Motorola Mobility LLC, Google Inc., and Apple Incv.Arendi S.A.R.L.

Patent Trial and Appeal Board

Jun 5, 2014

11745186 (P.T.A.B. Jun. 5, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: June 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC, GOOGLE INC., and APPLE INC.
Petitioners

v.

ARENDI S.A.R.L.
Patent Owner

Case IPR2014-00203
Patent 8,306,993 B2

Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
PETER P. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

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

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I. INTRODUCTION
Motorola Mobility LLC, Google Inc., and Apple Inc. (collectively,
“Petitioner”) filed a Corrected Petition requesting inter partes review of
claims 1-24 of U.S. Patent No. 8,306,993 B2 (Ex. 1001, “the ’993 patent”).
Paper 5 (“Pet.”). Arendi S.A.R.L. (“Patent Owner”) filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
§ 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides:
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Upon consideration of the Petition and Preliminary Response, we are
not persuaded the information presented by Petitioner has established a
reasonable likelihood that Petitioner would prevail in showing the
unpatentability of any of the challenged claims of the ’993 patent.
Accordingly, we deny institution as to all claims of the ’993 patent.
A. Related Proceedings
According to the Patent Owner, the ’993 patent and related patents are
currently at issue in the following cases pending in the United States District
Court for the District of Delaware: Arendi S.A.R.L. v. Yahoo!
Inc.(1:2013cv00920); Arendi S.A.R.L. v. Google Inc. (1:2013cv00919);
Arendi S.A.R.L. v. HTC Corp. (1:2012cv01600); Arendi S.A.R.L. v. Sony
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Mobile Communications (USA) Inc. (1:2012cv01602); Arendi S.A.R.L. v.
Nokia Corporation (1:2012cv01599); and Arendi S.A.R.L. v. Blackberry
Limited (1:2012cv015).
The ’993 patent is also the subject of another petition for inter partes
review, Samsung Electronics Co. Ltd. v. Arendi S.A.R.L., IPR 2014-00214.
B. The ’993 Patent
The ’993 patent is titled “Method, System and Computer Readable
Medium for Addressing Handling From an Operating System.” The subject
matter of the ’993 patent relates to computer-implemented processes for
automating a user’s interaction between a first application, such as a word
processor or spreadsheet, and a second application, such as a contact
manager with a database. Ex. 1001, col 1, l. 60–col. 2, l. 31.
Figure 4 of the ’993 patent is reproduced below.

Figure 4 illustrates a starting point in a document, such as a word
processing document. The user types into the document the name and
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address of existing contact 44. When the user clicks on OneButton 42, the
claimed process is launched, analyzing the document to identify contact
information and searching a contact database. Ex. 1001, col. 7, ll. 27-34.
Figure 1 of the ’993 patent is reproduced below.

Figure 1 depicts a flow chart of the address handling process initiated
by the user clicking on OneButton 42 of Figure 4. At step 4, text typed by
the user in a document is analyzed for contact information. At step 6, if the
identified contact information includes a name and address, a search occurs
in the database at step 14. When the database finds a name but not an
address, at step 30, the user is prompted “for decision,” which leads to
inserting address information into the database at step 36, or updating
address information in the database at step 34. Ex. 1001, col. 4, l. 55–col. 5,
l. 37.

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Figure 9 of the ’993 patent is reproduced below.

Figure 9 illustrates a screen displayed to the user, who clicks on
OneButton 42 of Figure 4 after typing a name and address into a document,
where the name is in the contact database, but the address differs from the
address typed by the user. The screen in Figure 9 gives the user a choice of
adding a new contact or updating an existing contact. Ex. 1001, col. 7, ll.
27-42.

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C. Illustrative Claim
Claims 1-24 are the subject of the Petition, and claims 1, 9, and 17 are
independent claims. Independent claim 1 is reproduced below.
1. A computer implemented method for information handling,
the method comprising:
providing access to a contact database that can also be
separately accessed and edited by a user and wherein the
contact database includes at least three fields for storing
contact information associated with each of one or more
contacts, each of the at least three fields within the contact
database being specific to a particular type of contact
information selected from the group consisting of name, title,
address, telephone number, and email address;
analyzing in a computer process textual information in a
document configured to be stored for later retrieval to identify a
portion of the document as first contact information, without
user designation of a specific part of the textual information to
be subject to the analyzing,
wherein the first contact information is at least one of a name, a
title, an address, a telephone number, and an email address;
after identifying the first contact information, performing at
least one action from a set of potential actions, using the first
contact information previously identified as a result of the
analyzing, wherein the set of potential actions includes:
(i) initiating an electronic search in the contact database
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for the first contact information while it is electronically
displayed in order to find whether the first contact
information is included in the contact database; and
when a contact in the contact database includes the first
contact information, if second contact information in the
contact database is associated with that contact,
electronically displaying at least a portion of the second
contact information, wherein the second contact
information is at least one of a name, a title, an address, a
telephone number, and an email address;
(ii) initiating electronic communication using the first
contact information; and
(iii) allowing the user to make a decision whether to store
at least part of the first contact information in the contact
database as a new contact or to update an existing contact
in the contact database;
wherein the computer implemented method is configured
to perform each one of action (i), action (ii), and action
(iii) using the first contact information previously
identified as a result of the analyzing; and
providing for the user an input device configured so that a
single execute command from the input device is sufficient to
cause the performing.

D. Prior Art Relied Upon
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Petitioner relies upon the following five prior art references:
Reference Title Ex. No.
Bonura Thomas Bonura and James R.
Miller, Drop Zones, an Extension
to LiveDoc, SIGCHI Bulletin, Vol.
30, No. 2, April 1998, at 59-63
Ex. 1006
Magnanelli M. Magnanelli, A. Erni, M.
Norrie, Academia: An Agent-
Maintained Database Based on
Information Extraction from Web
Documents, 14th European
Meeting on Cybernetics and
Systems Research (April 15,
1998)
Ex. 1007
Luciw US 5,644,735 Ex. 1003
Bates US 6,247,043 B1 Ex. 1004
Giordano US 6,870,828 B1 Ex. 1005
E. The Asserted Grounds
Petitioner contends the challenged claims are unpatentable based on
the following four grounds.
Reference(s) Basis Claims Challenged
Bonura and Magnanelli § 103 1-4, 6-12, 14-20, and
22-24
Bonura, Magnanelli, and
Giordano
§ 103 5, 13, and 21
Luciw § 102(b) 1-2, 6-7, 9-10, 14-15,
17-18, and 22-23
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Reference(s) Basis Claims Challenged
Luciw, Bates, and
Giordano
§ 103 1-24
II. ANALYSIS
A. Claim Construction
In an inter partes review, the Board interprets claim terms of an
unexpired patent according to their broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
(Aug. 14, 2012). There is a “heavy presumption” that a claim term carries
its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a “claim term will not
receive its ordinary meaning if the patentee acted as his own lexicographer
and clearly set forth a definition of the disputed claim term in either the
specification or prosecution history.” Id.
Petitioner submits proposed constructions for five claim terms:
“contact database;” “initiating electronic communication;” “allowing the
user to make a decision whether to store at least part of the first contact
information in the contact database as a new contact or to update an existing
contact in the contact database;” “input device,” and “button.” Pet. 9-11.
Patent Owner proposed an alternative construction for only one of these five
terms, “allowing the user to make a decision whether to store at least part of
the first contact information in the contact database as a new contact or to
update an existing contact in the contact database.” Prelim. Resp. 8-12.
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In particular, Petitioner proposes as follows: (i) “contact database”
means “software that allows access to information related to a person”; (ii)
“initiating electronic communication” means “starting a process that leads to
an electronic communication”; (iii) “input device” includes a GUI element
on screen, and thus, is not limited to hardware devices; and (iv) “button” is a
“touch screen, keyboard button, icon, menu, voice command device, etc.”
Pet. 9-11. All of these proposed constructions are supported by citations, in
the Petition or the accompanying declaration of Mr. Allison, to the ’993
patent. For purposes of this Decision, we adopt the Petitioner’s proposed
constructions as the broadest reasonable constructions consistent with the
specification.
The parties dispute the meaning of the remaining term, which appears
in all of the challenged independent claims: “allowing the user to make a
decision whether to store at least part of the first contact information in the
contact database as a new contact or to update an existing contact in the
contact database.” Patent Owner asserts that this term should be construed
as “presenting to the user a choice between competing alternatives of storing
a new contact or updating an existing contact.” Prelim. Resp. 8-12. Patent
Owner cites Figure 9 and related disclosure of the ’993 patent, described
above in Section I. B, in support of its proposed construction.
Petitioner asserts that the limitation is ambiguous and that the term
could mean either “the user is allowed to make a decision between storing
and updating” (which is similar to Patent Owner’s proposed construction), or
the term could mean “the user is allowed to make a . . .‘decision whether to
store . . . or a decision whether to update.’” Pet. 10. Petitioner cites three
portions of the specification as support for the latter interpretation, what
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Petitioner calls “the second interpretation,” i.e., the decision being whether
to store or not to store, or to update or not to update. We determine that this
second interpretation in Petitioner’s proposed construction is not within the
broadest reasonable construction of the term. The plain language requires a
single step of making a single decision to store or update, not two separate,
alternating steps for a user either to decide to store or to decide to update, as
Petitioner seems to suggest. Thus, we agree with the Patent Owner that the
plain language of the claim requires presenting to the user a choice between
competing alternatives of storing a new contact or updating an existing
contact. That interpretation is consistent with Figure 9 and the related
portion of the specification, which describes that “[a]t this point, the user
may select one of the four options 74-80, and command the OK button 56 to
execute the selected options.” Ex. 1001, col. 7, ll. 42-44. This step
corresponds to step 30 of Fig. 1 to prompt the user for decision and review.
Id., col. 7, ll. 48-50.
In contrast, Petitioner’s three citations to the specification are
unrelated to Figure 9 and the related disclosure of the ’993 patent, which, as
described above, bear directly on the claim language.
Accordingly, for purposes of this Decision, we determine that the
broadest reasonable construction of this term consistent with the
specification is Patent Owner’s proposed construction, “presenting to the
user a choice between competing alternatives of storing a new contact or
updating an existing contact.”
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B. Claims 1-4, 6-12, 14-20, and 22-24 – Obviousness Over Bonura and
Magnanelli
Petitioner contends claims 1-4, 6-12, 14-20, and 22-24 are
unpatentable under 35 U.S.C. § 103 as obvious over Bonura and Magnanelli.
Pet. 11-33.
Bonura (Exhibit 1006)
Bonura is titled “Drop Zones – An Extension to LiveDoc” and
discloses a user interface for managing LiveDoc objects in the context of a
set of typical user tasks. Ex. 1006 at 60. A Drop Zones “assistant” takes
features identified by LiveDoc, interprets the feature’s meaning, and
recommends appropriate actions, made visible when the user selects
structures identified by LiveDoc and drags and drops them to the assistants.
Id. Figure 2 of Bonura is reproduced below.

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Figure 2 depicts a document in which LiveDoc has identified the
structure “Tom Bonura” with its personal Name recognizer. Ex. 1006 at 60.
The window labeled “test” is a LiveDoc window showing the proper name
Tom Bonura, his e-mail address, phone number, and other information. The
user may select the identified “Tom Bonura” structure and drag and drop it
on the Drop Zone, e.g., to the window labeled “Activities,” where the Email
Assistant responds by presenting four actions relating to the person’s name
and e-mail address. Id. at 60-61. The Email Assistant can “look inside
another address book application for a person with the stated phone
number,” id. at 61.

Magnanelli (Exhibit 1007)
Magnanelli is titled “An Agent-Maintained Database based on
Information Extraction from Web Documents,” and discloses a system
called “Academia” “to reduce the work of an academic in finding and
updating information about other researchers,” by scanning documents such
as web pages, where the scanned information can be used to interact with a
contact database. Ex. 1007, 2. Figure 1 of Magnanelli is reproduced below.
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Figure 1 depicts the components of the Academia system. A user interacts
with the Academia Database, which contains contact and other information
about people whose work the user is following. Ex. 1007, 2. The Academia
Agent scans Internet pages and other documents for structures of interest
representing contact and other information. Id. The system allows the User
to choose whether to update the Database with facts about existing contacts.
Id. at 3.
Analysis
Petitioner contends that claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24
are unpatentable under 35 U.S.C. § 103(a) as obvious over Bonura and
Magnanelli. In support of this asserted ground of unpatentability, Petitioner
provides explanations of how it alleges the subject matter of each claim is
disclosed by the combined teachings of Bonura and Magnanelli. Pet. 11-33.
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Patent Owner contends the combination fails to disclose the limitation
“allowing the user to make a decision whether to store at least part of the
first contact information in the contact database as a new contact or to
update an existing contact in the contact database,” which is recited in all
challenged claims. Prelim. Resp. 32-34.
The Petition, in its element-by-element mapping, asserts this
limitation is taught or suggested by Bonura’s disclosure of “add this person
to my address book” and Magnanelli’s disclosure of having “the user who
decides whether the [contact information] fact will be stored or not.” Pet. 29
(citing Ex. 1006, 60; Ex. 1007, 3).
Patent Owner argues that the limitation in question, which appears in
all of the independent claims 1, 9, and 17, is not met by the two above-cited
passages. Prelim. Resp. 32-34. We agree. Neither Bonura nor Magnanelli,
singly or in combination, teaches or suggests the recited limitation in the
claimed method for information handling. That limitation, as construed in
Section II. A, requires presenting to the user a choice between competing
alternatives of storing a new contact or updating an existing contact. Prelim.
Resp. 29-39. All of the claims, thus, require the user’s decision, and the
system’s ability to store or update contact information, to be made at once,
not serially or separately. Bonura discloses only the ability to store “this
person to my address book,” and separately, Magnanelli discloses only how
the Academia user updates an existing contact when it “decides whether the
[contact information] fact will be stored or not.” The combination of Bonura
and Magnanelli, however, does not describe allowing the user to make a
decision to store or to update, because there is no language or depiction in
either reference of such a choice being presented. Nor has Petitioner
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provided a reason why a person of ordinary skill in the art would modify the
combination to arrive at the claimed invention and, in particular, the single
step of making a single decision whether to store contact information as a
new contact or, alternatively, to update an existing contact.
Accordingly, on this record, we determine that the information
presented by Petitioner fails to establish a reasonable likelihood of
prevailing in showing that claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24
would have been obvious over Bonura and Magnanelli.
C. Claims 5, 13, and 21: Obviousness over Bonura, Magnanelli, and
Giordano
Petitioner contends that dependent claims 5, 13, and 21 are
unpatentable under 35 U.S.C. §103 (a) as obvious over Bonura, Magnanelli,
and Giordano (Ex. 1005). Pet. 33-35. Claims 5, 13, and 21 depend from
independent claims 1, 9, and 17, respectively, which were the subject of
Petitioner’s unsuccessful ground based on Bonura and Magnanelli.
Petitioner does not argue that Giordano teaches or suggests the limitation
missing in Bonura and Magnanelli. Accordingly, on this record, we
determine that Petitioner fails to establish a reasonable likelihood of
prevailing on this ground with on dependent claims 5, 13, and 21.

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D. Claims 1-2, 6-7, 9-10, 14-15, 17-18, and 22-23: Anticipated by Luciw
Petitioner contends claims 1-2, 6-7, 9-10, 14-15, 17-18, and 22-23 are
unpatentable under 35 U.S.C. §102 (b) as anticipated by Luciw (Ex. 1003).
Pet. 35-46.
1

Luciw (Exhibit 1003)
Luciw, titled “Method and Apparatus for Providing Implicit
Computer-Implemented Assistance,” generally discloses computer-
implemented assistance methods and an apparatus, in particular, relating to
pen-based computer systems. Ex. 1003, col. 1, ll. 20-22; col. 4, ll. 13-17. In
Luciw, a system with a database of “actions” may be suggested “implicitly”
to a user in response to text entries, or explicitly in response to a user
request. Id., Abstract; col. 8, ll. 9-43. An embodiment of Luciw manages
contact information and provides implicit assistance, such as providing a list
of stored last names when the user types a first name. Id. at col. 8, ll. 1-13.
Figure 6a of Luciw is reproduced below.

1 The Table of Contents refers to Luciw as a §102(b) reference, as do pages
3 and 35 of the Petition. Page 35, however, also refers to Luciw as a § 103
reference, and at page 46, the Petition argues that as to claims 10-16 and 18-
24, “[t]hese claims are thus obvious for the same reasons as claim 28.” For
purposes of this Decision, we treat Petitioner’s arguments regarding Luciw
as based on § 102 and not on § 103.
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Figure 6a depicts the user entering the first name “Isaac” in smart
name field 175 of phone slip window 170. Id. at col. 11, ll. 40-45. Luciw
defines a smart field as a predefined region on a computer screen, or a
predefined region within a window on the computer screen. Id. at col. 8, ll.
16-19. Figure 6b of Luciw is reproduced below.

Figure 6b depicts the presentation by the system of proposed last
names that the user could be referring to when typing the first name “Isaac.”
Id. at col. 11, l. 60 – col. 12, l. 6.
Analysis
In support of this asserted ground of unpatentability, Petitioner
provides explanations of how it alleges the subject matter of each claim is
disclosed by Luciw. Pet. 35-46.
Patent Owner contends Luciw does not anticipate the challenged
claims because Luciw fails to disclose the limitation “allowing the user to
make a decision whether to store at least part of the first contact information
in the contact database as a new contact or to update an existing contact in
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the contact database,” which is recited in all the challenged claims. Prelim.
Resp. 43-45; see Section II. A above for the construction of this limitation.
The Petition, in its element-by-element mapping, asserts this
limitation is met because “Luciw teaches updating a database with contact
information.” Pet. 43. On its face, Petitioner’s assertion is unpersuasive, as
it omits an explanation as to storing of first contact information, and the user
being allowed to decide between storing and updating the database as
required by the claims.
Petitioner next cites two portions of the specification of Luciw in its
claim chart, but both relate only to updating of contact information, and not
to storing of contact information or of allowing the user to decide between
storing or updating contact information. Pet. 43 (citing Ex. 1003, col. 9, ll.
13-15, col. 12, ll. 54-60). Finally, the claim chart also cites claims 5 and 6
of Luciw, but again, those claims recite only “means for updating the
database to contain information” (Pet. 43; Ex. 1003, col. 17, ll. 1-10), rather
than the user being allowed to decide between storing at least part of the
contact information in the contact database, or updating an existing contact
in the contact database.
Accordingly, on this record, we determine that Petitioner fails to
establish a reasonable likelihood of prevailing on this ground.
E. Claims 1-24: Obviousness over Luciw, Bates, and Giordano
Petitioner contends that claims 1-24 are unpatentable under 35 U.S.C.
§ 103 over Luciw, Bates, and Giordano.
Bates (Exhibit 1004)
Bates, titled “Apparatus, Program Products and Methods Utilizing
Intelligent Contact Management,” discloses intelligent contact management,
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including intelligent name lookup and automatic storage of new contacts.
Ex. 1004, Abstract; col. 10, ll. 22-29. Figure 3 of Bates is reproduced
below.

Figure 3 depicts a block diagram of the primary software components
in an e-mail messaging system disclosed by Bates. Ex. 1004, col. 4, ll. 43-
44. E-mail messaging system 50 is distributed over servers 51 and 52 and
clients such as 54, all clients having mail application 74, local contact
database 76, and contact table 78. Ex. 1004, col. 7 ll. 21-23, 55-57.
Giordano (Exhibit 1005)
Giordano, titled “Method and Apparatus for Iconifying and
Automatically Dialing Telephone Numbers Which Appear on a Web Page,”
discloses a system for automatic detection of phone numbers in web pages
via textual analysis, and for allowing users to take corresponding actions
such as dialing a located phone number or saving the number to an address
book. Ex. 1005, Abstract; col. 2, ll. 7-35.
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Analysis
Petitioner contends all of the challenged claims 1-24 would have been
obvious over Luciw, Bates, and Giordano. In support of this asserted ground
of unpatentability, Petitioner provides explanations of how it alleges the
subject matter of each claim is disclosed by the combined teachings of
Luciw, Bates, and Giordano. Pet. 46-60.
Patent Owner contends Luciw, Bates, and Giordano fail to disclose
the limitation “allowing the user to make a decision whether to store at least
part of the first contact information in the contact database as a new contact
or to update an existing contact in the contact database,” which is recited in
all the claims challenged in this ground. Prelim. Resp. 43-50. See claim
construction in Section II. A, above.
The Petition asserts this limitation is met because Giordano and Bates
both disclose storing first contact information in the user’s local contact
database, and Bates discloses updating an existing contact. Pet. 52-55.
Patent Owner disputes this contention, arguing as to the updating feature that
“Petitioners try to fill the gap left by Luciw (Exhibit 1003) by resorting to
Giordano (Exhibit 1005) and Bates (Exhibit 1004). . . . Giordano fails to
disclose, among other things, updating an existing contact in the user’s
address book.” Prelim. Resp. 45. The Petition is indeed silent on such
disclosure by Giordano.
Petitioner then asserts that Bates discloses updating an existing
contact. Pet. 54-55; Ex. 1004, col. 13, l. 66–col. 14, l. 8. Petitioner contends
the cited portion of Bates shows an alteration of a count field for the entry
corresponding to a user name, which supposedly “constitutes an ‘update’ of
that existing contact.” Pet. 55. Patent Owner argues the cited portion of
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Bates does not disclose updating a contact in the local contact database,
because the altered count field is not in the local contact database, but
instead resides in the internal contact table, which as shown in Figure 3, is
separate from the claimed contact database. Prelim. Resp. 48-49; Ex. 1004,
Fig. 3; col. 7, ll. 55-57; col. 8, ll. 7-10.
Bates further discloses that the local contact database is, in fact, not
updated if an entry for a user name already exists. Rather than being
updated, the auto-add entry routine instead is terminated: “block 182
determine[s] whether or not the user name passed to the routine has an entry
in the local contact database for the local user. If such an entry already
exists, no further processing is required, and routine 152 terminates.” Ex.
1004, col. 15, ll. 27-31. We are persuaded by Patent Owner that neither
Giordano nor Bates discloses updating an existing contact in the contact
database. Prelim. Resp. 49.
Finally, the Petition makes no mention of whether or how the
combination of Luciw, Bates, and Giordano teaches or suggests allowing the
user to make a decision between storing or updating, as that limitation is
construed in Section II. A above. Nor has Petitioner provided a reason why
a person of ordinary skill in the art would modify the combination to arrive
at the claimed invention and in particular, the single step of making a single
decision whether to store contact information as a new contact or,
alternatively, to update an existing contact.
Accordingly, on the present record, we determine that Petitioner fails
to establish a reasonable likelihood of prevailing on this ground.
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III. CONCLUSION
For the foregoing reasons, we determine that Petitioner fails to
demonstrate a reasonable likelihood of prevailing on its challenge to the
patentability of claims 1-24 of the ’993 patent.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’993 patent.

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PETITIONER:

Matthew Smith
Zhuanjia Gu
TURNER BOYD LLP
smith@turnerboyd.com
gu@turnerboyd.com

David Fehrman
Mehran Arjomand
MORRISON & FOERSTER LLP
dfehrman@mofo.com
marjomand@mofo.com

PATENT OWNER:

Robert Asher
Bruce Sunstein
Sunstein Kann Murphy & Timbers LLP
rasher@sunsteinlaw.com
bsunstein@sunsteinlaw.com