Trials@uspto.gov
`571-272-7822
`
`Paper No. 9
`Entered: January 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE,INC.,
`Petitioner,
`
`Vv.
`
`MICHAEL MEIRESONNE and
`INDUSTRIAL QUICK SEARCH,INC.,
`Patent Owner.
`
`Case IPR2014-01188
`Patent 8,156,096 B2
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and TINA E. HULSE,
`Administrative Patent Judges.
`.
`
`PERRY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108 ©
`
`
`571-272-7822
`
`Paper No. 9
`Entered: January 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE,INC.,
`Petitioner,
`
`Vv.
`
`MICHAEL MEIRESONNE and
`INDUSTRIAL QUICK SEARCH,INC.,
`Patent Owner.
`
`Case IPR2014-01188
`Patent 8,156,096 B2
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and TINA E. HULSE,
`Administrative Patent Judges.
`.
`
`PERRY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108 ©
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`I. INTRODUCTION
`
`A. Background
`Google,Inc. (“Petitioner”) filed a Petition (Paper1, “Pet.”) requesting
`
`_
`
`institution of inter partes review of claims 16, 17, 19, and 20 of U.S. Patent
`
`No.8,156,096 B2 (“the ’096 patent”). Michael Meiresonne(“Patent
`
`Owner’) timely filed a Preliminary Response (Paper6, “Prelim. Resp.”’) to
`
`the Petition.
`
`We havejurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may be authorizedonly if “the information presented in
`the petition .
`.
`. and any [preliminary] response. .
`. showsthat there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`one of the claims challenged in the petition.” 35U.S.C. § 314(a).
`Pursuant to 35 U.S.C. §.314, we conclude there is a reasonable
`likelihood that Petitioner would prevail with respect to claims 16, 17, 19,
`
`and 20 of the ’096 patent. Accordingly, we institute an inter partes review
`
`of the ’096 patent as to these claims.
`B. Related Proceedings
`Patent Ownerindicates that the ’096 patent is being asserted in
`
`Industrial Quick Search, Inc. v. Google, Inc., Case No. 1:13-cv-00770-JIN,
`filed on July 17, 2013 in the Western District of Michigan. Paper5, 1.
`
`C. The ’096 Patent (Ex. 1001)
`
`The ’096 patent, titled “Supplier Identification and Locator System
`
`and Method,” issued on April 10, 2012, from U.S. Application No.
`13/241,554, filed September 23, 2011. Ex. 1001. Itsought to address a
`
`need for a directory website “to include numerouslinks to a variety of goods
`
`and services suppliers related to a particular topic while providing easy and
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`quick navigation to and from any numberof supplier Websites so that the
`user can find out more detailed information than that whichis provided by
`the directory.” Jd. at 2:46—-52. For example, a user whohascarried out a
`
`search for “widgets” may locate and use a “key word displaying web page”
`
`as shownin Figure 2 of the ’096 patent, reproduced below.
`
`me 7 PR connor Y
`
`Q
`
`wets
`
`*a4
`
`616-555-5555
`
`iden
`
`raimyes ISIE]
`
`ENGINE
`ADETAILED DIRECTORY OF WIDGETS, EQUIPMENT AND MANUFACTURERS,20a
`
`AAA inc.
`18a~~Grand Rapids, Ml
`Ob
`616-555-5555
`
`AAA UNC,B88inc, Manufacturers of a completeline of industrial
`18b~Grand Rapids, Ml
`°
`widgets used for most applications
`20c
`616-555-5555
`
`-
`Manufacturers of industrial widgets
`
`22
`
`CCCine, Manufacturers of a complete line of residential
`
`18c~Grand Rapids, MI
`.
`:
`MANUFACTURERS OF
`616-555-5555
`and commercially used widgets
`20d
`7
`INDUSTRIAL STRENGTH
`WIDGETS USEDIN ALMOST
`180BsaR ids Mt
`Manufacturers of commercial widgets used
`EVERY APPLICATION
`rand
`Rapids,
`aes
`:
`.
`.
`.
`IMAGINABLE
`616-555-5555
`in high weight restricted situations
`20e
`:
`teeesapids. MI
`Designers and manufacturers
`.
`; Aen, wn
`616-555-5555
`cf industrial widgets
`apiae,
`FEE inc
`616-555-5555
`aggGrand Rapids, MI
`Designers of widgets
`
`f
`
`FIG. 2
`
`Figure 2 showsan abbreviated directory page for widgets, a hypothetical
`good, according to an embodimentof the invention. Links(e.g. 18a, 18b,
`
`etc.) to search results (e.g., “AAA, Inc.”) are listed vertically. “Descriptive
`
`portions”(e.g., 20a, 20b, etc.) corresponding to these links are displayed
`
`adjacent to corresponding links. A “rollover viewing area” (22) displays an
`
`image of a web page corresponding to a subject matter link whenthe user
`
`rolls over (i-e., mouses over) a link or rolls over an associated descriptive
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`portion. The ’096 specification describes rollover viewing area 22 as
`
`follows:
`
`[W]hen a user’s cursor is located over suchalink, prior to
`activation of the link, the window 22, which can be any
`suitable size and may or may not have a border, displays
`more detailed information regarding the specific supplier
`of the goods or services of the directory,
`including the
`supplier’s logo, without the user havingto activate the link
`and wait for a new internet page to load into their internet
`browser.
`
`Id. at 5:37-44. “[M]Jore than one rollover window 22 maybe utilized such
`
`that a rollover window is readily viewable wheneverthe user’s cursoris
`
`placed over any ofthe links.” Jd. at 5:53—56.
`
`D. Illustrative Claim
`Ofthe challengedclaims, claims 16 and 19 are independent. Claim
`
`17 depends from claim 16, and claim 20 depends from claim 19. Claim 19
`
`is illustrative and is reproduced below.
`
`19. A computer system including a server comprising:
`
`at least one website stored on the server and accessible by
`a uservia the Internet, wherein the web site comprises:
`
`a home page on the server accessible by the user using a
`computer via the Internet wherein the home page
`comprises an input receiving area and wherein a user
`inputs keyword search term information into the input
`receiving area;
`a key word results displaying web page that comprises:
`a listing of a plurality of related subject matter links to
`websites that are also related to the key word search
`term information inputted into the input receiving area;
`
`a plurality of descriptive portions, wherein each
`descriptive portion is an associated descriptive portion
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`that is adjacent to and associated by the user with an
`associated related subject matter link, which is one of
`the plurality of related subject matter links; and
`
`individually displays
`a rollover viewing area that
`information corresponding to more than one of the
`related subject matter
`links
`in the same rollover
`viewing area when the user’s cursor
`is at
`least
`substantially
`over
`any of
`the
`links,
`at
`least
`substantially over a link’s descriptive portion, or
`substantially adjacent
`the corresponding descriptive
`portion and wherein the rollover viewing area is
`located substantially adjacent to the plurality of related
`subject matter links.
`
`Claim 16 is substantially the same as claim 19, but requires the listing
`
`of links to be “‘vertical’ and does not include the limitation directed to
`
`“home page.”
`
`E. Asserted Grounds of Unpatentability
`Petitioner challengesthe patentability of claims 16, 17, 19 and 20 of
`the ’096 patent on the following grounds:!
`
`
`
`Re a
`aT
`Refere
`a
`
` S
`
`
`
`: Sea— ES
`
`.
`
`Hil!’ and Finseth?
`
`
`<7
`
`
`
`
`
`aims Challenged
`
`
`16, 17, 19, and 20
`
`
`
`
`§§ 102 and 103|16, 17, 19, and 20
`
`§ 103
`
`' Petitioner supports its challenge with a Declaration executed by Ben
`Bederson, Ph.D. on July 18, 2014 (Ex. 1011).
`? “World Wide.Web Searching for Dummies, 2d Edition” by Brad Hill, IDG
`Books Worldwide” (1997) (“Hill”) (Ex. 1006).
`7 U.S. Patent 6,271,840 B1 — Finsethet al. (“Finseth”) (Ex. 1007).
`“ US Patent Publication US 2002/0042750 Al — Morrison (“Morrison”) (Ex.
`1008).
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`Reference(s),-
`
`
`
`
`
`
`
`| Basis © oo ers4,Claims Challenged».
`
`
`
`§ 103
`
`19 and 20
`
`Petropoulos and Hill
`
`Il. CLAIM CONSTRUCTION
`In an interpartes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. See 37 C.F.R. § 42.100(b); see also Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Underthe broadest reasonable construction standard, claim termsare given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context ofthe entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term mustbeset forth with reasonableclarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`.
`
`.
`
`A. “keyword results displaying web page”
`The term “keyword results displaying web page” appearsin all of the
`
`claimsat issue.
`
`.
`
`Weconstrue the term “keyword results displaying web page” as a web
`page that displays search results—gathered informationrelating to one or
`more search term(s) (key words) input by a user to a search engine. This
`claim term does notin andofitself require links to web pages foundin the
`
`° USPatent Publication US 2003/0146939 Al — Petropoulosetal.
`(“Petropoulos”) (Ex. 1009).
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`search. Nor doesit require that an input form for receiving the key words
`appear on the keywordresults displaying web pageitself.
`
`The challenged claims themselves impose additional requirements on
`
`the “keywordresults displaying web page” including: 1). subject matter links
`to web sites, 2) descriptive portions, and 3) a rollover viewing area. See
`Claim 19.
`
`B. “in the samerollover viewing area”
`The term “in the same rollover viewing area” appearsin all of the
`
`.
`claimsat issue.
`Petitioner would haveus construethis claim term as allowing for the
`viewing area to be movable (as in Finseth). Pet. 23-24, 27-28. In contrast,
`Patent Owner urgesa construction that requires the rollover viewing area to
`
`be non-movable. Prelim. Resp. 10—11.
`
`The claim language requires that for a “keywordresults displaying
`
`web page”including the “rollover viewing area” imagesresulting from
`
`rollovers are presented in the same rollover viewing area. The ’096 patent’s
`specification does not specify that the rollover area must berigidly fixed. In
`fact, it describes the possibility of multiple rollover windows. Ex. 1001,
`5:53-56. The broadest reasonable construction allows for some movement
`of the rollover viewing area to be accommodatedbythe claim language.
`|
`- Thus, we disagree with Patent Ownerthat the claims require the rollover
`
`viewing area to be non-movable.
`
`C. Remaining Terms
`Wedeterminethat, for purposes ofthis decision, no other terms in the
`challenged claims require express constructionat this time.
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`Ill. ANALYSIS
`
`A. Grounds Based on Hill (Ex. 1006) and Finseth (Ex. 1007)
`
`1. Hill Generally
`
`Hill is a book that is part of the “For Dummies”series of books.
`
`Petitioner focuses on Hill Figure 6.2, reproduced below.
`
`Link to site
`
`on LYCOS now:
`
`
`
`nm 1)LeftBank
`
`‘Left Bank Restaurants Left Bank reviewed by Sally
`Bernstein 507 Magnolia Avenue Larkspur, CA 94.
`“tpsree bpe.com spors (100%, 2 ot 2 terms
`i
`
`$s
`
`ess
`
`2
`|
`;
`ty
`The Left Bank Cafe ThelLef Bank CafeAddress: - Pp
`a
`PAL
`i
`*
`.
`are
`Box 961 (Rte. 172} Cilyf Blue Hill Stata:...
`
`
`
`
`Figure 6-2: thfebittysAwmmhidmates.comsti gr Seer (04%. 2 ot 2 tems}
`
`Partofa |
`;
`p
`\
`search |
`results
`page in
`Lycos.
`as
`
`,
`
`.
`
`e
`
`ank (507
`
`CA
`Larkspus,
`fagholia Ave,
`b Ave, Larkspur, CA} Barviv
`
`URL Relevancy percentage
`
`Site description
`
`Figure 6.2 illustrates a web page having a key word entry form forinitiating
`
`a search. Searchresults (e.g., “Left Bank”) are displayed as a verticallisting
`
`of descriptions of websites including hyperlinks to those websites.
`
`Ex. 1006, Figure 6.2; Pet. 18.
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`2. Finseth Generally
`
`Finseth describes a graphical search engine visual index. Ex. 1007,
`
`Title. Finseth Figure 5 is reproduced below.
`
`‘| SEARCH RESULT 1
`SEARCH RESULT 2
`
`le.|9 ;
`
`SEARCH RESULT
`
`Figure 5 illustrates an embodimentof a screen output from a visual index
`method. Ex. 1007, 3:41-43. Onthis screen, a user can review results of an
`Internet search or other URL'listing. Jd. at 8:49-51. A “dedicated
`|
`graphical screen area” 140, which may be resized or movedin real time |
`using a mouse,allowsa user to preview searchresults. Pet. 18 (citing Ex.
`1007, 8:31—38). When a cursoris positioned over a hyperlink, an associated
`rendered web page 142 is displayed in area 140. Pet. 18-19 (citing Ex.
`
`1007, 12:32—36); See Ex. 1011 9 52-54.
`
`3. Claim 19
`
`© Uniform Resource Locator (“URL”).
`
`
`
`
`
`IPR2014-01188.
`Patent 8,156,096 B2
`
`Petitioner presents a detailed reading of claim 19 on Hill and Finseth
`at pages 17—29 ofthe Petition. According to Petitioner, Hill disclosesall of
`the limitations of claim 19 except for the rollover viewing area, for which
`Petitioner relies on Finseth. Jd. at 18. Accordingto Petitioner, one of
`
`ordinary skill would look to both Hill and Finseth when making the claim 19
`
`invention because they are in the samefield. Pet. 19; Ex. 1011 J] 59-01.
`
`Further, a person of ordinary skill in the art would have had reason to
`
`combine Finseth with Hill, according to Petitioner, because Finseth provides
`
`means for reviewing web-based search results quickly. Pet. 19.
`Patent Ownerargues that Hill and Finseth do not meet the limitations
`of claim 19. According to Patent Owner, the Finseth viewingareais a
`
`movable window not embraced by the claimed “same”area. Prelim. Resp.
`11. Finseth describesits viewing area as being a “movable” and “resizable”
`
`preview window. Ex. 1007, 8:39-45. A preview for one link may appear in
`a differentarea ofthe display than the preview for another link. Prelim.
`Resp. 11.
`Claim 19 refers to “a rollover viewing area.” It requires that each link
`or descriptive portion rolled over display in the“same rollover viewing
`area.” It also requires that the “rollover viewing area is located substantially
`adjacent to the plurality of related subject matter links.” As explained
`above, we do not construe claim 19 as precluding a moveable rollover
`
`viewing area. Moreover, Finseth does not require that the rollover viewing
`
`area be moved. Weare, therefore, unpersuaded by Patent Owner’s
`
`argument.
`
`
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`Onthis record, we are persuaded Petitioner has demonstrated a
`
`reasonable likelihood of showing that claim 19 would have been obvious
`
`over Hill and Finseth.
`
`4. Claim 16
`
`Claim 16 is substantially the same as claim 19, but requires a “vertical
`listing” of search results and does not includethe limitation related to “home
`page.” Our conclusions with regard to claim 19 apply as well to claim 16.
`Further, we are persuaded that Petitioner has shown,on this record,
`
`_
`
`that Finseth discloses a verticallisting of search results. Accordingly, we
`are persuaded Petitioner has demonstrated a reasonable likelihood of
`
`showing that claim 16 would have been obvious over Hill and Finseth.
`
`5. Dependent Claims
`
`Dependentclaims 17 and 20 addlimitationsto their respective
`independentclaims that describe the position of the rollover window.
`
`In light of the detailed analysis presented in the Petition (Pet. 17—29)
`
`with respect to each of the challenged claims, we are persuaded that
`
`Petitioner has established a reasonablelikelihood of prevailing on the
`assertion that Hill and Finseth render obvious claims 16, 17, 19, and 20 of
`the ’096 patent.
`
`B. Grounds Based on Morrison (Ex. 1008)
`
`1. Morrison Generally
`
`Morrison describes a computer-based method and system for
`
`electronic shopping(i.e., a shopping website). Ex. 1008, Title. A vendor
`99 66
`
`using such a system can include “item order pages,”
`
`“category order pages,”
`
`and “order summary pages.” /d. at Abstract. Morrison addresses industry
`
`1]
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`failure to allow for the “selection of or change of item quantity in-place
`without havingto load or reload pagesor frames.” Ex. 1008 9 17. Figure
`
`2A of Morrison is reproduced below.
`
`Web Browser
`
`f=l[=[2/)
`
`[fy Subtotal$=[Category] DEMONSTRATION STORE- Watch the Status Bar for instructions!
`
`1
`Click Pictures to ADD to Order! To Preview Mouse Over item Lika!
`Total $ tem 2|LIST FORMAT; CAT! CAT2 CATS CAT# INVOICESEARCH HELP
`
`
`36.30 Preview|PICTURE FORMAT: CAT{ CAT2 CATS CATA SUMMARY HOME
`
`| Glick for item Description
`
`201
`203 204
`Category 1
`QUAY
`19. Ceaa]
`202 tem 1-1 Descriptive Name $ 70.00:
`214 Ttom 1-3 Descriptive Name $ 10.00
`Ld
`
`GRRATE Selected ttems
`ee
`
`oof Ted
`pacerorats|36.00 ]210
`
`' 271
`
`FIG. 2A
`
`Figure 2A illustrates a list format category order page. A shopper’s search
`
`results are displayed as “a list format category order page,” which includes a
`
`vertical listing of “descriptive item name hyperlinks” (202) and a
`“hyperlinked image” (207) for displaying-an image of an item ofinterest.
`Ex. 1008 49 56-57.
`
`2. Anticipation by Morrison
`
`Petitioner provides a detailed reading of the challenged claims on the
`
`Morrison reference at pages 29-41 ofthe Petition. In summary,Petitioner
`points to a “server” 810 shown in Morrison Figure 8C; and a “home page”
`
`12
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`having a search form usedtoinitiate a query 600, shown in Morrison Figure
`
`6A as disclosing the claimed web page on a server and home page
`
`limitations, respectively.
`
`|
`
`Patent Owner, however, argues that Morrison doesnot disclose or
`suggest the following limitations of claim 19: (1) “a keywordresults
`displaying web page” that includes “a plurality ofrelated subject matter
`links to websites;”(2) “a plurality of descriptive portions;” and (3) “a home
`
`page” having “an input receiving area” for searching. Prelim. Resp.34.
`
`Independent claims 16 and 19 require links to “websites.” We
`construe “websites” as referring to websitesthat are related by subject
`matter to key words previously entered as search terms.
`Patent Ownerargues that Morrisonis directed to a fundamentally
`different invention than that of the ’096 patent. Prelim. Resp. 34. The ’096
`
`patent is directed to search engines andsearchresults including links to
`
`websites found in a search. Morrison, on the other hand,is directed to web
`page navigation within a single electronic shoppingsite.
`|
`Petitioner points to “descriptive item name hyperlinks” (202) shown
`
`in Morrison Figure 2A. Pet. 33. The links do not direct the shopper to other
`
`websites found during a search, as does the “keyword results displaying”
`
`page described and claimedby the ’096 patent. Rather, these links on an
`
`“order page” take a shopperto “a hyperlinked image” stored within the same-
`
`electronic shopping website. Ex. 1008-9 56 and 57. They trigger a pop-up
`window to appearthat displays information about a particular item from the
`same website. Therefore, we are not persuaded that Morrison discloses a
`listing of a plurality of related subject matter links to “websites,” as recited
`in claims 16 and 19.
`
`13°
`
`
`
`
`
`_IPR2014-01188
`Patent 8,156,096 B2
`
`Patent Ownerfurther argues that Petitioner does not establish that-
`
`Morrison provides “descriptive portions”that are “adjacent to” the plurality
`of “subject matter links.” Prelim. Resp. 37. Patent Ownerpoints out that
`Morrison teaches a single element(the link) that functions as both a link and
`a descriptive portion. We interpret the claim language as requiring separate
`and distinct elements (they are recited as such). Petitioner has not pointed to
`any evidence (and wedo notsee any) indicating that any portions separate
`and distinct from the Morrison links cause a pop-up window to appear when
`rolled over.
`
`For these reasons, we find that Morrison lacks elements required by
`both independentclaims 16 and 19,and thus the claimsare not anticipated
`
`by Morrison.
`
`3. Obviousness Based on Morrison
`
`Petitioner argues that it would have been obviousfor a person of
`
`ordinary skill in the art (“POSITA”)to provide the claim-required
`descriptive portions separate fromthe links taught by Morrision. Pet. 33.
`Accordingto Petitioner, each of the descriptive item name hyperlinks
`
`includes components: item number, description, and price, each of whichis
`“descriptive.” Jd. at 34. Petitioner offers the unexplained conclusion that a
`POSITA would have known how muchtext to associate with a hyperlink.
`
`Id. at 34. Petitioner also offers the unexplained and unsupported conclusion
`
`that “it would be a simple design choice for a POSITA reading Morrison to
`include a product description in the ‘adjacent area for a briefproduct
`description.’” Jd. at 35 (citation omitted).
`
`In the absence of explanation or factual support as to why these
`
`conclusions might be the case, in the context of this claim, we are not
`
`14
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`IPR2014-01188
`Patent 8,156,096 B2
`
`persuaded. Furthermore, Petitioner’s arguments regarding the obviousness
`of this claim feature do not overcome the fundamental flaw that Morrison
`
`does notteach links to websitesas also required by the challenged claims.
`For the forgoing reasons weare not persuaded that Petitioner has
`
`established a reasonable likelihood of prevailing on the assertion that
`
`Morrison renders obvious claims 16 and 19, and claims 17 and 20 that
`
`depend therefrom, of the ’096 patent.
`
`C. Grounds Based on Petropoulos
`1. Effective Date ofChallenged Claims
`Petitioner challenges claims 16, 17, 19, and 20 based on Petropoulos,
`singly, and claims 19 and 20 based on Petropoulos in combination with Hill.
`
`The effective date (undisputed) of Petropoulos is September 24, 2001
`(application filing date). Pet. 44.
`PatentOwnerargues that Petropoulosis not a reference against the
`challenged claims becausethey are entitled to the benefit of the filing date of
`U.S. Application No. 09/938,163 (“the ’163 application”) (Ex. 1002), which
`
`predates Petropoulos. Petitioner describes the priority chain of the ’096
`patent’ with the following diagram set forth at Petition page5.
`
`
`
`
`
`
`
`
`“2011
`“2008
`
`
`CON
`cp
`CON
`
`Application”
`Application” |
`Application”
`Application”
`
`
`
`
`«13/241,554
`09/938,163 |
`12/341,857
`|
`FR
`}
`mr
`10/421,268
`
`
`
`
`Filed
`Filed
`Filed
`Filed
`9/23/2011
`4/23/2003
`8/23/2001
`12/22/2008 |
`
`
`
`}
`
`App.No.|ga i App. No. » App.No. » App. No.
`
`
`
`
`
`’ The °096 patent issued from U.S. Application No. 13/241,554.
`
`15
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`Petitioner argues that Patent Owneris not entitled to a priority date of
`August 23, 2001 because various limitationsof the claimsat issue are not
`supported by the 163 application, filed August 23, 2001. Ifthe earlier filed
`°163 application supports the claims at issue, however, Petropoulosis not
`prior art against these claims.
`
`a. “when the user’s cursor is... substantially adjacent
`the corresponding descriptive portion”
`Petitioner argues that there is no support in the 163 application for
`
`the claim 19 limitation requiring that information is displayedin a rollover
`viewing area whentheuser’s cursoris substantially adjacent the descriptive
`portion. Pet.9. According to Petitioner, there was no written description
`support forthis limitation in the ’163 application. Further written
`description appears forthe first time in U.S. Application No. 10/421,268
`(‘the 2003 CIP application”) when the following sentence was added:“This
`
`. also includes any other area located substantially adjacent or with the
`
`supplier’s description area.” See Ex. 1003, 11 (§ 27).
`|
`Patent Ownercounters that this claim limitation is supported by the
`drawings and specification text originally filed as part of the 7163
`
`application. According to Patent Owner, the sentence added to the 2003 CIP
`
`application merely made explicit what was already shownin an originally
`filed drawing. Prelim. Resp. 14-17.
`|
`The relevant portion of claim 19 is:
`
`individually displays
`a rollover viewing area that
`information corresponding to more than one of the
`related subject matter
`links in the same rollover
`viewing area when the user’s cursor
`is at
`least
`substantially
`over
`any of
`the
`links,
`at
`least
`substantially over a link’s descriptive portion, or
`
`16
`
`
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`
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`IPR2014-01188
`Patent 8,156,096 B2
`
`substantially adjacent
`portion.
`
`the corresponding descriptive
`
`Based on ourreading of the specification in conjunction with the
`
`drawings of the ’096 patent, we construe claim 19 as requiring that the
`
`rollover viewing area activate for rollovers of screen regions containing:
`
`1) a link, 2) descriptive text associated with the link, and 3) screen area
`
`surrounding the descriptivetext.
`
`According to Patent Owner, the screen area defined by claim 19 was
`fully described in Figure 2 of the 163 application. Figure 2 of the 163
`
`application is reproduced below.
`
`Bh
`gf
`2
`O
`> 12 ms
`{JeatanesSIE
`FORWARD
`REFRESH
`STOP
`
`FADDRESS|httpy/widgetscomti“ (tsé‘“‘CSC;™S™C*dtwdYSCOCdTSCCdT:
`
`te
`
`10
`
`ENGINE
`f
`A DETAILED DIRECTORY OF WIDGETS, EQUIPMENT AND MANUFACTURERS,20a
`AAAinc.
`18a”Grand Rapids, Mi
`616-555-5555
`’ BB inc.
`18b~Grand Rapids, Ml
`616-555-5555
`. CC iac,
`18c~Grand Rapids,Ml
`616-555-5555
`OODinc,
`18d~Grand Rapids, Mb
`616-555-5555
`
`ra
`
`AAA inc.
`
`MANUFACTURERS OF
`INDUSTRIAL STRENGTH
`WIDGETS USED IN ALMOST
`EVERYAPPLICATION
`IMAGINABLE
`
`616-555-5555
`
`Manufacturers of industrial widgets
`
`2b
`
`Manufacturers of a complete line of industrial
`widgets used for most applications
`20
`
`Manufacturers of a complete line of residential
`and commercially used widgets
`20d
`
`Manufacturers of commercial widgets used
`in high weight restricted situations 2e
`i
`
`AAA inc,
`GrandRapids, MI
`616-555-5555
`
`EEEinc,
`18e~~Grand Rapids, MI
`616-555-5555
`FFF inc.
`ag¢°Grand Rapids, MI
`
`Designers and manufacturers
`of industrial widgets
`
`Designers of widgets
`
`FIG. 2
`
`The 7163 application describes its Figure 2 as “an abbreviated main
`
`directory page for widgets, a hypothetical good.” Ex. 1002, 5:8. Figure 2 of
`the 163 application appearsto be identical to Figure 2 of the ’096 patent.
`
`The 163 application refers to “supplier links” 18a, 18b, 18c, etc. (id. at
`
`17
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`6:20) and to adjacent “written description” indicated by reference numerals
`20a, 20b, 20c,etc. (id. at 6:14). It describes that the rollover windowis
`
`“readily viewable whenthe user’s cursor is at least substantially over any of
`
`the links 18 or the description about the supplier 20 on the directory.” Jd. at
`6:28-30.
`Patent Ownerarguesthat in Figure 2 of the ’163 application, reference
`numerals 20e and 20f point to regionspartially occupied by text and
`therefore they are “adjacent” to descriptive text.
`
`Wefind that Patent Owner’s argumentsufficiently rebuts Petitioner’s
`
`assertion that the claim language wasnot supported.
`
`b. “keyword results displaying web page”
`Petitioner argues that the °163 application does not disclose or enable
`_ the claimed “keywordresults displaying web page.” Pet. 10. Petitioner’s
`construction of the “keyword results displaying” portion ofthis term
`requires the claimed website to include a web pagedisplaying the results of
`a keywordsearch of the website. Claims 16 and 17 specify that the
`“keyword results displaying web page”displays,inter alia, “related subject
`matter links that are directed to related subject matter selected by the user.”
`In other words, Petitioner asserts that thebroadest reasonable construction of
`
`this claim requires that the “keyword results displaying web page” contain
`
`subject matter links directed to the user’s input of a keyword into the search
`
`tool in the website. Petitioner also argues that the °163 application does not
`
`disclose or enable those features. But Petitioner acknowledgesthat the ’163
`application discloses a website in which a search term maybe entered in a
`conventional search engine. See Pet. 10, n.3.
`
`18
`
`
`
`
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`Patent Ownercounters that Petitioner’s construction requiring a
`search tool on the same website as the keyword results page (Pet. 10) is not
`the appropriate construction. Prelim. Resp. 17-21. Weagree.
`
`\Claim 19 requires a “homepage.” It requires in a separate claim
`
`limitation a “keyword results displaying web page.” The language ofthe
`
`claim itself suggests that these are different elements. Thus, Petitioner’s
`
`argumentfails to discredit Patent Owner’s priority claim.
`
`c. “home page”
`Petitioner argues that claims 19 and 20 lack written description
`support in the original ’163 application because they include a limitation
`drawn to a “home page”of the claimed “website stored on the server and
`
`accessible by a uservia the Internet,” wherein the home page comprises“an
`
`input receiving area and wherein a user inputs keyword search term
`
`information into the input receiving area.” Pet. 10—11 (citing Ex. 1001,
`
`11:18—25).
`
`Accordingto Petitioner, the ’163 application has no written
`
`description support for these limitations, as it only described a directory web
`
`page without a search feature. See, e.g., Ex. 1002, 20-21. Further,
`
`accordingto Petitioner, it was not until the 2003 CIP application that new
`descriptions of a “home page/main index ofdirectory listings that also
`incorporated a search feature” were added. Ex. 1003, 8 (f 16), 24. Figure 4 -
`is a new figure showing one of the newly added embodiments.
`
`Patent Owner counters this argumentin its Preliminary Response.
`
`Prelim. Resp. 21-22. Patent Ownerarguesthat the ’163 application
`
`discloses an embodimentthat includes a search using the Yahoo! directory
`
`website (Ex. 1002, 9:27 — 10:4). Prelim. Resp. 21-22. The Petition
`
`19
`
`
`
`IPR2014-01188
`Patent 8,156,096. B2
`
`acknowledgesthat the Yahoo! site contains a search tool on a homepage.
`Ex. 1006, 71, 93 and 101.
`
`Weconcludethat with respect to claims 16, 17, 19, and 20, Petitioner
`
`has not established that Patent Owneris notentitled to the priority filing date
`
`of the ’163 application. As a consequence, Petropoulosis not available to
`
`Petitioner as a reference against the ’096 patent.
`
`We,therefore, deny the Petition as to grounds based on Petropoulos.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we are persuaded that the information
`
`‘presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail with respect to its challenge to claims 16, 17, 18,
`and 19. The Board has not madea final determination under 35 U.S.C.
`§ 318(a) as to the construction of claim terms, patentability of claims, or any
`underlying factual determinations and legal conclusions, and will do so only .
`
`after full consideration ofall of the evidence properly admitted duringtrial.
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthat pursuant to 35 U.S.C. § 314(a) an inter partes review
`
`of the ’096 patent is hereby instituted as to the following claims and ground:
`Claims 16, 17, 19, and 20 under 35 U.S.C. § 103 are unpatentable
`over Hill and Finseth;
`
`FURTHER ORDEREDthatthetrial is limited to the ground identified
`
`above and noother groundsare authorized; and
`
`20 -
`
`
`
`IPR2014-01188
`Patent 8,156,096 B2
`
`FURTHER ORDEREDthatpursuantto 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given ofthe institution of atrial, the trial
`commencing onthe entry date ofthis decision.
`
`For PETITIONER:
`
`David Cochran
`David W. Wu
`
`Jones Day
`
`For PATENT OWNER:
`
`Thomas A. Lewry
`
`Brooks Kushman,P.C.
`
`21
`
`‘
`
`
`
`
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