Iron Dome LLCv.Chinook Licensing DE, LLC

Patent Trials and Appeals Board

Oct 10, 2014

09796235 - (D) (P.T.A.B. Oct. 10, 2014)

Trials@uspto.gov Paper 10
Tel: 571–272–7822 Entered: October 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

IRON DOME LLC,
Petitioner,

v.

CHINOOK LICENSING DE LLC,
Patent Owner.

_______________

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Patent 7,047,482 B1
_______________

Before WILLIAM V. SAINDON, JAMES P. CALVE, and
TRENTON A. WARD, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Denial of Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Petitioner filed a Petition requesting an inter partes review of claims 1–7
and 9–20 of U.S. Patent No. 7,047,482 B1 (Ex. 1001, “the ’482 patent”). Paper 1
(“Pet.”). Patent Owner filed a Revised Preliminary Response. Paper 8 (“Prelim.
Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
partes review may not be instituted “unless . . . there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” For the reasons given below, we do not institute an inter partes
review.
B. Related Matters
Petitioner represents that, although not itself a party, Patent Owner alleged
infringement of the ’482 patent in various district court proceedings. Pet. 2. Patent
Owner states that these matters are: Chinook v. Scribd, Inc., No. 13-cv-02078 (D.
Del); Chinook v. StumbledUpon, Inc., No. 3:13-cv-02079 (D. Del); Chinook v.
Hulu, Inc., 3:14-cv-00074 (D. Del); and Chinook v. Zoosk, Inc., No. 3:14-cv-00077
(D. Del). Paper 5.
C. The Challenged Patent
The ’482 patent is directed to computer software that “automatically finds,
saves, and displays links to documents topically related to [other] document[s] . . .
without a user having to search.” Ex. 1001, Abstract. This software is understood
best by way of an example.
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Figure 6 of the ’482 patent is reproduced below and depicts an example of
the results the computer software produces:

Figure 6 of the ’482 patent depicts an example directory, Directory 3K, of links
relating to the musical group King Crimson. Id. at 5:59–60. Directory 3K includes
known links 1K and supplemented links 6K, which includes found links 1F
signified by relevance 33. Id. at 5:64–67. The software program finds found links
1F by performing a search using keywords derived from content found at known
links 1K. See, e.g., id. at 4:35–5:58 (stepping through a process for finding
supplemental links).
Claims 1, 11, and 16 are independent. Claim 1, reproduced below with
emphasis added to some limitations discussed in more detail below, is illustrative:
1. A computer-implemented method for augmenting a
directory without contemporaneous user input
comprising:
accessing at least a first document via a first directory
without contemporaneous user selection of said first
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document, said first document comprising at least in
part topical textual content;
deriving at least one keyword indicative of at least one
topical content from said first document;
searching as a background operation a plurality of
documents in storage in at least one computer without
contemporaneous user input of a search location,
such that said search comprises searching for
documents related by said at least one keyword to said
first document, thereby accessing a second document;
determining relevance of said second document to said at
least one keyword; and
adding a reference to said second document in a results
directory.

D. Petitioner’s Grounds for Challenge
Petitioner presents the following grounds challenging the patentability of
claims 1–7 and 9–20 of the ’482 patent:
Reference(s) Basis Claims Challenged
Chen1 § 103 1–7, 9–19
Chen and Lieberman2 § 103 20

1 Liren Chen & Katia Sycara, “WebMate: A Personal Agent for Browsing and
Searching” Proceedings of the Second Int’l Conference on Autonomous Agents
(Katia P. Sycara & Michael Wooldridge, eds. 1998), at 132 (Ex. 1002) (“Chen”).
2 Henry Lieberman, “Letizia: An Agent That Assists Web Browsing” Proceedings
of the Fourteenth Int’l Joint Conference on Artificial Intelligence, Vol. I (Chris S.
Mellish, ed. 1995), at 924 (Ex. 1003) (“Lieberman”).
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II. ANALYSIS
A. Petitioner’s Proposed Construction of the “Accessing” Step
Independent claims 1, 11, and 16 of the ’482 patent include a step of
“accessing” at least one document “without contemporaneous user selection.”
After accessing the document, the independent claims require that a step of
keyword derivation is performed.
Petitioner points to Chen’s disclosure of “keyword extraction from
documents that the user selects by marking them as ‘I like it’” to meet the
“accessing” step of the claims. Pet. 11–12; see also id. at 20, 25–26 (addressing
independent claims 11 and 16). Specifically, Petitioner cites to the following
disclosure in Chen:
This algorithm is run whenever a user marks a
document as “I like it”. Thus, the user profile is
incrementally, unobtrusively and continuously updated.
Ex. 1002, 134, left col. (cited at Pet. 11).
As can be seen from this disclosure, the algorithm is run (i.e., the document
is accessed) when the user marks the document as “I like it.” The claims, in
contrast, require that the document is accessed “without contemporaneous user
selection.”
To read the “accessing . . . without contemporaneous user selection”
limitation on Chen, Petitioner proposes that “without contemporaneous user
selection” means that there is “no user input of search parameters” and “no user
input of search locations.” Pet. 6 (proposing a construction for “without
contemporaneous user input”); id. at 12 (applying the construction for “without
contemporaneous user input” to “without contemporaneous user selection”).
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Petitioner’s basis for this construction is a statement made by the inventor,3 during
prosecution of the application that issued as the ’482 patent, that “searching
without user input” meant “no user input of search parameters” and “no user input
of search locations.” Id. at 6. According to Petitioner, therefore, because marking
a document as “I like it” is not providing search parameters or search locations,
Chen discloses accessing the document without contemporaneous user selection, in
the manner required by the claims. Id. at 11–12. The sufficiency of Petitioner’s
assertion turns on the adequacy of its claim construction.
B. Claim Construction of the “Accessing” Step
We interpret claims of an unexpired patent using the broadest reasonable
interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b). Under the broadest reasonable interpretation standard, claim terms
are given their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re Translogic
Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Further, “the specification and
prosecution history only compel departure from the plain meaning in two
instances: lexicography and disavowal.” GE Lighting Solutions, LLC v. Agilight,
Inc., No. 2013-1267, slip op. at 5 (Fed. Cir. May 1, 2014) (citing Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). We first
discuss the plain meaning of the “accessing” step, and then turn to the prosecution
history on which Petitioner has relied.

3 The inventor prosecuted the application leading to the ’482 patent pro se. Thus,
we refer to the “inventor” rather than “applicant” or “appellant” in our discussion
of the prosecution history.
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The specification of the ’482 patent does not provide meaningful guidance
for construing the phrase “without contemporaneous user selection.” In fact, the
phrase “without contemporaneous user selection” does not appear anywhere in the
specification of the ’482 patent. The plain meaning of “accessing [a document]
without contemporaneous user selection” is accessing a document, but not at the
same time or period that a user selects that document.4 We are not apprised of any
evidence in the record before us indicating that a person of ordinary skill in the art
would understand the phrase differently from the plain meaning identified above.
Thus, “accessing [a document] without contemporaneous user selection,” as read
by a person of ordinary skill in the art at the time of the invention upon review of
the claims and specification, means accessing a document, but not at the same time
or period that a user selects that document. We now turn to the prosecution
history of the ’482 patent.
Petitioner relies on statements made during prosecution of the ’482 patent to
construe the “accessing . . . without contemporaneous user selection” limitation to
mean “no user input of search parameters” and “no user input of search locations.”
Pet. 6. The statements Petitioner relies on are found in an Appeal Brief, which
discusses the phrase “without user input” of the “searching” limitation. Id. In the
portion of the Appeal Brief cited by Petitioner,5 the inventor states:

4 “contemporaneous,” adjective: “existing or happening at the same time or
period,” Chambers 21st Century Dictionary (2001) (Ex. 3001).
5 Ex. 1004, Appeal Brief, received February 18, 2005 during the prosecution of
U.S. Appl’n No. 09/796,235, at page 14. Pages 21–23 provide a listing of the
claims at that point in time. Citations are to the Exhibit page numbers, not the
page numbers of the original document.
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So, Examiner . . . tacitly concurred with appellant, that,
in context, the two limitations applicable to the meaning
of ‘without user input’ comprise:
1. no user input of search parameters;
2. no user input of search locations.
That is exactly what appellant had explained in his
08/27/2004 reply to the first office action rejection.
To put these statements made by the inventor in the Appeal Brief into
context, however, we must consider the claim language that existed at the time the
statements were made, and how that claim language differs from the claim
language of the issued ’482 patent. The table below highlights those differences,
with emphasis added:
Limitation Language in claim 1, as it
existed in the Appeal Brief
of Feb. 18, 20056
Language in claim 1, as in the issued
’482 patent
“accessing” “accessing at least a first
document via a first
directory”
“accessing at least a first document
via a first directory without
contemporaneous user selection of
said first document, . . .”
“searching” “searching a plurality of
documents in storage in at
least one computer without
user input of a search
location”
“searching as a background operation
a plurality of documents in storage in
at least one computer without
contemporaneous user input of a
search location, . . .”
The statements made by the inventor during prosecution of the ’482 patent,
relied on by Petitioner to construe the “accessing” limitation, do not support
sufficiently Petitioner’s proposed construction. First, Petitioner is proposing a
construction of the “accessing” limitation using statements of the inventor that
were directed to the “searching” limitation. Further, the “accessing” limitation, at

6 Ex. 1004, 21.
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the time the statements were made, did not include a “without user input” phrase.
Indeed, the “accessing” limitation of the ’482 patent requires accessing without
user selection, rather than without user input. Lastly, neither limitation, as it
existed at the time of the Appeal Brief in Exhibit 1004, included a limitation
directed to “contemporaneous” selection or input. Thus, the prosecution history
cited by Petitioner is directed to what is “searching . . . without user input” rather
than “accessing . . . without contemporaneous user selection.” Petitioner does not
explain these incongruities and, indeed, simply equates, without explanation,
“accessing [a document] without contemporaneous user selection” to “searching [a
document] without contemporaneous user input.” See Pet. 12.
Consequently, we do not adopt Petitioner’s proposed construction of the
“accessing” step. Instead, based on the record before us, we determine that the
broadest reasonable interpretation of “accessing . . . without contemporaneous user
selection” is simply the plain meaning arrived at above: accessing a document, but
not at the same time or period that a user selects that document.
C. Petitioner’s Asserted Grounds
Petitioner’s proposed challenges read the “accessing [a document] without
contemporaneous user selection,” limitation of each independent claim on Chen’s
description of accessing the document when the user marks it as “I like it.” Pet.
11–12, 20, 25–26 (citing Ex. 1002, 134, left col.). Marking a document as “I like
it,” however, is selecting that document as a liked document. When that document
is selected, Chen, because of that selection, then runs its algorithm. Ex. 1002, 134,
left col. Thus, the cited portions of Chen disclose accessing a document at the
same time or period that the user selects the document, rather than “accessing [the
document] without contemporaneous user selection,” as required by the
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independent claims. Each of Petitioner’s challenges relies upon either Chen alone
or Chen in view of Lieberman, and Petitioner does not rely on Lieberman to teach
this limitation. See Pet. 29–31.
Accordingly, based on the record before us, we determinate that Petitioner
has not demonstrated a reasonable likelihood of showing that the teachings of
Chen and Lieberman render obvious the step of “accessing [a document] without
contemporaneous user selection,” as required by each independent claim. As such,
Petitioner has not demonstrated a reasonable likelihood of showing that the subject
matter of any of the challenged claims is unpatentable over Chen, or Chen in view
of Lieberman.
III. ORDER
In view of the foregoing, it is hereby ORDERED that inter partes review is
denied and no trial is instituted.

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For Petitioner:

Steven Yu
ROZMED LLC
syu@patent-intercept.com

John J. Yim
JOHN J. YIM & ASSOCIATES LLC
jyim@yimassociates.com

For Patent Owner:

Eugenio J. Torres-Oyola
Víctor M. Rodríguez-Reyes
Rafael Rodríguez-Muriel
José A. Medina
Cristina Arenas Solís
FERRAIUOLI LLC
etorres@ferraiuoli.com
vrodriguezreyes@ferraiuoli.com
rrodriguez@ferraiuoli.com
jmedina@ferraiuoli.com
carenas@ferraiuoli.com