95001308 (P.T.A.B. Jun. 29, 2015)

Ex Parte 7043450 et al

Patent Trial and Appeal BoardJun 29, 2015

95001308 (P.T.A.B. Jun. 29, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,221 08/12/2009 7,043,450 8268-83029-01 1085 26875 7590 06/30/2015 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER LEE, CHRISTOPHER E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/30/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,308 02/02/2010 7043450 10171-80470 5051 26875 7590 06/30/2015 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER LEE, CHRISTOPHER E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/30/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ GOOGLE INC. and MICROSOFT CORP. Requesters and Respondents v. PAID SEARCH ENGINE TOOLS, LLC Patent Owner and Appellant ____________________ Appeal 2014-000951 Reexamination Control No. 95/001,221 and 95/001,308 Patent 7,043,450 B2 Technology Center 3900 ____________________ Before HUBERT C. LORIN, MARC S. HOFF, and DENISE M. POTHIER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2014-000951 Application 95/001,221 and 95/001,308 2 INTRODUCTION Paid Search Engine Tools, LLC (“Patent Owner”) requests rehearing under 37 C.F.R. 41.79(a)(1) of our Decision entered January 31, 2014 (“Dec.”), in which we affirmed the rejection of claims 12, 23–35, and 37–40. OPINION We maintain the rejections. ANALYSIS JON KEEL EMAIL Patent Owner argues that the Board misapprehended the purpose for which Patent Owner provided the email message of Jon Keel of May 28, 2000, and the totality of the evidence which was provided and cited (Req. for Reh’g 1). Patent Owner asserts that the November 2010 Declaration of Juan C. Velez and Daren Murrer shows the Cold Fusion computer program developed and used by the inventors, and the Keel email simply establishes a date of use of the “script,” i.e. the program (Req. for Reh’g 1-2). Patent Owner’s reasoning is not persuasive. We maintain our finding that while “this email establishes that Mr. Velez communicated with Mr. Keel on or before May 28, 2000, and reported the result of lowering a bid on a keyword advertisement” (Decision 8), the evidence of record “fails to establish what mechanism was used to lower this bid or even whether it was done automatically or manually” (Id., emphasis added). We find insufficient connection between the existence of this email and the evidence of development of Cold Fusion to conclude that the email proves that the Appeal 2014-000951 Application 95/001,221 and 95/001,308 3 invention was used to “lower a bid.” We maintain our agreement with Respondent that the collective evidence of record does not establish persuasively that the discussed bid-lowering was done according to the language of the claimed invention (see Decision 8). INTERPRETATION OF KONIA Patent Owner argues that the Board erred in rejecting claims over Konia because “Konia describes a method for reducing bids that may reduce a bid to a minimum for the bidder’s position, which does not involve knowing the relevant bid amounts” (Req. for Reh’g 3). Patent Owner contends that Figure 2 of Konia illustrates such a method, without knowing the relevant bid amounts. We do not agree with Patent Owner. We maintain our conclusion that reducing a bid to a minimum that still allows the bidder to stay in its desired position (see Konia col. 4, ll. 59-60) “is only possible if one knows the relevant bid amounts, not merely the bid positions” (Decision 9). We have reviewed Figure 2 of Konia and its attendant description (col. 4, l. 48 – col. 5, l. 18), and we find no disclosure establishing that Konia is unaware of the relevant bid amounts. Further, we do not agree with Patent Owner’s misleading characterizations of Konia’s background section. Patent Owner states that “Konia’s background states that monitoring bids is difficult” (Req. for Reh’g 4). In fact, Konia states that “it will become more difficult for bidders to monitor bids in several different auctions” (col. 1, ll. 24-26, emphasis added), a rather different statement than the alleged blanket statement that monitoring bids is difficult per se. Patent Owner then states that Konia Appeal 2014-000951 Application 95/001,221 and 95/001,308 4 expresses a need for a system to monitor current rankings in auctions “instead of monitoring ‘bids’” (Req. for Reh’g 4). Konia actually discloses that “[t]here exists a need for a system that monitors the current rankings in auctions and automatically adjusts its bids according to the rules defined by its user” (col. 1, ll. 27-29). There is no expression in Konia of any desire or need to avoid monitoring bids and instead monitor rankings, as Patent Owner states. CONCLUSION In summary, we have granted Patent Owner’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of claims 12, 23-35, and 37-40, but we decline to modify the decision in any way. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REHEARING DENIED Appeal 2014-000951 Application 95/001,221 and 95/001,308 5 Patent Owner: 2700 Carew Tower 441 Vine Street Cincinnati, OH 45202 Third Party Requester: 121 SW Salmon Street Suite 1600 Portland, OR 97204 and ROBERT WILSON, QUINN EMANUEL URQUHART & SULLIVAN 51 Madison Avenue, 22 nd Floor New York, NY 10010