NETSOC, LLC

Patent Trials and Appeals Board

Dec 2, 2020

IPR2019-01171 (P.T.A.B. Dec. 2, 2020)

Trials@uspto.gov Paper 39
Tel: 571-272-7822 Entered: December 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CHEGG, INC., MATCH GROUP, LLC, AND RPX CORPORATION,
Petitioner,

v.

NETSOC, LLC,
Patent Owner.
____________

IPR2019-01171
Patent 9,978,107 B2
____________

Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Chegg, Inc., Match Group, LLC, and RPX Corporation (“Petitioner”)
filed a Petition (Paper 4, “Pet.”) requesting an inter partes review of
claims 1–11 of U.S. Patent No. 9,978,107 B2 (Ex. 1001, “the ’107 patent”)
under 35 U.S.C. §§ 311–319. NetSoc, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 13, “Prelim. Resp.”).
In our Institution Decision (Paper 16, “Inst. Dec.”), we instituted
review based on all challenged claims and all grounds advanced in the
Petition. We have jurisdiction under 35 U.S.C. § 6. We issue this Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons explained below, Petitioner has shown by a preponderance of the
evidence that claims 1–11 of the ’107 patent are unpatentable. See
35 U.S.C. § 316(e) (2012).
II. BACKGROUND
A. Procedural History
After we instituted review, Patent Owner filed a Response (Paper 23,
“Resp.”), Petitioner filed a Reply (Paper 29, “Reply”), and Patent Owner
filed a Sur-reply (Paper 31, “Sur-reply”). On September 9, 2020, we held
an oral hearing, and the record includes the hearing transcript. See Paper 38
(“Tr.”).
B. Real Parties in Interest
Petitioner identifies the following real parties in interest: Chegg, Inc.,
Match Group, LLC, RPX Corporation, IAC/InterActiveCorp, Humor
Rainbow, Inc., PlentyOfFish Media, ULC, and Match Group, Inc. Pet. 1.
Patent Owner identifies itself as the real party in interest. Paper 6, 2. The
parties do not raise any issue about real parties in interest.
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C. Related Matters
Petitioner and Patent Owner identify the following civil actions
related to the ’107 patent: (1) NetSoc, LLC v. Match Group, Inc., No. 2:18-
cv-00217 (E.D. Tex. filed May 22, 2018); (2) NetSoc, LLC v. Match Group,
LLC, No. 3:18-cv-01809 (N.D. Tex. filed July 13, 2018); (3) NetSoc, LLC v.
Chegg, Inc., No. 1:18-cv-10262 (S.D.N.Y. filed Nov. 5, 2018); (4) NetSoc,
LLC v. Teladoc Health, Inc., No. 2:18-cv-00542 (E.D. Tex. filed Dec. 21,
2018); (5) NetSoc, LLC v. LinkedIn Corporation, No. 1:18-cv-12215
(S.D.N.Y. filed Dec. 26, 2018); (6) NetSoc, LLC v. Quora, Inc., No. 1:18-cv-
12250 (S.D.N.Y. filed Dec. 27, 2018); and (7) NetSoc, LLC v. Yahoo! Inc.,
No. 1:18-cv-12267 (S.D.N.Y. filed Dec. 27, 2018). Pet. 1–3; Paper 6, 2
(Mandatory Notices).
Petitioner and Patent Owner also identify another petition challenging
the patentability of claims 1–11 in the ’107 patent, i.e., Chegg, Inc., Match
Group, LLC, and RPX Corporation v. NetSoc, LLC, IPR2019-01165,
Paper 4 (PTAB filed June 6, 2019) (“the -01165 proceeding”). Pet. 1, 5–6;
Paper 6, 2–3. Petitioner filed the petitions for the -01165 proceeding and
this proceeding on the same day. We issue this Final Written Decision
concurrently with the Final Written Decision in -01165 proceeding.
In addition, Petitioner identifies a pending application related to the
’107 patent, i.e., Application Serial No. 15/952,688 (filed Apr. 13, 2018).
Pet. 3.
D. The ’107 Patent (Ex. 1001)
The ’107 patent, titled “Method and System for Establishing and
Using a Social Network to Facilitate People in Life Issues,” issued on
May 22, 2018, from an application filed on December 18, 2015. Ex. 1001,
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codes (22), (45), (54). Through several continuation and continuation-in-
part applications, the ’107 patent claims priority to a provisional application
filed on September 3, 2003 (Ex. 1002, “the ’107 provisional”). Id. at
1:8–34, codes (60), (63).
The ’107 patent discloses “applications and implementations of
a social network to facilitate individuals to resolve various life issues.”
Ex. 1001, 2:4–6, code (57). According to the patent, those issues “include
problems and concerns that arise when individuals or families travel or
relocate,” such as “logistic problems, problems arising with assimilating
family members in a community, and, in certain context, roommate
pairings.” Id. at 2:6–11, code (57).
The ’107 patent describes several embodiments of matching systems
that assist in resolving issues by matching service consumers (generally
called “users”) and service providers (generally called “participants”). See,
e.g., Ex. 1001, 2:4–3:21, 6:46–10:10, 12:10–14:20, Figs. 3–5. The patent
explains that “participants may correspond to individuals, organizations, or
groups” who “respond to inquiries from users.” Id. at 2:21–24, 3:39–41,
6:52–55; see id. at 11:46–50. The patent also explains that “participants
may include individuals, groups that require participation from individuals
(e.g. clubs, companies) and other organizations or charters (e.g. Chambers
of Commerce) that people may belong to, are employed by, volunteer for,
or are somehow associated with on a professional, quasi-professional, or
personal level.” Id. at 3:30–37. The patent further explains that an “issue
resolver may correspond to a participant (an individual or other entity) who
is known to be able to handle, and perhaps resolve issues of a specific
nature.” Id. at 9:23–25; see id. at 2:48–50, 9:50–52, 12:38–41.
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In one embodiment, “a social network may be established and used
to assist individuals in having issues resolved at a particular geographic
location, particularly one that is unfamiliar to them.” Ex. 1001, 2:17–20.
A “list is maintained of participants who can assist in resolving issues at the
particular geographic location.” Id. at 2:21–23. A user interface displays
“a plurality of categories” to a user “from which the user may make a
selection.” Id. at 2:24–26. After the user “make[s] a category selection and
enter[s] an inquiry (such as one pertaining to a problem the individual is
having),” a “message is generated and sent to a service that corresponds to
the user’s category and issue.” Id. at 2:26–30. “After receiving the selection
of the category and receiving the inquiry, the service selects a recipient/
participant for the user,” and “[t]he inquiry of the user is then sent to that
participant.” Id. at 2:31–34; see id. at 3:39–41, 3:57–61, 4:38–40.
“Subsequently, the user and the recipient/participant are enabled to
communicate with one another.” Id. at 2:34–36.
In another embodiment, the user selects the participants who receive
the user’s inquiry instead of the service selecting the participants. Ex. 1001,
8:43–50. In that embodiment, the user selects who “the user wishes to
communicate with” and “submit[s] an inquiry or request” to the service. Id.
at 8:52–55. Then, the service “handle[s] the request by forwarding the
request to the identified participants.” Id. at 8:55–57. The patent explains
that “[i]n such an embodiment, an email address or other contact information
may be shielded from the user.” Id. at 8:57–58. The patent also explains
that “[i]n one variation, it is also possible to shield the identity of the
participant, or the end person who will be communicating with the user.” Id.
at 8:58–61.
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In another embodiment, the service stores associations between issue
categories and issue resolvers or participants. Ex. 1001, 9:21–31, Fig. 5A;
see id. at 2:48–50. Through an interface, a user selects an issue category and
creates an inquiry message. Id. at 9:32–49, Fig. 5A; see id. at 14:61–66,
Fig. 6C. “[T]he user’s message is routed to a participant/respondent who is
designated to resolve issues for the category selected by the user. For
example, service 110 may use database 214 to determine the association
between the category of the issue and the issue resolver assigned to that
category.” Id. at 9:50–55, Fig. 5A; see id. at 2:50–55, 14:66–15:2, Fig. 6C.
In another embodiment, “the user 502 submits an inquiry 512 of an
issue resolution nature to the service 510.” Ex. 1001, 12:35–36. The service
forwards the inquiry to Connection 1 520. Id. at 12:36–41, Fig. 5B.
Connection 1 520 considers Connection 2 530 “an expert in the particular
field in question.” Id. at 12:47–52. So Connection 1 520 invites
Connection 2 530 to join the network. Id. at 12:52–56. After receiving the
invitation, Connection 2 530 joins the network and creates a profile. Id. at
12:56–59. “After the user 502 has reviewed the profile the user may allow
Connection 2 530 to resolve the issue and see other issues the user has
pending.” Id. at 13:26–28. If so, “Connection 2 530 is contacted by the user
through the system with the issue to be resolved.” Id. at 13:28–29.
Figure 5A (reproduced below) illustrates a “method in which issue
resolvers are provided as part of a social network, and the performance of
the issue resolvers is tracked.” Ex. 1001, 1:56–58, Fig. 5A.
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Figure 5A depicts steps 510 through 560 in “a variation to the embodiments”
described above “for [the] purpose of resolving a user’s issues.” Id. at
9:13–18; see id. at 9:21–10:10. “In step 560, the performance of the
particular issue resolver is tracked.” Id. at 9:58–59. “Implementing a
tracking step may include time stamping every communication from an issue
resolver, and possibly every communication from the user to the issue
resolver.” Id. at 9:67–10:3.
E. The Challenged Claims
Petitioner challenges all claims in the ’107 patent, i.e., independent
method claim 1, claims 2–5 that depend directly from claim 1, independent
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system claim 6, and claims 7–11 that depend directly from claim 6.
Pet. 4–5, 14–71. Claims 1 and 6 exemplify the challenged claims and
read as follows (with formatting added for clarity):
1. A method for establishing a social network, the
method being implemented on a network computer system and
comprising:
maintaining a list comprising a plurality of participants,
wherein each participant in the plurality of participants
corresponds to one or more individuals, wherein the list also
includes information associated with at least one of each
participant or the one or more individuals that correspond to
each participant;
presenting a user with an interface from which the user
makes a selection of a category from a plurality of categories;
in response to receiving the selection of the category by
the user, displaying, for the user, some of the information
associated with each of multiple participants from the plurality
of participants which match the selection of the category by the
user, while shielding contact information associated with each
of the multiple participants;
wherein displaying some of the information associated
with each of the multiple participants is based at least in part on
a rating of individual participants in the plurality of
participants;
enabling the user to send an inquiry message to one or
more of the multiple participants, while shielding the contact
information from the user, the contact information including
any messaging identifier that is associated with each of the one
or more participants;
tracking a response time of each of the one or more
participants who received the message from the user; and
updating the rating associated with each of the one or
more participants based at least in part on the tracked response
time.
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6. A computer system comprising:
a memory to store a list comprising a plurality of
participants, wherein each participant in the plurality of
participants corresponds to one or more individuals, wherein
the list also includes information associated with at least one of
each participant or the one or more individuals that correspond
to each participant;
one or more processors that execute instructions to:
maintain the list;
present a user with an interface from which the
user makes a selection of a category from a plurality of
categories;
in response to receiving the selection of the
category by the user, present, for the user, some of the
information associated with each of multiple participants
from the plurality of participants which match the
selection of the category by the user, while shielding
contact information associated with each of the multiple
participants;
wherein displaying some of the information
associated with each of the multiple participants is based
at least in part on a rating of individual participants in the
plurality of participants;
enabling the user to send an inquiry message to
one or more of the multiple participants, while shielding
the contact information from the user, the contact
information including any messaging identifier that is
associated with each of the one or more participants;
tracking a response time of each of the one or more
participants who received the message from the user; and
updating the rating associated with each of the one
or more participants based at least in part on the tracked
response time.
Ex. 1001, 17:15–48, 18:5–38.
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F. The Asserted Prior Art
For its challenges, Petitioner relies on the following prior art:
1. U.S. Patent Application Publication 2005/0038688 A1 to Collins
et al., titled “System and Method for Matching Local Buyers and Sellers for
the Provision of Community Based Services,” filed on August 15, 2003, and
published on February 17, 2005 (Ex. 1010, “Collins”).
2. U.S. Patent No. 5,862,223 to Walker et al., titled “Method and
Apparatus for a Cryptographically-Assisted Commercial Network System
Designed to Facilitate and Support Expert-Based Commerce,” filed on
July 24, 1996, and issued on January 19, 1999 (Ex. 1011, “Walker”).
3. U.S. Patent Application Publication 2004/0019579 A1 to Herz
et al., titled “Professional Referral Network,” filed on July 24, 2002, and
published on January 29, 2004 (Ex. 1007, “Herz”).
4. U.S. Patent Application Publication 2005/0021750 A1 to Abrams,
titled “System, Method and Apparatus for Connecting Users in an Online
Computer System Based on Their Relationships Within Social Networks,”
filed on June 16, 2003, and published on January 27, 2005 (Ex. 1008,
“Abrams”).
G. Testimonial Evidence
To support its challenges, Petitioner relies on two declarations of
Dr. Benjamin Goldberg (Ex. 1004, “Goldberg Decl.”; Ex. 1014, “Goldberg
Reply Decl.”). Patent Owner relies on the declaration of Ms. Emily White,
the sole inventor named in the ’107 patent (Ex. 2026, “White Decl.”).
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H. The Asserted Grounds of Unpatentability
We instituted an inter partes review of claims 1–11 on the following
grounds:
Claims Challenged 35 U.S.C. § References
1–3, 5–8, 10, 11 103(a)1 Collins, Walker
4, 9 103(a) Collins, Walker, Herz
3, 8 103(a) Collins, Walker, Abrams
Inst. Dec. 2, 81–82.
III. PATENTABILITY ANALYSIS
A. Legal Principles: Obviousness
A patent may not be obtained “if the differences between the subject
matter sought to be patented 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.”
35 U.S.C. § 103(a). An obviousness analysis involves underlying factual
inquiries including (1) the scope and content of the prior art; (2) differences
between the claimed invention and the prior art; (3) the level of ordinary
skill in the art; and (4) where in evidence, objective indicia of
nonobviousness, such as commercial success, long-felt but unsolved needs,
and failure of others.2 Graham v. John Deere Co., 383 U.S. 1, 17−18, 35–36
(1966); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047–48

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
Because the ’107 patent’s effective filing date predates the AIA’s
amendments to § 103, this decision refers to the pre-AIA version of § 103.
2 In its papers, Patent Owner presents no arguments or evidence regarding
objective indicia of nonobviousness. See Resp. 9–37; Sur-reply 13–20.
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(Fed. Cir. 2016) (en banc). When evaluating a combination of references, an
obviousness analysis should address “whether there was an apparent reason
to combine the known elements in the fashion claimed by the patent at
issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
We analyze the obviousness issues according to these principles.
B. Level of Ordinary Skill in the Art
Factors pertinent to determining the level of ordinary skill in the art
include (1) the educational level of the inventor; (2) the type of problems
encountered in the art; (3) prior-art solutions to those problems; (4) the
rapidity with which innovations are made; (5) the sophistication of the
technology; and (6) the educational level of workers active in the field.
Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir.
1983). Evidence for these factors may not exist in every case, and one or
more of these or other factors may predominate in a particular case. Id.
Moreover, these factors are not exhaustive, but are merely a guide to
determining the level of ordinary skill in the art. Daiichi Sankyo Co. v.
Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Further, the prior art
itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001).
Petitioner asserts that a person of ordinary skill in the art would have
had “a Bachelor of Science degree in computer science or a similar technical
field together with 2 years of educational practicum or work experience in
the field of software development (including programming for client-server
systems, databases and networks), or related areas.” Pet. 8 (citing Ex. 1004
¶ 11). Petitioner also asserts that a person of ordinary skill “would have
been familiar with existing participant matching systems and would have
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understood how to implement such systems.” Id. (citing Ex. 1004 ¶ 11).
To support Petitioner, Dr. Goldberg testified that a person of ordinary skill
would have been “familiar with the technologies (e.g., user interfaces,
databases, networks, etc.) underlying existing social networks, including
participant matching systems,” and would have understood “how to
implement such systems.” Ex. 1004 ¶ 11.
Patent Owner asserts that a person of ordinary skill in the art would
have had either (1) “a bachelor’s degree in Computer Science, or highly
related field,” and “at least four years’ experience in computer networking,
especially in social networking systems,” or (2) “eight years of experience
in social networking systems” if lacking a bachelor’s degree. Resp. 3–4.
Patent Owner cites no evidence supporting its description. Id.
Petitioner’s description of a person of ordinary skill in the art requires
less experience (“2 years”) than Patent Owner’s description (“at least four
years”). See Pet. 8; Resp. 3–4. Further, Petitioner’s description requires less
familiarity with social networking systems that Patent Owner’s description.
See Pet. 8; Resp. 3–4.
We adopt Petitioner’s proffered level of ordinary skill in the art
because it comports with the technology and claims of the ’107 patent as
well as the asserted prior art. For instance, two years of work experience
in the field of software development and familiarity with the technology
underlying existing social networks would have allowed someone to
implement the claimed subject matter. See Ex. 1004 ¶ 11. Moreover, if the
prior art renders the claimed subject matter obvious to a person with less
experience and less knowledge, then the prior art renders the claimed subject
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matter obvious to a person with more experience and more knowledge. See
Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
C. Claim Construction
1. GENERALLY
Because Petitioner filed the Petition after November 13, 2018, we
construe claim terms “using the same claim construction standard that would
be used to construe the claim in a civil action” under 35 U.S.C. § 282(b).
See 37 C.F.R. § 42.100(b) (2019). Under that standard, “[c]laim terms are
given their ordinary and customary meaning, which is the meaning the term
would have to a person of ordinary skill in the art at the time of the
invention.” Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
904 F.3d 965, 971 (Fed. Cir. 2018) (citing Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc)).
“[T]he person of ordinary skill in the art is deemed to read the claim
term not only in the context of the particular claim in which the disputed
term appears, but in the context of the entire patent,” including the other
claims (“both asserted and unasserted”) and the written description.
Phillips, 415 F.3d at 1313–14, 1321. Further, “the prosecution history can
often inform the meaning of the claim language by demonstrating how” an
inventor or an examiner understood the claim language. Id. at 1317. Thus,
the meaning of a disputed claim term may be determined by “look[ing]
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
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2. “CONTACT INFORMATION”
In our Institution Decision, we construed the term “contact
information” in claims 1 and 6 to mean “information, such as an email
address, mailing address, or telephone number, that permits one entity to
communicate directly with another entity.” Inst. Dec. 38–39. No party
challenges that construction. See, e.g., Resp. 3–7, 10–18, 27–28, 32–37;
Reply 15–19; Sur-reply 13–19; Tr. 16:22–17:5. Hence, we see no reason to
depart from that construction. See Inst. Dec. 38–39.
3. “ENABLING THE USER TO SEND AN INQUIRY MESSAGE
TO ONE OR MORE OF THE MULTIPLE PARTICIPANTS”
Claims 1 and 6 each recite the following limitation: “enabling the user
to send an inquiry message to one or more of the multiple participants, while
shielding the contact information from the user, the contact information
including any messaging identifier that is associated with each of the one
or more participants.” Ex. 1001, 17:38–42, 18:28–32. The parties dispute
whether the phrase “enabling the user to send an inquiry message to one
or more of the multiple participants” includes an indirect communication
from a user through an intermediary to a participant. See Resp. 10–14;
Reply 15–18; Sur-reply 14–16.
In particular, Patent Owner argues that the phrase “enabling the user
to send an inquiry message to one or more of the multiple participants”
should not include “a situation in which the message is sent from the
user to the system and from the system to the participant.” Resp. 12; see
Sur-reply 14. Patent Owner also argues that the phrase includes only
to “a direct communication, as opposed to indirect communications.”
Resp. 11; see Sur-reply 14. Further, Patent Owner asserts that the phrase
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uses the words “send . . . to” to specify a direct communication from a user
to a participant rather than the words “send . . . for” to specify an indirect
communication from a user through an intermediary to a participant.
Resp. 14; Sur-reply 14.
In addition, Patent Owner contends that the ’107 patent’s specification
discloses an embodiment where a user “goes outside of the service” to
communicate with a participant. Sur-reply 14 (citing Ex. 1001, 5:47–50);
see id. at 15–16. Patent Owner also contends that the ’107 provisional
discloses “a client-server system” with “a backend that provides an online
email messaging system to allow direct interaction among users.” Resp. 12;
see Sur-reply 14. Patent Owner quotes the following statement from the
provisional: “Employee is able to interact DIRECTLY via online email
messaging system (and wireless) with these providers.” Sur-reply 14
(quoting Ex. 1002, 21).
Petitioner argues that Patent Owner “attempt[s] to read substantial
limitations into the claims.” Reply 15; see id. at 18. Petitioner contends that
’107 patent’s specification discloses embodiments where “the system acts
as an intermediary that forwards the inquiry message” from a user to a
participant. Id. at 17 (citing Ex. 1001, 8:50–58); see Ex. 1014 ¶ 22.
Petitioner also contends that the ’107 provisional discloses examples of
“indirect communication by routing messages through an intermediary
messaging system” instead of using a direct communication from a user to
a participant. Reply 15–16 (citing Ex. 1002, 14).
Additionally, Petitioner asserts that limiting the phrase “enabling the
user to send an inquiry message to one or more of the multiple participants”
to direct communications according to Patent Owner’s construction would
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render the claims inoperable. Reply 17; see Ex. 1014 ¶ 23. Petitioner
explains that the “messaging system would not be able to track the
participants’ response times” for direct communications “outside of the
messaging system.” Reply 17; see Ex. 1014 ¶ 23. To support Petitioner,
Dr. Goldberg testified that an ordinarily skilled artisan “would have
understood that in order for the messaging system to be able to track
response times, the communication could not be ‘direct’ communication or
communication outside of the system.” Ex. 1014 ¶ 23. Further, Petitioner
asserts that the ’107 patent’s specification “fails to describe any mechanism
by which a direct messaging system would somehow report the response
time to the rating system.” Reply 17; see Ex. 1014 ¶ 23.
In response, Patent Owner argues that the “embodiment being claimed
in the ‘107 patent is direct messaging.” Sur-reply 15 (citing Ex. 1001,
col. 9). Further, Patent Owner asserts that “[i]t is possible to track response
time in an embodiment” described in the ’107 provisional and that
“[i]t is also possible to track response time in an embodiment” described
in the ’107 patent’s specification. Id. at 16 (citing Ex. 1001, 10:3–5;
Ex. 1002, 21).
Based on the claim language and the ’107 patent’s specification, and
for the reasons explained below, we agree with Petitioner and construe the
phrase “enabling the user to send an inquiry message to one or more of the
multiple participants” to include an indirect communication from a user
through an intermediary to a participant.
The claim language supports the conclusion that the phrase “enabling
the user to send an inquiry message to one or more of the multiple
participants” includes an indirect communication from a user through an
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intermediary to a participant. As recited in claims 1 and 6, a system that
initially enables a user to send an inquiry message to the system and then
sends the inquiry message to one or more participants “enabl[es] the user to
send an inquiry message to one or more of the multiple participants”
according to the claim language. See Ex. 1001, 8:46–57, Fig. 4. Hence,
Patent Owner misplaces its reliance on a wording difference between “send
. . . to” and “send . . . for.” See Resp. 14; Sur-reply 14.
The ’107 patent’s specification also supports the conclusion that the
phrase “enabling the user to send an inquiry message to one or more of the
multiple participants” includes an indirect communication from a user
through an intermediary to a participant. The specification describes
embodiments where “the service 110 receives inquiries from users who
inquire about a particular matter or issue,” and “the service 110 selects the
participants who will receive the inquiry based on an indication from the
user of a topic or category of the communication.” Ex. 1001, 3:28–30,
4:38–40; see id. at 3:39–45, 3:57–61, 4:12–25, 4:53–55, 5:54–60, 6:35–38,
7:8–9, 7:47–58. “As an alternative or additional selection criteria, the
service 110 may select the participants who will receive the inquiry 108
based on information that is maintained about the participants.” Id. at
4:47–50. In those embodiments, the service acts as an intermediary to
receive an inquiry from a user, select the participants who will ultimately
receive the inquiry, and then send the inquiry to the selected participants.
The specification includes the following example where the service
acts as an intermediary to receive an inquiry from a user and send the
inquiry to one or more participants:
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Step 460 provides that a user-selection of one or more
participants is received from the user through a second set of
inputs. Given a set of biographies presented in step 450, the
user may, for example, select one participant (based on the
biography). Then in step 470, the user is enabled to
communicate with the selected participant(s) over an online
medium. For example, once the user makes a selection of
which participant the user wishes to communicate with, the user
may submit an inquiry or request for the participant identified
in step 450. The service 110 may handle the request by
forwarding the request to the identified participants.
Ex. 1001, 8:46–57, Fig. 4; see id. at 11:22–43.
The specification describes another embodiment where the service
acts as an intermediary. In that embodiment, the service stores associations
between issue categories and issue resolvers or participants. Ex. 1001,
9:21–31, Fig. 5A; see id. at 2:48–50. Through an interface, a user selects an
issue category and creates an inquiry message. Id. at 9:32–49, Fig. 5A; see
id. at 14:61–66, Fig. 6C. “[T]he user’s message is routed to a
participant/respondent who is designated to resolve issues for the category
selected by the user. For example, service 110 may use database 214 to
determine the association between the category of the issue and the issue
resolver assigned to that category.” Id. at 9:50–55, Fig. 5A; see id. at
2:50–55, 14:66–15:2, Fig. 6C. In that embodiment, the service acts as an
intermediary to receive an inquiry from a user and send the inquiry to the
assigned issue resolver or participant.
The specification describes yet another embodiment where the service
acts as an intermediary. In that embodiment, “the user 502 submits an
inquiry 512 of an issue resolution nature to the service 510.” Ex. 1001,
12:35–36. The service forwards the inquiry to Connection 1 520. Id. at
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12:36–41, Fig. 5B. Connection 1 520 considers Connection 2 530
“an expert in the particular field in question.” Id. at 12:47–52. So
Connection 1 520 invites Connection 2 530 to join the network. Id. at
12:52–56. After receiving the invitation, Connection 2 530 joins the
network and creates a profile. Id. at 12:56–59. “After the user 502 has
reviewed the profile the user may allow Connection 2 530 to resolve the
issue and see other issues the user has pending.” Id. at 13:26–28. If so,
“Connection 2 530 is contacted by the user through the system with the issue
to be resolved.” Id. at 13:28–29. In that embodiment, the service acts as an
intermediary to receive an inquiry from a user and send the inquiry first to
Connection 1 and second to Connection 2.
The specification discloses alternative ways for a user to communicate
with a participant: “One embodiment provides that the user goes through
service 110 to communicate with the respondents that he chooses. Another
embodiment provides that he goes outside of the service 110.” Ex. 1001,
5:47–50. For an embodiment where a user “goes outside of the service” to
communicate with a participant, however, the specification does not disclose
a way for the service to track participant response times. See, e.g., id. at
1:56–58, 2:17–56, 6:39–45, 9:58–11:44, Fig. 5A; Ex. 1014 ¶ 23.
Limiting the phrase “enabling the user to send an inquiry message
to one or more of the multiple participants” to direct communications
according to Patent Owner’s construction would exclude embodiments
where a user “goes through service” to communicate with a participant.
A construction excluding a preferred embodiment is “rarely, if ever correct.”
PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747,
755 (Fed. Cir. 2016). “[W]here claims can reasonably [be] interpreted to
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include a specific embodiment, it is incorrect to construe the claims to
exclude that embodiment, absent probative evidence on the contrary.”
Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008). Here, Patent
Owner identifies no such probative evidence. See Resp. 9–18, 33–37;
Sur-reply 13–19. Instead, Patent Owner improperly attempts to incorporate
into the claims a limitation from the specification. See Resp. 10–14;
Sur-reply 14–16; In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
An analysis of the ’107 provisional does not undermine the conclusion
that the phrase “enabling the user to send an inquiry message to one or more
of the multiple participants” includes an indirect communication from a user
through an intermediary to a participant. Like the ’107 patent, the
’107 provisional discloses direct and indirect communications between a
user and a participant. See, e.g., Ex. 1002, 3, 14, 21, 41, 46, 91, 97. For
example, the provisional describes an embodiment where a user selects
an issue category and creates an inquiry message. Id. at 91. The issue
categories “are connected to specific individuals or organizations or
community or business services” in “various cities or other places.” Id.
When creating an inquiry message, a user sees the following instructions:
“Send a separate email for each issue. Don’t worry about where it goes.
It’s being routed to an individual or group of individuals who can answer
your question directly or refer your question to someone who can.” Id. at 97
(Fig. 48); see id. at 91 (referencing Fig. 48). In that embodiment, the service
acts as an intermediary to receive an inquiry from a user and send the
inquiry to the assigned issue resolver or participant.
Patent Owner’s argument that the “embodiment being claimed in the
‘107 patent is direct messaging” rests on the embodiment described in
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column 9. See Sur-reply 15. But that embodiment involves indirect
messaging, not direct messaging, between a user and a participant. See
Ex. 1001, 9:21–55, Fig. 5A. As discussed above, in that embodiment the
service stores associations between issue categories and issue resolvers
or participants. Id. at 9:21–31, Fig. 5A; see id. at 2:48–50. Through an
interface, a user selects an issue category and creates an inquiry message.
Id. at 9:32–49, Fig. 5A; see id. at 14:61–66, Fig. 6C. “[T]he user’s message
is routed to a participant/respondent who is designated to resolve issues
for the category selected by the user.” Id. at 9:50–52, Fig. 5A; see id. at
2:50–55, 14:66–15:2, Fig. 6C. Receiving a message and routing it to a
participant does not correspond to direct messaging, i.e., where a user
“goes outside of the service” to communicate with a participant.
As noted above, Patent Owner asserts that “[i]t is possible to track
response time in an embodiment” described in the ’107 provisional and that
“[i]t is also possible to track response time in an embodiment” described in
the ’107 patent’s specification. Sur-reply 16 (citing Ex. 1001, 10:3–5;
Ex. 1002, 21). For an embodiment where a user “goes outside of the
service” to communicate with a participant, however, Patent Owner cites
nothing disclosing a way for the service to “track[] a response time” of the
participant as required by claims 1 and 6. See id.; Ex. 1001, 17:43–44,
18:33–34. Thus, Patent Owner does not refute Dr. Goldberg’s testimony
that an ordinarily skilled artisan “would have understood that in order for the
messaging system to be able to track response times, the communication
could not be ‘direct’ communication or communication outside of the
system.” See Ex. 1014 ¶ 23.
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For the reasons discussed above, we conclude that the phrase
“enabling the user to send an inquiry message to one or more of the multiple
participants” includes an indirect communication from a user through an
intermediary to a participant.
4. “ONE OR MORE USERS OF THE NETWORK COMPUTER SYSTEM” IN CLAIM 4
AND “ONE OR MORE USERS OF THE COMPUTER SYSTEM” IN CLAIM 9
Claim 4 depends from claim 1 and further requires “identifying
information for another participant that matches the category selection of
the user based on a referral provided by one or more users of the network
computer system.” Ex. 1001, 17:56–60. Claim 9 depends from claim 6 and
specifies that the one or more processors “identify information for another
participant that matches the category selection of the user based on a referral
provided by one or more users of the computer system.” Id. at 18:48–52.
Petitioner argues that the phrase “one or more users of the network
computer system” in claim 4 encompasses “participants of the network
computer system, not just a user of the system seeking to have an issue
resolved, e.g., the claimed ‘user’ in claim 1.” Reply 20; see Pet. 60.
Petitioner contends that claim 1 lacks an antecedent basis for the phrase
“one or more users of the network computer system” in claim 4 and that the
phrase references a new entity “not tied to ‘the user’ or ‘the one or more
participants’” recited in claim 1. Reply 21. Petitioner also contends that
the ’107 patent’s specification “provides only one example of referrals, i.e.,
wherein participants refer other participants.” Id. at 20 (citing Ex. 1001,
12:11–20); see Pet. 60. Petitioner relies on its arguments about claim 4 for
the similar phrase “one or more users of the computer system” in claim 9.
See Pet. 60, 64; Reply 20–21.
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Patent Owner focuses on the shorter phrase “one or more users” in
claims 4 and 9 and asserts that the shorter phrase “means that the
recommendation is by one or more other users.” Sur-reply 18. Patent
Owner also asserts that “[i]t would not make sense for ‘one or more users’
to refer to ‘the user’ as a referral to ‘the user’ is being provided by the ‘one
or more users’” because “[o]ne would not make a referral to oneself.” Id.
at 18–19.
We agree with Petitioner that claim 1 lacks an antecedent basis for the
phrase “one or more users of the network computer system” in claim 4 and
that the phrase references a new entity not recited in claim 1. See Ex. 1001,
17:15–48, 17:56–60; Reply 21. The ’107 patent’s specification explains the
nature of that new entity. See Ex. 1001, 5:30–46, 12:10–13:67, 14:48–60,
Figs. 5B, 6B. The specification discloses a first issue resolver or participant
serving as “referral source” for a second issue resolver or participant through
“a social networking framework.” Id. at 12:10–13:67, Fig. 5B; see Ex. 1004
¶¶ 43, 158, 202. For example, a first participant may refer a second
participant to a user by inviting the second participant to join the network
and resolve the user’s issue. Ex. 1001, 12:47–56, Fig. 5B; see Ex. 1004
¶ 43. After joining the network, the second participant may provide a
response to the user, either with the user’s prior agreement or without the
user’s prior agreement. Ex. 1001, 12:56–13:5, Fig. 5B; see Ex. 1004 ¶ 43.
The specification also discloses a first participant referring a user to a second
participant. Ex. 1001, 5:30–46, 14:48–60, Fig. 6B. But the specification
does not disclose a first user referring a second user to a participant. See,
e.g., id. at 5:30–46, 12:10–13:67, 14:48–60, Figs. 5B, 6B. Instead, the
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specification describes using participant ratings to assist a user when
selecting a participant. See id. at 7:18–24.
Further, the phrase “one or more users of the network computer
system” reads on the following entities in Figure 1 who use the network
computer system in Figure 1: organizational participant 122, individual
participant 124, group participant 126, and individual participant 128.
Ex. 1001, 3:50–4:37, Fig. 1. The phrase also reads on the following entities
in Figure 5B who use the network computer system in Figure 5B:
Connection 1 520, Connection 2 530, and Connection 3 540. Id. at
12:10–13:67, Fig. 5B. Connection 1 520, Connection 2 530, and
Connection 3 540 are participants. Id. at 12:10–20, 12:47–13:5, 13:28–34,
13:58–67; see id. at 2:21–24, 2:48–50, 3:30–41, 6:52–55, 9:23–25.
Based on the ’107 patent’s specification, we conclude that the phrase
“one or more users of the network computer system” in claim 4
encompasses participants who use the network computer system. See
Ex. 1001, 3:57–4:37, 5:30–46, 12:10–13:67, 14:48–60, Figs. 1, 5B, 6B;
Ex. 1004 ¶¶ 43, 158, 202. For similar reasons, we conclude that the phrase
“one or more users of the computer system” in claim 9 encompasses
participants who use the computer system.
5. OTHER TERMS
We determine that no other claim terms require explicit constructions
to decide the patentability issues. “[O]nly those terms need be construed
that are in controversy, and only to the extent necessary to resolve the
controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
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D. Whether Collins Qualifies as Prior Art
1. BACKGROUND AND CONTENTIONS
(a) The ’107 Provisional
A provisional patent application is a U.S. national application.
35 U.S.C. § 111(b). Although a provisional application need not include any
claims, it must include “a specification as prescribed by” § 112 ¶ 1.
35 U.S.C. § 111(b)(1)–(2). Depending on the disclosures in a provisional
application, it may establish an early effective filing date for a later
nonprovisional application. See https://www.uspto.gov/patents-getting-
started/patent-basics/types-patent-applications/provisional-application-
patent.
The ’107 provisional includes various pages and sections bearing
various dates. Ex. 1002. For instance, the provisional includes the
following:
a provisional application cover page signed by the inventor
and dated August 11, 2003 (id. at 1);
a page called “Final Comments” and dated August 11, 2003
(id. at 2);
a section called “Virtual Account” and dated August 11, 2003
(id. at 18–23);
a page called “Figure 9” and stating “Monday, August 11,
2003-submitted/created- 8/29/02 EARLY VISIONS”
(id. at 24);
a page called “Virtual Account...another summary- HOW IT
WORKS!!!! THE BUSINESS PROCESS” and dated
August 11, 2003 (id. at 36);
a section called “Tracking and Monitoring Performance” and
dated August 11, 2003 (id. at 37–38);
a section called “Human Resources or Relocation Director
or Other” and dated August 14, 2003 (id. at 47–48);
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a section called “Relocating Employee/ New Hire/ Remote
Candidate/ Biz Traveler etc” and dated August 14, 2003
(id. at 53–59);
a section called “College Intern” and dated August 14, 2003
(id. at 67–76);
a section called “Community Module” and dated August 13,
2003 (id. at 91–94);
a page called “Teenager Module” and dated August 11, 2003
(id. at 99);
a section called “Relocating Teenager” and dated August 13,
2003 (id. at 106–09);
a section called “Emily’s Club” and dated August 13, 2003
(id. at 110–16);
a page called “Figure 58” and dated August 13, 2003
(id. at 119);
a section called “onlineHR Wireframes” with pages dated either
May 14 or May 21, 2001 (id. at 132–53);
a page called “Recruitment Management Product #1” and dated
January 2001 (id. at 169); and
many undated pages (see, e.g., id. at 3–17, 125–31).
(b) Petitioner Contends that Collins Is § 102(e) Prior Art
The pre-AIA version of § 102(e) provides that prior art may include
“an application for patent, published under section 122(b), by another filed
in the United States before the invention by the applicant for patent.”
35 U.S.C. § 102(e) (2006). Petitioner contends that Collins qualifies as prior
art under § 102(e) because Collins’s August 15, 2003, filing date precedes
the ’107 patent’s effective filing date. Pet. 6; see Ex. 1001, 1:8–32, codes
(22), (60), (63); Ex. 1010, code (22).
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(c) Patent Owner Contends that It Can Antedate Collins
Patent Owner contends that Collins does not qualify as prior art under
§ 102(e) for several related reasons. See Resp. 18–32; Sur-reply 1–13. First,
Patent Owner asserts that the ’107 patent claims are entitled to the benefit
of the ’107 provisional’s September 3, 2003, filing date. See Resp. 21–32;
Sur-reply 5–12. Next, recognizing that Collins’s August 15, 2003, filing
date precedes the ’107 provisional’s filing date, Patent Owner asserts that
the inventor “reduced the invention to practice” and “the invention was
complete” before Collins’s filing date. Resp. 20–21; see Sur-reply 2–3.
Further, Patent Owner asserts that the inventor “clearly had possession of
the claimed subject matter of the ‘107 Patent” before Collins’s filing date.
Sur-reply 3.
In the Response, Patent Owner identifies the date of invention as
August 11, 2003. Resp. 8; see id. at 20 & n.40 (citing Ex. 2026 ¶¶ 3–4).
In the Sur-reply, Patent Owner identifies the date of invention as either “no
later than August 14, 2003” or “no later than August 15, 2003.” Sur-reply 1,
7–8.
Patent Owner asserts that Ms. White signed the cover page for the
’107 provisional and a page called “Final Comments” on August 11, 2003.
Resp. 7, 19–20, 22–23 (citing Ex. 1002, 1–2); see Ex. 2026 ¶¶ 1–3. Patent
Owner admits that “[s]ome material was added [to the provisional] after the
August 11, 2003 date.” Resp. 20; see Ex. 2026 ¶ 4. But Patent Owner
asserts that the ’107 patent claims “were supported by the information
present in the body” of the provisional before Collins’s August 15, 2003,
filing date. Resp. 20; see Ex. 2026 ¶ 4.
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To support Patent Owner’s assertions, Ms. White stated, “I completed
a draft of the Priority Application on August 11, 2003. . . . After I
completed the draft patent application for the Priority Application, I added a
few pages that were additional examples of concepts that are detailed in the
Priority Application,” i.e., pages dated August 13 or 14, 2003. Ex. 2026
¶¶ 3–4. Ms. White also stated, “I recall that I mailed or couriered the
Priority Application to the U.S. Patent Office on August 14 or 15, 2003. I
recall this because I wanted to file the Priority Application as soon as
possible after I felt the Priority Application was complete.” Id. ¶ 5.
Further, Patent Owner asserts that for purposes of “determining a
date of invention for a pre-AIA patent application filing, a draft patent
application is effective as of the completion date of the as-filed version of
the patent application if the relied upon disclosures are the same.” Resp. 22;
see Sur-reply 2. To support that assertion, Patent Owner cites Spero v.
Ringold, 377 F.2d 652 (CCPA 1967), and Haskell v. Colebourne, 671 F.2d
1362 (CCPA 1982). Resp. 22 n.45; see Sur-reply 2.
(d) Petitioner Disputes that Patent Owner Can Antedate Collins
Petitioner disputes that the “inventor reduced the invention to
practice” before Collins’s August 15, 2003, filing date. See Reply 11–14.
In particular, Petitioner argues that an actual reduction to practice did not
occur before Collins’s filing date because no embodiment meeting all
limitations of the challenged claims was constructed before that date. Id.
at 12. In addition, Petitioner contends that Patent Owner “conflates actual
reduction to practice with conception” and that Spero “focuses on only
conception and constructive reduction to practice,” not actual reduction to
practice. Id. at 2, 10, 12 (citing Spero, 377 F.2d at 660). Petitioner also
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contends that the “conflation of the two concepts leads Patent Owner to the
untenable conclusion that” the ’107 provisional “can somehow constitute
both proof of conception and proof of actual reduction to practice.” Id.
Further, Petitioner asserts that assuming that Patent Owner proved
conception of the claimed subject matter before Collins’s August 15, 2003,
filing date, Patent Owner “cannot meet its burden to demonstrate diligence
from the conception date” to the ’107 provisional’s September 3, 2003,
filing date. Resp. 13. Petitioner contends that Patent Owner “failed to
provide any explanation of diligence.” Id. Petitioner also contends that
Ms. White’s testimony “provides no reliable evidence of diligence from
August 15, 2003, to September 3, 2003” because nothing corroborates her
testimony. Id. at 13–14.
Additionally, Petitioner disputes that the ’107 patent claims are
entitled to the benefit of the ’107 provisional’s filing date. See Reply 2–7.
In particular, Petitioner argues that the provisional lacks support for the
following two limitations in each of claims 1 and 6: (1) “displaying some of
the information associated with each of the multiple participants is based at
least in part on a rating of individual participants in the plurality of
participants”; and (2) “updating the rating associated with each of the one or
more participants based at least in part on the tracked response time.” Id.
Petitioner also argues that the “effective filing date is evaluated on a
claim-by-claim basis” and that “a claim is only entitled to the filing date of
the earliest-filed application supporting that claim.” Resp. 8 (citing X2Y
Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir.
2014) (Reyna, J., concurring)). Petitioner contends that Patent Owner
identifies “no evidence regarding whether the dependent claims are entitled
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to the benefit of” the ’107 provisional’s filing date. Id. at 9 (emphasis by
Petitioner).
(e) Patent Owner Identifies Support for the Disputed Limitations
In response, Patent Owner identifies support in the ’107 provisional
for the two disputed limitations in each of claims 1 and 6. See Sur-reply
5–12. For the “displaying based on ratings” limitation, Patent Owner
contends that the provisional “discloses the use of [a] ‘rating system’ ‘where
employees will be able to read reviews from other employees and rate his
own experience with service providers.’” Id. at 6 (quoting Ex. 1002, 22).
Patent Owner also contends that the provisional discloses (1) a “tracking &
monitoring system that allows the corporation to view (monitor and track)
how/when the vendor responds, interacts, communicates with the
employee,” and (2) a “Corporate Preferred Providers and Global Database
(deleted upon receipt of poor ratings created by employees/family users).”
Id. at 7 (quoting Ex. 1002, 38). Patent Owner asserts that “ratings would
impact the ranking of a service provider with regard to their appearance” in
search results when a provider’s ratings “cause[] the provider to not be used
again.” Id. at 6–7; see Resp. 29–30. Patent Owner explains that “[i]f the
provider is ‘deleted upon receipt of poor ratings’, the provider would not be
listed” in search results. Sur-reply 7.
As support for the “updating” limitation, Patent Owner reproduces the
following excerpts from the ’107 provisional:
All Corporate parties are able to distinguish between the
effectiveness of service providers through a rating system/
listserv/reviews and other methods that may be written by those
communicating with all corporate preferred providers, OHR
providers, internal corporate employees, external community
agencies and anyone within the system. . . .
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This is possible through the communication tracking system.
For example, through this system, all timing of emails and
responses are able to be tracked.
They [corporations] are able to also to moniter [sic] and
TRACK the TIME at which communication occurs between
all parties. Thus, they know when service providers respond
to email and other communication that goes out between
employees ...So they can track their performance.
VENDOR PERFORMANCE MEASUREMENT
STANDARDS A tracking & monitoring system that allows
the corporation to view (monitor and track) how/when the
vendor responds, interacts, communicates with the employee.
Sur-reply 9 (quoting Ex. 1002, 37–38); see Resp. 31–32.
In addition, Patent Owner contends that the ’107 provisional describes
“an embodiment in which a rating system is provided for ‘tracking and
monitoring performance’” that addresses the problem that “[c]orporations
are not able to currently track and monitor the performance of their
outsourced service providers.” Sur-reply 10 (quoting Ex. 1002, 37). Patent
Owner contends that a communication tracking system in that embodiment
tracks the “timing of emails and responses.” Id. at 10–11 (quoting Ex. 1002,
37). Patent Owner then asserts that “[a]s ‘timing of emails and responses’
are tracked, it must follow that the rating system updates a rating of a service
provider after each instance in which a service provider communicates with
a user.” Id. at 11.
2. ANALYSIS FOR ENTITLEMENT TO THE BENEFIT
OF THE ’107 PROVISIONAL’S FILING DATE
Patent claims are entitled to the benefit of an earlier application’s
filing date only if the earlier application’s disclosure supports the claims as
required by § 112 ¶ 1. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
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1299, 1306 (Fed. Cir. 2008); see 35 U.S.C. § 120. That principle applies to
a provisional application. Dynamic Drinkware, 800 F.3d at 1381–82.
Among other things, § 112 ¶ 1 requires that the specification “contain
a written description of the invention.” 35 U.S.C. § 112 ¶ 1. The written-
description requirement serves to “clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991)); see Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016).
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351; Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275,
1296 (Fed. Cir. 2017). The “test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art.” Ariad, 598 F.3d at 1351. While the written-description
requirement “does not demand any particular form of disclosure” or “that the
specification recite the claimed invention in haec verba, a description that
merely renders the invention obvious does not satisfy the requirement.” Id.
at 1352. The analysis for disclosure sufficiency may consider “such
descriptive means as words, structures, figures, diagrams, formulas, etc.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
For the reasons explained below, we agree with Patent Owner that the
’107 provisional supports the “displaying based on ratings” limitation in
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claims 1 and 6 but disagree that it supports the “updating” limitation in
claims 1 and 6.
For the “displaying based on ratings” limitation, the ’107 provisional
describes an embodiment similar to Walker’s “customer satisfaction”
embodiment. In our Institution Decision, we relied on Walker’s “customer
satisfaction” embodiment for teaching the “displaying based on ratings”
limitation. See Inst. Dec. 45–47.
Specifically, Walker’s “customer satisfaction” embodiment employs
feedback, e.g., from user complaints and peer reviews, to rate expert answers
as satisfactory or unsatisfactory. Ex. 1011, 39:40–40:11, Fig. 34; see id.
at 6:49–50, 21:52–59; Ex. 1004 ¶ 178. Negative ratings “may result in the
expulsion or temporary suspension of the expert” or “in a lowering of” the
expert’s qualification level. Ex. 1011, 40:13–15; see Ex. 1004 ¶ 178. As we
noted in our Institution Decision, “Petitioner contends, and we agree, that
expelling or temporarily suspending an expert for poor quality according to
Walker’s ‘customer satisfaction’ embodiment teaches ‘utilizing ratings to
impact how (or whether)’ experts or participants ‘are presented to users.’”
Inst. Dec. 46 (quoting Pet. 35).
Similar to Walker’s “customer satisfaction” embodiment, the
’107 provisional describes an embodiment permitting corporate employees
to rate corporate service providers. Ex. 1002, 8, 22, 37–40, 44–45. The
provisional explains that “the employee will be able to read reviews from
other employees and rate his own experience with service providers.” Id.
at 22. In addition, the provisional discloses displaying service-provider
ratings using a “star” rating scale, e.g., ranging “from 5 stars = excellent to
1 star = poor.” Id. at 39–40, 44–45. The “star” rating scale “is based on”
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averages from employee reviews. Id. at 40. The provisional also discloses
deleting service-provider information from a database “upon receipt of poor
ratings.” Id. at 38. When that embodiment deletes service-provider
information for poorly performing service providers and later displays
ratings for properly performing service providers, that embodiment displays
participant information “based at least in part on” participant ratings
according to the “displaying based on ratings” limitation.
For the “updating” limitation, the ’107 provisional discloses tracking
service-provider response times. Ex. 1002, 37–38; see id. at 91. For
example, the provisional explains that the “system records the ‘TIME’ that
messages are sent by both the sender and the recipient” and that corporations
can “review at what time the employee sent his request and at what time the
service provider or staff member responded.” Id. at 37; see id. at 91. The
provisional also explains that corporations can “moniter [sic] and TRACK
the TIME at which communication occurs between all parties” and “know
when service providers respond to email and other communication” so “they
can track their performance.” Id. at 38.
Although the ’107 provisional discloses rating service providers and
tracking service-provider response times, it does not disclose updating
service-provider ratings based on service-provider response times. E.g.,
Ex. 1002, 8, 22, 37–40, 44–45, 91; see Ex. 1014 ¶¶ 16–21. The provisional
does not connect the concept of tracking service-provider response times to
the concept of rating service providers in a way that shows the inventor had
possession of the “updating” limitation. E.g., Ex. 1002, 8, 21–22, 37–41,
44–45, 91. According to the provisional, updated service-provider ratings
result from employee reviews, not service-provider response times, since the
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“star” rating scale “is based on” averages from employee reviews. Id.
at 40–41, 44 (“Average Rating: 4.2”), 45 (“Average Rating: 1.0”); see id. at
21–22, 37–39. For example, the provisional explains that an “employee has
the ability to post a review from two locations in the Service Provider area.”
Id. at 41. The provisional does not explain how the system uses service-
provider response times. E.g., id. at 8, 21–22, 37–41, 44–45, 91. For these
reasons, the provisional does not support the “updating” limitation as
required by § 112 ¶ 1.
Further, we disagree with Patent Owner’s assertion that “[a]s ‘timing
of emails and responses’ are tracked, it must follow that the rating system
updates a rating of a service provider after each instance in which a service
provider communicates with a user.” See Sur-reply 11. In essence, Patent
Owner argues that the ’107 provisional renders the “updating” limitation
obvious. But “a description that merely renders the invention obvious does
not satisfy” the written-description requirement. Ariad, 598 F.3d at 1352.
Because the ’107 provisional does not support claims 1 and 6 as
required by § 112 ¶ 1, claims 1 and 6 are not entitled to the benefit of the
provisional’s filing date. See Ex. 1014 ¶¶ 16–21. Further, the dependent
claims incorporate all limitations in their respective independent claims.
35 U.S.C. § 112 ¶ 4. Because the dependent claims incorporate all
limitations in their respective independent claims, they too are not entitled
to the benefit of the provisional’s filing date.
In addition, the analysis for entitlement to priority proceeds on a
claim-by-claim basis. See Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d
710, 718 (Fed. Cir. 2008); Waldemar Link, GmbH v. Osteonics Corp.,
32 F.3d 556, 558 (Fed. Cir. 1994). As Petitioner contends, Patent Owner
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identifies “no evidence regarding whether the dependent claims are entitled
to the benefit of” the provisional’s filing date. Reply 9 (emphasis omitted);
see Resp. 21–32; Sur-reply 5–13.
3. ANALYSIS FOR REDUCTION TO PRACTICE
A patent owner may antedate a reference by proving an earlier
reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GmbH,
237 F.3d 1359, 1365 (Fed. Cir. 2001); see 37 C.F.R. § 1.131(b). Filing a
patent application serves as a constructive reduction to practice. Hyatt v.
Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998). For an actual reduction to
practice, a patent owner must show three things: (1) construction of an
embodiment or performance of a process meeting all limitations in the
challenged claims; (2) “that the invention would work for its intended
purpose”; and (3) “sufficient evidence to corroborate inventor testimony
regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1169 (Fed. Cir. 2006). Except for “very simple inventions,” demonstrating
that the invention would work for its intended purpose requires testing.
Yorkey v. Diab, 601 F.3d 1279, 1286 (Fed. Cir. 2010). “An inventor cannot
rely on uncorroborated testimony to establish a prior invention date.” In re
NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011).
Patent Owner acknowledges the requirements for an actual reduction
to practice. Resp. 21 & n.43 (citing Green Cross Corp. v. Shire Human
Genetic Therapies, Inc., IPR2016-00258, Paper 89 at 11 (PTAB Mar. 22,
2017), citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir.
2006)).
We agree with Petitioner that the evidence does not establish an actual
reduction to practice for the subject matter of a challenged claim before
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Collins’s August 15, 2003, filing date. See Reply 12–13. The record lacks
evidence concerning construction of an embodiment meeting all limitations
in a challenged claim. See Exs. 2001–2034, 2039–2040. For instance,
Patent Owner identifies no evidence that any software accomplished any
of the steps recited in claims 1 and 6. See Resp. 20–32; Sur-reply 1–13;
Ex. 2026 ¶¶ 2–6. Further, the record lacks evidence showing that the
invention would work for its intended purpose. See Exs. 2001–2034,
2039–2040. For instance, Patent Owner identifies no evidence that any
testing occurred. See Resp. 20–32; Sur-reply 1–13; Ex. 2026 ¶¶ 2–6.
The ’107 provisional actually indicates that an embodiment meeting
all limitations in a challenged claim was not constructed before the
provisional’s September 3, 2003, filing date. See Ex. 1002, 8, 20, 29, 38,
40–41, 47, 53, 67, 92, 98–99, 106, 110, 129. As an example, under the
heading “Proposed Production Environment,” the provisional explains that
the system “will be developed” based on a certain application server and that
the “team plans to use the best technology at the time depending on what is
available.” Id. at 8; see id. at 129. As another example, the provisional
repeatedly notes that its disclosure exemplifies “what might be used,” “how
it might look,” and what “would go into these kinds of sections” to
implement various features. Id. at 40, 47, 53, 67, 92, 106, 110; see id. at
38, 41. As yet another example, the provisional describes various “possible”
webpages when explaining how something “could work.” Id. at 99; see id.
at 98.
As noted above, Patent Owner cites Spero and Haskell to support the
assertion that “a draft patent application is effective as of the completion
date of the as-filed version of the patent application if the relied upon
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disclosures are the same.” See Resp. 22 & n.45; Sur-reply 2 & n.2. Neither
Spero nor Haskell supports Patent Owner’s position because the facts in
those cases differ in an important way from the facts here. In those cases,
the record contained two versions of a patent application: an unfiled version
and a filed version.
Specifically, Spero involved an interference with a single count
covering a particular progesterone compound. Spero, 377 F.2d at 654. The
senior party Ringold argued that a parent application of the junior party
Spero did not support the count. Id. at 654–55. The parent application did
not expressly disclose the progesterone compound. Id. at 655. The Board
found that certain examples in the parent application necessarily produced
the progesterone compound and, therefore, that the parent application
inherently disclosed the progesterone compound. Id. at 656–57. Based on
those findings, the Board determined that the parent application constituted
a constructive reduction to practice. Id. at 655, 659. The court agreed with
that determination. Id. at 659.
To show conception before the parent application’s filing date, Spero
submitted as an exhibit a “working draft” of the parent application prepared
by a patent agent that was “identical in all pertinent respects” to the parent
application. Spero, 377 F.2d at 654. In addition, Spero introduced
testimony establishing the date the pertinent portions of the “working draft”
were prepared. Id. at 659. The Board concluded that the “working draft”
could not show conception because it did not “disclose the invention.” Id.
The court disagreed with that conclusion. Id. at 659–60. The court
explained that the Board “erred in concluding, as a matter of law, that
identical disclosures may be sufficient to establish constructive reduction to
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practice of the subject matter of a count in interference when present in a
filed application yet insufficient to establish conception when present in a
working draft of that application.” Id. at 656. Because of that error, the
court remanded the case to the Board to make findings concerning
conception and diligence. Id. at 660.
Like Spero, Haskell involved an interference where the junior party
relied on an unfiled draft application for conception and a filed application
“with only minor changes” for a constructive reduction to practice. Haskell,
671 F.2d at 1365. The court said that “[t]his position is directly supported
by Spero.” Id.
Here, assuming that the ’107 provisional supported the challenged
claims (although it does not), the provisional would correspond to the parent
application in Spero and the filed application “with only minor changes” in
Haskell. In contrast to the party attempting to antedate in Spero and Haskell,
Patent Owner submits no exhibit comprising an unfiled draft application.
See Exs. 2001–2034, 2039–2040. For example, Patent Owner provides
nothing comparable to the “working draft” in Spero. The absence of an
unfiled draft application distinguishes the facts here from the facts in Spero
and Haskell. Patent Owner disregards that important difference. See
Resp. 22–23; Sur-reply 2.
The facts here instead parallel the facts in NTP. There, to establish
an actual reduction to practice, NTP submitted as an exhibit “Telefind
Revision 2” dated after the critical date and did not submit “Telefind
Revision 0” dated before the critical date. NTP, 654 F.3d at 1291. To
overcome that deficiency, NTP argued that “Revision 0 and Revision 2 have
all the same key components” and that “what is disclosed in Revision 2
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should be treated as present in Revision 0.” Id. To substantiate that
argument, NTP provided testimony from each of the inventors. Id. The
court criticized NTP’s approach, saying, “The problem with NTP’s
argument is that it is circular. The [inventors] seek to corroborate their
testimony with the Telefind document, but, at the same time, attempt to
corroborate the date of the document with their testimony.” Id. at 1291–92.
Similar to NTP, Patent Owner seeks to corroborate the inventor’s
testimony with various dates contained in the ’107 provisional and, at the
same time, seeks to corroborate those dates with the inventor’s testimony.
See Ex. 1002; Ex. 2026 ¶¶ 1–5; Tr. 21:16–22:16, 25:13–29:25, 31:14–25.
For the reasons discussed above, the evidence does not establish an
actual reduction to practice for the subject matter of a challenged claim
before Collins’s August 15, 2003, filing date.
4. ANALYSIS FOR CONCEPTION
A patent owner may also antedate a reference by “proving earlier
conception and reasonable diligence in reducing to practice.” Perfect
Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007
(Fed. Cir. 2016); see 37 C.F.R. § 1.131(b). “Conception exists when a
definite and permanent idea of an operative invention, including every
feature of the subject matter sought to be patented, is known.” Sewall v.
Walters, 21 F.3d 411, 415 (Fed. Cir. 1994); see Gunter v. Stream, 573 F.2d
77, 80 (CCPA 1978). “The conception analysis necessarily turns on the
inventor’s ability to describe [the] invention with particularity.” Burroughs
Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
Until the inventor can do so, the inventor “cannot prove possession of the
complete mental picture of the invention.” Id.
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An inventor’s testimony does not alone suffice to prove conception.
Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). Instead, “when a
party seeks to prove conception through an inventor’s testimony the party
must proffer evidence, ‘in addition to [the inventor’s] own statements and
documents,’ corroborating the inventor’s testimony.” Apator Miitors ApS v.
Kamstrup A/S, 887 F.3d 1293, 1295 (Fed. Cir. 2018) (alteration by the court)
(quoting Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996)).
Hence, a party must prove conception with “corroborating evidence which
shows that the inventor disclosed to others [a] ‘completed thought expressed
in such clear terms as to enable those skilled in the art’ to make the
invention.” Coleman v. Dines, 754 F.2d 353 (Fed. Cir. 1985) (quoting Field
v. Knowles, 183 F.2d 593, 600–01 (CCPA 1950)).
We agree with Petitioner that the evidence does not establish
conception of the subject matter of a challenged claim before Collins’s
August 15, 2003, filing date. See Reply 10–11. First, for the reasons
discussed above, the ’107 provisional does not show that the inventor had
possession of the claimed subject matter as of the provisional’s September 3,
2003, filing date. See supra § III.D.2. In particular, the provisional does not
show that the inventor had possession of the “updating” limitation in
claims 1 and 6. See id. Thus, the inventor did not have a “complete mental
picture” of the subject matter of claims 1 and 6 or any dependent claim.
Second, assuming that the ’107 provisional did show that the inventor
had possession of the claimed subject matter as of the provisional’s filing
date, Patent Owner does not “proffer evidence, ‘in addition to [the
inventor’s] own statements and documents,’ corroborating the inventor’s
testimony.” See Resp. 20–32; Sur-reply 1–13; Exs. 2001–2034, 2039–2040;
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Apator Miitors, 887 F.3d at 1295. As testimonial evidence, Patent Owner
provides only the inventor’s own statements. See Ex. 2026. As
documentary evidence, the ’107 provisional comprises the inventor’s own
documents. See Ex. 1002. The absence of corroborating evidence dooms
Patent Owner’s attempt to antedate Collins by proving earlier conception.
See Apator Miitors, 887 F.3d at 1295–96.
For the reasons discussed above, the evidence does not establish
conception of the subject matter of a challenged claim before Collins’s
August 15, 2003, filing date.
5. ANALYSIS FOR DILIGENCE
“The diligence requirement implements the principle that, to antedate
a reference,” an inventor “must not only have conceived the invention before
the reference date, but must have reasonably continued activity to reduce the
invention to practice.” ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1369
(Fed. Cir. 2019). “A patent owner need not prove the inventor continuously
exercised reasonable diligence throughout the critical period; it must show
there was reasonably continuous diligence.” Perfect Surgical, 841 F.3d
at 1009 (emphasis by the court). An inventor’s testimony does not alone
suffice to prove diligence. Id. at 1007. A “variety of activities” may
corroborate an inventor’s testimony about diligence, and any corroborating
evidence is considered “as a whole.” Id. at 1007–08.
Here, Patent Owner proffers only inventor testimony to prove
diligence. See Ex. 2026 ¶¶ 3–5. Ms. White stated, “I completed a draft of
the Priority Application on August 11, 2003. . . . After I completed the draft
patent application for the Priority Application, I added a few pages that were
additional examples of concepts that are detailed in the Priority
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Application,” i.e., pages dated August 13 or 14, 2003. Id. ¶¶ 3–4.
Ms. White also stated, “I recall that I mailed or couriered the Priority
Application to the U.S. Patent Office on August 14 or 15, 2003. I recall this
because I wanted to file the Priority Application as soon as possible after I
felt the Priority Application was complete.” Id. ¶ 5.
The record lacks evidence corroborating that testimony. See
Exs. 2001–2034, 2039–2040. For instance, Patent Owner identifies no
evidence from a courier service, such as an invoice, shipping documentation,
or tracking documentation. See Resp. 20–32; Sur-reply 1–13; Ex. 2026
¶¶ 2–6. Further, Patent Owner identifies no evidence from a credit card or
debit card, such as a monthly statement showing a shipping charge. See
Resp. 20–32; Sur-reply 1–13; Ex. 2026 ¶¶ 2–6. The absence of
corroborating evidence dooms Patent Owner’s attempt to antedate Collins by
proving “reasonable diligence in reducing to practice.” See Perfect Surgical,
841 F.3d at 1007.
For the reasons discussed above, the evidence does not establish
reasonably continuous diligence in reducing to practice the subject matter
of a challenged claim.
6. SUMMARY
For the reasons discussed above, the ’107 provisional does not show
that the inventor had possession of the subject matter of claims 1–11 as
of the provisional’s September 3, 2003, filing date. See supra § III.D.2.
Further, Patent Owner proffers insufficient evidence of an actual reduction
to practice before Collins’s August 15, 2003, filing date and insufficient
evidence “proving earlier conception and reasonable diligence in reducing to
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practice.” See supra §§ III.D.3–III.D.5; Perfect Surgical, 841 F.3d at 1007.
Consequently, Collins qualifies as prior art for claims 1–11 under § 102(e).
E. Claims 1–3, 5–8, 10, and 11:
Obviousness over Collins and Walker
Petitioner challenges claims 1–3, 5–8, 10, and 11 under § 103(a) as
obvious over Collins and Walker. See Pet. 4–5, 14–55. Below, we provide
overviews of Collins and Walker, and then we consider the obviousness
issues raised by the parties.
1. OVERVIEW OF COLLINS (EX. 1010)
Collins discloses a computer-based system for matching service
consumers and service providers that includes consumer-centric features.
Ex. 1010 ¶¶ 12–16, code (57). The matching system “is consumer-centric
because a matching is performed between consumer needs and local vendor
capabilities and the results are presented back to the consumer so that the
choice of which vendors to be contacted is left to the consumer.” Id. ¶ 13,
code (57). The system “provides an additional convenience benefit” to
a consumer because it includes “mechanisms for immediately and
automatically contacting” the selected vendors on the consumer’s behalf.
Id. ¶¶ 13, 15. Also, the system allows “consumers to rate the quality of
services” provided by vendors and “may automatically collect data on
vendor response time.” Id. ¶ 16.
Collins’s Figure 8b depicts an interface that permits a consumer to
find a vendor, e.g., a plumber, by inputting details about the consumer’s
service request, e.g., date, work description, and geographic location.
Ex. 1010 ¶¶ 30, 85–86, 206–213, 220–221, 225, 227–234, Fig. 8b.
Figure 8b is reproduced below:
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Figure 8b illustrates an interface “used by the consumer to find a service
provider.” Id. ¶ 30, Fig. 8b; see id. ¶¶ 221, 225, 227.
After a consumer inputs details about the consumer’s service request,
the system “display[s] to the consumer a list of all vendors that are able and
available to meet the consumer’s request.” Ex. 1010 ¶ 87. After viewing
the matched vendors, the consumer “can choose to view further information
on any vendor, including information such as years of experience in the
service category, fees or rates, and insurance coverage.” Id.
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“When the consumer has made a decision about which vendor or
vendors to contact,” the consumer “indicate[s] this by selecting them from
the list and submitting this selection” to the system. Id. ¶ 88; see id.
¶¶ 257–258, 263–268, Figs. 12–15. The system “then contacts the vendors”
and provides details concerning the consumer’s request but not the
consumer’s contact information. Id. ¶ 89; see id. ¶¶ 13, 15, 131, 250,
257–258, 263–268, Figs. 12–15. The details concerning the consumer’s
request include “when and where the service must be performed and any
other consumer requirements.” Id. ¶ 89; see id. ¶¶ 131, 249–250, 258. “The
vendor is given an option to accept or reject each lead, and may be charged
a fee if they accept.” Id. ¶ 89; see id. ¶¶ 15, 131, 250, 259, 262, code (57).
2. OVERVIEW OF WALKER (EX. 1011)
Walker discloses a computer-based system for matching service
consumers and service providers, in particular, experts in various subject
areas who provide expert advice. Ex. 1011, 6:56–10:43, 17:26–28, code
(57). Among other things, the matching system acts as an intermediary and
manages communications between experts and users seeking expert advice.
Id. at code (57); see id. at 9:66–10:5, 11:1–6.
Walker explains that experts and users may have concerns about
revealing information about themselves. See, e.g., Ex. 1011, 4:52–67,
10:8–19. To address those concerns, the matching system may “provide full
or partial anonymity” to experts and users. Id. at 9:67–10:1. For example,
the system may offer “no information about the expert” or represent “only
that he is a member of a specific professional organization.” Id. at 10:1–5.
The system may conceal information “using very simple or very complex
techniques depending on the level of security required.” Id. at 10:5–7.
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Walker describes the “ability to provide anonymity” to experts and users as
“another advantage of the present invention.” Id. at 9:66–67.
Walker’s Figure 1 (reproduced below) shows a computer-based
matching system. Ex. 1011, 11:59–60, 13:7–29, Fig. 1.

Figure 1 illustrates a system including central controller 200, expert
interfaces 400, and user interface 500 connected through network 110.
Id. at 13:10–16.
Walker describes several embodiments. See, e.g., Ex. 1011,
13:7–18:30, 24:67–29:13, 33:21–36:57, 39:37–40:46. In one embodiment,
a user “establishes an online connection” to a central controller. Id.
at 25:20–25, Fig. 15. Then, a user interface displays “a selection of
predetermined subject areas” or categories, such as finance, law, and
medicine. Id. at 25:26–30. Next, the user selects the following items:
(1) a category, e.g., medicine; (2) a subcategory, e.g., pediatrics; and
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(3) a qualification level, e.g., Level 1, Level 2, or Level 3. Id. at 25:31–37,
Fig. 15. “Each level corresponds to predetermined groupings of expert
qualifications.” Id. at 25:37–40. After the user selects a category,
subcategory, and qualification level, a “list of expert IDs [expert identifiers]
is displayed along with an option to see specific expert qualifications.” Id.
at 25:40–43. Further, “ratings for that expert may be made available.” Id.
at 25:43–44. But “the user may be prevented from seeing [expert] contact
information” to prevent the user “from contacting experts outside the system
prior to a deal being reached” and “to ensure that payment is received for
bringing the two parties together.” Id. at 25:44–47, 36:51–54.
Based on the displayed information, the user selects one or more
experts for the system to contact. Ex. 1011, 25:53–55, Fig. 15. Then, the
user creates a request, such as a question “requir[ing] human judgement,
evaluation, analysis, etc.,” or multiple questions “bundled into one request.”
Id. at 16:62–17:1, 25:55–61, Fig. 6. Next, the user includes the user’s ID
and one or more expert IDs in the request. Id. at 17:3–4, 25:61–63,
Figs. 6, 16. After the user completes the request, the user transmits it to the
central controller “for distribution to the selected experts.” Id. at 25:65–66,
26:6–7, Fig. 16.
After receiving a user’s request, an expert “can either accept or reject”
the request. Ex. 1011, 25:67–26:8, Fig. 16. If the expert rejects the request,
“the user is notified and the transaction stops.” Id. at 26:8–10, Fig. 16. But
if the expert accepts the request, “the expert sends confirmation to [the]
central controller” and “begins to answer” the request. Id. at 26:10–13,
Fig. 16.
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Walker describes a “customer satisfaction” embodiment. Ex. 1011,
39:37–40:46, Figs. 34–35. That embodiment employs feedback, e.g., from
user complaints and peer reviews, to rate expert answers as satisfactory or
unsatisfactory. Id. at 39:40–40:11, Fig. 34; see id. at 6:49–50, 21:52–59.
For example, a “randomly selected reviewing expert of comparable expert
qualifications” evaluates the acceptability of an expert answer. Id. at
39:65–40:5, Fig. 34. A positive evaluation causes the central controller to
update an expert database to indicate satisfactory completion of the quality
check, while a negative evaluation causes the central controller to update the
expert database to indicate unsatisfactory completion of the quality check.
Id. at 40:4–11, Fig. 34. After a negative evaluation, “a notice is transmitted
to the expert” with a reprimand “for poor quality.” Id. at 40:11–13, Fig. 34;
see id. at 21:59–62. “A given number of reprimands may result in the
expulsion or temporary suspension of the expert” or “in a lowering of” the
expert’s qualification level. Id. at 40:13–15. Moreover, the matching
system makes expert ratings available to users to “provid[e] another
parameter for the selection process.” Id. at 21:52–59.
According to Walker, the matching system provides the following
advantages: (1) improves an expert’s “ability to efficiently provide expert
services”; (2) improves a user’s “ability to find experts capable and willing
to furnish such services at a mutually agreed price and terms”; (3) improves
privacy by “provid[ing] full or partial anonymity” to experts and users; and
(4) “makes the finding, selling and transferring of expert advice fast, simple,
efficient and market competitive.” Ex. 1011, 6:64–7:1, 9:66–10:7, 11:7–10.
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3. INDEPENDENT CLAIM 1
(a) Preamble
Claim 1’s preamble recites “[a] method for establishing a social
network, the method being implemented on a network computer system.”
Ex. 1001, 17:15–16.
Petitioner contends that Collins teaches claim 1’s preamble because
“Collins utilizes networked computers and applications to facilitate users
interacting with other users with similar interests or needs.” Pet. 25–26
(citing Ex. 1010 ¶¶ 13–14, 86–89, 121, code (57), Fig. 1); see Ex. 1004
¶ 167. To support Petitioner, Dr. Goldberg testified that Collins discloses
“a networked computer system” with “networked computers and
applications to facilitate users interacting with other users with similar
interests or needs.” Ex. 1004 ¶ 167 (citing Ex. 1010 ¶¶ 1, 13–14, 86–89,
92–93, 121, code (57), claims 1 and 11, Figs. 1–3). Dr. Goldberg also
testified that “Collins teaches a social network.” Id.
Patent Owner does not make any arguments specific to claim 1’s
preamble. See, e.g., Resp. 9–18, 32–33; Sur-reply 13–16.
Generally, a preamble does not limit a claim. Allen Eng’g Corp. v.
Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need
not decide whether claim 1’s preamble limits the claim because we agree
with Petitioner that Collins teaches the preamble. See Pet. 25–26; Ex. 1004
¶ 167; Ex. 1010 ¶¶ 19–20, 86–90, claim 1, Figs. 2–3.
For instance, Collins’s Figures 2 and 3 illustrate a networked
computer system. Ex. 1010 ¶¶ 19–20, Figs. 2–3; see id. ¶¶ 54, 58, 60,
91–101, 117, 121–124, 177, 179. Moreover, Collins’s claim 1 recites
“[a] computer-implemented method for matching consumers and service
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providers for the provision of services by the service providers to the
consumers.” Id. at 16 (claim 1). The consumers and service providers
interact via a networked computer system. See Ex. 1004 ¶ 167; Ex. 1010
¶¶ 86–90, 97, 99, 101, Figs. 2–3.
(b) Maintaining a List of Participants
Claim 1 recites “maintaining a list comprising a plurality of
participants, wherein each participant in the plurality of participants
corresponds to one or more individuals, wherein the list also includes
information associated with at least one of each participant or the one or
more individuals that correspond to each participant.” Ex. 1001, 17:18–23.
Petitioner contends that Collins teaches this limitation for three related
reasons. Pet. 26–27; see Ex. 1004 ¶ 168. First, Collins’s system “includes
software that captures the capabilities of the sellers of local services in a
community and makes them publicly accessible.” Pet. 26 (quoting Ex. 1010
¶ 14). Second, Collins’s system “maintains the profiles of the service
providers on a database,” e.g., system database 306a. Id. at 26 (citing
Ex. 1010 ¶ 117); see Ex. 1004 ¶¶ 92, 168. Third, after a consumer submits a
service request to Collins’s system, it “display[s] to the consumer a list of all
vendors that are able and available to meet the consumer’s request.”
Pet. 26–27 (quoting Ex. 1010 ¶ 87); see Ex. 1004 ¶¶ 94–95. Petitioner
contends that the displayed information includes “the vendor’s name (or
company name) and location, and a rating from other system users,” i.e.,
other consumers. Pet. 26–27 (quoting Ex. 1010 ¶ 87); see Ex. 1004 ¶ 95.
Patent Owner does not make any arguments specific to claim 1’s
“maintaining a list” limitation. See, e.g., Resp. 9–18, 32–33; Sur-reply
13–16.
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We agree with Petitioner that Collins teaches this limitation. See
Pet. 26–27; Ex. 1004 ¶ 168; Ex. 1010 ¶¶ 14, 109, 117, 123–124.
Specifically, Collins’s system “captures the capabilities of the sellers of local
services” in profiles. Ex. 1010 ¶¶ 14, 109, 123; see Ex. 1004 ¶ 92. The
profiles include information about the service providers, i.e., attributes such
as “skills, experience, qualifications, geography or the area of service,
payment or settlement methods, references and other service specific and
self authored attributes.” Ex. 1010 ¶ 123; see id. ¶¶ 109, 115, 117, 127–129,
167–174; Ex. 1004 ¶¶ 92, 168. Collins’s system maintains the service-
provider profiles in a database, e.g., system database 306a. Ex. 1010 ¶¶ 117,
123–124, 136, 221, 225, 227, 242, 258; see Ex. 1004 ¶¶ 92, 168. After a
consumer submits a service request to Collins’s system, it “display[s] to
the consumer a list of all vendors that are able and available to meet the
consumer’s request.” Ex. 1010 ¶¶ 86–87; see Ex. 1004 ¶¶ 94–95. The
displayed information includes “the vendor’s name (or company name) and
location, and a rating from other system users,” i.e., other consumers.
Ex. 1010 ¶ 87; see Ex. 1004 ¶ 95. Hence, Collins’s system maintains a list
of service providers, and the list includes information associated with each
service provider, e.g., name, location, and rating.
Accordingly, we agree with Petitioner that Collins teaches claim 1’s
“maintaining a list” limitation.
(c) Presenting an Interface from Which a User Makes a Selection
Claim 1 recites “presenting a user with an interface from which
the user makes a selection of a category from a plurality of categories.”
Ex. 1001, 17:24–26.
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Petitioner contends that Collins teaches this limitation because
“Collins describes a user interface where a user is able to select from
multiple ‘categories’ corresponding to a service” that the user seeks. Pet. 27
(citing Ex. 1010 ¶ 86); see Ex. 1004 ¶ 171. To support that contention,
Petitioner identifies Collins’s Figure 8b (reproduced below) as illustrating
an interface from which a user makes category selection (Pet. 27–28):

Figure 8b illustrates an interface “used by the consumer to find a service
provider.” Ex. 1010 ¶ 30, Fig. 8b; see id. ¶¶ 221, 225, 227.
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Patent Owner does not make any arguments specific to claim 1’s
“presenting an interface” limitation. See, e.g., Resp. 9–18, 32–33; Sur-reply
13–16.
We agree with Petitioner that Collins teaches this limitation. See
Pet. 27–28; Ex. 1004 ¶ 171; Ex. 1010 ¶¶ 30, 86, 228–234, Fig. 8b. Collins’s
Figure 8b illustrates an interface from which the consumer makes a selection
of a category from a plurality of categories. Ex. 1010 ¶ 30, Fig. 8b; see id.
¶¶ 221, 225, 227; Ex. 1004 ¶¶ 93–94. That interface permits the consumer
to find a service provider, e.g., a plumber, by inputting details about the
consumer’s service request, e.g., date, work description, and geographic
location. Ex. 1010 ¶¶ 85–86, 206–213, 220–221, 225, 227–234, Fig. 8b; see
Ex. 1004 ¶¶ 94–95, 171. To find a plumber for example, the consumer
makes a selection from among the following work-description categories:
“drain & sewer cleaning; fixture installation, fixture repair; new/replacement
water heater; septic line installation, maintenance and repair; water heater
repair and maintenance; utility, line and pipe location; wells and water
treatment; and others.” Ex. 1010 ¶ 231, Fig. 8b.
Accordingly, we agree with Petitioner that Collins teaches claim 1’s
“presenting an interface” limitation.
(d) Displaying Some Information While Shielding Contact Information
Claim 1 recites “in response to receiving the selection of the category
by the user, displaying, for the user, some of the information associated with
each of multiple participants from the plurality of participants which match
the selection of the category by the user, while shielding contact information
associated with each of the multiple participants.” Ex. 1001, 17:27–33.
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Petitioner contends that Collins alone teaches this limitation and,
alternatively, that “Collins in view of Walker teaches” this limitation.
Pet. 29–33; see Ex. 1004 ¶¶ 172–175. For Collins alone, Petitioner contends
that after a consumer selects a category using Collins’s system, e.g., by
inputting details about the consumer’s service request, and submits the
service request to the system, it “displays a list of participants that match”
the selected category. Pet. 29 (citing Ex. 1010 ¶¶ 32, 86–87, 221, 249,
Fig. 8d); see Ex. 1004 ¶¶ 99, 172. To support that contention, Petitioner
identifies Collins’s Figure 8d (reproduced below) as displaying information
associated with matched participants (Pet. 29–30):
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Figure 8d illustrates an interface “after a search of the available vendors”
with information about matched vendors “displayed to the consumer.”
Ex. 1010 ¶¶ 32, 86–87, 221, 223, 225, 227, 246–247, 249, Fig. 8d. That
interface displays the following information about each matched vendor:
name, location (city and state), years of experience, average rating, and
“Contact!” Id. ¶ 87, Fig. 8d; see Ex. 1004 ¶¶ 99, 172–173.
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Petitioner asserts that Collins shields vendor contact information from
consumers by displaying “Contact!” instead of contact information. Pet. 30;
see Ex. 1004 ¶ 173. Petitioner also asserts that an ordinarily skilled artisan
“would have understood that the system of Collins, e.g., as illustrated above
[in Figure 8d], includes an embodiment that displays a list of multiple
participants, while shielding the contact information of the participants.”
Pet. 31; see Ex. 1004 ¶ 173.
Alternatively, Petitioner contends that “[t]o the extent that it is argued
that Collins does not explicitly teach displaying participant information
while shielding contact information associated with each of the multiple
participants,” an ordinarily skilled artisan “would have found it obvious”
to shield contact information based on Walker’s teachings. Pet. 31–32
(emphasis by Petitioner); see Ex. 1004 ¶¶ 174–175. To support that
contention, Petitioner quotes Walker’s explanation that a matching system
“may want to intentionally withhold” information about “one or both parties
to a potential transaction in order to assure” payment for bringing the two
parties together. Pet. 32 (quoting Ex. 1011, 10:20–23); see Ex. 1004 ¶ 175.
Further, Petitioner asserts that an ordinarily skilled artisan “would have been
motivated to implement the concepts described in Walker into the system of
Collins at least” to (1) provide “anonymity for the participant” and (2) retain
“control of the contact information for the matching system.” Pet. 31–32;
see Ex. 1004 ¶¶ 163–164, 175.
To support Petitioner, Dr. Goldberg testified that Walker would have
“motivat[ed] the use of anonymous communications between consumers and
service providers” in matching systems. Ex. 1004 ¶ 174 (citing Ex. 1011,
1:32–48). Dr. Goldberg also testified that Walker teaches shielding contact
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information to prevent “bypassing the matching system to avoid fees
charged by the matching system” and “to preserve the privacy of the
participants.” Id. ¶ 175 (citing Ex. 1011, 6:15–29, 7:62–8:8, 10:20–25,
25:44–52); see id. ¶¶ 163–164.
Patent Owner does not make any arguments specific to claim 1’s
“displaying while shielding” limitation. See, e.g., Resp. 9–18, 32–33;
Sur-reply 13–16.
We agree with Petitioner that Collins teaches this limitation. See
Pet. 29–31; Ex. 1004 ¶¶ 172–173; Ex. 1010 ¶¶ 87–89, Fig. 8d. As discussed
above, we construe the term “contact information” to mean “information,
such as an email address, mailing address, or telephone number, that permits
one entity to communicate directly with another entity.” See Inst. Dec.
38–39; supra § III.C.2. In Collins’s system, an interface displays the
following information about each matched vendor: name, location (city and
state), years of experience, average rating, and “Contact!” Ex. 1010 ¶ 87,
Fig. 8d; see Ex. 1004 ¶¶ 99, 172–173. The displayed information does not
permit a consumer to communicate directly with a matched vendor. See
Ex. 1004 ¶ 173. Thus, the displayed information does not include contact
information.
Instead, after viewing the matched vendors, a consumer “can choose
to view further information on any vendor, including information such as
years of experience in the service category, fees or rates, and insurance
coverage.” Ex. 1010 ¶ 87; see Ex. 1004 ¶ 95. “When the consumer has
made a decision about which vendor or vendors to contact,” the consumer
“indicate[s] this by selecting them from the list and submitting this
selection” to the system. Ex. 1010 ¶ 88; see id. ¶¶ 257–258, 263–268,
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Figs. 12–15; Ex. 1004 ¶¶ 96, 173. The system “then contacts the vendors.”
Ex. 1010 ¶ 89; see id. ¶¶ 131, 249–250, 257–258, 263–268, Figs. 12–15;
Ex. 1004 ¶¶ 97, 173.
Hence, Collins’s system (1) shields contact information for matched
vendors from a consumer and (2) serves as an intermediary to contact the
selected vendors on the consumer’s behalf. Accordingly, we agree with
Petitioner that Collins teaches claim 1’s “displaying while shielding”
limitation.
We also agree with Petitioner that an ordinarily skilled artisan “would
have found it obvious” to shield contact information based on Walker’s
teachings. See Pet. 31–32; Ex. 1004 ¶¶ 174–175; Ex. 1011, 6:29–31,
8:47–49, 9:66–10:26, 10:59–61, 11:1–10, 13:54–56, 25:44–47, 31:39–40,
33:21–53, 35:14–18, 36:40–54. Walker discloses a matching system that
permits anonymous communications to improve privacy. Ex. 1011,
6:29–31, 8:47–49, 9:66–10:19, 10:59–61, 11:1–10, 13:54–56, 31:39–40,
33:21–53, 35:14–18, 36:40–50; see Ex. 1004 ¶¶ 101–102, 111, 175. In
addition, Walker discloses withholding contact information to prevent fee
avoidance due to out-of-system communications. Ex. 1011, 10:20–26,
25:44–47, 36:51–54; see Ex. 1004 ¶¶ 111, 163, 175. As Petitioner asserts,
an ordinarily skilled artisan “would have been motivated to implement
the concepts described in Walker into the system of Collins at least” to
(1) provide “anonymity for the participant” and (2) retain “control of the
contact information for the matching system.” See Pet. 31–32; Ex. 1004
¶¶ 163–164, 175.
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(e) Displaying Some Information Based in Part on Participant Ratings
Claim 1 recites “wherein displaying some of the information
associated with each of the multiple participants is based at least in part on
a rating of individual participants in the plurality of participants.” Ex. 1001,
17:34–37.
Petitioner contends that Collins alone teaches this limitation and,
alternatively, that “Collins in view of Walker teaches” this limitation.
Pet. 33–36; see Ex. 1004 ¶¶ 176–179. For Collins alone, Petitioner contends
that Collins discloses a matching system that (1) “allows the consumers to
rate the quality of services” provided by vendors and (2) “compiles the
ratings into meaningful indicators to aid the decision making process.”
Pet. 33 (quoting Ex. 1010 ¶ 16); see Ex. 1004 ¶¶ 98, 177. Further, Petitioner
asserts that after a consumer submits a service request to Collins’s system, it
displays information about matched vendors including “the vendor’s name
(or company name) and location, and a rating from other system users,” i.e.,
other consumers. Pet. 33–34 (quoting Ex. 1010 ¶ 87); see Ex. 1004 ¶¶ 95,
177. Petitioner also asserts that Collins “discloses that a ‘set of documents
that match a certain query’ (i.e., information associated with matched service
providers) is ‘rank ordered and presented to the user.’” Pet. 34 (quoting
Ex. 1010 ¶ 126); see Ex. 1004 ¶ 177.
Alternatively, Petitioner contends that “[t]o the extent that it is argued
that the ratings system along with the filtering/matching system of Collins
does not display information of multiple participants based at least in part
on a rating of individual participants, Walker teaches this aspect.” Pet. 34
(emphasis by Petitioner); see Ex. 1004 ¶ 178. Specifically, Petitioner asserts
that Walker “discloses allowing a user to select a category,” e.g., medicine,
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“a subcategory,” e.g., pediatrics, and “a rating/qualification level” and that
“[o]nce the rating/qualification level has been selected, a listing of expert
IDs is displayed.” Pet. 34 (citing Ex. 1011, 25:35–44); see Ex. 1004 ¶¶ 109,
178. Petitioner also asserts that the displayed expert IDs correspond to
information displayed “based at least in part on a rating” because the user-
selected level “disclosed by Walker is a rating.” Pet. 34 (emphasis by
Petitioner); see Ex. 1004 ¶ 178.
In addition, Petitioner contends that Walker describes a “customer
satisfaction” embodiment that employs feedback, e.g., from user complaints
and peer reviews, to rate expert answers as satisfactory or unsatisfactory.
Pet. 35 (citing Ex. 1011, 39:37–40:15); see Ex. 1004 ¶ 178. Petitioner
asserts that in this embodiment “the system may expel, temporarily suspend,
or lower the rating/qualification level” of a given expert if the “given expert
has a given number of” unsatisfactory answers. Pet. 35; see Ex. 1004 ¶ 178.
Petitioner also asserts that expelling, temporarily suspending, or lowering
the rating/qualification level of the expert for poor quality “would impact the
displaying of participant information because it would either cause some of
the participant information to not be displayed, or to only be displayed based
on a reduced-level rating.” Pet. 35; see Ex. 1004 ¶ 178.
Further, Petitioner asserts that an ordinarily skilled artisan “would
have found it obvious to modify” Collins’s system “in light of the teachings
of Walker.” Pet. 35; see Ex. 1004 ¶ 179. To support that assertion,
Petitioner contends that Collins teaches “that providing vendor ratings to
consumers is important in decision-making” and that Walker teaches
“utilizing ratings to impact how (or whether)” experts or participants “are
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presented to users.” Pet. 35 (citing Ex. 1010 ¶¶ 5, 16; Ex. 1011, 21:52–62,
25:35–44, 40:13–15); see Ex. 1004 ¶ 179.
Patent Owner does not make any arguments specific to claim 1’s
“displaying based on ratings” limitation. See, e.g., Resp. 9–18, 32–33;
Sur-reply 13–16.
We disagree with Petitioner that Collins teaches this limitation.
Petitioner fails to explain how presenting the “rank ordered” search results
to a user relates to displaying participant information “based at least in part
on a rating of individual participants” as required by this limitation. See
Pet. 33–34. Collins indicates that the “rank ordered” search results
correspond to search results sorted based on their relevance to the search
query, i.e., how well the search results “match” the search query. See
Ex. 1010 ¶¶ 125–126. We discern no relation between sorting search results
based on their relevance to the search query and displaying participant
information based on participant ratings. For instance, a search query for
service providers offering a certain service near a geographic location may
return a list of service providers “rank ordered” based on distance from the
geographic location. But the listed service providers may all have lower
ratings than service providers farther from the geographic location.
In addition, Collins distinguishes between Information Retrieval (IR)
and Information Filtering (IF). See Ex. 1010 ¶¶ 121, 125–129; see also id.
¶ 14. Collins describes “rank ordered” search results as a feature of
Information Retrieval. Id. ¶ 126. In contrast to Information Retrieval,
Collins’s system employs Information Filtering. Id. ¶¶ 121, 129; see id.
¶ 14; Ex. 1004 ¶ 192.
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But we agree with Petitioner that the combined disclosures in Collins
and Walker teach claim 1’s “displaying based on ratings” limitation. See
Pet. 34–35; Ex. 1004 ¶¶ 178–179; Ex. 1010 ¶¶ 16, 292; Ex. 1011, 21:52–59,
39:37–40:46, Figs. 34–35. Collins discloses that “[o]nce the vendor has
rendered the services and the transaction is complete, the consumers can rate
the quality of [the] vendor’s work and their level of satisfaction.” Ex. 1010
¶ 292; see id. ¶¶ 16, 87; Ex. 1004 ¶¶ 95, 98, 177. Collins also discloses that
the ratings provide “meaningful indicators to aid the decision making
process.” Ex. 1010 ¶ 16; see Ex. 1004 ¶¶ 98, 177. Walker similarly
discloses making expert ratings available to users to “provid[e] another
parameter for the selection process.” Ex. 1011, 21:52–59.
In addition, Walker describes a “customer satisfaction” embodiment.
Ex. 1011, 39:37–40:46, Figs. 34–35; see Ex. 1004 ¶ 178. That embodiment
employs feedback, e.g., from user complaints and peer reviews, to rate
expert answers as satisfactory or unsatisfactory. Ex. 1011, 39:40–40:11,
Fig. 34; see id. at 6:49–50, 21:52–59; Ex. 1004 ¶ 178. For example, a
“randomly selected reviewing expert of comparable expert qualifications”
evaluates the acceptability of an expert answer. Ex. 1011, 39:65–40:5,
Fig. 34; see Ex. 1004 ¶ 110. A positive evaluation causes the central
controller to update an expert database to indicate satisfactory completion of
the quality check, while a negative evaluation causes the central controller
to update the expert database to indicate unsatisfactory completion of the
quality check. Ex. 1011, 40:4–11, Fig. 34; see Ex. 1004 ¶ 110. After a
negative evaluation, “a notice is transmitted to the expert” with a reprimand
“for poor quality.” Ex. 1011, 40:11–13, Fig. 34; see id. at 21:59–62;
Ex. 1004 ¶ 110. “A given number of reprimands may result in the expulsion
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or temporary suspension of the expert” or “in a lowering of” the expert’s
qualification level. Ex. 1011, 40:13–15; see Ex. 1004 ¶¶ 110, 178.
As Petitioner contends, expelling or temporarily suspending an expert
for poor quality according to Walker’s “customer satisfaction” embodiment
teaches “utilizing ratings to impact how (or whether)” experts or participants
“are presented to users.” See Pet. 35. In that embodiment, poorly
performing experts correspond to lower-rated participants, and properly
performing experts correspond to higher-rated participants. Hence, when
that embodiment expels or temporarily suspends poorly performing experts
and later displays a “list of expert IDs” for properly performing experts, that
embodiment displays participant information based on participant ratings.
See Ex. 1004 ¶ 178. That embodiment also displays participant information
based on participant ratings when it lowers an expert’s qualification level
because of poor quality and later displays a “list of expert IDs” for experts at
a higher qualification level. See id.
Moreover, an ordinarily skilled artisan would have been motivated to
modify Collins’s system according to Walker’s teachings to display
participant information based on participant ratings. See Ex. 1004 ¶ 179.
In particular, the skilled artisan “would have recognized that such a
modification would be beneficial to a consumer making a decision on
which service provider to select.” Id.
Accordingly, we agree with Petitioner that the combined disclosures
in Collins and Walker teach claim 1’s “displaying based on ratings”
limitation.
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(f) Enabling the User to Send an Inquiry Message While Shielding
Contact Information Including Any Messaging Identifier
Claim 1 recites “enabling the user to send an inquiry message to one
or more of the multiple participants, while shielding the contact information
from the user, the contact information including any messaging identifier
that is associated with each of the one or more participants.” Ex. 1001,
17:38–42.
Petitioner contends that Collins and Walker each teach this limitation.
Pet. 36–37; see Ex. 1004 ¶¶ 180–182. For Collins, Petitioner contends that
Collins discloses that a consumer “select[s] the vendor from the [displayed]
list and submit[s] the selection” to the system. Pet. 36 (citing Ex. 1010
¶¶ 88–89); see Ex. 1004 ¶ 180. Then, according to Petitioner, the system
(1) “confirms the selection,” (2) “asks the consumer to indicate” the
consumer’s contact preferences, and (3) “contacts the vendor” to convey
“details of the consumer request such as when and where the service must be
performed and any other consumer requirements.” Pet. 36 (citing Ex. 1010
¶¶ 15, 88–89, 177, 179, 250); see Ex. 1004 ¶ 180.
Further, Petitioner asserts that “this inquiry message is sent by the
system using contact information provided to the system” by the vendor and
that “Collins does not disclose providing the consumer with any messaging
identifier associated with a vendor.” Pet. 36–37 (citing Ex. 1010 ¶ 258); see
Ex. 1004 ¶ 180. To support Petitioner, Dr. Goldberg testified that “[t]here is
no disclosure in Collins that the service providers’ contact information is
supplied to the consumer when the consumer uses the system to contact the
service providers.” Ex. 1004 ¶ 180; see id. ¶ 173.
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In addition, Petitioner contends that Walker teaches “enabling the user
to send an inquiry message” while “shielding contact information” and that
“[s]uch shielding includes any messaging identifier.” Pet. 37 (citing
Ex. 1011, 25:59–26:8); see Ex. 1004 ¶¶ 175, 181–182. Further, Petitioner
asserts that Walker “states that there are instances where the service itself
intentionally wants to” withhold information about the parties “to prevent
the parties from contacting each other outside of” the system. Pet. 37 (citing
Ex. 1011, 6:15–29, 7:62–8:8, 10:20–26, 23:29–34, 25:44–51, 33:21–53,
36:51–54); see Ex. 1004 ¶¶ 181–182. Petitioner then argues that an
ordinarily skilled artisan “would have understood this teaching to be an
instruction to withhold any messaging identifier so as to accomplish the goal
of preventing contact between the parties outside of the system.” Pet. 37;
see Ex. 1004 ¶¶ 175, 182.
Patent Owner contends that neither Collins nor Walker teaches
claim 1’s “enabling while shielding” limitation. See Resp. 10–18, 32–33;
Sur-reply 13–16. For Collins, Patent Owner asserts that the system
“receives a communication from the consumer, and then generates a new
and different communication to contact the vendor.” Resp. 15; Sur-reply 15.
Patent Owner also asserts that “[t]his is not a direct communication” as
required by the limitation. Resp. 15; Sur-reply 15.
In addition, Patent Owner contends that Walker’s system displays
a “list of expert IDs” to permit expert selection and that an expert ID is used
to address a message to a selected expert. Resp. 15–16 (citing Ex. 1011,
25:42, 25:61–63). Patent Owner also contends that “[t]here can only be one
of two interpretations for” an expert ID and that each interpretation “place[s]
Walker outside the scope of the claims.” Id. at 16. First, that an expert ID is
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a messaging identifier for an expert. Id. If so, the messaging identifier is
displayed during expert selection, not shielded. Id. Second, that an expert
ID is not a messaging identifier for an expert. Id. If so, a message “is
addressed to the central controller, with the expert ID embedded in the
content of the message,” and a user does not directly communicate with an
expert as required by the limitation. Id. at 16–17 (citing Ex. 1011, 14:31–38,
25:65–26:8); see Sur-reply 15 (citing Ex. 1011, 8:11–15, 37:63–65).
We agree with Petitioner that Collins and Walker each teach claim 1’s
“enabling while shielding” limitation. See Pet. 36–37; Ex. 1004 ¶¶ 172–173,
180–182. Regarding Collins, for the reasons discussed above for claim 1’s
“displaying while shielding” limitation, Collins’s system shields vendor
contact information from a consumer when it “display[s] to the consumer
a list of all vendors that are able and available to meet the consumer’s
request.” See Ex. 1004 ¶¶ 172–173, 180; Ex. 1010 ¶ 87, Fig. 8d; supra
§ III.E.3(d). For instance, the interface illustrated in Collins’s Figure 8d
displays the following information about each matched vendor: name,
location (city and state), years of experience, average rating, and “Contact!”
Ex. 1010 ¶ 87, Fig. 8d; see Ex. 1004 ¶¶ 99, 172–173. The displayed
information does not include email addresses or other messaging identifiers
for the matched vendors. Ex. 1010 ¶ 87, Fig. 8d; see Ex. 1004 ¶¶ 173, 180.
In Collins’s system, “[w]hen the consumer has made a decision about
which vendor or vendors to contact,” the consumer “indicate[s] this by
selecting them from the list and submitting this selection” to the system.
Ex. 1010 ¶ 88; see id. ¶¶ 257–258, 263–268, Figs. 12–15; Ex. 1004 ¶¶ 96,
173. The system “then contacts the vendors.” Ex. 1010 ¶ 89; see id. ¶¶ 131,
249–250, 257–258, 263–268, Figs. 12–15; Ex. 1004 ¶¶ 97, 173, 180.
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“Information conveyed to the vendor during this contact includes details of
the consumer request such as when and where the service must be performed
and any other consumer requirements.” Ex. 1010 ¶ 89; see id. ¶¶ 131,
249–250, 258; Ex. 1004 ¶ 97.
Hence, Collins’s system enables a consumer to send a service request
to one or more vendors by (1) serving as an intermediary between the
consumer and the selected vendors and (2) conveying the consumer’s
service request to the selected vendors. See Ex. 1010 ¶¶ 87–89, 131,
249–250, 257–258, 263–268, Figs. 12–15. Collins’s system enables
consumer-vendor communications while shielding vendor contact
information from the consumer. Ex. 1004 ¶¶ 172–173, 180. Accordingly,
we agree with Petitioner that Collins teaches claim 1’s “enabling while
shielding” limitation.
Further, we agree with Petitioner that Walker also teaches this
limitation. See Pet. 37; Ex. 1004 ¶¶ 102, 175, 181. In particular, Walker
explains that a user “establishes an online connection” to a central controller.
Ex. 1011, 25:20–25, Fig. 15. Then, a user interface displays “a selection
of predetermined subject areas” or categories, such as finance, law, and
medicine. Id. at 25:26–30. Next, the user selects the following items:
(1) a category, e.g., medicine; (2) a subcategory, e.g., pediatrics; and
(3) a qualification level, e.g., Level 1, Level 2, or Level 3. Id. at 25:31–37,
Fig. 15. “Each level corresponds to predetermined groupings of expert
qualifications.” Id. at 25:37–40. After the user selects a category,
subcategory, and qualification level, a “list of expert IDs is displayed along
with an option to see specific expert qualifications.” Id. at 25:40–43. But
“the user may be prevented from seeing [expert] contact information” to
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prevent the user “from contacting experts outside the system prior to a deal
being reached” and “to ensure that payment is received for bringing the two
parties together.” Id. at 25:44–47, 36:51–54.
Based on the displayed information, the user selects one or more
experts for the system to contact. Ex. 1011, 25:53–55, Fig. 15. Then, the
user creates a request, such as a question “requir[ing] human judgement,
evaluation, analysis, etc.,” or multiple questions “bundled into one request.”
Id. at 16:62–17:1, 25:55–61, Fig. 6. Next, the user includes the user’s ID
and one or more expert IDs in the request. Id. at 17:3–4, 25:61–63, Figs. 6,
16. After the user completes the request, the user transmits it to the central
controller “for distribution to the selected experts.” Id. at 25:65–66, 26:6–7,
Fig. 16.
Hence, Walker’s system enables a user to send a request to one or
more experts by (1) serving as an intermediary between the user and the
selected experts and (2) distributing the user’s request to the selected
experts. See Ex. 1011, 16:62–17:4, 25:20–26:7, Figs. 6, 15–16. Walker’s
system enables user-expert communications while shielding expert contact
information from the user. Ex. 1004 ¶¶ 102, 175, 181. Accordingly, we
agree with Petitioner that Walker teaches claim 1’s “enabling while
shielding” limitation.
Patent Owner’s arguments that Collins and Walker do not teach this
limitation rest on its construction of the phrase “enabling the user to send an
inquiry message to one or more of the multiple participants” as requiring
direct communication between the user and the selected participants. See
Resp. 10–18, 32–33; Sur-reply 13–16. For the reasons discussed above,
we have not adopted Patent Owner’s construction. See supra § III.C.3.
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We also disagree with Patent Owner’s assertion that in Walker’s
system an expert ID is a messaging identifier for an expert. See Resp. 16.
Permitting a user to directly communicate with an expert using a displayed
expert ID would frustrate Walker’s purpose to prevent the user “from
contacting experts outside the system prior to a deal being reached” and
“to ensure that payment is received for bringing the two parties together.”
Ex. 1011, 25:44–47, 36:51–54; see id. at 2:23–26, 6:16–21, 6:29–31, 8:5–8,
9:66–10:7, 10:20–26; Ex. 1004 ¶ 111. Further, Walker explains that an
“expert address” for “direct[ing] communications to the expert” includes
“a phone number, web page URL, bulletin board address, pager number,
telephone number, email address, voice mail address, [and] facsimile
number.” Ex. 1011, 14:32–38; see Resp. 16–17 (quoting Ex. 1011,
14:35–38). That listing does not include an expert ID.
(g) Tracking a Response Time
Claim 1 recites “tracking a response time of each of the one or more
participants who received the message from the user.” Ex. 1001, 17:43–44.
Petitioner contends that Collins and Walker each teach this limitation.
Pet. 38–39; see Ex. 1004 ¶¶ 183–184. Specifically, Petitioner asserts that
Collins “recognized that some prior art matching systems did ‘not provide
any support for tracking the status of the consumer requests.’” Pet. 38
(quoting Ex. 1010 ¶ 5); see Ex. 1004 ¶ 183. Petitioner also asserts that
Collins endeavored to address that deficiency by providing a matching
system with consumer-centric features including “status tracking” by
“automatically collect[ing] data on vendor response time.” Pet. 38 (quoting
Ex. 1010 ¶¶ 12, 16); see Ex. 1004 ¶ 183.
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In addition, Petitioner contends that Walker “teaches tracking a
response time of each of the one or more participants who received the
message from the user.” Pet. 38 (citing Ex. 1011, 16:21–23, 21:43–45);
see Ex. 1004 ¶ 184.
Patent Owner does not make any arguments specific to claim 1’s
“tracking” limitation. See, e.g., Resp. 9–18, 32–33; Sur-reply 13–16.
We agree with Petitioner that Collins and Walker each teach this
limitation. See Pet. 38–39; Ex. 1004 ¶¶ 98, 183–184. Specifically, Collins
discloses that the system “may automatically collect data on vendor response
time.” Ex. 1010 ¶ 16; see id. ¶ 12; Ex. 1004 ¶¶ 98, 183. Further, the system
“immediately informs the consumer about the status of the vendor contacts,
including whether or not the vendor has accepted the lead.” Ex. 1010 ¶ 13;
see id. ¶¶ 90, 250, 270–275. By immediately informing the consumer about
the status of the vendor contacts, the system apprises the consumer how long
it takes for a selected vendor to respond to a service request from the
consumer.
Hence, Collins teaches tracking a response time of each of the one
or more vendors who received a service request from a consumer. See
Ex. 1010 ¶¶ 12–13, 16, 90, 250, 270–275. Accordingly, we agree with
Petitioner that Collins teaches claim 1’s “tracking” limitation.
Further, we agree with Petitioner that Walker also teaches this
limitation. See Pet. 38; Ex. 1004 ¶ 184. Specifically, Walker discloses time
stamping a communication to an expert containing a request from a user.
Ex. 1011, 35:30–36:39; see Ex. 1004 ¶ 184. Walker also discloses time
stamping a communication from an expert containing an answer to the
request. Ex. 1011, 16:20–23; see Ex. 1004 ¶ 184. Those disclosures parallel
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the ’107 patent’s explanation that “[i]mplementing a tracking step may
include time stamping every communication from an issue resolver, and
possibly every communication from the user to the issue resolver.”
Ex. 1001, 9:67–10:3. In addition, Walker discloses storing expert response
times in a database. Ex. 1011, 14:66–15:9, 41:15–19 (claim 3); see Ex. 1004
¶¶ 103, 186.
Hence, Walker teaches tracking a response time of each of the one or
more experts who received a request from a user. See Ex. 1011, 14:66–15:9,
16:20–23, 35:30–36:39, 41:15–19 (claim 3). Accordingly, we agree with
Petitioner that Walker teaches claim 1’s “tracking” limitation.
(h) Updating the Rating Based in Part on the Tracked Response Time
Claim 1 recites “updating the rating associated with each of the one
or more participants based at least in part on the tracked response time.”
Ex. 1001, 17:46–48.
Petitioner contends that “Collins in view of Walker teaches” this
limitation. Pet. 39–41; see Ex. 1004 ¶¶ 185–187. Specifically, Petitioner
asserts that “Collins teaches compiling ratings of service providers” and that
“Collins and/or the combination of Collins and Walker teaches tracking
vendor response time.” Pet. 39; see Ex. 1004 ¶¶ 185–186. Petitioner also
asserts that an ordinarily skilled artisan “would have found it obvious to use
the tracked vendor response times to update service providers’ ratings into
meaningful indicators to aid consumers’ selections of prospective service
providers.” Pet. 39; see Ex. 1004 ¶¶ 185–186.
Further, Petitioner argues that Walker “discloses that an expert’s
qualifications/ratings are based at least in part on tracked response times.”
Pet. 40; see Ex. 1004 ¶¶ 186–187. Specifically, Petitioner asserts that
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Walker discloses (1) storing expert qualifications/ratings including expert
response times in a database and (2) updating the database based on expert
performance. Pet. 40 (citing Ex. 1011, 14:66–15:4, 15:7–9, 40:4–15); see
Ex. 1004 ¶ 186. Petitioner also asserts that “[i]t follows that a change in
tracked response time would change” the qualifications/ratings in the
database. Pet. 40; see Ex. 1004 ¶ 186.
Patent Owner does not make any arguments specific to claim 1’s
“updating” limitation. See, e.g., Resp. 9–18, 32–33; Sur-reply 13–16.
We agree with Petitioner that “Collins in view of Walker teaches” this
limitation for several related reasons. See Pet. 39–41; Ex. 1004 ¶¶ 185–187.
First, Collins discloses consumers rating vendors and making the ratings
available to other consumers. Ex. 1010 ¶¶ 16, 45–48, 87, 133–134,
290–292, Figs. 8d, 21–24; see Ex. 1004 ¶¶ 95, 98–99, 183, 185. Second,
Collins discloses tracking vendor response times. Ex. 1010 ¶ 16; see
Ex. 1004 ¶¶ 98, 183, 185. Third, Walker discloses users rating experts and
making the ratings available to other users. Ex. 1011, 14:32–33, 21:51–58,
25:35–44; see Ex. 1004 ¶¶ 103, 109–110. Fourth, Walker discloses tracking
expert response times, e.g., by time stamping communications, and storing
expert response times in a database. Ex. 1011, 14:66–15:9, 16:20–23,
35:30–36:39, 41:15–19 (claim 3); see Ex. 1004 ¶¶ 103, 184. Fifth, Walker
discloses updating the database based on expert performance. Ex. 1011,
39:37–40:15, Fig. 34 (“database updated to indicate satisfactory” and
“database updated to indicate unsatisfactory”); see Ex. 1004 ¶¶ 103, 186.
Sixth, expert response times are one measure of expert performance. See
Ex. 1004 ¶ 187; Ex. 1011, 14:66–15:4, 41:15–19 (claim 3). Consequently,
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the combined disclosures in Collins and Walker teach updating ratings based
at least in part on tracked response times. See Ex. 1004 ¶¶ 185–187.
(i) Combining the Teachings of the References
Petitioner asserts that an ordinarily skilled artisan “implementing
a system based on the teachings of Collins would have known” about
Walker’s teachings and “would have been motivated by Collins, Walker,
and common sense to modify Collins” to incorporate Walker’s teachings.
Pet. 22–25; see Ex. 1004 ¶¶ 161–165. In particular, Petitioner argues that
“Collins and Walker are in the same field and address the same problems”
concerning “matching consumers with service providers.” Pet. 22–23; see
Ex. 1004 ¶¶ 161–162. Petitioner also argues that both references
(1) “recognize and address concerns with facilitating connections between
consumers and service providers to provide quality matches” and
(2) “provide means for consumers to send messages to service providers
while protecting contact information.” Pet. 23; see Ex. 1004 ¶ 162.
In addition, Petitioner contends that Collins teaches (1) initially
shielding “certain contact information” for privacy purposes and (2) service
providers controlling information displayed to consumers. Pet. 23; see
Ex. 1004 ¶ 163. Petitioner also contends that Walker “provides multiple
advantageous reasons” for shielding service-provider contact information
from consumers. Pet. 23; see Ex. 1004 ¶ 163. Further, Petitioner asserts
that an ordinarily skilled artisan would have combined the teachings of
Collins and Walker “to improve privacy” of service providers in Collins and
“to allow for the designer of the [Collins] system to retain fees for providing
referrals.” Pet. 24; see Ex. 1004 ¶¶ 163–164.
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To support Petitioner, Dr. Goldberg identified the following reasons
that would have prompted an ordinarily skilled artisan to combine the
teachings of Collins and Walker: (1) “maintaining privacy and anonymity”
and (2) “ensuring that the system is able to obtain compensation for passing
a referral.” Ex. 1004 ¶ 163 (citing Ex. 1011, 9:66–10:7, 10:20–25,
25:44–52, 33:21–53). Dr. Goldberg explained that “by shielding contact
information and then providing a messaging service, the matching system
can prevent communication between the parties outside of the system and
thereby prevent the loss of fees due to out-of-system communications.” Id.
¶ 164 (citing Ex. 1011, 9:66–10:7, 10:20–25, 25:44–52, 33:21–53). He also
explained that if an intermediary, such as a matching system according to
Collins or Walker, “expected to earn a commission from a transaction
between a consumer and a service provider, giving the service provider’s
contact information to the consumer (or vice versa) would allow the
consumer and service provider to perform the transaction directly, bypassing
the intermediary and avoiding paying the commission.” Ex. 1004 ¶ 27; see
id. ¶¶ 28–29 (citing Ex. 1011, 1:14–15, 1:22–30, 1:32–48, 4:54–59).
Patent Owner does not make any arguments disputing the rationale to
combine the teachings of Collins and Walker. See, e.g., Resp. 9–18, 32–33;
Sur-reply 13–16.
We agree with Petitioner that an ordinarily skilled artisan would have
had sound reasons, i.e., the reasons identified by Dr. Goldberg, to combine
the teachings of Collins and Walker. See Pet. 22–25; Ex. 1004 ¶¶ 27–29,
161–165; Ex. 1011, 1:22–48, 2:23–26, 8:5–8, 10:20–26, 25:44–47,
36:51–54; see also KSR, 550 U.S. at 418 (explaining that “it can be
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important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine” the teachings of references).
Consistent with Dr. Goldberg’s testimony, Walker teaches that a
matching system “may want to intentionally withhold” information about
“one or both parties to a potential transaction in order to assure” payment for
bringing the two parties together because “[o]nce one or both parties are able
to contact each other outside the service’s view, the service has no way to
know whether the transaction was consummated privately.” Ex. 1011,
10:20–26; see id. at 1:22–48, 2:23–26, 8:5–8. Walker similarly teaches that
“the user may be prevented from seeing [expert] contact information” to
prevent the user “from contacting experts outside the system prior to a deal
being reached” and “to ensure that payment is received for bringing the two
parties together.” Id. at 25:44–47, 36:51–54. Incorporating those teachings
into Collins’s system would have improved the system “at least by
increasing privacy for the service providers.” Ex. 1004 ¶ 163.
(j) Conclusion on Obviousness of Claim 1
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claim 1 is unpatentable under § 103(a)
as obvious over Collins and Walker.
4. INDEPENDENT CLAIM 6
(a) Preamble
Claim 6’s preamble recites “[a] computer system.” Ex. 1001, 18:5.
Petitioner contends that Collins teaches claim 6’s preamble because
“Collins teaches a computer system.” Pet. 48–49 (citing Ex. 1010 ¶¶ 92–93,
claims 1 and 11, Figs. 1–3); see Ex. 1004 ¶ 167. To support Petitioner,
Dr. Goldberg testified that Collins discloses “a networked computer system”
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with “networked computers and applications to facilitate users interacting
with other users with similar interests or needs.” Ex. 1004 ¶ 167 (citing
Ex. 1010 ¶¶ 1, 13–14, 86–89, 92–93, 121, code (57), claims 1 and 11,
Figs. 1–3).
Patent Owner does not make any arguments specific to claim 6’s
preamble. See, e.g., Resp. 33–34; Sur-reply 13–16.
Generally, a preamble does not limit a claim. Allen Eng’g, 299 F.3d
at 1346. Here, we need not decide whether claim 6’s preamble limits the
claim because we agree with Petitioner that Collins teaches the preamble.
See Pet. 48–49; Ex. 1004 ¶ 167.
For instance, Collins’s Figures 2 and 3 illustrate a networked
computer system. Ex. 1010 ¶¶ 19–20, Figs. 2–3; see id. ¶¶ 54, 58, 60,
91–101, 117, 121–124, 177, 179. Further, as noted in our Institution
Decision, Walker’s Figures 1 and 2 also illustrate a networked computer
system. Ex. 1011, 11:59–62, Figs. 1–2; see id. at 13:7–15:46; Inst. Dec. 60.
(b) A Memory and One or More Processors
Claim 6 specifies that the “computer system” comprises “a memory”
storing a list of participants according to claim 1 and “one or more
processors” executing instructions to perform steps according to claim 1.
Ex. 1001, 18:5–38.
Petitioner contends that Collins discloses “a memory” storing a list of
participants according to claim 1 and “one or more processors” executing
instructions to perform steps according to claim 1. Pet. 49–50 (citing
Ex. 1010 ¶¶ 54, 58, 117, Fig. 3; see Ex. 1004 ¶ 169–170. To support
Petitioner, Dr. Goldberg testified that an ordinarily skilled artisan would
have understood Collins’s system database 306a “to have been stored on
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a form of computer memory.” Ex. 1004 ¶ 169. Dr. Goldberg also testified
that an ordinarily skilled artisan would have understood that steps according
to claim 1 “would have been executed by one or more processors” in
Collins’s system. Id. ¶ 170.
Patent Owner does not make any arguments regarding claim 6’s
requirements for “a memory” and “one or more processors.” See, e.g.,
Resp. 33–34; Sur-reply 13–16.
We agree with Petitioner that Collins discloses “a memory” storing
a list of participants according to claim 1 and “one or more processors”
executing instructions to perform steps according to claim 1. See Pet.
49–50; Ex. 1004 ¶¶ 168–170; Ex. 1010 ¶¶ 19–20, 54, 58, 60, 92–101, 117,
121–124, 177, 179, Figs. 2–3; supra §§ III.E.3(b)–III.E.3(h). Specifically,
Collins’s system includes system database 306a that serves as “a memory.”
Ex. 1010 ¶¶ 99, 117, 121, 124, 136, 177, 179, Fig. 3; see Ex. 1004 ¶ 169.
Collins’s system also includes servers or clients with “one or more
processors.” Ex. 1010 ¶¶ 54, 58, 92–101, 162, Figs. 2–3; see Ex. 1004
¶ 170.
In addition, as noted in our Institution Decision, Walker’s system
comprises “a memory” and “one or more processors.” Ex. 1011, 11:59–62,
13:7–15:46, Figs. 1–2; see Inst. Dec. 61. For instance, Walker’s system
includes a central controller with random-access memory (RAM) 215, read-
only memory (ROM) 220, and processors 205, 210, 225, and 230. Ex. 1011,
13:29–67, Fig. 2.
(c) The Other Limitations in Claim 6
Claim 6’s other limitations parallel claim 1’s limitations. Compare
Ex. 1001, 17:15–48, with id. at 18:5–38. For instance, claim 1 recites
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“presenting a user with an interface from which the user makes a selection of
a category from a plurality of categories,” while claim 6 recites “present a
user with an interface from which the user makes a selection of a category
from a plurality of categories.” Id. at 17:24–26, 18:13–16. Patent Owner
admits that “Claim 6 has all of the elements of Claim 1.” Resp. 33; see
Prelim. Resp. 39 n.66, 66 n.70, 68 n.71, 71 n.72, 74 n.73.
Petitioner contends that Collins and Walker teach claim 6’s other
limitations for the same reasons the references teach claim 1’s limitations.
See Pet. 49–53; Ex. 1004 ¶¶ 168–187.
Patent Owner disputes only that Collins and Walker teach claim 6’s
“enabling while shielding” limitation. See Resp. 33–34; Sur-reply 13–16.
We agree with Petitioner that Collins and Walker teach claim 6’s
other limitations for the same reasons the references teach claim 1’s
limitations. See Pet. 26–41, 49–53; Ex. 1004 ¶¶ 168–187; supra
§§ III.E.3(b)–III.E.3(h). Patent Owner’s arguments about claim 6’s
“enabling while shielding” limitation fail for the same reasons as its
arguments about claim 1’s “enabling while shielding” limitation. See
supra § III.E.3(f).
(d) Conclusion on Obviousness of Claim 6
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claim 6 is unpatentable under § 103(a)
as obvious over Collins and Walker.
5. DEPENDENT CLAIMS 2 AND 7
Claim 2 depends from claim 1 and recites “wherein receiving the
selection of the category from the plurality of categories includes receiving
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input that identifies a geographic location.” Ex. 1001, 17:49–51. Claim 7
depends from claim 6 and recites a similar limitation. Id. at 18:39–42.
Petitioner contends that “Collins in view of Walker teaches” the
subject matter of claims 2 and 7. Pet. 41–42, 53; see Ex. 1004 ¶ 188.
Specifically, Petitioner asserts that Collins “discloses receiving input that
identifies a geographic location” because “users identify their geographic
location to assist in the matching process.” Pet. 41 (citing Ex. 1010
¶¶ 206–209); see Ex. 1004 ¶ 188. Petitioner also asserts that Collins’s
Figure 8b illustrates an interface that permits a consumer to find a service
provider by inputting details about the consumer’s service request including
geographic location. Pet. 41–42 (citing Ex. 1010, Fig. 8b); see Ex. 1004
¶ 188. To support Petitioner, Dr. Goldberg stated that Figure 8b depicts
a “zip code input field” almost identical to the “zip code input field” in
’107 patent Figure 6B. Ex. 1004 ¶ 188.
Patent Owner argues that claims 2 and 7 “are patentable for at least
the same reasons” as claims 1 and 6. Resp. 34; Sur-reply 17. Patent Owner
does not articulate any additional reasons for claims 2 and 7. Resp. 34;
Sur-reply 17. For the reasons discussed above, we do not consider
persuasive Patent Owner’s arguments directed to claims 1 and 6. See, e.g.,
supra §§ III.E.3(f), III.E.4(c).
We agree with Petitioner that “Collins in view of Walker teaches” the
subject matter of claims 2 and 7. See Pet. 41–42, 53; Ex. 1004 ¶ 188;
Ex. 1010 ¶¶ 30, 85–86, 206–213, 220–221, 225, 227–234, Fig. 8b. Collins’s
Figure 8b illustrates an interface that permits a consumer to find a service
provider by inputting details about the consumer’s service request, e.g., date,
work description, and geographic location. Ex. 1010 ¶¶ 30, 85–86,
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206–213, 220–221, 225, 227–234, Fig. 8b; see Ex. 1004 ¶ 188. The work
description corresponds to the claimed “category.” Ex. 1010 ¶¶ 228, 231,
Fig. 8b. In addition, Collins describes other “categories” available for user
selection, e.g., “commercial or residential property” as shown in Figure 8.
Id. ¶¶ 30, 230, Fig. 8b.
After a consumer selects one or more “categories,” e.g., “residential
property” and “fixture repair,” the consumer enters “the zip code where the
project will take place.” Ex. 1010 ¶¶ 230–232, Fig. 8b. And when the
consumer enters “the zip code where the project will take place,” the system
“receiv[es] input that identifies a geographic location” according to claims 2
and 7.
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claims 2 and 7 are unpatentable under
§ 103(a) as obvious over Collins and Walker.
6. DEPENDENT CLAIMS 3 AND 8
Claim 3 depends from claim 1 and recites “wherein displaying some
of the information associated with each of multiple participants includes
displaying an image that is included in the information associated with each
of the multiple participants.” Ex. 1001, 17:52–55. Claim 8 depends from
claim 6 and recites a similar limitation. Id. at 18:43–47.
Petitioner contends that “Collins in view of Walker teaches” the
subject matter of claims 3 and 8. Pet. 43–45, 54; see Ex. 1004 ¶¶ 189–191.
Specifically, Petitioner asserts that Collins’s Figure 8d “display[s] images
for each of the multiple participants, e.g., images of stars representing
ratings.” Pet. 43–44 (citing Ex. 1010, Fig. 8d); see Ex. 1004 ¶ 189. To
support Petitioner, Dr. Goldberg stated that Figure 8d depicts a “web page
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displaying a list of service providers resulting from the matching process,
including displaying an average rating for each service provider as a number
of stars.” Ex. 1004 ¶ 189; see Pet. 44. He also stated that if Figure 8d’s
graphical representation of stars “does not expressly constitute an image,” an
ordinarily skilled artisan “would have understood that the web page could
be designed to display star-ratings textually (e.g., asterisks), or graphically
(e.g., star images).” Ex. 1004 ¶ 190; see Pet. 45.
Patent Owner argues that claims 3 and 8 “are patentable for at least
the same reasons” as claims 1 and 6. Resp. 34; Sur-reply 17. Patent Owner
does not articulate any additional reasons for claims 3 and 8. Resp. 34;
Sur-reply 17. For the reasons discussed above, we do not consider
persuasive Patent Owner’s arguments directed to claims 1 and 6. See, e.g.,
supra §§ III.E.3(f), III.E.4(c).
We agree with Petitioner that “Collins in view of Walker teaches” the
subject matter of claims 3 and 8. See Pet. 43–45, 54; Ex. 1004 ¶¶ 189–191;
Ex. 1010 ¶¶ 32, 87, 221, 223, 225, 227, 246–247, 249, Fig. 8d. The claims
require “displaying an image” associated with “each of the multiple
participants.” Ex. 1001, 17:52–55, 18:43–47. The images of stars
representing ratings in Collins’s Figure 8d are associated with “each of the
multiple participants,” i.e., each of the matched vendors. Ex. 1010 ¶¶ 32,
87, 221, 223, 225, 227, 246–247, 249, Fig. 8d; see Ex. 1004 ¶¶ 189–190.
Specifically, Figure 8d shows (1) an image of four stars associated with the
first vendor, (2) an image of three stars associated with the second vendor,
and (3) an image of four stars associated with the third vendor. Ex. 1010
¶¶ 32, 87, Fig. 8d; see Ex. 1004 ¶¶ 99, 189. Thus, as Petitioner argues,
Figure 8d “display[s] an image that is included in the information associated
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with each of the multiple participants” according to claims 3 and 8. See
Pet. 43–44.
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claims 3 and 8 are unpatentable under
§ 103(a) as obvious over Collins and Walker.
7. DEPENDENT CLAIMS 5 AND 10
Claim 5 depends from claim 1 and recites “wherein displaying some
of the information associated with each of the multiple participants includes
displaying information associated with individual participants who match
the category selection and have a higher rating in favor of information
associated with individual participants who match the category selection and
have a lower rating.” Ex. 1001, 17:61–18:4. Claim 10 depends from
claim 6 and recites a similar limitation. Id. at 18:53–59.
Petitioner contends that “Collins in view of Walker teaches” the
subject matter of claims 5 and 10. Pet. 45–48, 54–55; see Ex. 1004
¶¶ 192–195. Specifically, Petitioner asserts that Collins “discloses
displaying information associated with individual participants who match
the category selection and have a higher rating in favor of information
associated with individual participants who match the category selection and
have a lower rating.” Pet. 46 (emphases by Petitioner); see Ex. 1004 ¶ 192.
Petitioner bases that assertion on Collins’s disclosure that “in an Information
Retrieval (IR) system, a ‘set of documents that match a certain query’ (i.e.,
information associated with matched service providers) is ‘rank ordered and
presented to the user.’” Pet. 46 (quoting Ex. 1010 ¶ 126); see Ex. 1004
¶ 192.
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Petitioner concedes that Collins’s system employs Information
Filtering (IF). Pet. 46; see Ex. 1004 ¶ 192; Ex. 1010 ¶¶ 121, 129. But
Petitioner contends that Information Filtering and Information Retrieval
“have ‘equivalent underlying goals’ and ‘represent the information need
(query and profile respectively) and the document set in a manner suitable
for comparison and matching.’” Pet. 46 (quoting Ex. 1010 ¶ 125); see
Ex. 1004 ¶ 192.
Alternatively, Petitioner argues that Walker describes a “customer
satisfaction” embodiment that (1) employs feedback, e.g., from user
complaints and peer reviews, to rate expert answers as satisfactory or
unsatisfactory and (2) may expel or temporarily suspend an expert “based
on performance.” Pet. 47 (citing Ex. 1011, 39:37–40:15); see Ex. 1004
¶¶ 178, 193. Petitioner asserts that expelling or temporarily suspending
an expert for poor quality teaches “impact[ing] the display of that expert’s
information in relation to” a higher-rated expert’s information and
“caus[ing] one expert’s results to be displayed lower in favor of another’s
results.” Pet. 47; see Ex. 1004 ¶ 193. To support Petitioner, Dr. Goldberg
testified that an ordinarily skilled artisan would have understood Walker’s
disclosures about rating experts and expelling or temporarily suspending
experts for poor quality “to teach displaying information associated with
experts (service providers) that have a higher rating over those with a lower
rating.” Ex. 1004 ¶ 193 (citing Ex. 1011, 21:52–54, 21:58–61, 25:35–44,
40:11–15).
Patent Owner argues that claims 5 and 10 “are patentable for at least
the same reasons” as claims 1 and 6. Resp. 34; Sur-reply 17. Patent Owner
does not articulate any additional reasons for claims 5 and 10. Resp. 34;
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Sur-reply 17. For the reasons discussed above, we do not consider
persuasive Patent Owner’s arguments directed to claims 1 and 6. See, e.g.,
supra §§ III.E.3(f), III.E.4(c).
We disagree with Petitioner that displaying “rank ordered” search
results according to Collins teaches displaying participant information by
favoring information associated with higher-rated participants over
information associated with lower-rated participants. As discussed above
for claim 1’s “displaying based on ratings” limitation, Collins indicates that
“rank ordered” search results correspond to search results sorted based on
their relevance to the search query, i.e., how well the search results “match”
the search query. See Ex. 1010 ¶¶ 125–126; supra § III.E.3(e). We discern
no relation between sorting search results based on their relevance to the
search query and displaying participant information by favoring information
associated with higher-rated participants over information associated with
lower-rated participants.
Based on Walker’s “customer satisfaction” embodiment, however, we
agree with Petitioner that “Collins in view of Walker teaches” the subject
matter of claims 5 and 10. See Pet. 47–48, 54–55; Ex. 1004 ¶¶ 178–179,
193–195; Ex. 1011, 39:37–40:46, Figs. 34–35. In Walker’s “customer
satisfaction” embodiment, poorly performing experts correspond to lower-
rated participants, and properly performing experts correspond to higher-
rated participants. Hence, when that embodiment expels or temporarily
suspends poorly performing experts and later displays a “list of expert IDs”
for properly performing experts, that embodiment displays participant
information by favoring information associated with higher-rated
participants over information associated with lower-rated participants. See
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Ex. 1004 ¶¶ 178, 193. That embodiment also displays participant
information by favoring information associated with higher-rated
participants over information associated with lower-rated participants when
it lowers an expert’s qualification level because of poor quality and later
displays a “list of expert IDs” for experts at a higher qualification level. See
id. ¶¶ 178, 193.
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claims 5 and 10 are unpatentable under
§ 103(a) as obvious over Collins and Walker.
8. DEPENDENT CLAIM 11
Claim 11 depends from claim 6 and recites “wherein the computer
system corresponds to a server, or a combination of servers.” Ex. 1001,
18:60–62.
Petitioner contends that “Collins in view of Walker teaches”
claim 11’s subject matter. Pet. 55; see Ex. 1004 ¶ 196. Specifically,
Petitioner asserts that Collins “discloses a computer system” with “software
and hardware components” including web server 302 and application
server 304. Pet. 55 (citing Ex. 1010 ¶¶ 99, 101, Fig. 3); see Ex. 1004 ¶ 196.
To support Petitioner, Dr. Goldberg testified that Collins’s Figure 3 shows
“a networked computer system comprising a ‘Web Server’ module and an
‘Application Server’ module” and that an ordinarily skilled artisan “would
have understood that such a networked computer system corresponds to a
server.” Ex. 1004 ¶ 196.
Patent Owner argues that claim 11 is “patentable for at least the same
reasons” as claim 6. Resp. 34; Sur-reply 17. Patent Owner does not
articulate any additional reasons for claim 11. Resp. 34; Sur-reply 17. For
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the reasons discussed above, we do not consider persuasive Patent Owner’s
arguments directed to claim 6. See, e.g., supra § III.E.4(c).
We agree with Petitioner that “Collins in view of Walker teaches”
claim 11’s subject matter. See Pet. 55; Ex. 1004 ¶ 196; Ex. 1010 ¶¶ 20,
98–101, 162, Fig. 3. Collins discloses a computer system with “software
and hardware components” including web server 302 and application
server 304. Ex. 1010 ¶¶ 20, 98–101, 162, Fig. 3 (“Software and Hardware
Components”); see Ex. 1004 ¶ 196. Collins explains that web server 302
(1) “fields all HTTP requests,” (2) “maintains and serves” certain static data,
and (3) “delegates all dynamic requests” to application server 304. Ex. 1010
¶ 101; see id. ¶ 162. Collins’s web server 302 and application server 304
correspond to “a server, or a combination of servers,” according to claim 11.
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claim 11 is unpatentable under § 103(a)
as obvious over Collins and Walker.
F. Dependent Claims 4 and 9:
Obviousness over Collins, Walker, and Herz
Petitioner challenges claims 4 and 9 under § 103(a) as obvious over
Collins, Walker, and Herz. See Pet. 4–5, 56–64. Below, we provide an
overview of Herz, and then we consider the obviousness issues raised by
the parties.
1. OVERVIEW OF HERZ (EX. 1007)
Herz discloses a computer-based system for matching service
consumers called “clients” and service providers called “professionals.”
Ex. 1007 ¶¶ 1–6, 14, 30–32, code (57), Figs. 1–2. The matching system
includes a referral mechanism permitting one professional to refer a client to
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another professional. Id. ¶¶ 5–6, 14–22, code (57). The matching system
also includes rating mechanisms permitting (1) clients to rate professionals
and (2) professionals to rate other professionals. Ex. 1007 ¶¶ 25–26, 31.
For example, client ratings for professionals may reflect “overall quality of
treatment and personability as well as a variety of other relevant criteria.”
Id. ¶ 31.
Herz’s Figure 2 (reproduced below) shows a computer-based
matching system. Ex. 1007 ¶¶ 2, 4, 6.

Figure 2 illustrates a system including a client-ratings database, a
professional-ratings database, a bidding engine for referrals, and an
availability list for professionals. Id. ¶ 14.
Candidate professionals “register their availability with the system.”
Ex. 1007 ¶ 16. “Availabilities may be conditioned on any number of factors,
including the nature of the work sought, times available, geographic
limitations, etc.” Id. Candidate professionals specify bidding parameters for
referrals, such as maximum and minimum fees they will pay for referrals.
Id. ¶ 17.
A referring professional submits information about a client’s needs
to the system. Ex. 1007 ¶ 20. Then, the system presents the referring
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professional “with a screen of the most suitable candidates, including
information on (1) their identity, (2) their bids, and (3) their Professional
Rating.” Id. ¶ 22; see id. ¶ 30. Next, the referring professional refers the
client to a selected candidate professional based on “the judgement of the
referring professional to choose the most appropriate specialist for” the
client. Id. ¶ 22.
According to Herz, the referral network provides the following
advantages:
(1) offers “much greater efficiency in the referral process”;
(2) improves “quality of service to the client through
receiving of professional services by those professional
practitioners who are better suited to particular needs of
the client” by “identifying the best-qualified individuals
or groups”;
(3) increases “business quantities to those professionals who
demonstrate superior skill” after receiving referrals;
(4) incentivizes “practitioners who are not ideally suited
to provide services to certain clients to refer them to”
better-suited practitioners; and
(5) creates an “environment wherein practitioners are able to
become more focused and specialized with the specialty
domains in which they excel.”
Ex. 1007 ¶¶ 5, 33–34, code (57); see id. ¶ 1.
2. DEPENDENT CLAIMS 4 AND 9
Claim 4 depends from claim 1 and further requires “identifying
information for another participant that matches the category selection of
the user based on a referral provided by one or more users of the network
computer system.” Ex. 1001, 17:56–60. Claim 9 depends from claim 6 and
specifies that the one or more processors “identify information for another
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participant that matches the category selection of the user based on a referral
provided by one or more users of the computer system.” Id. at 18:48–52.
Petitioner contends that the Collins-Walker-Herz combination teaches
the subject matter of claims 4 and 9. Pet. 60–64; see Ex. 1004 ¶¶ 203–204.
Specifically, Petitioner asserts that Collins teaches “identifying information
for another participant that matches the category selection of the user”
because Collins’s system “identifies information associated with participants
that matches the selection of the user.” Pet. 60–61 (citing Ex. 1010
¶¶ 86–87, 221, 249, Fig. 8d); see Ex. 1004 ¶¶ 172–173, 199, 203.
According to Petitioner, Collins’s Figure 8d illustrates information for each
of multiple participants that match the “plumber” category selection of the
user. Pet. 61–62; see Ex. 1004 ¶¶ 99, 172, 203.
In addition, Petitioner contends that “[t]o the extent that Collins does
not explicitly disclose ‘identifying information for another participant that
matches the category selection of the user based on a referral provided by
one or more users of the network computer system,’” that “concept was
commonly known in prior art systems that implement the same types of
technologies.” Pet. 62–63; see Ex. 1004 ¶ 203. Further, Petitioner asserts
that Herz “discloses a ‘professional referral network,’ wherein service
providers may be identified based on referrals from one or more users (e.g.,
clients or professionals).” Pet. 63 (citing Ex. 1007 ¶¶ 6, 14, 16, 18, 20–22,
30–32, Fig. 2); see Ex. 1004 ¶¶ 87, 197, 203. To support Petitioner,
Dr. Goldberg testified that Herz “discloses a feature of participant referrals,”
i.e., a “referral system [that] allows physicians to refer clients to other
physicians, using a matching process to determine a list of appropriate
physicians to refer the client to.” Ex. 1004 ¶¶ 87, 197.
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Patent Owner contends that the Collins-Walker-Herz combination
does not render claims 4 and 9 unpatentable because no reference discloses
or suggests the “enabling while shielding” limitation in claims 1 and 6.
Resp. 35–36; Sur-reply 17–18. Patent Owner makes no other patentability
arguments for claims 4 and 9. Resp. 35–36; Sur-reply 17–18.
We agree with Petitioner that the Collins-Walker-Herz combination
teaches the subject matter of claims 4 and 9. See Pet. 60–64; Ex. 1004
¶¶ 87, 172–173, 197, 199, 203–204; Ex. 1007 ¶¶ 16–22, 30–32; Ex. 1010
¶¶ 86–87, 246–247, 249, Fig. 8d. Collins teaches “identifying information
for another participant that matches the category selection of the user”
according to claims 4 and 9. Ex. 1010 ¶¶ 32, 86–87, 221, 223, 225, 227,
246–247, 249, Fig. 8d; see Ex. 1004 ¶¶ 172–173, 199, 203. Specifically,
Collins’s system identifies and displays the following information about
each matched vendor: name, location (city and state), years of experience,
average rating, and “Contact!” Ex. 1010 ¶ 87, Fig. 8d; see Ex. 1004 ¶¶ 99,
172–173, 199, 203.
Further, as discussed above, the phrase “one or more users of the
network computer system” in claim 4 and the similar phrase in claim 9
encompass participants who use the network computer system. See supra
§ III.C.4. Herz teaches a participant referring a client to another participant.
Ex. 1007 ¶¶ 16–22, 30–32; see Ex. 1004 ¶¶ 87, 197, 203. For example, a
referring professional refers a client to a selected candidate professional
based on “the judgement of the referring professional to choose the most
appropriate specialist for” the client. Ex. 1007 ¶ 22; see Ex. 1004 ¶ 87.
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3. COMBINING THE TEACHINGS OF THE REFERENCES
Petitioner asserts that an ordinarily skilled artisan would have looked
to the teachings of Collins and Herz when designing a matching system
similar to the systems disclosed in the ’107 patent. Pet. 57–59; see Ex. 1004
¶¶ 197–201. In particular, Petitioner argues that “Collins and Herz are in the
same field and address the same problems.” Pet. 57; see Ex. 1004 ¶ 198.
Petitioner also argues that “Collins and Herz both relate to matching
consumers (e.g., clients) with service providers (e.g., professionals)” and
both “provide means for rating service providers/professionals.” Pet. 57–58;
see Ex. 1004 ¶ 198.
In addition, Petitioner contends that Herz “teaches that it is
advantageous to use a referral system that identifies the best-qualified
individuals or groups for a specialty problem to provide quality matches to
clients.” Pet. 58; see Ex. 1004 ¶ 199. Petitioner asserts that an ordinarily
skilled artisan would have modified Collins’s system according to Herz’s
teachings to “utilize a referral network” and “allow for additional matches to
be identified to ensure a consumer has access to quality results.” Pet. 58–59;
see Ex. 1004 ¶¶ 199–200.
To support Petitioner, Dr. Goldberg testified that Herz “teaches that
it is advantageous to use a referral network system that identifies the best-
qualified individuals or groups for a specialty problem to provide quality
matches to clients.” Ex. 1004 ¶ 199 (citing Ex. 1007 ¶¶ 1, 5, 33–34).
Dr. Goldberg also testified that an ordinarily skilled artisan would have
(1) “understood that this could increase the quality of matches for a
consumer looking for a service provider” and (2) “found it desirable to
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provide referrals to consumers using the system of Collins.” Id. ¶¶ 199–200;
see id. ¶ 204.
Patent Owner does not make any arguments disputing the rationale to
combine Herz’s teachings with the teachings of the other references. See,
e.g., Resp. 35–36; Sur-reply 17–19.
We agree with Petitioner that an ordinarily skilled artisan would have
had sound reasons, i.e., the reasons articulated by Dr. Goldberg, to combine
Herz’s teachings with the teachings of the other references. See Pet. 57–59,
63–64; Ex. 1004 ¶¶ 197–201; Ex. 1007 ¶¶ 1, 5, 33–34, code (57).
Consistent with Dr. Goldberg’s testimony, Herz teaches that the referral
network improves “quality of service to the client through receiving of
professional services by those professional practitioners who are better
suited to particular needs of the client” by “identifying the best-qualified
individuals or groups.” Ex. 1007 ¶¶ 5, 33, code (57). Incorporating that
teaching into Collins’s system would have improved the system “to identify
additional matches to improve the quality of the results.” Ex. 1004 ¶ 199.
4. CONCLUSION ON OBVIOUSNESS OF CLAIMS 4 AND 9
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claims 4 and 9 are unpatentable under
§ 103(a) as obvious over Collins, Walker, and Herz.
G. Dependent Claims 3 and 8:
Obviousness over Collins, Walker, and Abrams
Petitioner challenges claims 3 and 8 under § 103(a) as obvious over
Collins, Walker, and Abrams. See Pet. 4–5, 64–71. Below, we provide an
overview of Abrams, and then we consider the obviousness issues raised by
the parties.
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1. OVERVIEW OF ABRAMS (EX. 1008)
Abrams discloses a computer-based system for matching or
connecting people based on their relationships within online social networks.
Ex. 1008 ¶¶ 1–2, 30, 41, 49, code (57). Abrams explains that online social
networks generally (1) “allow users to post profiles and photos, as well as
search through the profiles and photos of other users,” and (2) provide
matching features that “match users based on indicated profile criteria about
themselves and their desired matches.” Id. ¶ 30; see id. ¶ 29.
Abrams’s Figure 1 (reproduced below) “shows a block diagram of
components of a system for connecting people based on their relationships”
within online social networks. Ex. 1008 ¶ 49.
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Figure 1 illustrates graphical user interfaces 102 and 104 presented through
network 112 to users of user interface devices 106 and 108. Id. ¶¶ 74, 77.
Figure 1 also illustrates application servers 120, 122, and 124, image server
126, mail server 134, and database 138. Id. ¶¶ 75–76, 86–88. Image server
126 manages “digital photographs and other human viewable images.” Id.
¶ 86.
Abrams defines “descriptive data” as “[i]nformation that describes a
user or characteristics of a user.” Ex. 1008 ¶¶ 64, 91; see id. ¶ 41. Abrams
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explains that “descriptive data” includes the following information for a
user: (1) “a first and last name”; (2) “attributes of the user, such as gender,
marital status or occupation”; and (3) “a digital image—a photograph—of
the user.” Id. ¶¶ 64, 91. Abrams defines “relationship data” as
“[i]nformation about the friends of a user of the system.” Id. ¶ 70; see id.
¶ 95.
Abrams’s Figure 5 (reproduced below) “shows an exemplary
graphical user interface for displaying a ‘gallery’ of descriptive and
relationship data” for a user. Ex. 1008 ¶ 54.

Figure 5 depicts “exemplary screen 502 provided to a user” that “presents
to the user the other users” in the user’s social network. Id. ¶ 102. Among
other things, Figure 5’s exemplary screen displays photographs associated
with other users in the user’s social network. Id. ¶ 103, Fig. 5.
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Further, Figure 5’s exemplary screen permits the user to “screen what
types of other users” appear in the gallery. Ex. 1008 ¶ 102. The “screening
criteria” include “whether a digital image is available, gender, interests, age,
location, relationship status, when last active in the system, etc.” Id. The
“data displayed about each screened user” include “a digital image, gender,
interests, age, location, relationship status, when last active in the system,
etc.” Id. ¶ 103.
2. DEPENDENT CLAIMS 3 AND 8
Claim 3 depends from claim 1 and recites “wherein displaying some
of the information associated with each of multiple participants includes
displaying an image that is included in the information associated with each
of the multiple participants.” Ex. 1001, 17:52–55. Claim 8 depends from
claim 6 and recites a similar limitation. Id. at 18:43–47.
Petitioner contends that the Collins-Walker-Abrams combination
teaches the subject matter of claims 3 and 8. Pet. 69–71; see Ex. 1004
¶¶ 210–211. Specifically, Petitioner asserts that Collins discloses displaying
“information associated with each of multiple participants,” i.e., information
associated with each matched service provider. Pet. 69 (citing Ex. 1010
¶¶ 86–87, 221, 249, Fig. 8d); see Ex. 1004 ¶¶ 207, 210. Petitioner also
asserts that Abrams discloses displaying “images (e.g., photographs)
associated with each participant” along with other descriptive information
associated with each participant. Pet. 69–70 (citing Ex. 1008 ¶¶ 91,
102–105, Fig. 5); see Ex. 1004 ¶¶ 207, 211.
Patent Owner contends that the Collins-Walker-Abrams combination
does not render claims 3 and 8 unpatentable because no reference discloses
or suggests the “enabling while shielding” limitation in claims 1 and 6.
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Resp. 36–37; Sur-reply 19. Patent Owner makes no other patentability
arguments for claims 3 and 8. Resp. 36–37; Sur-reply 19. For the reasons
discussed above, we do not consider persuasive Patent Owner’s arguments
directed to claims 1 and 6. See, e.g., supra §§ III.E.3(f), III.E.4(c).
We agree with Petitioner that the Collins-Walker-Abrams
combination teaches the subject matter of claims 3 and 8. See Pet. 69–71;
Ex. 1004 ¶¶ 23, 25–26, 114–115, 207, 210–211; Ex. 1008 ¶¶ 30, 50, 52, 54,
64, 86, 91, 100, 102–103, Figs. 2, 3b, 5; Ex. 1010 ¶¶ 86–87, 221, 223, 225,
227, 249, Fig. 8d. For the reasons discussed above, Collins teaches
claim 1’s “displaying while shielding” limitation including “displaying,
for the user, some of the information associated with each of multiple
participants.” See supra § III.E.3(d). Abrams teaches associating an image
with each user of a social network. Ex. 1008 ¶¶ 30, 50, 52, 86, 91, 100,
Figs. 2, 3b; see Ex. 1004 ¶¶ 23, 25–26, 207. Abrams also teaches displaying
for a user images associated with other users in the user’s social network.
Ex. 1008 ¶¶ 54, 102–103, Fig. 5; see Ex. 1004 ¶¶ 114–115, 207, 211. For
instance, Abrams’s Figure 5 “shows an exemplary graphical user interface
for displaying a ‘gallery’ of descriptive and relationship data” for a user
including photographs associated with other users in the user’s social
network. Ex. 1008 ¶¶ 54, 102–103, Fig. 5.
3. COMBINING THE TEACHINGS OF THE REFERENCES
Petitioner asserts that an ordinarily skilled artisan would have looked
to the teachings of Collins and Abrams when designing a matching system
similar to the systems disclosed in the ’107 patent. Pet. 66–68; see Ex. 1004
¶¶ 205–209. In particular, Petitioner argues that “Collins and Abrams are in
the same field and address similar issues with respect to providing interfaces
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for a user to navigate social network systems.” Pet. 66; see Ex. 1004 ¶ 206.
Petitioner also argues that “Collins and Abrams both relate to social
networking systems that match individuals with other individuals and
facilitate connections between them.” Pet. 66–67; see Ex. 1004 ¶ 206.
In addition, Petitioner contends that Collins “provides a consumer-
centric” matching system for supplying “information about service providers
to a consumer.” Pet. 67; see Ex. 1004 ¶¶ 172–173, 207. Petitioner also
contends that Abrams discloses displaying images for potential matches.
Pet. 67; see Ex. 1004 ¶ 207. Petitioner asserts that an ordinarily skilled
artisan would have understood from Abrams “that in some instances it is
advantageous to provide additional information (e.g., images) for each of
the service providers such that consumers have more information available
to them to identify suitable matches.” Pet. 70 (citing Ex. 1008 ¶¶ 45, 91,
102–105, Figs. 3b, 5); see Ex. 1004 ¶¶ 23–24, 211.
To support Petitioner, Dr. Goldberg testified that displaying images
for potential matches in Collins’s system would advantageously provide
additional information to consumers about “each of the service providers
so consumers would have more information available to them to identify
suitable matches.” Ex. 1004 ¶ 211. Dr. Goldberg also testified that an
ordinarily skilled artisan would have understood that making more
information available to consumers would help them make more informed
decisions and “improve the quality of potential matches.” Id. ¶ 207; see id.
¶ 208.
Patent Owner does not make any arguments disputing the rationale to
combine Abrams’s teachings with the teachings of the other references. See,
e.g., Resp. 36–37; Sur-reply 19.
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We agree with Petitioner that an ordinarily skilled artisan would have
had sound reasons, i.e., the reasons articulated by Dr. Goldberg, to combine
Abrams’s teachings with the teachings of the other references. See
Pet. 66–68; Ex. 1004 ¶¶ 205–209, 211; Ex. 1008 ¶¶ 54, 102–103, Fig. 5.
4. CONCLUSION ON OBVIOUSNESS OF CLAIMS 3 AND 8
For the reasons discussed above, Petitioner has shown by a
preponderance of the evidence that claims 3 and 8 are unpatentable under
§ 103(a) as obvious over Collins, Walker, and Abrams.
IV. CONCLUSION
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that (1) claims 1–3, 5–8, 10,
and 11 are unpatentable under § 103(a) as obvious over Collins and Walker;
(2) claims 4 and 9 are unpatentable under § 103(a) as obvious over Collins,
Walker, and Herz; and (3) claims 3 and 8 are unpatentable under § 103(a) as
obvious over Collins, Walker, and Abrams.3

3 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding after the issuance of this Final
Written Decision, we draw Patent Owner’s attention to the April 2019
Notice Regarding Options for Amendments by Patent Owner Through
Reissue or Reexamination During a Pending AIA Trial Proceeding. See
84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a
reissue application or a request for reexamination of the challenged patent,
we remind Patent Owner of its continuing obligation to notify the Board of
any such related matters in updated mandatory notices. See 37 C.F.R.
§ 42.8(a)(3), (b)(2).
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In summary:
Claims 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–3, 5–8,
10, 11 103(a)
Collins,
Walker
1–3, 5–8,
10, 11
4, 9 103(a) Collins, Walker, Herz 4, 9
3, 8 103(a)
Collins,
Walker,
Abrams
3, 8
Overall
Outcome 1–11

V. ORDER
Accordingly, it is
ORDERED that claims 1–11 of the ’107 patent are determined to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Nathan J. Rees
R. Ross Viguet
Robert L. Greeson
Erik Janitens
NORTON ROSE FULBRIGHT US LLP
nate.rees@nortonrosefulbright.com
ross.viguet@nortonrosefulbright.com
robert.greeson@nortonrosefulbright.com
erik.janitens@nortonrosefulbright.com
RPX_IPR_Service@nortonrosefulbright.com

PATENT OWNER:

William P. Ramey, III
Melissa D. Schwaller
RAMEY & SCHWALLER, LLP
wramey@rameyfirm.com
mschwaller@rameyfirm.com