Parus Holdings, Inc.

Patent Trials and Appeals Board

Oct 19, 2021

IPR2020-00846 (P.T.A.B. Oct. 19, 2021)

Trials@uspto.gov Paper 31
571-272-7822 Date: October 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
ELECTRONICS U.S.A., INC.,
Petitioner,

v.

PARUS HOLDINGS, INC.,
Patent Owner.
____________

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____________

Before DAVID C. MCKONE, STACEY G. WHITE, and
SHELDON M. MCGEE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background and Summary
Google LLC, Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., LG Electronics Inc., and LG Electronics U.S.A., Inc.
(collectively, “Petitioner”) filed a Petition requesting an inter partes review
of claims 1, 2, 4–7, 9, 10, 13, and 14 of U.S. Patent No. 7,076,431 B2
(Ex. 1001, “the ’431 patent”). Paper 2 (“Pet.”). Parus Holdings, Inc.
(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6
(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted this
proceeding. Paper 9 (“Dec.”).
Patent Owner filed a Patent Owner’s Response (Paper 14, “PO
Resp.”), Petitioner filed a Reply to the Patent Owner’s Response (Paper 22,
“Reply”), and Patent Owner filed a Sur-reply to the Reply (Paper 24, “Sur-
reply”). An oral argument was held in this proceeding and IPR2020-00847
on July 27, 2021. Paper 30 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1,
2, 4–7, 9, 10, 13, and 14. Based on the record before us, Petitioner has
proved, by a preponderance of the evidence, that claims 1, 2, 4–7, 9, 10, 13,
and 14 are unpatentable.

B. Related Matters
The parties identify the following district court proceedings as related
to the ’431 patent: Parus Holdings Inc. v. Apple, Inc., No. 6:19-cv-00432
(W.D. Tex.); Parus Holdings Inc. v. Amazon.com, Inc., No. 6:19-cv-00454
(W.D. Tex.); Parus Holdings Inc. v. Samsung Electronics Co., Ltd.,
No. 6:19-cv-00438 (W.D. Tex.); Parus Holdings Inc. v. Google LLC,
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No. 6:19-cv-00433 (W.D. Tex.); and Parus Holdings Inc. v. LG Electronics,
Inc., No. 6:19-cv-00437 (W.D. Tex.). Pet. xi; Paper 5, 1. The case against
LG Electronics, 6:19-cv-00437, has been transferred to the United States
District Court for the Northern District of California. Ex. 1032. The
remaining cases have been consolidated. Ex. 2017. We refer the
consolidated cases collectively as “the Texas case.”
The parties also identify the following inter partes review
proceedings: Apple Inc. v. Parus Holdings, Inc., IPR2020-00686
(challenging the ’431 patent) and Apple Inc. v. Parus Holdings, Inc.,
IPR2020-00687 (challenging U.S. Patent No. 9,451,084 (“the ’084 patent”))
(“the Apple IPRs”); and Google LLC v. Parus Holdings, Inc., IPR2020-
00847 (challenging the ’084 patent). Pet. xii–xiii; Paper 5, 1–2.

C. The ’431 Patent
The ’431 patent describes a system that allows users to browse web
sites and retrieve information using conversational voice commands.
Ex. 1001, 1:20–23. Figure 1, reproduced below, illustrates an example:
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Figure 1 is a block diagram of a voice browsing system. Id. at 4:16–17.
Figure 3, reproduced below, shows additional details of media server 106, a
component shown in Figure 1:
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Figure 3 is a block diagram of Figure 1’s media server 106. Id. at 4:20–21.
Media server 106 includes speech recognition engine 300, speech
synthesis engine 302, Interactive Voice Response (IVR) application 304, call
processing system 306, and telephony and voice hardware 308 to
communicate with Public Switched Telephone Network (PTSN) 116. Id. at
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5:62–6:1. When a user speaks into voice enabled device 112 (e.g., a
wireline or wireless telephone), speech recognition engine 300 converts
voice commands into data messages. Id. at 6:4–8. Media server 106 uses
results (e.g., keywords) generated by speech recognition engine 300 to
retrieve web site record 200 stored in database 100 that can provide the
information requested by the user. Id. at 6:44–50. Media server 106 selects
the web site record of highest rank and transmits it to web browsing server
102 along with an identifier indicating what information is being requested.
Id. at 6:52–56. Speech synthesis engine converts the data retrieved by web
browsing server 102 into audio messages that are transmitted to voice
enabled device 112. Id. at 6:57–60.
According to the ’431 patent, with its system,
[u]sers are not required to learn a special language or command
set in order to communicate with the voice browsing system of
the present invention. Common and ordinary commands and
phrases are all that is required for a user to operate the voice
browsing system. The voice browsing system recognizes
naturally spoken voice commands and is speaker-independent;
it does not have to be trained to recognize the voice patterns of
each individual user. Such speech recognition systems use
phonemes to recognize spoken words and not predefined voice
patterns.
Id. at 4:34–43.
Claim 1, reproduced below (bracketed numbering added to track the
numbering used in the Petition), is illustrative of the invention:
1. A system for retrieving information from pre-selected
web sites by uttering speech commands into a voice enabled
device and for providing to users retrieved information in an
audio form via said voice enabled device, said system
comprising:
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[1a] a computer, said computer operatively connected to
the internet;
[1b] a voice enabled device operatively connected to said
computer, said voice enabled device configured to
receive speech commands from users;
[1c] at least one speaker-independent speech recognition
device, said speaker-independent speech
recognition device operatively connected to said
computer and to said voice enabled device;
[1d] at least one speech synthesis device, said speech
synthesis device operatively connected to said
computer and to said voice enabled device;
[1e] at least one instruction set for identifying said
information to be retrieved, said instruction set
being associated with said computer, said
instruction set comprising:
a plurality of pre-selected web site addresses, each
said web site address identifying a web site
containing said information to be retrieved;
[1f] at least one recognition grammar associated with
said computer, each said recognition grammar
corresponding to each said instruction set and
corresponding to a speech command;
said speech command comprising an information request
selectable by the user;
[1g] said speaker-independent speech recognition device
configured to receive from users via said voice
enabled device said speech command and to select
the corresponding recognition grammar upon
receiving said speech command;
[1h] said computer configured to retrieve said instruction
set corresponding to said recognition grammar
selected by said speaker-independent speech
recognition device;
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[1i] said computer further configured to access at least
one of said plurality of web sites identified by said
instruction set to obtain said information to be
retrieved,
[1j] said computer configured to first access said first
web site of said plurality of web sites and, if said
information to be retrieved is not found at said first
web site, said computer configured to sequentially
access said plurality of web sites until said
information to be retrieved is found or until said
plurality of web sites has been accessed;
[1k] said speech synthesis device configured to produce
an audio message containing any retrieved
information from said pre-selected web sites, and
said speech synthesis device further configured to
transmit said audio message to said users via said
voice enabled device.

D. Evidence
Petitioner relies on the references listed below.
Reference Date Exhibit No.
Kovatch WO 01/50453 A2 July 12, 2001 1005
Neal US 6,324,534 B1 Nov. 27, 2001 1007
Chakrabarti US 6,418,433 B1 July 9, 2002 1008
DeSimone US 5,787,470 July 28, 1998 1009
Kurganov-262 US 2001/0047262 A1 Nov. 29, 2001 1004

Petitioner also relies on the Declaration of Stuart J. Lipoff (Ex. 1002),
the Declaration of Martin Walker (Ex. 1053), and the Reply Declaration of
Mr. Lipoff (Ex. 1057).
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Patent Owner relies on the Declaration of Alexander Kurganov
(Ex. 2020), the Declaration of Benedict Occhiogrosso (Ex. 2059), and the
Declaration of Paul Mulka (Ex. 2060).

E. The Instituted Grounds of Unpatentability
Claim(s) Challenged 35 U.S.C. § References/Basis
1, 2, 4–7, 10, 13, 14 103(a)1 Kovatch, Neal
1, 2, 4–7, 9, 10, 13, 14 103(a) Kovatch, Neal, Chakrabarti
14 103(a) Kovatch, Neal, DeSimone
14 103(a) Kovatch, Neal, Chakrabarti, DeSimone
9 103(a) Kurganov-262, Chakrabarti
14 103(a) Kurganov-262, DeSimone2

II. ANALYSIS
A. Claim Construction
For petitions filed after November 13, 2018, we construe claims
“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), including construing the
claim in accordance with the ordinary and customary meaning of such claim
as understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see also Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’431
patent was filed before March 16, 2013, the effective date of the relevant
amendment, the pre-AIA version of § 103 applies.
2 In its listing of grounds, Petitioner includes Chakrabarti in its combination
with Kurganov-262 and DeSimone. Pet. 2. This appears to be a
typographical error, as Petitioner’s analysis of claim 14 includes only
Kurganov-262 and DeSimone. Id. at 63–68.
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In the Petition, Petitioner contended that we should give the claim
terms their plain and ordinary meaning, and did not identify any claim term
for construction. Pet. 6.
In its Response, “Patent Owner relies upon no specialized meanings
or disclaimers.” PO Resp. 18.
Based on the record before us, we do not find it necessary to provide
express claim constructions for any terms. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(noting that “we need only construe terms ‘that are in controversy, and only
to the extent necessary to resolve the controversy’”) (quoting Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
In the Institution Decision (Dec. 27–28), we noted that the District
Court in the Texas case provided the following constructions (Ex. 2016, 2):
Claim(s) Term Texas Court’s Construction
1 “voice enabled device” Plain and ordinary meaning,
where the plain and ordinary
meaning is not limited to
wireline or wireless telephone,
IP phone, wireless PDA, or
other wireless device, and
where the voice enabled device
contains an audio input (e.g., a
microphone)
1, 5, 6 “speaker-independent speech
recognition device”
“speech recognition device that
recognizes spoken words
without adapting to individual
speakers or using predefined
voice patterns”
1 “recognition grammar” “the words, phrases, and/or
sounds a user can say that will
be recognized by the speech
recognition engine”
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Claim(s) Term Texas Court’s Construction
1, 7, 9,
10, 13,
14
“web site” Plain and ordinary meaning
1 “select the corresponding
recognition grammar upon
receiving [said/the] speech
command”
Plain and ordinary meaning
1 “instruction set for
identifying [said/the]
information to be retrieved”
Not subject to § 112, ¶ 6. Plain
and ordinary meaning
1 “access at least one of
[said/the] plurality of web
sites identified by [said/the]
instruction set to obtain
[said/the] information to be
retrieved”
Plain and ordinary meaning
1 “said computer configured to
first access said first web site
of said plurality of web sites
and, if said information to be
retrieved is not found at said
first web site, said computer
configured to sequentially
access said plurality of web
sites until said information to
be retrieved is found or until
said plurality of web sites has
been accessed”
Not subject to § 112, ¶ 6. Plain
and ordinary meaning

Similar to what we observed in the Institution Decision (Dec. 28), we see
nothing inconsistent between these constructions and our analysis of the
claims, below. Nevertheless, neither party contends that these constructions
have any bearing on our application of the claims to the prior art.

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B. Patent Owner’s Earlier Conception and Reduction to Practice
Arguments are Improperly Incorporated by Reference and Will Not
Be Considered
Patent Owner contends that the inventors of the ’431 patent conceived
of their invention before January 4, 2000, the filing date of U.S. Prov. No.
60/174,371 (Ex. 1006), the provisional application to which Kovatch claims
the benefit. PO Resp. 31; see also Ex. 1005, code (30).
“Conception is the formation, in the mind of the inventor, of a definite
and permanent idea of the complete and operative invention, as it is
thereafter to be applied in practice.” Cooper v. Goldfarb, 154 F.3d 1321,
1327 (Fed. Cir. 1998) (citing Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1376 (Fed. Cir. 1986)). “A reduction to practice can be
either a constructive reduction to practice, which occurs when a patent
application is filed, or an actual reduction to practice.” Id. (citing Hybritech,
802 F.2d at 1376). “In order to establish an actual reduction to practice, the
inventor must prove that: (1) he constructed an embodiment or performed a
process that met all the limitations of the [claim]; and (2) he determined that
the invention would work for its intended purpose.” Id. “Where a party is
first to conceive but second to reduce to practice, that party must
demonstrate reasonable diligence toward reduction to practice from a date
just prior to the other party’s conception to its reduction to practice.”
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996).
“In an inter partes review, the burden of persuasion is on the
petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35
U.S.C. § 316(e), and that burden never shifts to the patentee.” Dynamic
Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). Petitioner also bears an initial burden of production to go forward
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with prior art that would render the challenged claims obvious. Id. at 1379.
Petitioner has met that burden by providing detailed allegations that Kovatch
and Neal (and for claim 9, Chakrabarti) teach each limitation of the
challenged claims and that an ordinarily skilled artisan would have been
motivated to combine teachings of the prior art and would have reasonably
expected success doing so. Pet. 6–44. The burden of production then
shifted to Patent Owner to argue or produce evidence that Kovatch is not
prior art. See Dynamic Drinkware, 800 F.3d at 1380; see also In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–76 (Fed. Cir. 2016) (“In Dynamic
Drinkware, we noted that, in the context of establishing conception and
reduction to practice for the purposes of establishing a priority date, the
burden of production can shift from the patent challenger to the patentee.
800 F.3d at 1379. This is because a patent challenger has the burden of
producing evidence to support a conclusion of unpatentability under § 102 or
§ 103, but a patentee bears the burden of establishing that its claimed
invention is entitled to an earlier priority date than an asserted prior art
reference.”); Mahurkar, 79 F.3d at 1577 (“Had Dr. Mahurkar not come
forward with evidence of an earlier date of invention, the Cook catalog
would have been anticipatory prior art under section 102(a) because
Dr. Mahurkar’s invention date would have been the filing date of his
patent.”).
Patent Owner alleges, without meaningful explanation in the
Response, that the inventors conceived of their invention no later than
July 12, 1999, and reduced it to practice in a prototype no later than
December 31, 1999. PO Resp. 31–32. Patent Owner avers generally to
“time-stamped source code, emails, documents, and the testimony of Paul
Mulka and Benedict Occhiogrosso” as evidence that corroborates testimony
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of Alexander Kurganov, but does not cite to any such evidence or testimony
with specificity. Id.
Patent Owner further alleges that, to the extent reduction to practice is
found in a prototype supported by computer source code dated January 7,
2000, the inventors worked diligently between January 4 and January 7.
Id. at 32. In support of this argument, Patent Owner cites generally to large
portions of its supporting declarations. Id. (citing Ex. 2020 ¶¶ 103–119;
Ex. 2059 ¶¶ 44–91; Ex. 2060 ¶¶ 1–6). According to Patent Owner, it “relies
on the source code revision logs and emails, as well as the testimony of Paul
Mulka,” which “shows that from December 1999 to early January 2000, the
inventors were employed full-time on the Webley Assistant project, and
every file, or file modification they committed to the source code revision
system, was for the Webley Assistant project.” Id. at 33. Patent Owner
further argues that “[t]his activity logged in the source code revision system
was directed toward and reasonably necessary for a reduction to practice.”
Id. In the Response, Patent Owner does not cite to any evidence with
specificity to support these arguments. Patent Owner further argues that “all
of the diligence activity here by the inventors was related to the claimed
subject matter and other enhancements to the voice browser in which the
claimed subject matter operated.” Id. at 34 (citing generally to Ex. 2058;
Ex. 2060). Patent Owner concludes that “the source code revision logs
shows that the activity during the diligence period was directed toward and
reasonably necessary for a reduction to practice,” but does not explain the
basis for this conclusion or cite to any evidence to support it. Id.
According to our rules, “[a]rguments must not be incorporated by
reference from one document into another document.” 37 C.F.R.
§ 42.6(a)(3). For example, the Board has explained that “parties that
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incorporate expert testimony by reference in their petitions, motions, or
replies without providing explanation of such testimony risk having the
testimony not considered by the Board.” Patent Trial and Appeal Board
Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing
Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB
Aug. 29, 2014) (Paper 12) (informative)).
Petitioner argues that the case made in Patent Owner’s Response is
“conclusory in fashion,” “does not [] identify particular exhibits where the
‘source code’ and unidentified ‘documents’ can be found, and never explains
the relevance of any evidence or how it maps to any challenged claim.”
Reply 1. Instead, Petitioner argues, Patent Owner “improperly seeks to
make its antedating case in pages of block-cited argument provided in non-
word-count-limited declarations which cannot be incorporated by reference
into the” PO Response. Id. In support of its argument, Petitioner cites to the
Federal Circuit’s non-precedential case, General Access Solutions, Ltd. v.
Sprint Spectrum L.P., 811 Fed. Appx. 654 (Fed. Cir. 2020).
In General Access, the Federal Circuit affirmed a Board decision
declining to consider arguments on prior conception when those arguments
were not substantively presented in the patent owner’s briefing and, instead,
merely directed the Board to arguments and evidence presented in an
inventor declaration and attached claim charts. Gen. Access, 811 Fed. Appx.
at 656–57. The Federal Circuit noted the “policy goals” of our rule
prohibiting such incorporation by reference, including minimizing
overlooked arguments, eliminating abuse, and avoiding situations where the
Board is “forced to ‘play archeologist with the record’ and search for

3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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arguments that might have made outside of the parties’ briefing.” Id. at 657
(quoting Rules of Practice for Trials Before the Patent Trial and Appeal
Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77
Fed. Reg. 48,612, 48,617 (Aug. 14, 2012)). The Federal Circuit explained
that the patent owner “had to present a case to establish prior conception of
every claim limitation,” and that patent owner’s “briefing failed to meet this
burden.” Id. at 658.
We determine that Patent Owner has not presented its arguments
regarding prior conception and reduction to practice in its Response or Sur-
reply; rather, Patent Owner presents its arguments in several declarations
and improperly incorporates those arguments by reference into its Response
and Sur-reply, in violation of Rule 42.6(a)(3). See, e.g., PO Resp. 32 (citing
Ex. 2059 ¶¶ 44–91; Ex. 2060 ¶¶ 1–6; Ex. 2020 ¶¶ 103–119).
As to conception, the Patent Owner Response includes two paragraphs
making a conclusory allegation, without specificity, that the named inventors
conceived of “the claimed subject matter” while working on a system named
“the Webley Assistant.” PO Resp. 31–32. Patent Owner cites to a single
paragraph of Mr. Kurganov’s Declaration, without explaining its relevance.
Id. (citing Ex. 2020 ¶ 13). Patent Owner argues that Mr. Kurganov’s
testimony regarding a conception date of July 12, 1999, is “corroborated by
the time-stamped source code, emails, documents, and the testimony of Paul
Mulka and Benedict Occhiogrosso.” Id. at 31–32. Patent Owner does not
cite to any of this evidence with specificity. Patent Owner’s Response does
not attempt to map any evidence to any limitation of any claim of the ’431
patent. Nor does the Response point to where such argument and evidence
might be found, in declarations or otherwise. Rather, Patent Owner invites
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us to read the Kurganov, Mulka, and Occhiogrosso declarations and
construct for ourselves a case for conception of ten claims.
In the Sur-reply, to rebut Petitioner’s arguments that Patent Owner
had not met its burden of production in the PO Response, Patent Owner
argues that “[i]n its[] antedating materials, Parus included claim charts that
used excerpts of the source code to demonstrate exactly which parts of the
source code met the claim limitations in claim charts and included the entire
source code files for Petitioners’ inspection.” Sur-reply 2–3. The Patent
Owner Response does not reference any claim charts. Indeed, the Sur-reply
does not indicate where, in the record, the claim charts can be found.
Although none of Patent Owner’s briefing indicates what “antedating
materials” include such claim charts, both the Kurganov Declaration and the
Occhiogrosso Declaration appear to provide element-by-element comparison
of aspects of the alleged Webley Assistant to claims of the ’431 patent, and
Mr. Kurganov’s declaration references Exhibits 2027 and 2028, one of
which, Exhibit 2027, appears to be a claim chart mapping claims of the ’431
patent to the Webley System. See Ex. 2020 ¶¶ 21–83; Ex. 2059 ¶¶ 47–69;
Ex. 2027; Ex. 2028. Although Patent Owner has not been specific, these
materials appear to be Patent Owner’s arguments explaining the
correspondence of the evidence to the limitations of the claims. Thus, Patent
Owner seeks to incorporate at least 84 paragraphs (46 pages) of argument
from declarations and 50 pages of claim charts into the Response and/or the
Sur-reply to support its allegations of prior conception. This is improper
under Rule 42.6(a)(3), and Patent Owner’s arguments regarding prior
conception will be disregarded.
As to reduction to practice, Patent Owner argues that “[t]he evidence
produced in Mr. Kurganov’s declaration, along with the accompanying
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exhibits, demonstrate that the enhancements to the Webley Assistant
reduced the ’431 and ’084 inventions to practice in a prototype no later than
December 31, 1999, five days before Kovatch’s earliest filing date of
January 4, 2000.” PO Resp. 32. Patent Owner does not further explain this
contention or cite to any evidence to support it.
As an alternative, Patent Owner contends that the invention was
reduced to practice in a prototype on January 7, 2000, when a “grammar file
was entered into the source code revision system.” Id. Patent Owner
provides no further explanation. Instead, Patent Owner cites generally to the
Occhiogrosso, Mulka, and Kurganov declarations. Id. (citing Ex. 2059
¶¶ 44–91; Ex. 2060 ¶¶ 1–6; Ex. 2020 ¶¶ 103–119). Even here, it is not clear
whether Patent Owner cites to these declarations to support its reduction to
practice argument or to show diligence between Kovatch’s January 4, 2000,
date and January 7, 2000. Id.
Petitioner responds that Patent Owner has not made its case for
reduction to practice in its Response, opting instead to incorporate its
arguments by reference to multiple declarations, claim charts, and other
evidence. Reply 3–5. Petitioner also provides argument as to specific
deficiencies in the evidence, should we consider the declarations, claim
charts, source code, and emails in the record not addressed with specificity
in the Response. Id. at 5–12.
As to Petitioner’s arguments in the Reply that Patent Owner did not
support its reduction to practice case in the Response, Patent Owner argues
that it “included extensive source code versioning records to demonstrate
that the versions of the source code that Parus cites, were in fact entered into
the source code versioning system by 12/31/1999.” Sur-reply 3. Patent
Owner does not provide a citation to support this argument. Later, Patent
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Owner argues that “Mr. Mulka pulled the source code commits out of the
source code versioning system while creating a detailed report of activity in
the source code revision system,” and that “[e]ach of the entries in this
report demonstrated that the files were indeed committed to the system by
the relevant date.” Id. (citing Ex. 2058). Patent Owner provides no further
explanation of Mr. Mulka’s testimony or the activity log of Exhibit 2058,
which may or may not be the “Exhibit A” referenced in, but not attached to,
Mr. Mulka’s declaration. Ex. 2060 ¶ 6 (referencing “CVS records between
December 1, 1999 and January 10, 2000 (attached as Exhibit A)”).
Similarly, Patent Owner argues, without citation, that it “provided email
communication that showed that the system was complete.” Sur-reply 3.
As noted above, Patent Owner must introduce evidence that the
constructed embodiment met all the limitations of the claims at issue. See
Cooper, 154 F.3d at 1327. In the Sur-reply, Patent Owner argues that its
evidence demonstrates such an embodiment, but does not explain where this
is shown. Sur-reply 5–10. Rather, the Sur-reply contains empty assertions,
without citation, that “the source code alone is an actual reduction to practice
of the claimed invention”; “Parus provides source code that defines the
functionality of the system, and need not be synthesized into a physical
embodiment, in addition to the claimed computer making up an actual
reduction of practice of the system of the claims of the ’431 and ’084
patents”; and “[t]he evidence demonstrates an embodiment having a
computer meeting all claimed limitations, contrary to Petitioners’
assertions.” Id. at 5–7. Patent Owner argues that “Mr. Kurganov’s
testimony and the evidence presented demonstrate that the claimed computer
was embodied by a UNIX cluster of servers that was used to provide Parus’s
Webley Assistant product.” Id. at 7 (citing Ex. 2020 ¶ 14; Ex. 2025). In the
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cited testimony, Mr. Kurganov testifies that source code of the first version
of the Webley Assistant was implemented on a UNIX cluster of servers, but
says nothing of the later Webley Assistant that appears to be the basis of
Patent Owner’s allegations of reduction to practice.4 Ex. 2020 ¶ 14. In any
case, Mr. Kurganov does not testify here regarding any claims of the ’431
patent. Patent Owner then argues that “Mr. Kurganov makes this clear in his
declaration as well in his deposition testimony and email communications
that the system was operational.” Sur-reply 7. Here, Patent Owner cites,
without specificity, to 80 paragraphs of declaration testimony and 36 email
and source code exhibits. Id. (citing Ex. 2020 ¶¶ 20–102; Exs. 2021–2057;
Ex. 1050, 21:17–22:8, 32:17–23)). This is another example of improper
incorporation by reference, and Patent Owner’s assertions of reduction to
practice will be disregarded.
As noted above, as part of its showing for an actual reduction to
practice, Patent Owner must introduce evidence that the invention worked
for its intended purpose. See Cooper, 154 F.3d at 1327. Patent Owner did
not contend in its Response that the invention allegedly reduced to practice

4 To show conception and reduction to practice, Patent Owner appears to
rely on a later version of the Webley Assistant, namely, “the WA-II
enhancements, which embody the Challenged claims.” Sur-reply 4. Patent
Owner does not explain the relevance of the earlier first version of the
Webley Assistant, “WA I,” discussed in Mr. Kurganov’s declaration
(Ex. 2020 ¶ 14).
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worked for its intended purpose. Petitioner pointed this out in the Reply.
Reply 13–15.5
Responding to Petitioner, Patent Owner argues that Mr. Mulka
authenticated unspecified source code files and that “Mr. Kurganov
recognized the files and detailed how they demonstrated that the code
functioned for its intended purpose.” Sur-reply 3. Here, Patent Owner cites
generally to the entirety of Mr. Kurganov’s declaration (Ex. 2020), as well
as the claim charts of Exhibits 2027 and 2028. Id. Patent Owner continues,
arguing that “Mr. Occhiogrosso examined Mr. Kurganov’s declaration and
his exhibits and testified as a [person of ordinary skill in the art] that the
source code worked as Mr. Kurganov testified.” Id. at 4 (citing Ex. 2059,
¶¶ 44–91). Patent Owner does not provide further explanation or argument;
rather, the detailed explanation of the evidence is contained in
Mr. Occhiogrosso’s declaration rather than the Response or Sur-reply. This
is an improper incorporation of over 150 paragraphs of argument from two
declarations, as well as over 50 pages of claim charts.

5 Patent Owner argues in several instances that Petitioner has not proved that
the Webley System or source code did not work. See, e.g., Sur-reply 4 (“At
his deposition, Petitioners did not challenge Mr. Kurganov’s testimony
related to the functionality of the produced source code. (Ex. 1050). Parus
asked Petitioners’ expert, Dr. Martin Walker, if the code did not work for its
intended purpose, and Dr. Walker indicated that he did not form an opinion
as to whether the code functioned for its intended purpose.”), 8 (“The source
code identified by Mr. Kurganov shows conclusively that the embodiment of
the invention memorialized by the source code operated for its intended
purpose. Petitioners do not even challenge that showing.”), 8 (“Petitioners
identify absolutely no error in the source code or alleged failure in the
operation of the source code.”). This misstates the respective burdens.
Petitioner need not introduce evidence or attempt to disprove Patent
Owner’s evidence until Patent Owner has introduced that evidence properly.
Magnum Oil Tools, 829 F.3d at 1375–76.
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Patent Owner also argues that “Mr. Kurganov makes [] clear in his
declaration as well in his deposition testimony and email communications
that the system was operational.” Id. at 7 (citing Ex. 2020 ¶¶ 20–102;
Exs. 2021–2057; Ex. 1050, 21:17–22:8, 32:17–23). The explanation of the
applicability of this evidence to the claims is in Mr. Kurganov’s declaration
rather than the Response or the Sur-reply. Id. at 8 (“Mr. Kurganov provided
evidence that walked through each source code file highlighting where the
claimed functionality of the ’431 . . . patent[] could be found in the code.”).
This is another improper incorporation by reference of at least 80 paragraphs
of argument from a declaration.
Patent Owner further argues that “Parus demonstrated the system
worked for its intended purpose,” and gave as examples that “Parus provided
an inventor declaration, exhibits, and associated source code that delineated
how the claimed system functioned for its intended purpose and practiced
the various elements of the Challenged Claims,” and concluded that
“Mr. Kurganov’s testimony regarding the source code, emails between
Mr. Kurganov and Mr. Zhukov, and a press release, all included in
Mr. Kurganov’s declaration, demonstrate a working embodiment.” Sur-
reply 12. Here, Patent Owner cites generally to Mr. Kurganov’s declaration,
the claim charts of Exhibits 2027 and 2028, and 34 source code and email
files. Id. (citing Exs. 2020, 2027, 2028, 2021–2026, 2029–2057). Patent
Owner then argues that Mr. Kurganov testifies in his declaration as to work
with Mr. Zhukov on “web agents,” but does not explain that work or its
relevance to the claims in detail. Id. at 12–13 (citing Ex. 2020 ¶¶ 12, 112–
119; Exs. 1053, 2044, 2050, 2056; Ex. 2061, 41:24–42:15 (Walker
deposition)). Once again, any specific argument explaining the relevance of
Patent Owner’s evidence is in Patent Owner’s declarations, which Patent
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Owner attempts to incorporate by reference improperly. Patent Owners’
assertions that its invention worked for its intended purpose will be
disregarded.
As to diligence from a time before Kovatch’s priority date until the
alleged reduction to practice, Patent Owner argues that “[f]ollowing
conception, the inventors were reasonably and continuously diligent as the
Webley Assistant enhancements was the only project they were working on
at Webley and they were employed full-time.” PO Resp. 32. Presumably,
here, Petitioner refers to its contended July 12, 1999, conception date and
December 31, 1999, reduction to practice date. Id. Patent Owner does not
cite any evidence to support its diligence argument. Id. Here, Patent Owner
cites broadly to the Occhiogrosso, Mulka, and Kurganov declarations.
Id. (citing Ex. 2059 ¶¶ 44–91; Ex. 2060 ¶¶ 1–6; Ex. 2020 ¶¶ 103–119). As
noted above, it is not clear whether these citations are intended to support
Patent Owner’s reduction to practice or diligence contentions.
Limiting the “diligence period” to January 4, 2000, to January 7,
2000, Patent Owner “relies on the source code revision logs and emails, as
well as the testimony of Paul Mulka,” and argues that “[t]he source code
revision logs and Paul Mulka’s testimony shows that from December 1999
to early January 2000, the inventors were employed full-time on the Webley
Assistant project, and every file, or file modification they committed to the
source code revision system, was for the Webley Assistant project.” PO
Resp. 33. Patent Owner argues that “all of the diligence activity here by the
inventors was related to the claimed subject matter and other enhancements
to the voice browser in which the claimed subject matter operated.” Id. at
33–34 (citing Ex. 2058; Ex. 2060). Patent Owner does not cite to
Mr. Mulka’s declaration, revision logs, or emails with specificity and does
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not provide further explanation of the testimony or other evidence. The
Patent Owner Response does not meet Patent Owner’s burden to introduce
evidence of diligence.
The case in Patent Owner’s Sur-reply is not any better. Patent Owner
argues that “Mr. Mulka created a detailed report of activity in the source
code revision system demonstrating that Mr. Kurganov and Mr. Zhukov
worked full time and consistently on the WA-II enhancements, which
embody the Challenged Claims for at least a month and a half before the
effective date of Kovatch.” Sur-reply 4. Here, Patent Owner provides no
citation to or explanation of Mr. Mulka’s report. This is simply an invitation
for us to play archeologist with the record, an invitation that we decline.
We note that, at the oral argument, Patent Owner argued that it
followed the briefing strategy of the patent owner in LG Electronics, Inc. v.
ATI Technologies ULC, IPR2015-00325, including simply referencing in the
briefing detailed element-by-element analysis performed in declarations.
Tr. 45:23–46:14, 50:26–52:13. Patent Owner argues that this approach was
affirmed by the Federal Circuit. Id. at 46:6–8, 52:2–7.
We do not agree that LG Electronics supports Patent Owner’s
position. It does not appear that the petitioner in that case objected to the
manner in which the patent owner presented its evidence and argument, and
the panel did not express any views on whether it was appropriate under
Rule 42.6(a)(3). IPR2015-00325, Paper 62 at 14–53 (PTAB Apr. 14, 2016).
In reviewing the LG Electronics decision, the Federal Circuit did not
comment on whether the presentation of the evidence was appropriate under
our rules. See ATI Techs. ULC v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019).
Thus, we see nothing in the LG Electronics case suggesting that Patent
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Owner’s presentation of its arguments and evidence via declaration rather
than in its Response is appropriate under Rule 42.6(a)(3).
Patent Owner, by presenting its arguments and evidence in the form of
declarations, rather than by including the arguments in its Response and Sur-
reply, has not complied with Rule 42.6(a)(3). Thus, we disregard Patent
Owner’s arguments that the inventors conceived of and reduced to practice
the invention claimed in the ’431 patent prior to the earliest priority date of
Kovatch. See 37 C.F.R. § 42.6(a)(3); TPG at 35–36; Gen. Access, 811 Fed.
Appx. at 656–57. We conclude that Kovatch is prior art to the ’431 patent.6

C. Obviousness of Claims 1, 2, 4–7, 10, 13, and 14 over Kovatch
and Neal
Petitioner contends that claims 1, 2, 4–7, 10, 13, and 14 would have
been obvious over Kovatch and Neal. Pet. 6–39. For the reasons given
below, Petitioner has made a sufficient showing.
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are “such that the
claimed invention 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 the
claimed invention pertains.” We resolve the question of obviousness on the

6 Petitioner contends that Kovatch is prior art under 35 U.S.C. § 102(e) by
virtue of its claim of the benefit of U.S. Prov. No. 60/174,371 (Ex. 1006).
Pet. 8–12. Patent Owner does not contest that Kovatch is prior art as of the
filing date of the provisional application. We have analyzed Petitioner’s
contentions and, on the complete record, agree that at least claim 1 of
Kovatch is supported by the Kovatch Provisional. Accordingly, we agree
that Kovatch is entitled to the benefit of the Kovatch Provisional and,
therefore, is prior art to the ’431 patent. See Dynamic Drinkware, 800 F.3d
at 1381; Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).
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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; (3) the level of skill in the art; and (4) objective
evidence of nonobviousness, i.e., secondary considerations.7 See Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).

1. Level of Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. See Al-Site
Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing
Graham, 383 U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d
714, 718 (Fed. Cir. 1991)). Generally, it is easier to establish obviousness
under a higher level of ordinary skill in the art. See Innovention Toys, LLC
v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less
sophisticated level of skill generally favors a determination of
nonobviousness . . . while a higher level of skill favors the reverse.”).
Petitioner, relying on the testimony of Mr. Lipoff, contends that a
person of ordinary skill in the art “would have had a Bachelor’s Degree in
electrical engineering, computer science or a related field, and at least two
years of experience with voice interfaces and information processing,” and
that “[m]ore education could substitute for less experience, and vice versa.”
Pet. 5 (citing Ex. 1002 ¶¶ 41–48). Patent Owner does not contest
Petitioner’s proposal or offer an alternative. On the complete record, we are
persuaded that Petitioner’s proposal is consistent with the technology

7 The complete record does not include allegations or evidence of objective
indicia of nonobviousness.
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described in the Specification and the cited prior art and adopt Petitioner’s
proposed level of skill.

2. Scope and Content of the Prior Art
a) Overview of Kovatch
Kovatch describes an interactive voice response system for accessing
information from a computer network via remote telephony devices.
Ex. 1005, 1:10–12. The interactive voice response system analyzes
utterances spoken by users and matches the utterances with an index of
destinations. Id. at 4:25–26. The system produces a list of valid destinations
and guides the user along a path with pre-recorded voice prompts. Id. at
4:26–27. The user accessing the system navigates using speech and/or
telephone keypad entry. Id. at 4:28–29. Kovatch describes the system in
reference to a commercial system, “HeyAnita” or “Anita.” Id. at 5:25–27.
The “Anita” server architecture is illustrated in Figure 1, reproduced below.
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Figure 1 is a schematic representation of the “Anita” server architecture.
Id. at 6:16.
Anita server 120 is a fault-tolerant, multi-threaded NT service. Id. at
14:14–16. It includes Anita speech recognition engine 2 that translates
spoken utterances to a set of text phrases (id. at 14:28–30); Anita natural
language engine 3 that converts natural language sentences to a set of
structured commands (id. at 15:1–3); Anita query engine 4 that maps
commands to web queries (id. at 15:9–11, 17:31–32); and Anita web
parser 8 that browses Internet/Web 11 to retrieve information based on the
web queries (id. at 18:1–2).
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Figure 2 is reproduced below:

Figure 2 is a schematic representation of the logical structure of the Anita
server 120. Id. at 6:18.
Anita server 120 consists of three logical servers: Anita phone
server 20 implements a computer telephony interface using, inter alia, Anita
telephone interface 1, Anita speech recognition engine 2, and Anita prompt
generator 6 to connect digital lines to accept calls (id. at 18:30–32); Anita
application server 30 implements applications using, inter alia, Anita natural
language engine 3, Anita query engine 4, and Anita web parser 8 (id. at
19:1–3); and Anita database server 40 implements Anita repository
database 7 (id. at 19:10).
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Kovatch discloses that information is organized in a “tree” structure
140 as shown in Figure 4, reproduced below:

Figure 4 is a block diagram of a tree structure that exemplifies how
clarification questions would be asked while narrowing down a search.
Id. at 6:23–24, 22:27–29.

b) Overview of Neal
Neal describes a system and method for cascading search
methodologies on preselected segments, or sets, of data. Ex. 1007, 3:25–27.
Each data set is paired with one or more search strategies so that the overall
effect is to supply the user with the most advantageous match to a keyword
search. Id. at 3:27–29.
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Figure 2 is reproduced below:

Figure 2 is a logic block diagram representation of a sequential search
methodology. Id. at 5:12–14.
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In the sequential search of Figure 2, a user inputs a search string
(block 202), e.g., “the name of an item, a part number for an item, or any
descriptive attribute of the item.” Id. at 6:23–30. At block 206, a search
methodology (e.g., “exact string search”) is applied to a first data set. Id. at
6:34–40. If the first data set represents a first (“preferred”) supplier, and the
first supplier has an exact item that matches the search string, a match is
recognized and the results of the match are reported to the user (block 236)
and the algorithm terminates (block 226). Id. at 6:40–44. If the first search
methodology does not yield a match, the algorithm 200 proceeds to a second
search strategy with a second data set and second search methodology
(block 210). Id. at 6:48–51. The second data set might be the same as the
first (e.g., same supplier) or it might be different (a second supplier). Id. at
6:51–58. Similarly, there second search methodology may be the same as
the first search methodology. Id. at 6:59–61.
If the second search strategy fails to yield a match, the algorithm 200
continues with a third search strategy (block 214), and so on. Id. at 7:8–11.
If the search fails to identify the desired item from any data set, the
algorithm proceeds to block 222, where a negative search result is reported
to the user. Id. at 7:29–33.

3. Claims 1, 2, 4–7, 10, 13, and 14, Differences Between the
Claimed Subject Matter and Kovatch and Neal; Reasons to
Modify or Combine
a) Preamble of claim 1 and limitations 1a–1i and 1k
Regarding the preamble of claim 1, Petitioner contends that Kovatch’s
HeyAnita system (“a system for retrieving information from pre-selected
web sites”) matches information requests with an index of destinations
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(“web sites”) in response to a user speaking into a telephone (a “voice
enabled device”) and translates information retrieved from the web sites into
speech to play back to the user via the telephone (“providing to users
retrieved information in an audio form via said voice enabled device”).
Pet. 16–18 (citing Ex. 1005, 4:25–27, 13:23–14:8, 14:18–24, 15:26–34,
16:21, 17:28–32, 18:1–3, 18:13–15, 18:28–32, 20:9–12, 28:17–18; Ex. 1002
¶¶ 107–116). Patent Owner does not contest Petitioner’s allegations for
claim 1’s preamble. We find, on the basis of Petitioner’s evidence,
including the disclosure of Kovatch and the credible testimony of
Mr. Lipoff, that Kovatch teaches the preamble of claim 1.
Petitioner maps Kovatch’s Anita Server to the “computer” of claim
limitation 1a and telephone 15 to the “voice enabled device operatively
connected to said computer” and “configured to receive speech commands
from users” of claim limitation 1b. Id. at 18–19 (citing Ex. 1005, 14:11–24,
18:18–19:6, 19:31; Ex. 1002 ¶¶ 117–121). Petitioner further contends that
Kovatch’s Speech Recognition Engine is a “speaker-independent speech
recognition device,” as recited in claim limitation 1c. Id. at 19–20 (citing
Ex. 1005, 13:30–31, 14:11–15:7, 17:21–27, 18:23–19:4; Ex. 1002
¶¶ 122–128). Petitioner maps Kovatch’s Prompt Generator to the “speech
synthesis device” of claim limitation 1d. Id. at 20–21 (citing Ex. 1005,
5:17–18, 14:7–8, 14:11–16, 14:18–23, 16:19–26, 18:13–15, 18:23–32;
Ex. 1002 ¶¶ 129–131). Patent Owner does not contest Petitioner’s
allegations for these claim limitations. We find, on the basis of Petitioner’s
evidence, including the disclosure of Kovatch and the credible testimony of
Mr. Lipoff, that Kovatch teaches claim limitations 1a–1d.
Regarding claim limitation 1e, Petitioner contends that Kovatch’s
Anita components, including the destination tree (shown in Figure 4) used to
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match information requests to destination web sites and HeyAnita’s
executable functions for identifying matching web sites and retrieving
information from them constitute “at least one instruction set for identifying
said information to be retrieved,” as recited in claim limitation 1e.
Pet. 21–22 (citing Ex. 1005, 4:25–27, 13:33–34, 15:11–34, 26:8–29:51;
Ex. 1002 ¶¶ 132–137). According to Petitioner,
[a]n obvious implementation of the system Kovatch describes
would have been to store each destination web site’s URL in
association with the web site’s entry in the destination tree, so
the Query Engine can generate the URL for a particular web
query as Kovatch describes, by retrieving the stored URL
associated with the destination determined for the user’s
request.
Id. at 23 (citing Ex. 1002 ¶¶ 114, 139–140). Petitioner cites Kovatch’s
examples of a user searching for books or CDs at web sites for Amazon, CD
Now, and Barnes and Noble as teaching “said instruction set comprising: a
plurality of pre-selected web site addresses, each said web site address
identifying a web site containing said information to be retrieved,” as recited
in claim limitation 1e. Id. at 22–24 (citing Ex. 1005, 4:25–27, 13:33–34,
15:9–34, 17:28–18:5, 20:11–12, 20:29–21:3, 21:19–25, 26:8–16, 28:17–18,
28:41–44; Ex. 1002 ¶¶ 138, 141).
Patent Owner does not contest Petitioner’s allegations as to claim
limitation 1e in the Patent Owner Response or Sur-reply.8

8 Patent Owner presented arguments as to this claim limitation in the
Preliminary Response (at 39–45), which we found unpersuasive in the
Decision to Institute (at 36–40). Patent Owner does not advance those
arguments in the Patent Owner Response. Accordingly, those arguments are
waived. Paper 10 (Scheduling Order), 8 (“Patent Owner is cautioned that
any arguments not raised in the response may be deemed waived.”).
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Kovatch describes Anita Query Engine 4 generating web queries to
fulfill a user’s request. Ex. 1005, 17:31–32. Kovatch describes several
examples of matching such requests to addresses for web sites that contain
the information requested and generating web site URLs to initiate selected
applications. Id. at 15:19, 20:10–12, 20:29–21:3, 21:19–25. Kovatch’s
Figure 4 (reproduced above) illustrates how the HeyAnita system organizes
this information into a tree structure that helps narrow down a search to
particular web sites. Id. at 22:25–29. We find that Kovatch’s web URLs are
pre-selected (chosen before the user executes a search), are web site
addresses (URLs for web sites), and identify web sites containing
information to be retrieved (information corresponding to keywords).
Accordingly, we find, on the basis of Petitioner’s evidence, including the
disclosure of Kovatch and the credible testimony of Mr. Lipoff, that Kovatch
teaches claim limitation 1e.
Regarding claim limitation 1f, Petitioner contends that Kovatch’s
Speech Recognition Engine translates speech into text phrases using a
“recognition grammar.” Pet. 24 (citing Ex. 1005, 13:30–31, 14:28–15:7,
17:23–27, 28:30–39; Ex. 1002 ¶¶ 142–143). Petitioner argues that, because
the recognition grammar is used to generate web URLs to which the system
navigates for information, the recognition grammar “correspond[s] to each
said instruction set and correspond[s] to a speech command” and
“compris[es] an information request selectable by the user,” as recited in
claim limitation 1f. Id. at 25–29 (citing Ex. 1005, 4:26–27, 13:28–14:1,
14:28–15:34, 22:1–5, 28:17–44; Ex. 1002 ¶¶ 135–137, 144–151).
Regarding claim limitation 1g, Petitioner points to Kovatch’s description of
Speech Recognition Engine 2 translating speech to text phrases and Natural
Language Engine 3 converting the text to structured commands representing
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the recognition grammar. Id. at 29–30 (citing Ex. 1005, 13:30–31, 14:28–
15:19, 17:23–27, 28:17–39; Ex. 1002 ¶¶ 152–154). According to Petitioner,
the structured commands represent an identification of destination nodes and
a mapping of commands to an application for generating destination URLs
to retrieve information from web sites, thus meeting claim limitation 1h.
Id. at 31 (citing Ex. 1005, 15:1–34; Ex. 1002 ¶¶ 155–156). As to claim
limitation 1i, Petitioner argues that Kovatch’s Web Parser navigates to the
identified web site and retrieves requested information. Id. at 32 (citing
Ex. 1005, 13:33–14:1, 15:1–34, 17:28–18:5; Ex. 1002 ¶ 157). Patent Owner
does not contest Petitioner’s allegations for these claim limitations. We find,
on the basis of Petitioner’s evidence, including the disclosure of Kovatch
and the credible testimony of Mr. Lipoff, that Kovatch teaches claim
limitations 1f–1i.
As to claim limitation 1k, Petitioner points to Kovatch’s Prompt
Generator, which creates an audio stream of text phrases converted to audio
prompts based on information returned by the Web Parser. Pet. 34 (citing
Ex. 1005, 14:7–8, 14:18–23, 16:19–26, 18:13–15, 20:5–22:21; Ex. 1002
¶¶ 161–162). Patent Owner does not contest Petitioner’s allegations for this
claim limitation. We find, on the basis of Petitioner’s evidence, including
the disclosure of Kovatch and the credible testimony of Mr. Lipoff, that
Kovatch teaches claim limitation 1k.

b) Claim limitation 1j
The parties’ disputes as to claim 1 are focused on claim limitation 1j,
which recites
said computer configured to first access said first web site of
said plurality of web sites and, if said information to be
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retrieved is not found at said first web site, said computer
configured to sequentially access said plurality of web sites
until said information to be retrieved is found or until said
plurality of web sites has been accessed.
Petitioner acknowledges that Kovatch by itself does not teach claim
limitation 1j, but contends that a skilled artisan would have modified
Kovatch’s HeyAnita system according to Neal’s teachings. Pet. 12–15.
Specifically, Petitioner contends that a skilled artisan would have considered
Neal’s teaching of searching suppliers’ data sets in a hierarchy, as illustrated
in Neal’s Figure 2 (reproduced above). Id. at 12–13 (citing Ex. 1007, 2:54–
57, 3:35–36, 3:42–45, 5:55–60, 6:40–7:14, 7:30–33; Ex. 1002 ¶ 100).
According to Petitioner,
In the resulting Kovatch/Neal combination, when the user
speaks an information request, HeyAnita first accesses the
user’s preferred web site for that information, and if the
requested information is not found at that preferred web site,
HeyAnita accesses the remaining web sites in the “list of valid
destinations” that matched the user’s request, sequentially (e.g.,
in order of preference among suppliers as Neal teaches) until
the requested information is found in one of the matching web
sites or until all the matching web sites have been accessed with
negative result.
Id. at 14. In terms of the web site examples given in Kovatch, Petitioner
argues that,
in the Kovatch/Neal combination, HeyAnita’s computer
(Application Server or overall Anita Server) is configured to
first access a first web site (e.g., Amazon) of the destination
tree’s plurality of web sites and, if the information to be
retrieved (e.g., the price of a CD the user wants to buy) is not
found at that first web site, access the remaining web sites (e.g.,
CD Now) sequentially (e.g., in order of the user’s preference
ranking of the web sites) until the information is found (“the
results of the match are reported to the user”—Neal, 6:42–44)
or until the plurality of web sites has been accessed (“the search
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fails to identify the desired item from any” web site—Neal,
7:30–33).
Id. at 32–33 (citing Ex. 1002 ¶ 158).
In the Patent Owner Response, Patent Owner argues that Kovatch
does not teach claim limitation 1j because it does not demonstrate
sequentially accessing pre-selected web sites until the information to be
retrieved has been found or all of the web site addresses have been accessed.
PO Resp. 35–36. As noted above, Petitioner does not argue that Kovatch
teaches claim limitation 1j by itself and, instead, Petitioner relies on the
combination of Kovatch and Neal. Pet. 12–15. Thus, Patent Owner’s
argument is misplaced. In any case, Patent Owner concedes that Kovatch
“discloses one scenario where multiple websites are accessed by the
HeyAnita system, and that is when the user wants HeyAnita to find the best
price for an item from two websites.” PO Resp. 35–36 (citing Ex. 1005,
Fig. 4, 20:30–21:3). Thus, Kovatch teaches accessing multiple pre-selected
web sites. We further find that Neal teaches accessing a first dataset of a
plurality of datasets and, if the information to be retrieved is not found at the
first dataset, sequentially accessing the plurality of datasets until the
information to be retrieved is found or until the plurality of datasets has been
accessed. Ex. 1007, 6:41–7:14. Viewing these teachings together, Kovatch
and Neal teach limitation 1j. We address below whether a skilled artisan
would have had reasons to combine these teachings.
Patent Owner also argues that Neal does not teach accessing web sites
and, instead, describes accessing static datasets in a partitioned database.
PO Resp. 37. Petitioner, however, does not cite Neal for a teaching of
accessing web sites; rather, Petitioner contends that Kovatch teaches
accessing web sites. Pet. 13–14, 32 (citing Ex. 1005, 13:33–14:1, 15:1–34,
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17:28–18:5; Ex. 1002 ¶ 157). Patent Owner’s argument, therefore, is
misplaced. As noted above, we find (and Patent Owner concedes) that
Kovatch teaches accessing a plurality of web sites. Ex. 1005, 17:31–18:8,
20:30–21:3, Fig. 4; PO Resp. 35–36.
Patent Owner further argues that Neal teaches away from Petitioner’s
proposed combination with Kovatch. PO Resp. 37. According to the
Federal Circuit, “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Mouttet, 686
F.3d 1322, 1333–34 (Fed. Cir. 2012) (quoting In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994)) (alteration in original). However, “the ‘mere
disclosure of alternative designs does not teach away.’” Id. at 1334 (quoting
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, “just because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes.” Id. (citing Gurley, 27 F.3d
at 553).
Specifically, Patent Owner (PO Resp. 37), points to disclosure in Neal
describing disadvantages of a keyword search strategy (e.g., “users must be
familiar with the appropriate key word terms that are likely to yield the
desired data records”) and disadvantages of a classification search strategy
(e.g., “users may not always anticipate the proper classification of certain
records, and may search the wrong categories for their desired database
record”). Ex. 1007, 2:16–65. Neal then describes a “preferred embodiment”
in which “the system manager will expand the scope of the search strategies
from ‘exact’ string matches, along a continuum of search methodologies,
including perhaps fuzzy logic strategies.” Id. at 7:14–17. According to
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Neal, “[t]he purpose of expanding the search strategies is to avoid the
situation wherein the search fails to identify the desired item from any data
set, and thereby drops into logical block 222 a negative search result is
reported to the user.” Id. at 7:28–32. Patent Owner argues that “Neal
advocates for employing a sequence of search algorithms from the narrowest
to the most broad.” PO Resp. 38 (citing Ex. 1007, 7:56–58; Ex. 2059
¶ 124). Patent Owner contends that Neal teaches away from a combination
“that employs a single keyword matching search strategy.” Id. Patent
Owner argues that Petitioner’s combination of Kovatch and Neal results in a
system that only sequentially searches datasets using a single keyword
matching search strategy, and not the cascading sequence of search
methodologies described by Neal. Id. at 37–39.
We do not agree with Patent Owner that Neal teaches away from a
system that employs a single keyword matching search strategy. Indeed,
Neal’s preferred embodiment expressly contemplates such a system. For
example, Neal describes employing a first “exact string search”
methodology to search a first data set (Figure 2, block 206). Ex. 1007, 6:34–
46. This appears to be what Patent Owner considers a “single keyword
matching search strategy.” PO Resp. 37–38. Neal describes that if this
search of the first data set does not yield a match, the system searches a
second data set using a second search methodology (Figure 2, block 210).
Ex. 1007, 6:47–52. However,
in the preferred embodiment there is no requirement that the
second search methodology in 210 must be different from the
first search methodology in 206. For example, if the first
preferred supplier did not yield an exact string match to the
input search term, the same search methodology could be
applied to a second preferred supplier’s catalog.
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Id. at 6:59–65. Thus, Neal expressly teaches using a single keyword search
strategy on a first dataset and the same keyword search strategy on a second
dataset, without necessarily employing a cascading sequence of different
search methodologies. See Reply 19.
Patent Owner further argues that Neal’s teaching of searching
products in a database would not have been applicable to retrieving
information from a web page. PO Resp. 39–40. In particular, Patent Owner
argues that Kovatch’s HeyAnita system expects a single result when it
requests information from web pages, while Neal describes returning
multiple results in an example of a search for pens. Id. (citing Ex. 1007,
7:34–8:24; Ex. 2059 ¶ 127); see also Sur-reply 17. Petitioner responds that
it cites Kovatch for using Kovatch’s search methodologies (not Neal’s) on
its web sites and Neal for a teaching to try another supplier if a first supplier
does not have a requested item. Reply 20. We agree with Petitioner that
Patent Owner does not appear to be addressing Petitioner’s proposed
combination. Rather, Patent Owner’s argument is akin to a contention that
one would not have bodily incorporated Neal’s particular search of a
supplier record into Kovatch’s system. However, “[i]t is well-established
that a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements”;
rather, “the test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”
Mouttet, 686 F.3d at 1332–33.
Patent Owner further argues that Petitioner does not address how a
skilled artisan would apply Neal’s invention, in which data is pre-segmented
into datasets, to Kovatch’s web sites, which “do not lend themselves to be
segmented into searchable items of multiple tiers.” PO Resp. 40 (citing
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Ex. 1007, 3:13–17, 5:30–31; Ex. 2059 ¶ 129). Petitioner responds that
Kovatch’s data is segmented into multiple web sites, which are searched
separately. Reply 20. According to Petitioner, in its proposed combination,
each dataset searched is a web site. Id. at 21. In the Sur-reply, Patent
Owner argues that Petitioner “does not explain how a [person of ordinary
skill in the art] would apply Neal’s hierarchical ordering to Kovatch’s
websites.” Sur-reply 18. According to Patent Owner, Neal describes a
system manager that tightly controls and pre-segments the data that are
searched and establishes a hierarchical order of multiple tiers in the
database. Id. at 18–19 (citing Ex. 1007, 3:13–17). Patent Owner once again
argues against bodily incorporating Neal into Kovatch without considering
Petitioner’s proposed combination. As noted above, Petitioner combines
Kovatch’s teachings of searching web sites with Neal’s teaching of
searching a next dataset if a first dataset does not have a requested item.
Reply 20. Petitioner does not contend that a skilled artisan would have
incorporated Neal’s complete algorithm in Kovatch’s system.
In the Sur-reply, Patent Owner argues that “Kovatch does not teach
any search methodology.” Sur-reply 16. According to Patent Owner, “a
web parser, parses the HTML tags on a web page to expose or render the
data to the user; it does not search any data, and Kovatch’s web parser is no
different.” Id. Patent Owner does not cite evidence to support this
contention (which was not raised in the Patent Owner Response). First,
claim 1 does not recite searching. Rather, it recites “access[ing]” web sites
and “retriev[ing]” data from the web sites. Petitioner points out where
Kovatch teaches this. Pet. 32 (citing Ex. 1005, 13:33–14:1, 15:1–34, 17:28–
18:5). According to Kovatch, “Anita Query Engine 4 generates web queries
needed to fulfill user’s request and sends them to Anita State Machine and
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Web Parser 8.” Ex. 1005, 17:31–32. “Anita State Machine and Web
Parser 8 browses the Internet/web 11 to retrieve information requested by
the user. It parses each received page to convert unstructured text into
structured datasets.” Id. at 18:1–3. We find that this teaches accessing web
sites and retrieving data from those web sites. Second, we find that this
disclosure in Kovatch teaches searching web sites (browse, queries, request),
and Patent Owner’s attorney argument to the contrary is not persuasive.
We find that, in Petitioner’s proposed combination, Kovatch’s
HeyAnita system would access a first of a plurality of web sites (e.g., using
Anita Query Engine 4 and Web Parser 8, Ex. 1005, 17:31–32) and, if the
information to be retrieved is not found at the first web site, the HeyAnita
system would sequentially access the plurality of web sites until the
information is found or until the all of the plurality of web sites have been
accessed, per the teachings of Neal (Ex. 1007, 6:41–7:13, 7:28–32, Fig. 2).
Accordingly, we find that Kovatch and Neal teach claim limitation 1j.
In sum, the combination of Kovatch and Neal teaches each limitation
of claim 1.

c) Reasons to combine the teachings of Kovatch and
Neal
Petitioner argues that a skilled artisan would have combined the
teachings of Kovatch and Neal “to achieve the benefits Neal describes of
‘maximiz[ing] the likelihood of finding the desired [information]’ while
‘efficiently us[ing] computing resources’ by ‘increasing the efficiency of the
search process by first searching in the most desirable data sets.’” Id.
(quoting Ex. 1007, 3:19–20, 4:65–5:2 (brackets supplied by Petitioner);
citing Ex. 1002 ¶¶ 103–105). Although Neal does not describe its
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hierarchical search in terms of web sites, Mr. Lipoff testifies that this
technique would have been applicable to other types of information requests,
including obtaining information from web sites. Id. at 15 (citing Ex. 1002
¶¶ 103–105). Petitioner contends that Neal’s product searches are analogous
to those described in Kovatch. Id. Mr. Lipoff testifies that a skilled artisan
would have had a reasonable expectation of success incorporating Neal’s
functionality in HeyAnita’s Application Server. Ex. 1002 ¶ 106.
Patent Owner characterizes Petitioner’s allegations as arguing that
Neal would “speed up” Kovatch’s HeyAnita system. PO Resp. 41–42.
Patent Owner argues that Kovatch was not concerned with delay that
occurred with web-based retrieval systems and, instead, relied on that delay
to provide opportunities for the HeyAnita system to insert advertisements in
the “dead space” between a user’s question and the system’s retrieval of an
answer. Id. (citing Ex. 1005, 3:13–14, 5:20–22, 6:9–11, 16:14–15; Ex. 2059
¶¶ 133–134). Mr. Occhiogrosso testifies that “speeding up Kovatch’s
system would create less dead air time and would inhibit its ability to
generate revenue from playing advertisements for the user as it awaited the
information to be retrieved from the web site.” Ex. 2059 ¶ 134.
Petitioner replies that it does not argue that a skilled artisan would
have used Neal’s teachings to “speed up” Kovatch’s system. Reply 21–22.
Rather, Petitioner argues, the Petition focused on efficiently using
computing resources. Id. (citing Pet. 12–14). According to Mr. Lipoff, the
efficiency benefits would have been independent of speed. Ex. 1057 ¶¶ 16–
17; Reply 22 (“[W]here Kovatch would search one website . . . , the
Kovatch/Neal combination that then tries a second website would not
necessarily respond faster.”). As Petitioner points out (Reply 22), Patent
Owner’s expert, Mr. Occhiogrosso, admits that lowering the number of web
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sites a system searches to find information would lower the expenditure of
resources. Ex. 1051, 42:21–43:10.
Petitioner further responds that Kovatch does not teach playing
advertisements while waiting for information to be retrieved; rather, it first
retrieves the requested information and then generates an audio stream with
both the commercials and retrieved information. Reply 22–23 (citing
Ex. 1005, 14:1–8, 18:1–15; Ex. 1057 ¶ 18). Petitioner’s characterization of
Kovatch is correct (and Patent Owner’s incorrect). Kovatch’s system first
navigates to a destination and retrieves requested information (step 6), then
generates commercials (step 8), then intermixes the commercials and
information (step 9), and finally returns speech to the user (step 10).
Ex. 1005, 14:1–8. We find unavailing Patent Owner’s argument that, when
combined, Neal’s teachings would have an adverse impact on Kovatch’s
generation and presentation of advertisements.
Patent Owner further argues that a skilled artisan would not have been
motivated to make Kovatch’s system more fault tolerant because “HeyAnita
was already a fault tolerant system that took steps to maximize the
likelihood of finding the requested information.” PO Resp. 42–43 (citing
Ex. 2059 ¶¶ 135–137). Patent Owner argues that Kovatch describes an
example in which the HeyAnita system searches multiple web sites for
information without being prompted. Id. at 43 (citing Ex. 1005, 20:29–21:3;
Ex. 2059 ¶¶ 136–137); Sur-reply 22–23. As another example of fault
tolerance, Patent Owner argues that Kovatch’s system is “highly interactive”
and “uses clarification questions if the user’s query does not narrow the
result set down to one destination.” PO Resp. 43–44 (citing Ex. 1005, 4:25–
27, 21:10–11, 21:19–25). Petitioner replies that it is not arguing fault
tolerance; rather Petitioner argues that the combination would have
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increased the efficiency of the search process. Reply 23. In particular,
Petitioner argues, the Kovatch/Neal combination improves the likelihood of
finding information by searching a next web site rather than stopping after a
first failure. Id. at 24 (citing Ex. 1057 ¶¶ 19–21). Petitioner argues that this
would have been more logical, would have resulted in a shorter dialog, and
would automatically provide fallback results from another web site without
wasting time reporting a failure and asking for instructions. Id. (citing
Ex. 1057 ¶ 22). We agree with Petitioner that Patent Owner’s arguments
regarding fault tolerance are not directed to any arguments or evidence
Petitioner is advancing.
We find that Neal’s teachings would have made Kovatch’s system
more efficient and would have conserved computing resources. Neal
expressly states that its teachings “would efficiently use computing
resources,” and would “increas[e] the efficiency of the search process by
first searching in the most desirable data sets.” Ex. 1007, 3:19–20, 4:65–67.
Mr. Lipoff reiterates these benefits in his testimony. Ex. 1002 ¶ 102. Thus,
we find that a skilled artisan would have had reasons, with rational
underpinning, to combine Kovatch and Neal. We also find, based on
Mr. Lipoff’s uncontroverted testimony, that a skilled artisan would have had
a reasonable expectation of success in combining the teachings of Kovatch
and Neal. Id. ¶ 106.

d) Claims 2, 4–7, 10, 13, and 14
Regarding claim 2, we find that Kovatch describes that its server is
connected to and searches “the Internet.” See, e.g., Ex. 1005, Fig. 3
(Internet 11); Pet. 34.
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Regarding claim 4, we find that Kovatch’s voice enabled device can
be a standard telephone. See, e.g., Ex. 1005, Fig. 1 (Telephone 15); Pet. 34.
Regarding claim 5, based on Mr. Lipoff’s uncontroverted testimony,
we find that it would have been obvious to implement HeyAnita’s Speech
Recognition Engine to analyze phonemes. Ex. 1002 ¶ 166; Pet. 35–36.
Regarding claim 6, we find that Kovatch’s description of recognizing
and converting “free-form speech” and “natural language sentences” teaches
that Kovatch’s “speaker-independent speech recognition device is
configured to recognize naturally spoken speech commands.” Pet. 36;
Ex. 1005, 13:28–29, 14:28–15:3, 20:15–22:21; Ex. 1002 ¶ 167.
Regarding claim 7, we find that Kovatch teaches content descriptors
that indicate portions of web sites that contain the information to be
retrieved, for example indicating in a weather web site where to insert a zip
code to retrieve weather information and where on the web site to find the
results. Ex. 1005, 15:11–14, 15:23–34; Pet. 36–37; Ex. 1002 ¶¶ 169–180.
Regarding claims 10 and 13, we find that Kovatch teaches a ranking
associated with web site addresses indicating the order in which to access a
plurality of pre-selected web sites, for example ranking Amazon’s web site
over that of CD Now and accessing those web sites in that order. Ex. 1005,
16:28–34, 19:8–10, 23:25–29; Pet. 38; Ex. 1002 ¶¶ 171–173.
Regarding claim 14, Mr. Lipoff testifies that
an obvious implementation of the Kovatch/Neal combination
would have been to store the retrieved information in a memory
operatively connected to the computer (Application Server or
overall Anita Server), to allow the computer to retrieve the
information and process it by translating it into the voice
prompts as Kovatch describes.
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Ex. 1002 ¶ 176. Based on this uncontroverted testimony, we find that
Kovatch and Neal teach the additional limitation of claim 14.
Patent Owner does not present separate arguments challenging
Petitioner’s allegations for claims 2, 4–7, 10, 13, and 14.

4. Conclusion of Obviousness
As explained above, the combination of Kovatch and Neal teaches
each limitation of claims 1, 2, 4–7, 10, 13, and 14. Petitioner has introduced
persuasive evidence that a skilled artisan would have had reasons to combine
the teachings of Kovatch and Neal with a reasonable expectation of success.
Patent Owner does not argue or introduce evidence of objective indicia of
nonobviousness. In sum, upon consideration of all the evidence, we
conclude that Petitioner has proved by a preponderance of the evidence that
claims 1, 2, 4–7, 10, 13, and 14 would have been obvious over Kovatch and
Neal.

D. Obviousness of Claims 1, 2, 4–7, 9, 10, 13, and 14 over
Kovatch, Neal, and Chakrabarti
Petitioner contends that claims 1, 2, 4–7, 9, 10, 13, and 14 would have
been obvious over Kovatch, Neal, and Chakrabarti. Pet. 39–45.

1. Scope and Content of the Prior Art—Overview of
Chakrabarti
Chakrabarti discloses a “[s]ystem and method for focus[]ed Web
crawling.” Ex. 1008, code (54). The system generates a database of web
pages that is focused on a predefined topic or topics, for subsequent efficient
searching of the database by users. Id. at 2:56–60. The system includes a
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“watchdog” module that periodically determines new (not yet visited) and
old web pages to consider in searches. Id. at 3:15–21.
The system includes a computer that accesses the World Wide Web
via the Internet. Id. at 4:14–16. The computer includes a focused crawler
that may be executed by the computer. Id. at 4:26–28. The focused crawler
adds outlinks of a web page to a crawl database when the web page is
relevant to the predefined topic or topics. Id. at 3:41–46; see also id. at
6:26–27 (stating that outlinks “lead to Web pages other than the Web page
represented by the URL field 36.”). The focused crawler accesses a topic
analyzer that compares the content of a web page with a predefined topic or
topics and generates a response representative of how relevant the web page
is to the topic. Id. at 4:61–65.
The system generates the crawl database, which solely contains
information on web pages that pertain to the topic or topics of interest. Id. at
5:14–17. The crawl database includes a web page table that includes
corresponding link tables, each of which is an edge table relative to the web
page table. Id. at 5:17–21. The web page table includes a Uniform
Resource Locator (URL) field that represents a web page URL. Id. at 5:31–
34. The link table is further associated with the URL field. Id. at 6:16–17.
Using Chakrabarti’s system, a user can generate a query for
information and, in response, a conventional browser or searcher associated
with the computer accesses the crawl database to retrieve a list of relevant
web pages. Id. at 6:35–40. The browser responds to the query with web
pages relevant to the predefined topic. Id. at 6:44–46.

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2. Claim 9, Differences Between the Claimed Subject
Matter and Kovatch, Neal, and Chakrabarti / Conclusion of
Obviousness
Claim 9 depends from claim 1 and adds “said computer is further
configured to periodically search said internet to identify new web sites and
to add said new web sites to said plurality of web sites.” Petitioner contends
that a skilled artisan would have added Chakrabarti’s web crawling feature
to the combination of Kovatch and Neal such that the HeyAnita server
periodically searches the Internet to identify new web sites and to add the
new web sites to its listing of web sites. Pet. 44; see also id. at 41–44.
Mr. Lipoff testifies that this would have been more efficient and would have
increased the likelihood of finding a user’s requested information. Ex. 1002
¶¶ 183–185. Mr. Lipoff further testifies that this would have been a
predictable use of prior art elements according their established functions.
Id. ¶ 186. Patent Owner does not contest Petitioner’s allegations as to
claim 9.
On the complete record, including Mr. Lipoff’s uncontroverted
testimony, we find that Kovatch, Neal, and Chakrabarti teach each limitation
of claim 9 and that a skilled artisan would have had reasons, with rational
underpinning, to combine the references with a reasonable expectation of
success. Patent Owner does not argue or introduce evidence of objective
indicia of nonobviousness. In sum, upon consideration of all the evidence,
we conclude that Petitioner has proved by a preponderance of the evidence
that claim 9 would have been obvious over Kovatch, Neal, and Chakrabarti.

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3. Claims 1, 2, 4–7, 10, 13, and 14
Petitioner asserts Kovatch, Neal, and Chakrabarti against claims 1, 2,
4–7, 10, 13, and 14 “if limitation [1j] were interpreted to require accessing
more than two web sites.” Pet. 44–45. On the complete record, neither
party contends that claim limitation 1j includes this requirement.
Accordingly, we need not reach whether claims 1, 2, 4–7, 10, 13, and 14
also would have been obvious over Kovatch, Neal, and Chakrabarti.9

E. Obviousness of Claim 14 over Kovatch, Neal, and DeSimone
Petitioner contends that claim 14 would have been obvious over
Kovatch, Neal, and DeSimone. Pet. 45–49. Petitioner asserts Kovatch,
Neal, and DeSimone against claim 14 because, it contends, the combination
with DeSimone “meets claim 14 differently than the Kovatch/Neal
combination alone.” Id. at 46. As noted above, Petitioner has shown by a
preponderance of the evidence that claim 14 would have been obvious over
Kovatch and Neal, and Patent Owner does not dispute Petitioner’s additional
allegations for claim 14. Accordingly, we need not reach whether claim 14
also would have been obvious over Kovatch, Neal, and DeSimone.10

9 Petitioner’s allegations also include the contention that claim 9 would have
been obvious over Kovatch, Neal, and Chakrabarti by virtue of Chakrabarti
teaching limitation 1j. We do not reach this contention. As noted above, we
find that Kovatch and Neal teach each limitation of claim 1 and Chakrabarti
teaches the additional limitation of claim 9.
10 For the same reasons, we do not reach Patent Owner’s arguments
(PO Resp. 45–46) that a skilled artisan would not have had reasons to
combine DeSimone with the teachings of Kovatch and Neal.
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F. Obviousness of Claim 14 over Kovatch, Neal, Chakrabarti, and
DeSimone
As noted above, we do not reach whether claim 14 would have been
obvious over Kovatch, Neal, and Chakrabarti, as Petitioner has shown that it
would have been obvious over Kovatch and Neal. For the same reasons, we
need not reach whether claim 14 also would have been obvious over
Kovatch, Neal, Chakrabarti, and DeSimone.

G. Obviousness of Claim 9 over Kurganov-262 and Chakrabarti
Petitioner contends that claim 9 would have been obvious over
Kurganov-262 and Chakrabarti. Pet. 50–63. The parties dispute whether
Kurganov-262 is prior art to claim 9.
The ’431 patent claims priority to Application No. 09/776,996 (“the
ʼ996 application”) as a continuation application. Ex. 1001, code (63).
Kurganov-262 is the publication of the ’996 application. Ex. 1004, code
(21). Petitioner indicates that the disclosure in Kurganov-262 is
substantially identical to that of the ’431 patent. Pet. 50, 55. Patent Owner
states that “Kurganov-262 is the priority document for the ’431 Patent and
provides disclosure of each and every claim element of the challenged
claims.” PO Resp. 30.
Petitioner contends that the limitation “said computer is further
configured to periodically search said internet to identify new web sites and
to add said new web sites to said plurality of web sites,” as recited in
claim 9, is not disclosed in the ʼ996 application. Pet. 50–53. Petitioner
contends that the ’996 application discloses the rest of claim 9’s limitations
(those incorporated from claim 1, from which claim 9 depends). Id. at
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55–61 (claim chart mapping Kurganov-262 to claim 1). According to
Petitioner, Chakrabarti supplies the additional limitation of claim 9.
Patent Owner advances no specific arguments contesting Petitioner’s
assertions regarding the disclosures of Kurganov-262 and Chakrabarti. PO
Resp. 46–50. Rather, Patent Owner argues that Kurganov-262 is not prior
art because claim 9 has written description support in the ʼ431 patent, thus
entitling these claims to a priority date preceding that of Kurganov-262’s
publication (November 29, 2001). Id.
The parties’ dispute, then, is whether Kurganov-262 provides written
description support for the additional limitation of claim 9. The parties
agree that Kurganov-262 describes all of the limitations of claim 1. If
Kurganov-262 does provide written description support for claim 9, then it is
not prior art to claim 9, and would not provide a basis to render claim 9
obvious. On the other hand, if Kurganov-262 does not provide written
description support for claim 9, it is prior art to claim 9, and we then would
evaluate whether Kurganov-262 in combination with Chaktrabarti renders
claim 9 obvious.

1. Kurganov-262 does not provide written description
support for claim 9
A description adequate to satisfy 35 U.S.C. § 112, ¶ 1,
must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” In
other words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled
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in the art that the inventor had possession of the claimed subject
matter as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (citation omitted, alteration in original). “[T]he hallmark of
written description is disclosure,” and
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. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan to
show that the inventor actually invented the invention claimed.
Id.; see also Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991) (stating that “the applicant must also convey with reasonably clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention,” which, “for purposes of the ‘written
description’ inquiry, [is] whatever is now claimed”).
Petitioner asserts that the ’431 patent11 describes a “first embodiment
. . . for allowing users to browse information sources, such as web sites,” and
a “second embodiment . . . for controlling . . . household devices.” Pet. 50
(citing Ex. 1001, 4:30–32, 17:36–46) (alterations by Petitioner). According
to Petitioner, neither the first embodiment, the second embodiment, nor
“mixing-and-matching” elements from the first and second embodiments
provides written description support for claim 9. Id. at 51–54. Thus,

11 The panel recognizes that the relevant issue for determining whether
Kurganov-262 is prior art is whether the ’996 application contains written
description support for the challenged claims. However, when identifying
such support, Petitioner and Patent Owner both cite to the disclosure of the
’431 patent, which both parties agree has the same disclosure (apart from
claims) as the ’996 application, which published with materially the same
disclosure as Kurganov-262. Following the parties’ convention, we also cite
to the ’431 patent.
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according to Petitioner, the effective filing date of claim 9 is no earlier than
the actual filing date of the ’431 patent (April 9, 2004), and Kurganov-262 is
prior art under 35 U.S.C. § 102(b). Id. at 54–55; Ex. 1001, code (22).
Patent Owner points to the ’431 patent’s Abstract and Summary of the
Invention, and its disclosure that the inventive system “dynamically adapt[s]
to changes in the rapidly evolving web sites that exist on the Internet.” PO
Resp. 46–47 (citing Ex. 1001, Abstract, 2:66–3:3, 17:26–28). Patent Owner
also points to three paragraphs within Kurganov-262 that Patent Owner
argues describes “getting information from Lycos and Yahoo, which
include[s] web crawling functionality.” Id. at 47 (citing Ex. 1004 ¶¶ 30, 39,
4212). Based on these disclosures, Patent Owner asserts that a skilled artisan
would have understood that a web search system would include the ability to
identify new web sites or engage in web crawling, and would need to adapt
to the changing Internet by identifying new web sites. Id. (citing Ex. 2059
¶ 149). Patent Owner argues that this is “confirmed by a review of the
system that inventors reduced to practice prior to filing the provisional
application that led to the issuance of the ’431 Patent, which included this
functionality.” Id. (citing Ex. 2059 ¶¶ 44–91).
Patent Owner also asserts that the first and second embodiments
described in the ʼ431 patent––one browsing web sites and the other
browsing devices––“are not exclusive” and that the skilled artisan would
have understood that the description for browsing devices “is equally
applicable to web sites and to the first embodiment system for browsing web
sites.” PO Resp. 47–48. Patent Owner alleges that “the devices in the

12 These paragraphs correspond to Exhibit 1001, 5:33–53, 7:35–9:40, 14:36–
15:30.
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second embodiment may in fact be web sites, and operate similarly to the
first embodiment.” Id. at 48 (citing Ex. 1001, 17:50–58; Ex. 1004 ¶ 54).
Patent Owner also alleges that “[w]ithout ‘identify[ing] new websites’ it
would be impossible for the system to ‘dynamically adapt to changes in the
rapidly evolving web sites that exist on the Internet’” as discussed in the
’431 patent. Id. at 48–49 (quoting Ex. 1001, 17:23–28; citing Ex. 1004 ¶ 51;
Ex. 2059 ¶ 153 (second alteration by Patent Owner)). Patent Owner then
explains how it believes the ’431 patent’s discussion of “polling” and
“pinging” the devices of the first embodiment would apply equally to the
web sites of the second embodiment. Id. at 49–50 (citing Ex. 1001, 16:56–
17:12, 19:17–19; Ex. 2059 ¶¶ 154–155).
Petitioner contends that Patent Owner provides no evidence that the
skilled artisan would have recognized that the ʼ431 patent’s web search
system would include the ability to identify new web sites or engage in web
crawling, and “[e]ven if web crawling were known and obvious to add to
what is described, obviousness is insufficient for written description.”
Reply 26 (citing Ex. 1049, 84–87; Ex. 1057 ¶¶ 23–24; Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997) (“It is the
disclosures of the applications that count. Entitlement to a filing date does
not extend to subject matter which is not disclosed, but would be obvious
over what is expressly disclosed. It extends only to that which is
disclosed.”)). Petitioner also asserts that Patent Owner has not produced
evidence to support its argument that claim 9 was reduced to practice, and
“[e]ven if it had, that is irrelevant to written description in the parent
specification.” Id. at 26–27 (citing Enzo Biochem, Inc. v. Gen-Probe Inc.,
323 F.3d 956, 969 (Fed. Cir. 2002) (“[P]roof of a reduction to practice,
absent an adequate description in the specification of what is reduced to
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practice, does not serve to describe or identify the invention for purposes of
§ 112, ¶ 1.”)).
Petitioner disagrees with Patent Owner’s assertion that dynamic
adaptation to changes in web sites would not be possible without identifying
new web sites because the changes in web sites described by the ’431
patents occur “within known websites.” Id. at 27 (citing Ex. 1001, 2:30–41,
16:44–55, 17:26–28; Ex. 1057 ¶ 27). We agree with Petitioner that the ’431
patent describes adapting to changes within already known websites, not
adapting to changes on the Web involving unknown websites. Thus, the
’431 patent’s description of adapting to changes in web sites does not
provide written description support for claim 9.
Petitioner also disagrees with Patent Owner’s argument that “the
‘second embodiment’ ‘could never detect a new device’ unless it polls
devices not in the database” because, according to Petitioner, “the
specification directly refutes this––the second embodiment polls ‘devices . . .
listed in database 508.’” Reply 27 (quoting PO Resp. 49; citing Ex. 1001,
19:10–28). Petitioner also explains why it believes that Patent Owner’s
assertions regarding “polling” of web sites is unsupported and erroneous.
Id. at 28 (citing Ex. 1057 ¶¶ 28–29).
In response, Patent Owner asserts that the support for claim 9 “comes
from the knowledge of one of ordinary skill in the art and the Kurganov[-
262] application’s disclosure of its second embodiment.” Sur-reply 23.
Patent Owner also asserts that “[t]he polling of devices . . . in the second
embodiment is not limited to known devices” because the application
expressly discloses adding new devices and, if that “were restricted to
known devices, new devices could never be added.” Id. at 24. Patent
Owner also asserts that “the disclosure of polling or pinging devices 500
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should be understood [to] refer to the IP addresses or potential locations of
devices, not the devices themselves.” Id. at 25.
We are persuaded by Petitioner that sufficient written description
support does not exist in Kurganov-262 for claim 9, which requires the
computing device to be “configured to periodically search via one or more
networks to identify new web sites and to add the new web sites to the
plurality of web sites.” Pet. 50–54. Thus, we determine that Kurganov-262
is available as prior art against the challenged claims.
On the complete record, Patent Owner fails to direct us to specific
disclosure within Kurganov-262 that evidences written description for
claim 9. Rather, Patent Owner’s citations to the ʼ431 patent fail to describe
with adequate precision how the computing device is configured to
periodically search the network(s) to identify new web sites and add such
new web sites to the plurality of web sites that are accessed. PO Resp. 46–
50.
For example, Patent Owner provides several citations to the ʼ431
patent that lack specificity regarding claim 9. Id. at 46–48. Patent Owner
then points to the ʼ431 patent disclosure that
In the preferred [second] embodiment, the devices 500 appear
as “web sites” connected to the network 502. This allows a
network interface system, such as a device browsing server 506,
a database 508, and a user interface system, such as a media
server 510, to operate similar to the web browsing server
102, database 100 and media server 106 described in the
first preferred embodiment above.
PO Resp. 48 (quoting Ex. 1001, 17:50–58) (alteration by Patent Owner).
Patent Owner contends that “this disclosure shows that the devices in the
second embodiment may in fact be web sites, and operate similarly to the
first embodiment.” Id. We are not persuaded by this argument.
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The disclosure referenced by Patent Owner indicates that the devices
“appear as ‘web sites’ connected to the network.” Ex. 1001, 17:50–52
(emphasis added). To “appear” as a web site is not the same as being a web
site. Also, the ʼ431 patent’s use of quotation marks around the term “web
site” in column 17 strongly suggests that the devices are not actual web
sites––particularly considering the ʼ431 patent’s numerous listings of actual
web sites without such quotation marks. See, e.g., id. at 6:19, 6:63, 13:33–
34, 14:37–38, 18:37–40. This disclosure within the ʼ431 patent supports
Mr. Lipoff’s testimony, relied on by Petitioner, that the skilled artisan
“would have understood this to teach that the devices are, of course, not
actually web sites, but only ‘appear’ to the device browsing server as
URLs.” Ex. 1002 ¶ 220. We credit that testimony because it is supported by
a reasonable reading of the ʼ431 patent. We find that Petitioner has shown
that this description of devices appearing as web sites does not provide
written description support for claim 9.
Furthermore, Patent Owner has not produced evidence sufficient to
show why these two embodiments would have been recognized by a skilled
artisan as being interchangeable. For example, as we noted in our Institution
Decision, “the first embodiment describes polling known web sites and
modifying their ranking number based on the individual web site’s response
and speed, and does not appear to search for new web sites.” Dec. 51 (citing
Ex. 1001, 7:4–8). We observed that the second embodiment’s “detection of
a new device appears to be carried out by polling or ‘pinging’ periodically
all known devices listed in a database,” and “[i]f . . . the server receives an
unexpected response, then the device is identified as being ‘new’.” Id.
(citing Ex. 1001, 19:19–28). On the complete record, Patent Owner has not
adequately explained how such a periodic polling of known devices
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described in the second embodiment could “be applied to identify new web
sites––presumably to find additional sources of ‘desired data,’ which is an
objective of the first embodiment.” Id. (citing Ex. 1001, 4:44–46).
Rather, on the complete record, Patent Owner’s evidence is not
sufficient to support its assertions regarding what a skilled artisan “would
understand” based on the ʼ431 patent’s disclosure. See PO Resp. 48–50.
For example, Patent Owner asserts that “[a] [person of ordinary skill in the
art] would understand that” polling or pinging “describes a process where by
existing and new devices and/or websites are discovered,” and that
“‘polling’ includes asking for information from a website, including a listing
of URLs or asking a website of a search engine to provide new website
information.” Id. at 49–50 (citing Ex. 2059 ¶¶ 153–155). We are not
persuaded by this line of argument because we afford minimal weight to
Patent Owner’s reliance on paragraphs 153–155 of Mr. Occhiogrosso’s
testimony (Ex. 2059). PO Resp. 48–50. This testimony provides very little
detail beyond what is argued in the Patent Owner Response. See 37 C.F.R.
§ 42.65 (“Expert testimony that does not disclose the underlying facts or
data on which the opinion is based is entitled to little or no weight.”).
We furthermore agree with Petitioner that the ʼ431 patent
distinguishes between “polling” and “searching.” Reply 28; Ex. 1001,
claim 8 (reciting the computing device of “the system of claim 1 wherein the
computer is further configured to periodically poll each of said web sites”).
Therefore, we agree with Petitioner (Reply 28) that a skilled artisan would
not have understood the “polling” disclosed in column 19 as “including
searching for new . . . web sites.” PO Resp. 48.
We also are not persuaded by Patent Owner’s assertion that a skilled
artisan “after reading the specification of the ʼ431 Patent, would understand
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that a web search system would include the ability to ‘identify new websites’
or engage in web crawling,” and “would need to adapt to the changing
internet by identifying new websites.” Id. at 47 (citing Ex. 2059 ¶ 149).
This contention is also insufficiently supported. The evidence cited in
support of this assertion is a document (“Lipoff Dep. (Rough)”) that is not
part of this proceeding. Ex. 2059 ¶ 149. We also agree with Petitioner that
Patent Owner here attempts to argue that it would have been obvious to
extend the ’431 patent’s disclosure to identifying new websites. Reply 26.
However, introducing evidence that it would have been obvious in light of
the ’431 patent’s disclosure is not sufficient to support an argument that the
’431 patent provides written description support. See Lockwood, 107 F.3d at
1571–72.
Furthermore, Patent Owner relies on a reduction-to-practice theory
that, even if true, is not relevant to the issue of whether written description
exists in the ʼ431 patent for claim 9. See Enzo Biochem., 323 F.3d at 969
(“[P]roof of a reduction to practice, absent an adequate description in the
specification of what is reduced to practice, does not serve to describe or
identify the invention for purposes of § 112, ¶ 1.”)
In sum, Petitioner has shown by a preponderance of the evidence that
Kurgonov-262 is prior art to the subject matter of claim 9.

2. Obviousness of claim 9 over Kurganov-262 and
Chakrabarti
Turning now to obviousness, as noted above, Petitioner contends that
Kurganov-262 discloses every limitation of claim 1, but not claim 9, and that
Chakrabarti’s teachings would have supplied what was missing from
Kurganov-262 for claim 9. Pet. 55–63. Petitioner identifies disclosure
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within Kurgonov-262 that teaches or suggests the limitations of claim 1.
Id. at 55–61. Petitioner then argues that a skilled artisan would have
incorporated Chakrabarti’s web-crawling teachings, and would have done so
essentially for the same reasons discussed in Section II.D.2 above for the
combination of Kovatch, Neal, and Chakrabarti. Id. at 62–63.
Because Patent Owner focused its arguments solely on the issue of
whether Kurganov-262 is prior art, Petitioner’s assertions regarding the
substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted
on the complete record. PO Resp. 46–50; Sur-reply 23–25. Patent Owner
likewise does not address Petitioner’s proffered reasons why a skilled artisan
would have combined these teachings. PO Resp. 46–50; Sur-reply 23–25.
We have reviewed the disclosures of Kurganov-262 and Chakrabarti
relied on by Petitioner, as well as the explanations provided by Mr. Lipoff,
and are persuaded that the limitations of claim 1 are taught in Kurganov-262
and the additional limitations of claim 9 are taught in Chakrabarti. Pet. 55–
63; Ex. 1002 ¶¶ 225–228; Ex. 1004; Ex. 1008. Petitioner also persuades us
that a skilled artisan would have been motivated to apply Chakrabarti’s
techniques for web crawling to Kurganov-262’s system, and would have had
a reasonable expectation of successfully doing so, thus arriving at the subject
matter of claim 9 of the ʼ431 patent. Pet. 62–63; Ex. 1002 ¶¶ 229–233.
On the complete record, including Mr. Lipoff’s uncontroverted
testimony, we find that Kurganov-262 and Chakrabarti teach each limitation
of claim 9 and that a skilled artisan would have had reasons, with rational
underpinning, to combine the references with a reasonable expectation of
success. Patent Owner does not argue or introduce evidence of objective
indicia of nonobviousness. In sum, upon consideration of all the evidence,
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we conclude that Petitioner has proved by a preponderance of the evidence
that claim 9 would have been obvious over Kurganov-262 and Chakrabarti.

H. Obviousness of Claim 14 over Kurganov-262 and DeSimone
Petitioner contends that claim 14 would have been obvious over
Kurganov-262 and DeSimone. Pet. 63–68. Petitioner contends that
Kurganov-262 does not provide written description support for and, thus,
would be prior art to, claim 14 “[i]f claim 14 is interpreted to require more
than temporary storage of the user-requested retrieved information in
memory for converting the information to audio.” Id. at 63–64. However,
neither party contends that claim 14 should be interpreted to require more
than temporary storage of user-requested retrieved information in memory
for converting the information to audio. Accordingly, on the complete
record, we need not reach whether Kurganov-262 would be prior art to
claim 14 in that circumstance, or whether claim 14 would have been obvious
over Kurganov-262 and DeSimone.

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III. CONCLUSION13
Petitioner has shown by a preponderance of the evidence that claims
1, 2, 4–7, 9, 10, 13, and 14 would have been obvious.

13 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).
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In summary:14

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED, based on a preponderance of the evidence, that claims 1,
2, 4–7, 9, 10, 13, and 14 are unpatentable;

14 As noted above, we do not reach whether claims 1, 2, 4–7, 10, 13, and 14
would have been obvious over Kovatch, Neal, and Chakrabarti; whether
claim 14 would have been obvious over Kovatch, Neal, Chakrabarti, and
DeSimone; whether claim 14 would have been obvious over Kovatch, Neal,
and DeSimone; or whether claim 14 would have been obvious over
Kurganov-262 and DeSimone.
Claims

35 U.S.C. § Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 4–7,
10, 13,
14
103(a) Kovatch, Neal 1, 2, 4–7, 10,
13, 14

1, 2, 4–7,
9, 10, 13,
14
103(a) Kovatch, Neal,
Chakrabarti
9
14 103(a) Kovatch, Neal,
DeSimone

14 103(a) Kovatch, Neal,
Chakrabarti,
DeSimone

9 103(a) Kurganov-262,
Chakrabarti
9
14 103(a) Kurganov-262,
DeSimone

Overall
Outcome
1, 2, 4–7, 9,
10, 13, 14

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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.

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For PETITIONER:
Elisabeth Hunt
Gregory Nieberg
Richard Giunta
WOLF, GREENFIELD & SACKS P.C.
Ehunt-ptab@wolfgreenfield.com
Gnieberg-ptab@wolfgreenfield.com
Rgiunta-ptab@wolfgreenfield.com

For PATENT OWNER:
Michael McNamara
Michael Renaud
William Meunier
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY & POPEO, P.C.
mmcnamara@mintz.com
mtrenaud@mintz.com
wameunier@mintz.com