies LLC v. Revlon Consumer Products
`Corporation, 1-20-cv-01000 (D. Del.);
`Guada Technologies LLC v. Dole Food Company, Inc., 1-20-
`•
`cv-00869 (D. Del.);
`Pet. 10. On July 7, 2022, Patent Owner indicated that there are no pending
`administrative or judicial related matters. Paper 14. However, Patent Owner
`identifies IPR2019-01304 as a related matter by asserting that the arguments
`set forth in the present Petition are copied “word for word” from the petition
`in that proceeding. PO Resp. 4. (comparing Pet. 16–65, with Bloomreach,
`Inc. v. Gauda Techs. LLC, IPR2019-01304, Paper 2 at 16–54).
`Petitioners indicate that the ’379 patent was the subject of a similar
`inter partes review petition in IPR2021-00771, which has since been
`terminated. Pet. 11. Petitioners also identify the following inter partes
`review proceedings as challenging the ’379 patent: IPR2017-01039
`(terminated); IPR2019-01304 (terminated); and IPR2020-00598
`(terminated). See Pet. 5–6.
`The ’379 patent
`D.
`The ’379 patent relates to a method for searching a hierarchical menu
`tree of nodes or vertices. Ex. 1001, Abstract. One common example of a
`hierarchical menu tree of nodes or vertices is an automated telephone voice
`response system. Id. at 1:40‒41. Users of the system typically have some
`goal they seek to accomplish within the system, such as a transaction or
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`piece of information they wish to access. Id. at 1:66‒2:3. The user’s goal is
`represented by one or more “nodes” or “vertices” within the menu tree. Id. at
`2:5‒8. The user’s intent in navigating the menu tree is to get from the first,
`initial entry point in the menu to the goal vertices. Id. at 2:9‒18. The ’379
`patent teaches a system that purportedly allows users to navigate a menu tree
`more efficiently. Id. at 2:22‒31.
`The ’379 patent teaches that in graph theory, a “path” leads from a
`first vertex to a second vertex, where the path consists of a sequence of
`“edges” that connect the vertices between the first vertex (the initial entry
`point into the graph) and the goal vertex. Ex. 1001, 2:64‒67. The ’379 patent
`teaches a system that allows a user to navigate a graph or menu tree in a way
`that allows the user to move from a first vertex to a second vertex where
`these vertices are not directly connected, eliminating the necessity for
`making choices to navigate the tree to the goal. Id. at 3:29‒34.
`The ’379 patent teaches prompting users for keywords that can be
`used to identify the user’s goal. Id. at 4:22‒41. Keywords are assigned to
`each node in the menu tree, allowing a user to “jump” to another place in the
`tree by providing a keyword associated with the unconnected node. Id. at
`4:42‒5:12.
`To illustrate these concepts, the ’379 patent teaches an example
`associated with Figure 2, shown below.
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`Figure 2 depicts a simplified graph 200 representing a portion of a more
`complex tree involving possible decisions relating to fruit. Ex. 1001,
`5:43‒48. In this example, a user that is prompted at a node above the fruit
`node with the query “What would you like to buy today?” may respond
`“orange.” Id. at 6:7‒15. The system would respond by identifying node 206
`as relating to the keyword orange and would jump directly to node 206,
`bypassing the need to navigate through node 202, which is associated with
`the keyword “fruit.” Id. at 6:15‒21.
`E. Illustrative Claim
`Of the challenged claims, claims 1 and 7 are independent. Claims 2‒6
`depend from claim 1. Claim 1 is illustrative of the challenged claims and
`recites:
`A method performed in a system having multiple
`1.
`navigable nodes interconnected in a hierarchical arrangement
`comprising:
`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,
`identifying at least one node, other than the first node, that
`is not directly connected to the first node but is associated with
`the at least one keyword, and
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`jumping to the at least one node.
`Ex. 1001, 22:47–57.
`Applied References and Declarations
`F.
`Petitioners rely on the following prior art:
`U.S. Patent No. 6,731,724, issued May 4, 2004, filed June 22,
`2001 (Ex. 1004, “Wesemann”);
`U.S. Patent No. No. 6,366,910, issued April 2, 2002 (Ex. 1005,
`“Rajaraman”); and
`U.S. Patent No. 7,539,656, issued May 26, 2009, filed March 6,
`2001 (Ex. 1006, “Fratkina”).
`Petitioners also cite the Declaration of Dr. Padraic Smyth (Ex. 1007).
`The Asserted Grounds
`G.
`Petitioners assert that claims 1‒7 are unpatentable on the following
`grounds:
`Claim(s) Challenged
`1, 2, 7
`3‒6
`1, 2, 7
`3‒6
`
`35 U.S.C. §2
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Reference(s)/Basis
`Wesemann
`Wesemann and Rajaraman
`Fratkina
`Fratkina and Rajaraman
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’379 patent has an effective filing date prior to the effective date of the
`applicable AIA amendments, we refer to the pre-AIA version of § 103.
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`(1966). “The importance of resolving the level of ordinary skill in the art lies
`in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko
`Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person
`of ordinary skill in the art” is a hypothetical construct, from whose vantage
`point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed.
`Cir. 1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed.
`Cir. 1993)).
`Petitioners state a person of ordinary skill in the art at the time of the
`alleged invention 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.” Pet. 9. Dr. Smyth’s testimony supports Petitioners’ position. See
`Ex. 1007 ¶¶ 28‒30. Patent Owner does not explicitly refute these assertions.
`See generally PO Resp. We adopt Petitioners’ definition of the level of
`ordinary skill in the art because it aligns with the technology of the ’379
`patent and the descriptions of the art in the prior art of record. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence
`of specific findings on the level of skill in the art does not give rise to
`reversible error where the prior art itself reflects an appropriate level and a
`need for testimony is not shown).
`Claim Construction
`B.
`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
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`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).
`Under this standard, claim terms are generally given their plain and
`ordinary meaning as would be understood by a person of ordinary skill in the
`art at the time of the invention and in the context of the entire patent
`disclosure. Phillips, 415 F.3d at 1313. “There are only two exceptions to this
`general rule: 1) when a patentee sets out a definition and acts as his own
`lexicographer, or 2) when the patentee disavows the full scope of a claim
`term either in the specification or during prosecution.” Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`Petitioners propose construing five claim terms. Pet. 13‒16. First,
`Petitioners propose construing “node” to mean “a specific choice or option
`in a hierarchy.” Id. at 13. Second, Petitioners propose construing “vertex” to
`mean “a specific choice or option in a hierarchy that can be represented in a
`graph.” Id. at 13‒14. Third, Petitioners propose construing “keyword” to
`mean “one or more words or pieces of information, such as a specific data
`pattern, that is associated with at least one node or vertex.” Id. at 14‒15.
`Fourth, Petitioners propose construing “jumping”3 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).” Id. at 15. Petitioners assert
`that the Applicant defined “jumping” in this manner during prosecution of
`
`3 Independent claim 1 recites “jumping to the at least one node” and
`independent claim 7 recites “jumping to the vertex.” Ex. 1001, 22:57, 24:11.
`
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`the ’379 patent. Id. at 15. Fifth, Petitioners propose construing “verbal
`description” to mean “a set of words relating to the subject matter whether
`presented audibly or in written form.” Id. at 15‒16. Patent Owner did not
`explicitly propose construing any claim terms in its Preliminary Response.
`See generally Prelim. Resp.
`In our Decision on Institution, we adopted Petitioners’ proposed
`construction of the term “jumping”: “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).” Inst. Dec. 8. We determined that no other terms required
`explicit construction. Id. The parties do not dispute the constructions of these
`terms in their briefing. See PO Resp. 6; Reply 11–12. Upon considering the
`complete record, we see no reason to deviate from our preliminary
`determination for this Final Written Decision and adopt Petitioner’s
`construction of the term “jumping.” For the purposes of this Final Written
`Decision, no other terms require explicit construction. See, e.g., Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
`only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`C. Ground 1: Alleged Obviousness of Claims 1, 2, and 7 over
`Wesemann
`Petitioners contend that claims 1, 2, and 7 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Wesemann. A claim is unpatentable for
`obviousness under § 103(a) if the differences between the claimed subject
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`matter and the prior art are such that the subject matter, as a whole, would
`have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
`resolved on the basis of underlying factual determinations, including (1) the
`scope and content of the prior art; (2) any differences between the claimed
`subject matter and the prior art; (3) the level of skill in the art; and (4) when
`in evidence, objective indicia of non-obviousness (i.e., secondary
`considerations).4 Graham, 383 U.S. at 17–18 (1966). “An obviousness
`determination requires finding both ‘that a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention, and that the skilled artisan would have had a reasonable
`expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876
`F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016)). A patent
`can also be obvious in light of a single prior art reference if it would have
`been obvious to modify that reference to arrive at the patented invention.
`See, e.g., Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed.
`Cir. 2016).
`1. Wesemann
`Wesemann is a United States patent directed to a voice-enabled user
`interface that allows a user to provide vocal input to access data from
`telephone systems that are only responsive to dual tone multi-frequency
`
`
`4 Patent Owner has not presented evidence of objective indicia of
`non-obviousness. See generally PO Resp.
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`(“DTMF”) signals. Ex. 1004, Abstract. Figure 6 of Wesemann is reproduced
`below.
`
`
`
`Figure 6 depicts a block diagram of a hierarchical menu structure of a
`telephone service system that can be navigated by a voice-enabled user
`interface. Id. at 4:25‒28. The block diagram illustrates the prompts provided
`to the user at each stage of the menu. Id. at 11:33‒37. For example, at main
`menu 610, the user is prompted to “press 1 followed by # for sales,” “press 2
`followed by # for computer support,” or “press 3 followed by # for a
`directory of personnel.” Id. at 11:34‒45. The user may respond vocally to
`these prompts, and the user’s response may represent an input that is valid
`from another state of the menu hierarchy instead of the present state of the
`menu hierarchy. Id. at 11:51‒55.
`For example, a user may jump from main menu 610 to a particular
`extension, such as “123.” Id. at 12:30‒32. In another example, a user may
`jump from home laptop sales 652 to home computer support 646 by saying
`
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`“home computer support.” Id. at 12:32‒34. A user may also jump from main
`menu 610 to refurbished laptop sales 672 by saying “refurbished laptop
`sales.” Id. at 11:65‒12:12. In each of these examples, it is not necessary for
`the user to return to main menu 610 and traverse each node of the menu to
`reach their goal. Id. at 12:34‒36.
`2. Independent Claim 1
`a) Preamble
`The preamble of claim 1 recites: “[a] method performed in a system
`having multiple navigable nodes interconnected in a hierarchical
`arrangement.” Ex. 1001, 22:47–49. Petitioners assert that Wesemann teaches
`or suggests this feature. Pet. 19‒21. In particular, Petitioners assert that
`Wesemann teaches “menu states” or “levels” interconnected in a hierarchical
`arrangement. Id. at 19 (citing Ex. 1004, Figs. 5‒6, Abstract, 3:33‒46).
`Dr. Smyth’s testimony supports Petitioners’ assertions. See Ex. 1007 ¶¶ 48‒
`56.
`
`Patent Owner does not argue that Wesemann fails to teach or suggest
`the preamble of claim 1. See generally PO Resp. Based on the complete
`record and for the reasons explained by Petitioners, we are persuaded that
`Petitioners have shown by a preponderance of the evidence that Wesemann
`teaches the preamble of claim 1.5
`
`
`5 Because Petitioners have shown sufficiently that the recitations in the
`preamble are satisfied by Wesemann, we need not determine whether the
`preamble is limiting. See Vivid Techs., 200 F.3d at 803.
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`b) Receiving Limitation
`Claim 1 further recites “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.” Ex. 1001, 22:50–53.
`Petitioners assert that Wesemann teaches or suggests this feature.
`Pet. 21‒26. In particular, Petitioners assert that Wesemann teaches or
`suggests receiving spoken words from a user at a first level or menu state,
`which Petitioners assert corresponds to the claimed “first node” of the
`hierarchical arrangement of nodes. Id. at 21 (citing Ex. 1004, Abstract, 3:28‒
`30, 4:51‒57, 6:56‒64, 11:47‒12:6, 12:43–52). Petitioners assert that the
`system may receive user input, such as “refurbished laptop sales,” at main
`menu state 610. Id. (citing Ex. 1004, 11:65‒12:6). Petitioners assert that
`Wesemann teaches a template that maps “acceptable responses and inputs”
`(keywords) with each of the menu states (i.e., nodes) in the hierarchy. See,
`e.g., id. at 22–23 (citing Ex. 1004, 7:15‒17, 8:56‒63, 12:13‒16).
`Dr. Smyth’s testimony supports Petitioners’ assertions. Ex. 1007 ¶¶ 48‒56.
`Patent Owner does not specifically argue that Wesemann fails to teach
`or suggest this limitation in its briefing. Instead, Patent Owner merely asserts
`that the arguments presented in the Petition for Ground 1 are the same
`arguments that were presented to and rejected by the Board in IPR2019-
`01304. PO Resp. 7. Patent Owner asserts that, because the arguments
`presented in the present Petition are copied from the petition filed in
`IPR2019-01304, the Board should reject Ground 1 for the same reasons that
`the Board determined the petitioner in IPR2019-01304 had failed to show a
`reasonable likelihood of prevailing. See PO Resp. 7. However, the Panel in
`IPR2019-01304 did not address directly the “receiving” limitation when it
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`stated that, based on the record of IPR2019-01304 as it stood at that time and
`subject to further evidence and argument by the parties, the petitioner had
`failed to show a reasonable likelihood of prevailing on certain grounds. See
`Bloomreach, Inc. v. Gauda Techs. LLC, IPR2019-01304, Paper 11 at 18‒20
`(PTAB Jan. 23, 2020). Instead, the Panel in IPR2019-01304 noted that the
`dispute in that IPR focused on the phrases “jumping to the at least one node”
`recited in claim 1 and “jumping to the vertex” recited in claim 7, which are
`addressed in the following analysis. See infra Section II.C.2.c.
`During the oral hearing, however, we understood Patent Owner to
`argue that the ’379 patent discloses that when a keyword is associated with
`multiple nodes, the system decides arbitrarily where the user would jump as
`a result of inverted indexing. See Tr. 17:3‒18:6, 22:13‒23:2. We understood
`Patent Owner to argue that this arbitrary determination feature is
`distinguishable from the prior art of record, which teaches that determining a
`destination node is based on determining a user’s intent. Id. at 21:26‒23:2.
`Further, we understood Patent Owner’s argument to be related to the
`limitation “the input containing at least one word identifiable with at least
`one keyword from among multiple keywords.” Id. at 22:3‒10. We presume
`this argument was intended to apply to Grounds 1 and 3 because Patent
`Owner referred to both Wesemann and Fratkina during this argument. See
`Tr. 21:26‒22:12.
`As admitted by Patent Owner, this argument was not raised in the
`Patent Owner Response. Tr. 16:17–20, 23:11‒14. Instead, this argument was
`raised for first time at the hearing, during which Petitioners timely objected.
`Tr. 27:17–28:5. Because Patent Owner did not raise this argument timely
`and in a substantive brief, this argument is deemed waived. See Paper 10
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`(Scheduling Order), 8 (“Patent Owner is cautioned that any arguments not
`raised in the response may be deemed waived.”); see also See Novartis AG
`v. Torrent Pharm. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); In re
`NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016).
`Based on the complete record and for the reasons explained by
`Petitioners, we are persuaded that Wesemann teaches this limitation (i.e., 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). In particular, Wesemann teaches receiving
`spoken words, such as “refurbished laptop sales,” from a user at main menu
`state 610 (“at a first node, receiving an input from a user of the system”).
`Ex. 1004, 11:65‒12:6. Wesemann teaches identifying the closest stored
`keyword using templates that map acceptable responses and input to menu
`states in the hierarchy (“the input containing at least one word identifiable
`with at least one keyword from among multiple keywords”). Id. at 12:25‒36.
`Thus, considering the evidence as a whole, we are persuaded that Petitioners
`have demonstrated by a preponderance of the evidence that Wesemann
`teaches this limitation.
`c) Identifying and Jumping Limitations
`Claim 1 further recites “identifying at least one node, other than the
`first node, that is not directly connected to the first node but is associated
`with the at least one keyword, and jumping to the at least one node.”
`Ex. 1001, 22:54–56. As noted above, we construe “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
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`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 supra Section II.B.
`Petitioners assert that Wesemann teaches or suggests this feature.
`Pet. 26‒29. In particular, Petitioners assert that Wesemann teaches that all
`menu states (“nodes”) in the hierarchy are mapped in template 232 to
`acceptable responses or inputs (“keywords”). Id. at 27 (citing Ex. 1004,
`7:15‒17). Petitioners assert that Wesemann teaches speech recognition
`software that analyzes the user’s spoken input and compares the input to the
`stored acceptable responses and inputs to determine the node with the
`response most similar to the input. Id. at 22 (citing Ex. 1004, 6:56‒64, 7:6‒
`14, 12:13‒21, 12:45‒52). Petitioners assert that the system is capable of
`jumping both laterally and vertically to an identified node having a keyword
`matching the user’s input. Id. at 28 (citing Ex. 1004, 12:25‒42). Petitioners
`assert that Wesemann’s examples of jumping from main menu 610 to
`extension “123” and jumping from home laptop sales 652 to home computer
`support 646 both involve jumping to an unconnected node, without traversal
`through any intervening nodes or to a node whose only least common
`ancestor is the root node. Id. at 28‒29. Petitioners annotate Figure 6 (id. at
`28) as shown below in support of these assertions:
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`Annotated Figure 6 depicts the block diagram illustrating the hierarchical
`menu of Wesemann’s telephone service system with red arrows representing
`the jumps from main menu 610 to extension “123” and from home computer
`sales 6506 to home computer support 646, respectively. Petitioners assert
`that Wesemann’s jumps occur automatically without requiring the user to
`select different menu items or navigate through the hierarchical menu.
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`6 Petitioners indicate the arrow in Annotated Figure 6 pointing from home
`computer sales 650 to home computer support 646 is a typographical error,
`and the arrow is intended to point from home laptop sales 652 to home
`computer support 646. Tr. 9:24‒10:9. This typographical error does not
`materially affect Petitioner’s assertions, which rely on the corresponding
`description that describes the example. See Pet. 27‒28 (citing Ex. 1004,
`12:25‒42).
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`Pet. 27‒29 (citing Ex. 1004, 8:1‒5, 11:65‒12:6, 12:30‒32, 12:43‒46, 12:65‒
`13:2).
`Patent Owner does not specifically argue that Wesemann fails to teach
`or suggest this limitation. Instead, as noted above, Patent Owner merely
`asserts that the arguments presented in the Petition are identical to the
`arguments presented in the petition for IPR2019-01304, and the Board
`should reject Ground 1 for the same reasons that the Board concluded in the
`Decision on Institution in IPR2019-01304 (“the -1304 Decision on
`Institution”) that the petitioner in IPR2019-01304 had failed to show a
`reasonable likelihood of prevailing on Ground 1. See PO Resp. 4, 7.
`In the -1304 Decision on Institution, the Panel made a preliminary
`determination that the petition there had not shown a reasonable likelihood
`of prevailing in establishing obviousness of claim 1 over Wesemann, noting
`that claim 1 requires “jumping” between nodes not directly connected, while
`Wesemann’s “jump” may refer to a transition across multiple connected
`nodes. Bloomreach, Inc. v. Gauda Techs. LLC, IPR2019-01304, Paper 11 at
`19 (PTAB January 23, 2020). The Panel further stated that its final
`determination on this issue, however, would be made after review of the
`complete record, including further briefing and evidence submitted by the
`parties. See id.
`Petitioners address this issue in this Petition, providing additional
`evidence and argument to show that Wesemann’s “jump” need not be
`between multiple connected nodes. See, e.g., Pet. 17–19; Reply 3‒5;
`Ex. 1007 ¶ 51 (explaining that although Wesemann can involve a transition
`across multiple connected nodes, Wesemann additionally describes a jump
`directly from one node to another). Petitioners explain that Wesemann’s
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`examples of jumping, such as jumping from main menu 610 to extension
`“123” and jumping from home laptop sales 652 to home computer support
`646, both involve jumping to a node that is not directly connected to the first
`node, without traversal through any intervening nodes or to a node whose
`only least common ancestor is the root node. Pet. 16–19 (citing Ex. 1004,
`3:10‒14, 3:54‒56, 12:25‒34), 28‒29 (citing Ex. 1001, 1:47–50, 13:39–63;
`Ex. 1004, 12:53–65; Ex. 1007 ¶ 56); see also Reply 3–5.
`Unlike the preliminary determination made in IPR2019-01304, the
`Decision on Institution in the present proceeding determined that Petitioner
`did show a reasonable likelihood of prevailing in establishing obviousness of
`claim 1 over Wesemann. We expressly stated that, based on the record at the
`time, Petitioner had made a sufficient showing that Wesemann’s teachings
`of (1) navigating from main menu 610 to a node not directly connected to
`the first node (e.g., extension 123) and (2) jumping from home laptop sales
`652 to home computer support 646, teach or suggest the jumping limitations.
`Dec. Inst 14–15 (citing Ex. 1004, 8:1–5, 11:51–55, 12:25–36). Patent Owner
`does not directly respond to these assertions. See PO Resp.
`Based on the complete record and for the reasons explained by
`Petitioners, we are persuaded that Wesemann teaches these limitations. In
`particular, the examples identified in the Petition involve navigating from a
`first node, such as main menu 610, to a node that is not directly connected to
`the first node, such as extension “123.” See Ex. 1004, 8:1‒5, 11:51‒55,
`12:25‒32; Pet. 16–19. In another identified example, Wessemann jumps
`from home laptop sales 652 to home computer support 646. See id. at 12:32‒
`36. These nodes do not share a common ancestor other than the root node.
`Thus, Wessemann traverses from a first node (home laptop sales 652) “to a
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`node or vertex whose only least common ancestor with that node or vertex is
`the root node or vertex” (home computer support 646). See Pet. 26.
`Conclusion on Claim 1
`d)
`Considering the evidence as a whole, we are persuaded that
`Petitioners have demonstrated by a preponderance of the evidence that
`Wesemann teaches or suggests every limitation of claim 1. Accordingly, we
`determine that Petitioners have demonstrated by a preponderance of the
`evidence that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over Wesemann.
`3. Dependent Claim 2
`Claim 2 recites “[t]he method of claim 1 further comprising:
`providing a verbal description associated with the at least one node to the
`user.” Ex. 1001, 22:58–60. Petitioners assert Wesemann teaches this
`limitation by teaching menu prompts corresponding to each of the menu
`states, where these menu prompts are verbally presented to the user over a
`telephone device when a user is at a particular menu state. Pet. 30‒31 (citing
`
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