NETSOC LLC

Patent Trials and Appeals Board

Dec 2, 2020

IPR2019-01165 (P.T.A.B. Dec. 2, 2020)

Trials@uspto.gov Paper 33
571-272-7822 Date: 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.
____________

IPR2019-01165
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____________

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

McSHANE, Administrative Patent Judge.

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

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
For the reasons discussed herein, we determine that Petitioner has shown, by
a preponderance of the evidence, that claims 1–11 of U.S. Patent
No. 9,978,107 B2 (Ex. 1001, “the ’107 patent”) are unpatentable.
A. Procedural Background
Chegg, Inc., Match Group, LLC, and RPX Corporation (collectively,
“Petitioner”)1 filed a Petition requesting inter partes review of claims 1–11
(“the challenged claims”) of the ’107 patent pursuant to 35 U.S.C. § 312,
along with the supporting Declaration of Benjamin Goldberg, Ph.D. Paper 4
(“Pet.”); Ex. 1004. NETSOC, LLC (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 12 (“Prelim. Resp.”). Pursuant to 35 U.S.C.
§ 314(a), on December 5, 2019, we instituted inter partes review on the
grounds of:
Claims Challenged 35 U.S.C. § References
1–3, 5–8, 10, 11 103(a)2 Beaudoin3, Shubov4

1 Petitioner identifies IAC/InterActiveCorp, Humor Rainbow, Inc.,
PlentyOfFish Media, ULC, and Match Group, Inc. as other real parties-in-
interest. Pet. 1.
2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, and was 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.
3 US 7,096,193 B1, issued August 22, 2006, claiming priority to Provisional
Application No. 60/135,522, filed on May 21, 1999. Ex. 1005.
4 US Pub. No. 2002/0038233 Al, published March 28, 2002. Ex. 1006.
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4, 9 103(a) Beaudoin, Shubov, Herz5
Pet. 5; Paper 14 (“Inst. Dec.” or “Dec.”).
Patent Owner filed a Patent Owner Response (“PO Resp.”). Paper 20.
Petitioner filed a Reply (“Pet. Reply”) to the Patent Owner Response. Paper
22. Patent Owner filed a Sur-Reply (“PO Sur-Reply”). Paper 24.
An oral hearing was held on September 9, 2020. A transcript of the
hearing is included in the record. Paper 31 (“Tr.”).
B. Related Proceedings
The parties identify these proceedings involving the ’107 patent:
NetSoc, LLC v. Match Group, Inc., 2:18-cv-00217 (E.D. Tex.); NetSoc, LLC
v. Match Group, LLC et al., 3:18-cv-01809 (N.D. Tex.); NetSoc, LLC v.
Chegg Inc., 1:18-cv-10262 (S.D.N.Y.); NetSoc, LLC v. LinkedIn Corp.,
1:18-cv-12215 (S.D.N.Y.); NetSoc, LLC v. Quora, Inc., 1:18-cv-12250
(S.D.N.Y.); and NetSoc, LLC v. Yahoo! Inc., 1:18-cv-12267 (S.D.N.Y.).
Pet. 1–3; Paper 7, 2. The parties indicate that NetSoc, LLC v. Teladoc
Health, Inc., 2:18-cv-00542 (E.D. Tex.) involves U.S. Patent No. 7,565,344
(“the ’344 Patent”), which is related to the ’107 patent. Pet. 2; Paper 7, 2.
Petitioner and Patent Owner also identify another petition, IPR2019-
01171 (“the -01171 proceeding”), challenging the patentability of claims 1–
11 of the ’107 patent. Pet. 1; Paper 7, 3. The final written decision in the
-01171 proceeding is being issued concurrently with this decision.
C. The ’107 Patent
The ’107 patent is entitled “Method and System for Establishing and
Using a Social Network to Facilitate People in Life Issues” and issued on

5 US Pub. No. 2004/0019579 Al, published January 29, 2004. Ex. 1007.
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May 22, 2018 from an application filed on December 18, 2015. Ex. 1001,
codes (22), (45), (54). The ’107 patent claims priority as a continuation or
continuation-in-part of several applications, and claims priority to
provisional application No. 60/499,543, filed on September 3, 2003. Id.,
codes (60), (63).
The ’107 patent is directed to “applications and implementations of a
social network to facilitate individuals to resolve various life issues.” Ex.
1001, code (57). Under its embodiments, a social network may be
established and used to assist individuals with issues to be resolved at a
particular geographic location, including maintaining a list of participants
who can assist in resolving issues at that location. Id. at 2:17–23. Users
may submit inquiries to the service, and the service may select which
participants are best suited to respond to inquiries. Id. at 3:39–41.
The invention of the ’107 patent includes several embodiments, such
as those depicted in Figures 3 and 4, reproduced below.

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Figures 3 and 4, above, are implementations of the invention, such as those
depicted in Figures 1 and 2. Ex. 1001, 1:50–55, 6:46–50, 7:63–82. The
embodiment shown in Figure 3 may be implemented, in part, in accordance
with the example below.
A person may need to relocate to Chicago. The person may be
in need of a special heart medication. What the person may
need to know is how much the medication will cost in Chicago,
and how readily available the new medication is. Under an
embodiment such as described in FIGS. 1–3, the user may
access service 110, select “medical category” through UI 212,
enter an inquiry “I need to check the availability of my heart
medicine in Chicago, and its price . . .” and then send the
message. The service 110 will receive the message, locate the
geographic information (Chicago) and make a selection of who
should receive the information. In one example, the service 110
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may send the inquiry to the Chamber of Commerce in Chicago.
In another example, the service 110 may send the inquiry to one
or more identified doctors or cardiologists.
Ex. 1001, 7:44–58 (bolding omitted). Under the embodiment depicted in
Figure 4, as part of step 410, biographical information about participants is
maintained, step 420 provides for a user-interface that displays a plurality of
categories that may be selected, and at step 430, category and selection
criteria are received from the user. Id. at 8:3–5, 21–23, 26–27. At step 440,
participants are identified based on the category and selection criteria; in
step 450, the matching participants are presented to the user; at step 460, the
user is presented with biographies of the user-selected participants; and at
step 470, the user is enabled to communicate with the selected participants.
Id. at 8:36–52.
Figure 5A, reproduced below, presents another embodiment of a
method of implementation for issue resolution. Ex. 1001, 9:13–17.
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As shown in Figure 5A, above, an association is formed between issue
resolvers and categories (step 510); a user-interface is displayed with the
categories (step 520); a user selects a category (step 530); a message is
received from the user containing an explanation of the issue that falls
within the category (step 540); the user’s message is routed to a participant
by the service that may use a database to determine the association between
the category and assigned participant (step 550); and the performance of the
particular issue resolver is tracked (step 560). Ex. 1001, 9:21–59. As part of
step 550, the user may submit an email, but the recipient of the email is not
known to the user. Id. at 9:55–57.

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Challenged claims 1 and 6 of the ’107 patent are independent. Claim
1, an illustrative independent claim of the ’107 patent, is reproduced below,
with sub-paragraphing added to the limitations for reference purposes.
1. A method for establishing a social network, the method being
implemented on a network computer system and comprising:
[a] 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;
[b] presenting a user with an interface from which the user
makes a selection of a category from a plurality of categories;
[c] 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;
[d] 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;
[e] 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;
[f] tracking a response time of each of the one or more
participants who received the message from the user; and
[g] 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.
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II. ANALYSIS
A. The Parties’ Arguments
In our Decision on Institution, we concluded that the arguments and
evidence advanced by Petitioner demonstrated a reasonable likelihood that at
least one claim of the ’107 patent would have been obvious. Inst. Dec. 19–
40. Here, we determine whether Petitioner has established by a
preponderance of the evidence that the challenged claims are obvious.
35 U.S.C. § 316(e). We previously instructed Patent Owner that “any
arguments for patentability not raised in the response may be deemed
waived.” Paper 15, 7; see also 37 C.F.R. § 42.23(a) (“Any material fact not
specifically denied may be considered admitted.”); In re Nuvasive, Inc., 842
F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding Patent Owner waived an
argument addressed in the Preliminary Response by not raising the same
argument in the Patent Owner Response). Additionally, the Board’s Trial
Practice Guide states that the Patent Owner Response “should identify all the
involved claims that are believed to be patentable and state the basis for that
belief.” Consolidated Trial Practice Guide (“TPG”), 66 (November, 2019).6
We have reviewed arguments and evidence advanced by Petitioner to
support its unpatentability contentions, and Patent Owner chose not to
address certain limitations in its Patent Owner Response. We determine that
Petitioner has demonstrated by a preponderance of the evidence that claims
1–11 of the ’107 patent are obvious.

6 Available at https://go.usa.gov/xpvPF.
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B. Level of Ordinary Skill in the Art
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. In support,
Dr. Goldberg testifies that a person of skill would have been familiar with
the technologies, such as 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 is
defined as having a bachelor’s degree in Computer Science, or highly related
field, and would have had at least four years’ experience in computer
networking, especially in social networking systems.” PO Resp. 3–4. Patent
Owner further contends that, in the alternative, that “a non-degreed
practitioner with eight years of experience in developing social networking
systems would also be considered one of ordinary skill in the art.” Id. at 4.
We have reviewed the relevant technology and claims of the ’107
patent, as well as the technology of the asserted prior art, and we adopt
Petitioner’s proposed skill level because it is commensurate with the
relevant technology.
Patent Owner’s proposed construction is similar to that proposed by
Petitioner to the extent that it requires the person of ordinary skill to have
familiarity with social networking systems. However, Petitioner’s proposed
years of experience and years of familiarity with social networking systems
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is less. This, however, does not affect the determinations made here. See
Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (If
prior art renders claims obvious to a person of ordinary skill with lesser
qualifications, then a person with more qualifications would also find
obviousness). Additionally, in the Decision on Institution, we also adopted
Petitioner’s proposed qualifications. See Inst. Dec. 16–17. In the Decision,
we requested that the parties address what impact, if any, the different levels
of proposed qualifications had on the obviousness analysis. Id. at 17 n. 6.
Neither Petitioner nor Patent Owner identified any differences in their
obviousness analysis due to differences in the qualifications of a person of
ordinary skill in the art. See generally, PO Resp.; Pet. Reply; PO Sur-Reply.
C. Claim Construction
The Board interprets claim terms in accordance with the standard used
in federal district court in a civil action involving the validity or
infringement of a patent. See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.100(b) (2019)). Under the principles set forth by
our reviewing court, the “words of a claim ‘are generally given their
ordinary and customary meaning,’” as would be understood by a person of
ordinary skill in the art in question at the time of the invention. Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
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itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1015, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
“contact information”
In the Decision on Institution, we construed the term “contact
information” to include “information, such as an email address, mailing
address, or telephone number, that permits one entity to communicate
directly with another entity.” Inst. Dec. 19.
We explained that independent claims 1 and 6 recite “the contact
information includ[es] any messaging identifier that is associated with one
of more participants.” See Inst. Dec. 18 (citing Ex. 1001, 17:38–42, 18:28–
32). The ’107 patent specification states that in an embodiment of the
invention that a service handling a request from a user may be forwarded to
the identified participant (Ex. 1001, 8:55–57), where
In such an embodiment, an email address or other contact
information may be shielded from the user. In one variation, it
is also possible to shield the identity of the participant, or the
end person who will be communicating with the user.
Ex. 1001, 8:57–61. That is, “contact information,” such as an email address,
is differentiated from a participant’s identity.
The ’107 patent specification also refers to biographies that may be
stored under an embodiment of the invention, where the biographies include
“email addresses (or [instant messaging] IM tags or other contact
information) to enable the individuals behind the biographies to meet each
other.” Ex. 1001, 15:25–28. Additionally, in a user interface, the biography
page includes “Contact Information” that includes “What is the best way for
someone . . . to contact . . .?” and “They can email me directly at . . . .” Id.
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at 6:57–58, Fig. 6D. These specification portions further support that
contact information is identified as messaging identifiers, such as an email
address.
Thus, in institution, we construed the term in accordance with the
intrinsic record which indicates that the type of information included as
“contact information” is that which allows a user to directly contact a
participant. Inst. Dec. 19. No party challenged the construction in the
Decision on Institution. PO Resp. 3–7; Pet. Reply 8–12; Tr. 12:18–13:6,
23:5–17. We see no reason to deviate from that construction. Therefore, we
adopt the construction of the term “contact information” to include
“information, such as an email address, mailing address, or telephone
number, that permits one entity to communicate directly with another
entity.”
“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”
Patent Owner argues that some of Petitioner’s asserted prior art does
not teach this claim limitation because the asserted prior art does not
disclose displaying participant information in response to the selection of the
category by the user. See PO Resp. 12–14. Patent Owner contends that in
the asserted prior art, the claimed display does not occur as a result of the
user category selection, but rather results from a subsequent process where
there are intervening steps. See id.; see also PO Sur-Reply 67 (“Patent

7 Patent Owner’s Sur-Reply lacks accurate page numbers for the majority of
its pages. We have assumed that the page beginning with the text “I. Claims
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Owner asserts that Beaudoin does not teach ‘in response to’ as there are
intervening steps before display.”). Accordingly, Patent Owner’s arguments
are premised on interpreting the claim limitation term “in response to” to
mean that a user’s selection of a category has to directly result in the display
of participant information and there cannot be any intervening steps.
Patent Owner argues that the plain meaning of the term “in response
to” is “as a reaction to.” PO Sur-Reply 4. Patent Owner refers to a
dictionary definition of “response” as “a reaction to something that has
happened.” Id. at 9 (citing Ex. 2035). Patent Owner contends that “in
response to” cannot mean a “but for” relationship because “the remainder of
the claim includes language that makes clear the information being
displayed ‘match[es] the selection of the category by the user.’” Id. at 6.
Patent Owner contends that its position that the term “in response to” does
not cover intervening steps, “does not depend on ‘limitations that do not
appear in the claim,’ but rather is based on the common and well understood
meaning of the term and the ‘107 patent’s specification.” Id. at 7. Patent
Owner further refers to limitation 1[g], which recites, “updating the rating
associated with each of the one or more participants based at least in part on
the tracked response time.” Id. at 12. Patent Owner argues that “the
inventor intentionally used modifying language (based at least in part) when
addressing an issue of causality in one part of the claim” but “omitted such
language (in response to) in another part of the claim,” which implies that
“had the inventor intended ‘displaying . . . some of the information” to be an

1–11 of the ‘107 Patent Are Not Obvious Over the Petition Art” is marked
accurately as page 2, and we assume that sequential page numbers apply to
the remaining pages of the Sur-Reply. See generally PO Sur-Reply.
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indirect result to receiving the selection of the category, [and] the inventor
would have claimed that.” Id. at 12–13.
Patent Owner further argues that Petitioner’s assertion that the
specification has embodiments with an intervening step is flawed, and in the
referenced portion of the ’107 patent specification the module selects
participants using information of a database, and there is no intervening step
between receiving the category selection and displaying. PO Sur-Reply 8
(citing Ex. 1001, 6:33–42). Patent Owner argues that, even if there is an
embodiment in the ’107 patent which has an intervening step, that is not the
claimed embodiment, and the patent includes other embodiments without
intervening steps. Id. at 8–9 (citing Ex. 1001, 2:37–42, 2:48–53). Patent
Owner asserts that courts “do not usurp the dictionary when the claim term
is clean and unambiguous,” and the claim terms should be read in the
context of the claims and patent. Id. at 10. Patent Owner cites to Ex parte
Cragun, arguing that in that case the Board found that “in response to”
connotes a direct cause-and-effect relationship. Id. at 11–12 (citing Ex Parte
Cragun, Appeal No. 2013-001903 (PTAB Sept. 16, 2015)).
Petitioner asserts that the claims do not require “that ‘displaying . . .
information associated with each of multiple participants’ be directly in
response to receiving the category selection by the user.” Pet. Reply 5.
Petitioner contends that the claim language does not require direct
responsiveness, and the display of information is in response to the category
selection, that is, the display would not have occurred but for the user
making the category selection. Id. Petitioner asserts that the ’107 patent
specification includes an embodiment that discloses intervening steps
between category selection and the display of information. Id. at 5–6 (citing
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Ex. 1001, 6:33–42). Petitioner further contends that Patent Owner
advocated for the adoption of the plain and ordinary meaning of the term “in
response to” and that other courts have applied the Phillips standard and
determined that the ordinary meaning of the term does not require a direct
response. Id. at 6–7 (citing Optis Wireless Tech., LLC v. Huawei Device
Co., No. 2:17-CV-123-JRG-RSP, 2018 WL 476054, at *33 (E.D. Tex. Jan.
18, 2018); Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns LLC, No.
11-2684-JWL, 2014 WL 5089402, at *25 (D. Kan. Oct. 9, 2014);
Progressive Semiconductor Sols. LLC v. Qualcomm Techs., Inc., No. 8:13-
CV-01535-ODW, 2014 WL 4385938, at *8–9 (C.D. Cal. Sept. 4, 2014)).
Considering claim 1, we discern no claim language requiring that a
response to “receiving the selection of the category by the user” be limited to
a direct response. See Ex. 1001, 17:27–28. Contrary to Patent Owner’s
argument, we also do not discern that the recital of limitation 1[g] (“updating
the rating . . . based at least in part on the tracked response time”) implicates
an intent that the omission of similar language in claim element 1[c] should
be construed to mean that the limitation should be interpreted in a more
limited manner. PO Sur-Reply 12–13. That is, we do not discern an
interrelationship or overlap between the terms, or meanings of the terms, of
the respective claim limitations such that they be considered in combination.
Turning to the ’107 patent specification, Petitioner’s arguments rely,
in part, on the ’107 patent specification’s disclosure of an embodiment
where
The UI 212 may provide a form, or a template (such as for use
with a messaging application) to enable a person to enter the
inputs. The category specification may correspond to a list of
categories, each of which are selectable. When the category is
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selected by the user, the module 210 receives the category as
input.
In response to receiving the input through the UI 212, the
module 210 selects participants using the information of the
database 214. Then the module 210 sends messages 222 to
selected participants, where the messages may include the
inquiry content 213, or content based on the inquiry content
213. The number of messages sent 222 may be one or more.
In an embodiment, the module 210 may receive the bios 40
from recipients of messages 222. The module 210 then sends a
compilation 242 (or aggregation) of the bios [biographies] to
the user.
Ex. 1001, 6:27–43. We find that this disclosure in a ’107 patent
embodiment provides support for Petitioner’s argument that there are
intervening steps between user category selection and the display of
information on participants. See Pet. Reply 5. The specification portion
above refers to a description of an implementation using components of the
network service, with the steps of the implementation illustrated in Figure 3.
See Ex. 1001, 1:48–52, 6:27–50; see infra 5. As disclosed and depicted, a
user is presented with a category that can be selected, and upon selection,
participants are selected and the module sends messages 222 to those
participants. See id. Participants then may respond with bios (id. at Fig. 3,
step 360), which are then sent to users for display (id. at 6:40–43, Fig. 3,
step 370). Thus, in this embodiment of the ’107 patent, there are intervening
steps which occur between category selection by the user and the display of
participant information to the user.
Patent Owner argues that the Petitioner’s reliance on embodiments
with intervening steps is flawed because in the referenced portion of the
specification “all that is being made clear . . . is that in the embodiment
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being described, ‘the module 210 selects participants using the information
of the database 212’ ‘in response to receiving the input through the UI
212,’” and there is no intervening step between receiving the category
section and displaying. PO Sur-Reply 8 (citing Ex. 1001, 6:33–42). Patent
Owner appears to misconstrue the ’107 patent specification in its argument.
As above, the specification states that upon receiving the user input, the
module selects participants from the database, but there is no display to users
at that step, as Patent Owner argues. See Ex. 1001, 6:27–43. Instead, the
module sends messages to selected participants, and then may receive the
bios from the participants, which then may be sent and displayed to users.
Id.
We also do not find persuasive Patent Owner’s argument that the ’107
patent includes several embodiments that do not have intervening steps
between user category selection and the display of participant information,
and those are the embodiments claimed. PO Sur-Reply 8–9. We do not find
the argument persuasive because “there is a strong presumption against a
claim construction that excludes a disclosed embodiment.” See In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir.
2011). “[W]here claims can reasonably [be] interpreted to 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). As above, we discern no
limitation recited in claim 1 requiring that there be a direct response to
“receiving the selection of the category by the user.” And Patent Owner
provides only a conclusory statement that certain embodiments are the ones
claimed, but does explain why the claim language would not also apply to
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the embodiment Petitioner identifies, which has intervening steps.
Therefore, Patent Owner’s argument is unsupported in view of the language
of claim 1.
Patent Owner also argues that the Board found a direct cause-and-
effect relationship for the term “in response to” in Cragun. PO Sur-Reply
11–12. On the other hand, Petitioner points to several cases where courts
determined that no direct response was required. See Pet. Reply 6–7.
Interpreting claim terms under Phillips involves considering specifics of the
intrinsic record. See Phillips at 1312–15. In American Calcar, Inc. v.
American Honda Motor Co., which is relied upon in Cragun, the Federal
Circuit considered the intrinsic record to affirm a finding of an automatic
response construction, but noted that in that particular case “the specification
fails to disclose any embodiment that requires any type of user interaction
prior to identification of a service provider.” Am. Calcar, Inc. v. Am. Honda
Motor Co., 651 F.3d 1318, 1340 (Fed. Cir. 2011); see also Cragun, Appeal
No. 2013-001903, at 3–4. Here, we find Cragun and American Calcar are
distinguishable because the ’107 patent specification includes an
embodiment covering a non-direct response to a category selection.
Finally, we do not find persuasive Patent Owner’s argument that its
proffered dictionary definition of “response” as “a reaction to something that
has happened” precludes a response that is not direct. See PO Sur-Reply 2,
5, 9. Rather, we agree with Petitioner that, even under the selected
dictionary definition, the definition allows for reactions that occur as a result
of an action, even if there are intervening steps, because the reaction would
nonetheless happen. See Tr.10:26–11:12.
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“one or more users of the network computer system”
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 recites a similar limitation,
without the word “network.” Id. at 18:48–52.
Petitioner’s arguments on the merits are based on an interpretation of
the claim term “one or more users of the network computer system” used in
claim 4, with similar issues raised for claim 9. Pet. 65–66, 69; Pet. Reply
18–20. Patent Owner presents an argument on the claim construction issue
in its Sur-Reply and at oral hearing, which Petitioner argues is waived
because the argument was not raised in Patent Owner’s Response. PO Sur-
Reply 22; Tr.19:25–20:1. Because the claim term needs to be addressed to
evaluate Petitioner’s contentions on the merits, we will address it here.
Petitioner argues that the phrase “one or more users of the network
computer system” includes “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.” Pet. Reply 18; see also Pet. 66. Petitioner
asserts that: 1) the ’107 patent provides an example of referrals where
participants refer other participants; 2) one of ordinary skill in the art would
have understood that “one or more users of the network computer system” is
not limited to either a participant or user; and 3) there is a lack of antecedent
basis for “one or more users” such that it is “a new entity . . . not tied to ‘the
user’ or ‘the one or more participants.’” Pet. Reply 19–20 (citing Pet. 66
(citing Ex. 1011, 12:11–20); Ex. 1004 ¶ 158). Patent Owner argues that
Petitioner’s contention that “users” includes “participants” is not correct
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because the lack of antecedent basis of “one or more users” does not cause it
to include participants, and instead “merely indicates that it is one or more
users that are not the same user as earlier in claim 4.” PO Sur-Reply 22.
We agree with Petitioner’s arguments. Specifically, comparing claim
1 with claim 4, we do not discern an antecedent basis for the phrase “one or
more users of the network computer system” of claim 4, so the term refers to
a new entity. See Ex. 1001, 17:15–48, 17:56–60; Pet. Reply 19–20.
Petitioner refers to the following disclosure of the ’107 patent
specification:
For example, in one situation, the individual (“Connection 1”)
that the user has selected may not be able to solve the problem
or answer the question the user has submitted. In other
instances, Connection 1 may see other questions or issues the
user has on their bio which are not related to the question
posed. In either case, Connection 1 may know of others, either
inside or outside of his or her network of contacts (online,
personal, friends, family etc.), who may be able to assist the
user with either the original issue or other issues that become
apparent.
Pet. 66 (quoting Ex. 1001, 12:11–20). Further, users of the network system
may be the following entities: organizational participant 122, individual
participant 124, group participant 126, and individual participant 128.
Ex. 1001, 3:50–4:37, Fig. 1. Users also include the following entities shown
in Figure 5B who use the network computer system: Connection 1 520,
Connection 2 530, and Connection 3 540. Id. at 12:10–13:67, Fig. 5B. And
Connection 1 520, Connection 2 530, and Connection 3 540 are participants.
Id. at 12:10–20, 12:47–13:5, 13:28–34, 13:37–44, 13:58–67. Thus, the ’107
patent specification disclosures provide support for Petitioner’s contention
that “one or more users of the network computer system” of claim 4 can be
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participants who use the network computer system. Similarly, we conclude
that the phrase “one or more users of the computer system” in claim 9
encompasses participants who use the computer system.
Other Claim Terms
We determine that it is not necessary to provide an express
interpretation of any other term of the claims. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“[O]nly those terms need be construed that are in controversy, and
only to the extent necessary to resolve the controversy.”).
D. Alleged Obviousness of Claims 1–3, 5–8, 10, and 11
over Beaudoin and Shubov
Petitioner contends that claims 1–3, 5–8, 10, and 11 are rendered
obvious by Beaudoin and Shubov. Pet. 14–61. To support its contentions,
Petitioner provides explanations as to how Beaudoin and Shubov teach each
claim limitation. Id. Petitioner also relies upon the Goldberg Declaration
(Ex. 1004) to support its positions. Patent Owner alleges that the
combination of Beaudoin and Shubov fails to teach some of the limitations
of the claims and that the rationale to combine the references is insufficient.
PO Resp. 9–21; PO Sur-Reply 2–22.
We begin our discussion with a brief summary of Beaudoin and
Shubov and then address the evidence and arguments presented.
1. Beaudoin (Ex. 1005)
Beaudoin is directed to a method and system for matching consumers
with service providers. Ex. 1005, 1:44–45. Beaudoin discloses an
information environment to facilitate efficient identification of pre-qualified,
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appropriate service providers with consumers, to support more efficient
communications, and to allow comparison shopping. Id. at 4:45–53, 5:1–10.
Beaudoin’s system provides a database for service providers based on
information, such as name, address and years in operation, service types,
geographic region and communication mechanisms, provided by the service
providers, that is part of the Customer-driven Service Request (CRS)
process. Ex. 1005, 5:27–30, 5:45–49, 10:24–28. In the CRS process, a user
may select a category of services or the system may provide a path to
identify the problem/issue to lead the user to an appropriate category. Id. at
8:32–38. A commerce facilitator platform brings together consumers and
service providers by matching consumer needs to service providers’
capabilities. Id. at 9:5–10. Figure 7A, reproduced below, illustrates
consumer interactions with the commerce facilitator platform. Id. at 2:38–
40.

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As shown in Figure 7A, above, consumer 750 can access a website
associated with commerce facilitator platform 751 to: (1) identify and
connect with service providers to fulfill their local service needs 752;
(2) access content relevant to these needs 753; (3) utilize various value-
added offerings related to their fundamental local service needs 754;
(4) track the status of these requests after initiation of a service request 755;
and (5) access their consumer profile and change preferences 756. Ex. 1005,
9:17–26.
2. Shubov (Exs. 1006, 1009)
Shubov is directed to a system for matching consumers with
professional service providers. Ex. 1006 ¶ 8. In Shubov, consumers can
access a matching system, browse listings of service providers, and view
more detailed information by clicking on buttons, and can also request bids
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for services from service providers by posting a case. Id. ¶ 9. Screens are
provided that allow a consumer to describe service needs and geographic
location. Id. ¶ 10. The matching system posts the case and transmits case
information to service providers, where the matching system only transmits
consumer information to service providers in the same area of practice and
geographic location by cross referencing the consumer’s case information
with the service provider database for the service provided and geographic
location fields. Id. ¶¶ 10, 11.
A service provider has its own home page where submitted cases can
be reviewed and the service provider can respond if interested in pursuing
the case, with responses transmitted back to the consumer. Ex. 1006 ¶ 12.
A consumer may review the service provider responses and obtain additional
information including information on the service provider, such as rating
information based on ratings and assessments from consumers. Id. ¶ 13.
Shubov claims priority to Provisional Application No. 60/210,857,
filed June 9, 2000 (“the Shubov provisional”), and incorporates it by
reference. Ex. 1006 ¶ 1; Ex. 1009.
3. Analysis
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
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(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
a. Independent Claim 1
i. Preamble and Limitations [a], [b]
Petitioner asserts that Beaudoin teaches a method for establishing a
social network implemented on a network computer system, as recited in the
preamble of claim 1. Pet. 26. Petitioner relies upon Beaudoin’s disclosure
of a method to match consumers and service providers, such as a “method
and apparatus . . . for matching ready-to-act consumers and pre-qualified
service providers.” Id. (citing Ex. 1005. 1:44–45, also citing id. at code (57),
2:23–52, Figs. 1–11, 2:57–3:3). Petitioner argues that these disclosures are
consistent with those of the ’107 patent relating to a social network. Id.
(citing Ex. 1001, 2:4–6, 14:16–20, 15:30–31; Ex. 1004 ¶ 123). For the
disclosure of the implementation on a network computer system, Petitioner
refers to Beaudoin’s disclosure of the use of an internet-based platform and
network computer system. Id. (citing Ex. 1005, 2:23–28, 3:38–4:39, Figs.
1, 2).
Petitioner contends that Beaudoin teaches limitation [a] by its
disclosure of the maintenance of a list of service providers, which includes
information on the service providers including, for instance, individual
service professionals. Pet. 27–28 (citing, e.g., Ex. 1004 ¶ 124; Ex. 1005,
10:63–65, 11:11–14, 11:21–23, 25:2, 41:2, 53:2, 95:2). More specifically,
Petitioner asserts that Beaudoin teaches establishing “a database of pre-
screened service providers,” where service providers enroll in the system.

8 Patent Owner presents no objective indicia in its papers. PO Resp. 9–21;
PO Sur-Reply 2–22.
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Id. at 27. Further, Petitioner relies upon Beaudoin’s disclosure that “service
providers submit information to a database consisting of basic information,
such as name, address and years in operation, and some preference
information, such as service types, geographic region and communication
mechanism 801,” where a unique Service Provider Profile is created for each
service provider. Id. at 27–28 (citing Ex. 1005, 10:24–30, Fig. 8 (blocks 801
and 802)).
Petitioner asserts that Beaudoin teaches limitation [b] by its disclosure
of a user interface that presents a listing of service categories, which a user
can select from. Pet. 28–30 (citing, e.g., Ex. 1005, 8:42–43, 8:32–37; Ex.
1004 ¶ 126). For support, Petitioner refers to exemplary user interfaces
where consumers can make a selection of a category from categories using a
dropdown menu. Id. (citing Ex. 1005, 25:2, 27:2).
Patent Owner presents no arguments specific to these claim
limitations. See generally, PO Resp.
We have reviewed Petitioner’s arguments and evidence for these
claim limitations and are persuaded that Petitioner has provided sufficient
evidence that the combination of Beaudoin and Shubov teaches the preamble
and limitations [a] and [b] of claim 1.9
ii. Limitation [c]
Petitioner contends that limitation [c] of claim 1 is taught by the
combination of Beaudoin and Shubov, with Beaudoin disclosing a system
that matches service providers for selected categories in response to a
consumer’s selections. Pet. 31 (citing, e.g., Ex. 1005, 9:5–10). Petitioner

9 We make no specific determination as to whether the preamble of claim 1
is limiting.
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asserts that once a CRS, that is, a Consumer-driven Service Request, is
completed, the matching process of Beaudoin uses information from service
providers’ profiles and the consumer’s category selection to identify a group
of eligible service providers for the CSR. Id. (citing Ex. 1005, 8:20–54,
10:51–57, 10:63–11:10, Fig. 8). Petitioner contends the information
associated with matched multiple service providers is then displayed to the
consumer. Id. at 32 (citing, e.g., Ex. 1005, 4:45–53, 9:5–15, 11:21–23,
14:50–60, 15:61–65, Fig. 8 (block 812), Fig. 11 (blocks 1107–1108)).
Petitioner acknowledges that Beaudoin does not explicitly disclose
“shielding contact information associated with each of the multiple
participants” of limitation 1[c]. Pet. 32. Petitioner asserts that Shubov
teaches contact information of a service provider can be shielded from a
consumer. Id. (citing Ex. 1006 ¶¶ 4, 16–19, 39; Ex. 1009, 246, 364).
Petitioner contends that in Shubov consumers and service providers can
“communicate anonymously within the matching system,” and the displays
of information in Shubov do not include identity or contact information. Id.
at 32–34. Petitioner further asserts that one of ordinary skill in the art would
have found it obvious to modify Beaudoin to provide a feature of shielding
for a number of reasons, including to maintain anonymity, and/or prevent
out-of-band communications. Id. (citing Ex. 1004 ¶¶ 25–29, 128–130). Dr.
Goldberg testifies that the rationale for a skilled artisan to want to shield this
information would have been preservation of privacy and also to prevent a
consumer from directly contacting a service provider by withholding contact
information in order to prevent bypassing and allow an intermediary to
benefit from a transaction. Ex. 1004 ¶¶ 27, 29.
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Patent Owner contends that the combination of Beaudoin and Shubov
fails to teach different portions of claim element 1[c], and we address Patent
Owner’s arguments in turn.
(1) Display Is Not Performed “In Response
to Receiving the Selection of the
Category by the User”
Patent Owner argues that as to the “in response to” portion of claim 1,
“Petitioner does not even allege that this aspect of [c] is disclosed or
suggested by Beaudoin and Shubov. Rather, it is simply ignored.” PO
Resp. 13. Patent Owner also argues that neither Beaudoin nor Shubov
disclose or suggest limitation [c] because both references describe a process
where a consumer makes a submission, but neither supports that the
displayed information is responsive to the alleged category selection. Id. at
12–13 (citing Ex. 1006 ¶ 15). More specifically, Patent Owner asserts that
in Beaudoin, the service receives a service request from the consumer, and
the service generates a new communication for prospective service
providers, who are invited to make a bid for the job. Id. at 13 (citing
Ex. 1005, cols. 49–50, 53–54). Patent Owner asserts that Beaudoin
discloses that its display “about a Consumer’s Service Request is responsive
to the communications they receive from the service providers, but the
information displayed by Beaudoin is not responsive to the Consumer
Service Request.” Id. at 14.
Patent Owner further asserts that Shubov discloses “the matching
system can assist the attorney in creating an offer using the make an offer
function 601.” PO Resp. 14 (citing Ex. 1006 ¶ 144). Patent Owner argues
that in Shubov, the attorney’s transmittal of a bid is through the matching
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system to the consumer and “is therefore not responsive to the consumer’s
bid request—it is responsive to the attorney reviewing and completing his or
her bid.” Id.
In Reply, Petitioner argues that, contrary to Patent Owner’s
allegations, the Petition provides arguments regarding the teaching of
limitation 1[c]. Pet. Reply 3 (citing Pet. 31–32). Petitioner asserts that
Patent Owner is alternatively “attempting to recraft the claim by reading
substantial limitations into the words ‘in response to’ to require that
something is done immediately upon the selection of a category.” Id.
Petitioner asserts that Beaudoin teaches displaying information in
response to receiving the selection of the category by the user because a user
selects a category and that selection is submitted to the Matching Process,
which identifies and compiles eligible service providers, and in response,
multiple service providers information, that is, information for eligible
service providers that match the consumer’s selection is displayed to the
consumer. Pet. Reply 3–4 (citing Ex. 1005, 4:45–53, 8:20–54, 9:5–15,
10:51–57, 10:63–11:10, 11:21–23, 14:50–60, 15:61–65, 16:9–12, 89:2, 91:2,
Fig. 8 (block 812); Ex. 1004 ¶ 127).
Petitioner further contends that Patent Owner’s argument that an
intervening step in Beaudoin’s disclosure does not teach the limitation “in
response to” is meritless because the claims do not require “that ‘displaying
. . . information associated with each of multiple participants’ be directly in
response to receiving the category selection by the user.” Pet. Reply 5.
Petitioner argues that the claim language does not require direct
responsiveness, and the display of information is in response to the category
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selection, that is, the display would not have occurred but for the user
making the category selection. Id.
We determine that the Petition provides sufficient argument and
evidence that the combination of Beaudoin and Shubov teach limitation 1[c].
See Pet. 31–35; Ex. 1004 ¶¶ 127–132. More specifically, we agree with
Petitioner’s assertions that Beaudoin discloses displaying information in
response to receiving the selection of the category by the user because a user
selects a category and, in response to the receipt of the selection of the
category, the matching process of Beaudoin uses information to identify a
group of eligible service providers and associated information is then
displayed to consumers (users). See Pet. 31–32. We are not persuaded by
Patent’s Owner’s arguments because they are based on the premise that it is
impermissible to have intervening steps between the receipt of the category
selection and the display of participant information, as we have determined
that there may be intervening steps under the claim interpretation adopted
for this limitation. See supra Section II.C.
(2) No Teaching of “Shielding Contact
Information”
Patent Owner argues that Beaudoin does not disclose that it shields
contact information associated with the participants, but rather discloses the
contact information. PO Resp. 14 (citing Ex. 1005, cols. 21–22); see also
PO Sur-Reply 14 (citing Ex. 1005, cols. 89–90). Patent Owner also asserts
that Shubov does not cure the deficiency of Beaudoin because it discloses
that its matching system response includes the “attorney profile and contact
information.” Id. at 15 (citing Ex. 1006 ¶ 16). Patent Owner contends that
although Shubov discloses “consumers and attorneys both have log on
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names which allow then [sic] to communicate anonymously,” this portion of
the disclosure is not related to the offer-submission process from attorneys.
Id. at 15–16 (citing Ex. 1006 ¶ 39); see also PO Sur-Reply 15–16. Patent
Owner further argues that in Shubov, one entity is able to directly
communicate with the other, and the complete offer will include the attorney
profile and contact information, so the contact information is not shielded.
PO Sur-Reply 15–16 (citing Ex. 1006 ¶¶ 4, 16–19, 39). Patent Owner
asserts that the Shubov provisional depicts a profile of an attorney offer that
is provided as part of an offer from an attorney, rather than from a match
based on a category selected by a user. Id. at 16 (citing Ex. 1009, 3, 246).
Patent Owner further argues that Petitioner’s reliance on the Shubov
provisional is incorrect, because “any material in the provisional that is not
physically present and published in Shubov is not part of Shubov.” PO Sur-
Reply 14 (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
1375, 1381 (Fed. Cir. 2015)). Patent Owner contends that although “a
provisional becomes available to the public after the publication of an
application claiming priority to it, it would not be found unless one went to
the PAIR record for an application claiming priority to the provisional.” Id.
(citing Ex. 2043, 37 C.F.R. § 1.53(2)(d)(6); Ex. 2044, 35 U.S.C. § 122).
In Reply, Petitioner asserts that Patent Owner cherry picks an
embodiment of Shubov for its arguments, but Shubov discloses instances
where a consumer may only see attorney identification, while shielding the
attorney’s contact information. Pet. Reply 9–10. Petitioner also responds
that log on names are not limited to the anonymous communication context
in Shubov, and, additionally, a person of ordinary skill would have known
that the shielding-contact-information concept could be applied to Beaudoin
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with respect to displaying results. Id. at 11–12 (citing Pet. 32–34; Ex. 1009,
246, 364; Ex. 1004 ¶¶ 128–132, 25–29).
In response to Patent Owner’s argument on the use of the Shubov
provisional, Petitioner argues that the provisional becomes public when the
underlying application published, and, additionally, this is not an instance of
trying to establish a § 102(e) priority date and Dynamic Drinkware does not
apply here. Tr. 13:8–14:20.
As an initial matter, we do not agree with Patent Owner’s argument
that the Shubov provisional cannot be considered. PO Sur-Reply 14.
Shubov incorporates the Shubov provisional by reference. Ex. 1006 ¶ 1.
Unpublished applications, including provisional applications, are preserved
in confidence, but are made publicly available “if the application is
identified in . . . a U.S. patent application publication.” 37 C.F.R. § 1.14
(a)(1)(iv). Accordingly, the Shubov provisional was publicly available at
least at the time the Shubov patent application was available, that is, by
March 28, 2002. Further, because the Shubov provisional was incorporated
by reference into Shubov, the provisional is also part of Shubov itself. We
agree with Petitioner that Dynamic Drinkware does not apply here because it
is directed to determining an effective priority date under § 102(e), which is
not at issue here. See Dynamic Drinkware, 800 F.3d at 1387–1382; see also
Pet. 6 (asserting Shubov is § 102(b) prior art). Additionally, as discussed,
the Shubov provisional is legally deemed to be publicly available, and Patent
Owner provides no explanation for the alleged lack of public accessibility,
i.e. the assertion that “[the Shubov provisional] would not be found unless
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one went to the PAIR record.” See PO Sur-Reply 14.10 Accordingly, we
determine that the Shubov provisional disclosures may be considered in
Petitioner’s assertions for the prior art teachings of the shielding portion of
limitation 1[c].
We are not persuaded by Patent Owner’s arguments related to
Beaudoin because Petitioner also relies upon Shubov for its teaching of
contact information of a service provider that can be shielded from a
consumer. See Pet. 32. As discussed above, we construe “contact
information” to include “information, such as an email address, mailing
address, or telephone number, that permits one entity to directly
communicate with another entity.” See supra Section II.C. Shubov’s
provisional provides examples of user displays of participant information
where contact information, such as email addresses, mailing addresses, and
telephone numbers, are not provided to the user. See Ex. 1009, 246, 34611.
Additionally, we agree with Petitioner’s argument that because Shubov
discloses anonymous attorney-consumer communication via an anonymous
e-mail address, a display of the participant information absent contact

10 Patent Owner refers to “37 C.F.R. 1.53(2)(d)(6)” in support, but we could
not find a rule section with this designation. PO Sur-Reply 14 n.34.
11 We disregard Patent Owner’s argument about a “hot button” (see
Tr.35:22–36:13, 36:26–38:4, 41:16–42:25) directed to some of the
participant display examples because that argument was raised for the first
time at oral hearing. At oral hearing, a party may only present arguments
relied upon in previously presented papers. TPG, 85–86. Even if we were
to consider this argument, we would still find it unpersuasive because the
participant display examples in Shubov’s provisional meet the requirements
of the claim limitation: the relied-upon displays show participant
information but in the display contact information is shielded from the view
of the user. See Ex. 1009, 246, 346.
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information would be consistent with this disclosure. See Ex. 1006 ¶ 4; Pet.
Reply 11–12. Further, we agree with Petitioner’s assertion, and the
underlying rationale, that a person of ordinary skill would have known that
the shielding-contact-information concept could be applicable to Beaudoin
for displaying results. See Pet. 32–34; Pet. Reply 11–12.
We are also not persuaded by Patent Owner’s argument that the
Shubov provisional depicts a profile of an attorney offer that is provided as
part of an offer from an attorney, rather than from a match based on a
category selected by a user. PO Sur-Reply 16. This argument is based on
Patent Owner incorrectly contending that Petitioner bodily incorporates
Shubov into Beaudoin, and is also based on Patent Owner’s proposed
prohibition on intervening steps performed “in response to,” which we have
not adopted, as discussed above. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Thus, we agree with Petitioner’s assertions that the combination of
Beaudoin and Shubov disclose the “shielding” portion of limitation 1[c], and
we are not persuaded by Patent’s Owner’s arguments.
(3) No Motivation to Combine Beaudoin and
Shubov
Patent Owner argues that there is no motivation to combine Beaudoin
and Shubov because Beaudoin enables a consumer to be the initiator of
communications with a participant, which allows the user to “be
noncommittal,” while participants who are searched for “are shielded from
having contact information disclosed until a point where the searcher is
committed.” PO Resp. 16. Patent Owner asserts that the purpose of the
anonymity feature of Shubov “is to enable attorneys to discuss cases with
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prospective clients without there being any attorney/client relationship.” Id.
Patent Owner argues that Petitioner misapplies the motivation to combine
because, assuming for the sake of argument, all of Petitioner’s argument
apply, “for there to be motivation to combine Beaudoin and Shubov,
motivation would be to incorporate anonymity with the returned result.” Id.
at 16–17 (emphasis omitted). Patent Owner further argues that, if Shubov
were combined with Beaudoin, “quotes from service providers would not
identify the name of the Service Provider, or any other information about the
Service Provider,” and this would destroy the purpose of Beaudoin, which is
to provide service providers with referrals. Id. at 17. Additionally, Patent
Owner asserts that because Beaudoin allows for the service to contact the
service providers, the service providers only receive Consumer Service
Requests and then the Service Provider must submit a winning bid, but
“maintaining anonymity will not facilitate the service provider in submitting
a winning bid, as the user will be unable to view the business name or
reputation.” Id.
Patent Owner’s arguments are based on bodily incorporation of
embodiments of Shubov into Beaudoin; however, “[t]he test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . Rather, the test is
what the combined teachings of those references would have suggested to
those of ordinary skill in the art.” Keller, 642 F.2d at 425. Instead,
Petitioner applies some of the teachings of Shubov in some instances, that is,
to shield contact information in results. See Pet. 34. And the Petition
provides sufficient support for the rationale to modify Beaudoin with
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Shubov to offer advantages with the initial withholding of contact
information. Pet. 32–34; Ex. 1004 ¶¶ 25–29.
Thus, we agree with Petitioner’s evidence and argument in support of
the rationale to combine Beaudoin and Shubov, and we are not persuaded by
Patent’s Owner’s arguments.
(4) Limitation [c] – Conclusion
On this record, we are persuaded that Petitioner has provided
sufficient evidence that the combination of Beaudoin and Shubov teaches
limitation 1[c] and a sufficient rationale to combine the references has been
provided.
iii. Limitation [d]
Petitioner asserts that Beaudoin teaches a rating and review
process/quality seal that allows consumers to rate service providers, which is
updated in real-time and displayed to consumers. Pet. 35. Petitioner further
contends that the display of service providers’ information may be based at
least in part on their rating, such as by consumer sorting based on ratings.
Id. (citing Ex. 1005, 16:13–16). Petitioner also refers to Beaudoin’s
disclosure that “the rating information may also serve as a component for the
Matching Process 1106 by combining the individual scores, potentially with
a weighting scheme, to create a composite score,” so the results of a
matching search are based in part on rating information. Id. at 35–36 (citing
Ex. 1004 ¶ 134; Ex. 1005, 17:5–9, Fig. 11 (block 1112)).
Patent Owner presents no arguments specific to these claim
limitations. See generally, PO Resp.
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has provided sufficient evidence
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that the combination of Beaudoin and Shubov teaches limitation [d] of claim
1.
iv. Limitation [e]
Petitioner asserts that Beaudoin or the combination of Beaudoin and
Shubov teaches limitation [e] by Beaudoin’s disclosure of consumer
communications to service professionals, with contact information of the
service professionals shielded from the consumer. Pet. 36–37 (citing Ex.
1005, 93:2, 95:2, 5:25–38, 9:49–57, 15:11–60, 16:17–31, 14:44–67, 18:14–
54, Fig. 11 (block 1109); Ex. 1004 ¶ 135). Petitioner refers to a messaging
window of Beaudoin where the name and company of a service professional
is identified, but with no messaging identifier, such as an email address,
provided. Id. at 37–38 (citing, e.g., Ex. 1005, 95:2).
Petitioner also contends that the combination of Beaudoin and Shubov
teaches enabling a user to send an inquiry message while shielding contact
information, for reasons similar to those provided for limitation [c]. Pet. 38–
41. More specifically, Petitioner refers to Shubov’s disclosure that
consumers and service providers have log on names (i.e., identification
numbers) so they can “communicate anonymously within the matching
system.” Id. at 39 (citing Ex. 1006 at ¶ 39). Petitioner asserts that a person
of ordinary skill in the art would have understood a reason to shield contact
information would be in order to prevent direct contact between a consumer
and service provider for anonymity. Id. at 40–41 (citing Ex. 1004 ¶¶ 136–
138, 25–29; Ex. 1006 ¶¶ 4, 18, 39). Petitioner further contends that a person
of ordinary skill in the art would have applied the conceptual teachings of
Shubov to the very similar teachings of Beaudoin at least to provide
improved privacy for the service provider and to discourage communicating
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outside of the matching system. Id. at 41 (citing Ex. 1004 ¶¶ 137–138, 25–
29).
Patent Owner argues that in the portion of Beaudoin that Petitioner
relies upon, contact information is disclosed to the user in the interface for
composing and sending messages. PO Resp. 17–19 (citing Ex. 1005, 95:2).
Patent Owner refers to Beaudoin’s disclosure that when messaging and
“Return” is hit, contact information of the service provider is shown. Id. at
20 (citing Ex. 1005, 93–96). Patent Owner contends that Beaudoin’s
disclosure “goes against the plain meaning of the claim terms, as the system
in Beaudoin does plainly allow for the user to view the contact information
of the recipient.” Id. at 19.
Patent Owner further argues that Shubov does not cure the deficiency
of Beaudoin because it permits only anonymous communications, and
“[a]ny communication between parties where one is anonymous would not
provide an equivalent teaching for ‘enable the user to send an inquiry
message to one or more of the multiple participants.’” PO Resp. 20. Patent
Owner further argues that Shubov does not teach the claim limitation
because in Shubov, “[t]he system, not the user, handles the anonymous
communication between the user and the participant.” PO Sur-Reply 18.
Patent Owner’s arguments on the combination of Beaudoin and
Shubov are impermissibly based on bodily incorporation. Keller, 642 F.2d
at 425; PO Resp. 20; PO Sur-Reply 18. However, in combination, Petitioner
contends that the messaging disclosed in Beaudoin is combined with
Shubov’s concept of shielding contact information. Pet. 36–41. More
specifically, Petitioner contends that messaging between a consumer and
service provider, as disclosed in Beaudoin, is combined with Shubov’s
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concept of shielding contact information in anonymous communications
between consumers and service providers (attorneys). Ex. 1005, 95:2, Fig.
11 (block 1109), 18:14–54; Ex. 1006 ¶ 39 (“communicat[ing] anonymously
within the matching system”). And the Petition provides sufficient support
of the rationale to modify Beaudoin with Shubov to offer advantages of
maintaining anonymous communications. See Pet. 37–41; Ex. 1004 ¶¶ 136–
138, 25–29.
Thus, the Petition’s evidence and argument presented in support of the
prior art teachings of limitation [e] is sufficient, as is the rationale to
combine Beaudoin and Shubov, and we are not persuaded by Patent’s
Owner’s arguments.
v. Limitation [f]
Petitioner asserts that Beaudoin teaches limitation [f] by its disclosure
of “Process Tracking/Update” regarding service provider status information
and consumer request status. Pet. 41 (citing Ex. 1005, 6:9–13, 8:14–18,
9:17–18, Fig. 7a (block 755), 9:36–41, Fig. 7b (block 765), 13:33–36).
Petitioner contends that provider’s response time to consumer’s message
impacts the priority of specific service providers over others. Id. (citing Ex.
1005, 11:11–17). Petitioner also asserts that Beaudoin’s claims 4 and 11
recitals support the teaching of the limitation. Id. at 41–42 (citing, e.g., Ex.
1005, claim 4, 109:25–27 (“selecting home service providers from the
second list based upon past response times of each respective home service
provider”)).
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Patent Owner presents no arguments specific to this claim limitation.
See generally, PO Resp.12
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has provided sufficient evidence
that the combination of Beaudoin and Shubov teaches limitation [f] of
claim 1.
vi. Limitation [g]
Petitioner contends that the combination of Beaudoin and Shubov
teaches limitation [g] by Beaudoin’s teachings of service quality ratings and
prioritizing service providers based on tracked response times, with updating
of ratings in real-time, and one of skill in the art would understand that a
ratings update would include basing it on response time. Pet. 42–43 (citing
Ex. 1004 ¶ 141). Petitioner additionally asserts that one of ordinary skill in
the art would have had knowledge that response times commonly impact
ratings, as reflected in the teachings of Shubov, with its update of service
providers’ ratings based at least on a tracked response time. Id. at 43–44
(citing Ex. 1004 ¶ 142; Ex. 1006 ¶¶ 154–156; Ex. 1009, 360). Petitioner
argues that a person of skill would have applied Shubov’s teachings to
Beaudoin because doing so would have improved search results for a user to
ensure access to quality service providers. Id. at 44–45. Petitioner further

12 Although Patent Owner provided some arguments related to this claim
limitation, as well as some other claim limitations and other claims, in the
Preliminary Response, no arguments were presented in the Patent Owner
Response. We ordered that “any arguments for patentability not raised in
the [Patent Owner] response may be deemed waived,” and absent any
arguments raised in the Response, we deem them to be waived by Patent
Owner. Paper 15, 7.
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contends that this modification utilizes known features to function in the
same manner and would yield predictable results. Id. at 45.
Patent Owner presents no arguments specific to this claim limitation.
See generally, PO Resp.
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has provided sufficient evidence
that the combination of Beaudoin and Shubov teaches limitation [g] of
claim 1.
vii. Conclusion
To summarize, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin and
Shubov teaches all the limitations of claim 1, there is adequate rationale to
combine the references, and claim 1 is unpatentable as obvious over
Beaudoin and Shubov.
b. Independent Claim 6
Independent claim 6 recites a computer system that includes a
memory and a processor to maintain a list of participants, and steps that
perform functions paralleling the steps of independent claim 1. See
Ex. 1001, 18:5–38.
Petitioner contends that Beaudoin teaches a computer system (Ex.
1005, 3:39–41, Fig. 1), the use of a memory to store a participant list (id. at
3:45–49, 1:49–50), and processors that may be programmed to perform steps
(id. at 3:12–17). Pet. 55–57. Petitioner also asserts that the combination of
Beaudoin and Shubov teaches the remainder of the limitations for claim 6
for similar reasons to those presented for claim 1. Id. at 57–59.
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Patent Owner argues that claim 6 is not rendered obvious because
neither Beaudoin nor Shubov teaches limitations 1[c] (“in response to”) and
1[e] (“send[ing] inquiry message”). PO Resp. 20–21. We do not find these
arguments persuasive for the reasons discussed above.
We have reviewed Petitioner’s arguments and evidence for this claim
and are persuaded that Petitioner has provided sufficient evidence that the
combination of Beaudoin and Shubov teaches all the limitations of claim 613.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin and
Shubov teaches all the limitations of claim 6, there is adequate rationale
presented to combine the references, and claim 6 is unpatentable as obvious
over Beaudoin and Shubov.
c. Claims 2 and 7
Claim 2 depends from claim 1 and additionally recites that “receiving
the selection of the category from the plurality of categories includes
receiving input that identifies a geographic location.” Ex. 1001, 17:49–51.
Claim 7 recites a similar limitation. Id. at 18:39–42.
Petitioner asserts that Beaudoin discloses receiving the selection of a
category from several categories. Pet. 45. Petitioner argues that Beaudoin
discloses a user interface with a dropdown menu with a zip code field, which
“allows ServiceMagic to match you to service professionals in your
neighborhood.” Id. at 46 (citing Ex. 1005, 25:2). Petitioner also contends
that Shubov teaches the claim 2 limitation by its disclosure of a matching

13 We make no specific determination as to whether the preamble of claim 6
is limiting.
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system that takes into account geographic locations of the consumers and
service providers. Id. at 46–47 (citing Ex. 1006 ¶¶ 10, 166).
We have reviewed the evidence presented in the Petition and are
persuaded that Petitioner has provided sufficient evidence that the
combination of Beaudoin and Shubov teaches the limitations of claims 2
and 7. For instance, Petitioner contends that Shubov discloses a matching
system that accounts for geographic locations. Pet. 46–47. Shubov
discloses that in its matching system a consumer is presented with a display
of questions that allow a consumer to describe service needs and geographic
location (Ex. 1006 ¶ 10), and transmission of this information “to service
providers in the same area of practice and same geographic location by cross
referencing the consumer’s case information with the service provided and
geographic location fields of the service provider database” (id. ¶ 11).
Petitioner asserts that a person of skill in the art would have applied
Shubov’s receipt of input to similar teachings of Beaudoin and its selection
of a category to provide improved search results. Pet. 47 (citing Dr.
Goldberg’s testimony on the same (Ex. 1004 ¶ 144)).
Patent Owner argues that dependent claims 2 and 7 are not rendered
obvious based on the arguments presented for the respective independent
claims from which claims 2 and 7 depend. PO Resp. 21. We do not find the
arguments on the independent claims persuasive for the reasons discussed
above.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin and
Shubov teaches all the limitations of claims 2 and 7, an adequate rationale
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has been presented to combine the references, and claims 2 and 7 are
unpatentable as obvious over Beaudoin and Shubov.
d. Claims 3 and 8
Claim 3 depends from claim 1 and additionally recites that
“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, 17:53–55.
Claim 8 recites a similar limitation. Id. at 18:43–47.
Petitioner contends that both Beaudoin and Shubov teach the display
of information for multiple participants that includes an image. Pet. 48–51,
60. Petitioner relies upon, in part, Beaudoin’s presentation of “certified
banner” image associated with the service provider in a display, as well as a
“ServiceMagic Rating” for a provider presented as an image. Id. at 48–51
(citing Ex. 1005, 89:2, 91:214, 99:2).
We have reviewed the evidence presented in the Petition and are
persuaded that Petitioner has provided sufficient evidence that the
combination of Beaudoin and Shubov teaches the limitations of claims 3
and 8. More specifically, we agree with Petitioner’s contention that
Beaudoin discloses that it displays information associated with the
participants in image form, such as banners and star images, which is
included in the information sent regarding the participants. See Ex. 1005,
89:2, 91:2, 99:2
Patent Owner argues that dependent claims 3 and 8 are not rendered
obvious based on the arguments presented for the respective independent

14 On page 50 of the Petition, below the reproduced figure, Petitioner refers
to “89:2,” however, this appears to be a typographical error.
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claim from which claims 3 and 8 depend. PO Resp. 21. We do not find the
arguments on the independent claims persuasive for the reasons discussed
above.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin and
Shubov teaches all the limitations of claims 3 and 8, there is adequate
rationale presented to combine the references, and claims 3 and 8 are
unpatentable as obvious over Beaudoin and Shubov.
e. Claims 5 and 10
Claim 5 depends from claim 1 and additionally recites that
“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 recites a similar limitation. Id. at 18:53–59.
Petitioner contends that both Beaudoin and Shubov teach display of
information for multiple participants based on respective ratings. Pet. 52–
54, 60–61. Petitioner asserts that Beaudoin discloses displaying information
for participants who match the category selection and have a higher rating in
favor of information associated with participants who have a lower rating.
Id. at 52 (citing Ex. 1004 ¶ 148). Petitioner relies upon Beaudoin’s
disclosure that consumers can “sort the presentation order based on different
variables, including composite rating” and “service providers replying
promptly are given priority over others.” Id. (citing Ex. 1005, 16:14–15,
11:16–17).
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We have reviewed the evidence presented in the Petition and are
persuaded that Petitioner has provided sufficient evidence that the
combination of Beaudoin and Shubov teaches the limitations of claims 5
and 10. For instance, Petitioner contends that Beaudoin discloses sorting the
presentation order based on different variables, including composite ratings,
with service providers replying promptly given priority. See Ex. 1005,
16:14–15, 11:16–17.
Patent Owner argues that dependent claims 5 and 10 are not rendered
obvious based on the arguments presented for the respective independent
claim from which claims 5 and 10 depend. PO Resp. 21. We do not find the
arguments on the independent claims persuasive for the reasons discussed
above.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin and
Shubov teaches all the limitations of claims 5 and 10, there is adequate
rationale presented to combine the references, and claims 5 and 10 are
unpatentable as obvious over Beaudoin and Shubov.
f. Claim 11
Claim 11 depends from claim 6 and additionally recites that “the
computer system corresponds to a server, or a combination of servers.” Ex.
1001, 18:60–62.
Petitioner contends that Beaudoin teaches a computer system that
includes servers. Pet. 61 (citing Ex. 1005, 3:38–4:39, 4:40–60, 2:23–28,
Figs. 1, 2, claim 15).
We have reviewed the evidence presented in the Petition and are
persuaded that Petitioner has provided sufficient evidence that the
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combination of Beaudoin teaches the limitations of claim 11. For instance,
Beaudoin discloses the use of a system that uses an electronic network that
includes servers. See Ex. 1005, Fig. 2, claim 15.
Patent Owner argues that dependent claim 11 is not rendered obvious
based on the arguments presented for the respective independent claim from
which claim 11 depends. PO Resp. 21. We do not find the arguments on the
independent claims persuasive for the reasons discussed above.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin and
Shubov teaches all the limitations of claim 11, there is adequate rationale
presented to combine the references, and claim 11 is unpatentable as obvious
over Beaudoin and Shubov.
E. Alleged Obviousness of Claims 4 and 9 over Beaudoin, Shubov,
and Herz
Petitioner contends that claims 4 and 9 are rendered obvious by
Beaudoin, Shubov, and Herz. Pet. 63–69. To support its contentions,
Petitioner provides explanations as to how Beaudoin, Shubov, and Herz
teach each claim limitation. Id. Petitioner also relies upon the Goldberg
Declaration (Ex. 1004) to support its positions. Patent Owner alleges that
the combination of Beaudoin, Shubov, and Herz fails to teach some of the
limitations of the claims. PO Resp. 22–23; PO Sur-Reply 19–22.
We begin our discussion with a brief summary of Herz and then
address the evidence and arguments presented.
1. Herz (Ex. 1007)
Herz is directed to a professional referral network using the network
to provide greater efficiency in the referral process. Ex. 1007 ¶ 5. The
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referral network in made available via a web interface over the Internet, and
consists of a client ratings database, professional ratings database, an
availability list, and a referral bid engine. Id. ¶ 14. Specialized
professionals looking for clients may register with the system and a referring
professional may provide a client’s identity and needs to the referral
network, and the referral network will then present the most suitable
candidates to the referring professional. Id. ¶¶ 20–22. Patients may rate
physicians, and, additionally, physicians may rate referral physicians who
are referred to their patients. Id. ¶ 31.
2. Analysis
Claim 4 depends from claim 1 and further recites “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 contains a similar
limitation. Id. at 18:48–52.
Petitioner asserts that one of ordinary skill in the art would have been
motivated to combine Beaudoin and Herz because the references are in the
same field and address the same problems. Pet. 63 (citing Ex. 1004 ¶¶ 153–
154). More specifically, Petitioner asserts that both Beaudoin and Herz
relate to matching consumers (clients) with service providers (professionals)
and facilitating connections between these entities in an efficient manner.
Id. Petitioner contends that Beaudoin further teaches that the system is
benefitted when potential service providers are identified by a service
provider to provide for additional services. Id. at 64 (citing Ex. 1005,
15:15–20). Petitioner argues that “Herz teaches that it is advantageous to
use a referral system that identifies the best-qualified individuals or groups
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for a specialty problem to provide quality matches to clients.” Id. (citing Ex.
1007 ¶¶ 1, 5, 33–34; Ex. 1004 ¶ 155). Petitioner asserts that a person of skill
in the art “would have found it obvious to utilize the conceptual teachings of
Herz to implement an improved referral process at least to allow for
additional matches to be identified to a consumer,” and would have modified
Beaudoin to utilize the Herz referral system in order “to allow for additional
matches to be identified to ensure a consumer has access to quality results.”
Id. (citing Ex. 1004 ¶ 155).
Petitioner relies upon Beaudoin’s disclosure that an “enrolling service
provider may be encouraged to identify potential Service Provider
participants that can be contacted regarding the service (‘Referred
Prospects’)” to teach the claim limitation. Pet. 67 (citing Ex. 1005, 15:15–
20). Petitioner also contends that the concept of referrals was known, as
demonstrated in Herz, which discloses referring physicians choosing
appropriate specialists for clients. Id. at 67–68 (citing Ex. 1007 ¶¶ 6, 14, 16,
18, 30–32, 20–22; Ex. 1004 ¶ 160). Petitioner’s contentions are based upon
an interpretation of the claim limitation in view of the disclosures of the ’107
patent, which we discuss supra Section II.C. Id. at 65–66.
Patent Owner did not present arguments specific to claims 4 and 9 in
its Response, except to the extent that Patent Owner argued that these claims
contain elements of independent claims that are not obvious. PO Resp. 23.
In its Sur-Reply, Patent Owner asserts for the first time that Herz does not
teach a “referral” as required by the claims and the ratings of Herz are not “a
referral.” PO Sur-Reply 20. Patent Owner contends that the ’107 patent
uses “ratings” in claims 1 and 6, so “rating” and “referral” have different
meanings. Id. Patent Owner argues that Herz does not remedy the
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deficiencies in the teachings of Beaudoin and Shubov in teaching elements
1[c] and 1[e]. Id. Patent Owner also argues claim construction of claim 4 in
its Sur-Reply and at the oral hearing, contending that the term “one or more
users” of claims 4 and 9 should be construed as just “users” and should not
include “participants.” PO Sur-Reply 22; Tr. 24:6–25:2.
Petitioner asserts that, except for the arguments based on the
independent claims, Patent Owner’s arguments should not be considered
because they were first raised in Sur-Reply and were not addressed in the
Patent Owner Response. Pet. Reply 18; Tr. 23:23–24:6. We agree. As
previously noted, we deem that any arguments not raised in the Patent
Owner Response are waived. Paper 15, 7. However, even if we were to
consider Patent Owner’s late-raised arguments, we would still not find them
persuasive.
Beginning with Petitioner’s arguments and evidence, we determine
that they sufficiently support that the asserted prior art teaches the
limitations of claims 4 and 9. More specifically, as above, Petitioner relies
upon Herz disclosing referring physicians choosing appropriate specialists
for clients in combination with Beaudoin to teach the limitations of claims 4
and 9. Pet. 68–69 (citing Ex. 1007 ¶¶ 6, 14, 16, 18, 30–32, 20–22; Ex. 1004
¶ 160). As discussed supra Section II.C, we have interpreted the term “one
or more users” in claims 4 and 9 to mean that “users” can be participants
who use the network computer system. Further, Herz explains, for example,
that its referral system may present a screen with the most suitable candidate
and “then [it is] up to the judgement of the referring professional to choose
the most appropriate specialist for his client,” which discloses the “referral
provided by one or more users” of the claims. Ex. 1007 ¶ 22. We agree
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with Petitioner that one of ordinary skill in the art would have been
motivated to modify Beaudoin to use this type of referral in order to improve
its referral process to allow for additional matches to be identified to a
consumer. Pet. 64 (citing Ex. 1004 ¶ 155). Accordingly, we are persuaded
that Petitioner has provided sufficient evidence that the combination of
Beaudoin, Shubov, and Herz teaches the limitations of claims 4 and 9.
We are not persuaded by Patent Owner’s argument that the ratings of
Herz are not “a referral” because, even with the use of ratings in Herz’s
referral system, professionals nevertheless ultimately select the most
appropriate specialist for referral. Ex. 1007 ¶ 22. Additionally, we do not
find persuasive Patent Owner’s arguments based on claim construction
because we have adopted a claim construction contrary to Patent Owner’s
interpretation. Finally, we do not find persuasive Patent Owner’s arguments
based on the alleged deficiencies of the independent claims for the reasons
discussed above.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Beaudoin, Shubov,
and Herz teaches all the limitations of claims 4 and 9, there is adequate
rationale presented to combine the references, and claims 4 and 9 are
unpatentable as obvious over Beaudoin, Shubov, and Herz.
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III. CONCLUSION15
In summary:

IV. ORDER
For the reasons given, it is:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1–11 of U.S. Patent No. 9,978,107 B2 are
unpatentable; and
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

15 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
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).
Claims 35 U.S.C. § References
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 5–8, 10,
11
103(a) Beaudoin,
Shubov
1–3, 5–8, 10,
11

4, 9 103(a) Beaudoin,
Shubov, Herz
4, 9
Overall
Outcome
1–11
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For PETITIONER:

NORTON ROSE FULBRIGHT US LLP
nate.rees@nortonrosefulbright.com
ross.viguet@nortonrosefulbright.com
robert.greeson@nortonrosefulbright.com
erik.janitens@nortonrosefulbright.com

For PATENT OWNER:

RAMEY & SCHWALLER, LLP
wramey@rameyfirm.com
mschwaller@rameyfirm.com