Parus Holdings, Inc.Download PDFPatent Trials and Appeals BoardOct 19, 2021IPR2020-00847 (P.T.A.B. Oct. 19, 2021) Copy Citation Trials@uspto.gov Paper No. 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. ____________ IPR2020-00847 Patent 9,451,084 B2 ____________ Before DAVID C. MCKONE, STACEY G. WHITE, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a) IPR2020-00847 Patent 9,451,084 B2 2 I. INTRODUCTION 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, 10, and 14 of U.S. Patent No. 9,451,084 B2 (Ex. 1001, “the ’084 patent”). Paper 2 (“Pet.”). Parus Holdings, Inc., (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response (Paper 7, “Reply to POPR”), and Patent Owner filed a Sur-reply (Paper 8, “Sur-reply to POPR”). After considering these filings by both parties, we instituted an inter partes review of claims 1, 2, 4–7, 10, and 14 of the ’084 patent on all grounds of unpatentability alleged in the Petition. Paper 9 (“Institution Decision” or “Dec.”). After institution of trial, Patent Owner filed a Patent Owner Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 22 (“Reply”). Patent Owner filed a Sur-reply. Paper 24 (“Sur-reply”). An oral hearing was held on July 27, 2021, and a transcript of the hearing is included in the record. Paper 30 (“Tr.”). We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine Petitioner has established by a preponderance of the evidence that claims 1, 2, 4–7, 10, and 14 of the ’084 patent are unpatentable. A. Related Proceedings The parties identify the following district court proceedings as related to the ’084 patent: Parus Holdings Inc. v. Apple, Inc., No. 6:19-cv-00432 IPR2020-00847 Patent 9,451,084 B2 3 (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., et al., No. 6:19-cv-00438 (W.D. Tex.); Parus Holdings Inc. v. Google LLC, No. 6:19-cv-00433 (W.D. Tex.); and Parus Holdings Inc. v. LG Electronics, Inc., et al., No. 6:19-cv-00437 (W.D. Tex.). Pet. –x–1; Paper 5, 1. The parties also identify the following PTAB proceedings that may affect or be affected by a decision in this proceeding: IPR2020-00686; IPR2020-00687; and IPR2020-00846.2 Pet. –xi–; Paper 5, 1–2. B. The ’084 Patent (Ex. 1001) The ’084 patent, titled “Robust Voice Browser System and Voice Activated Device Controller,” issued September 20, 2016. Ex. 1001, codes (54), (45). The ’084 patent relates to a “robust and highly reliable system that allows users to browse web sites and retrieve information by using conversational voice commands.” Id. at 1:35–38. Systems disclosed by the ’084 patent allow devices connected to a network to be controlled by conversational voice commands spoken into any voice enabled device interconnected with the network. Id. at 3:37–41. Systems disclosed by the ’084 patent also allow users to access and browse web sites when the users do not have access to computers with Internet access, by providing users with a voice browsing system to browse web sites using conversational voice commands spoken into voice enabled devices, such as wireline or 1 Petitioner includes its mandatory notices in the preamble section of its Petition, where the preamble section is paginated using lower case Roman numerals (i.e., ‘i’, ‘ii’, . . . ‘xii’). 2 Petitioner references a concurrently filed IPR challenging U.S. Patent No. 7,076,431, which is IPR2020-00846. IPR2020-00847 Patent 9,451,084 B2 4 wireless telephones. Id. at 3:29–32, 3:52–59. The users’ spoken commands are converted into data messages by a speech recognition software engine, and are transmitted to the user’s desired web site over the Internet. Id. at 3:60–65. Responses sent from the web site are received and converted into audio messages via a speech synthesis engine or a pre-recorded audio concatenation application, and finally transmitted to the user’s voice enabled device. Id. at 3:65–4:3. The disclosed voice browsing system maintains a database containing a list of information sources (e.g., Internet web sites), with rank numbers assigned to the information sources. Id. at 3:17–20, 4:5– 20. The ’084 patent explains that: the voice browser system and method uses a web site polling and ranking methodology that allows the system to detect changes in web sites and adapt to those changes in real-time. This enables the voice browser system of a preferred embodiment to deliver highly reliable information to users over any voice enabled device. This ranking system also enables the present invention to provide rapid responses to user requests. Long delays before receiving responses to requests are not tolerated by users of voice-based systems, such as telephones. When a user speaks into a telephone, an almost immediate response is expected. This expectation does not exist for non-voice communications, such as email transmissions or accessing a web site using a personal computer. In such situations, a reasonable amount of transmission delay is acceptable. The ranking system . . . implemented by a preferred embodiment of the present invention ensures users will always receive the fastest possible response to their request. Id. at 4:4–21. Figure 1 of the ’084 patent, reproduced below, illustrates a voice browsing system. Id. at 4:29–30. IPR2020-00847 Patent 9,451,084 B2 5 Figure 1 illustrates a voice browsing system. Id. at 4:29–30. Voice browsing system 118 illustrated in Figure 1 includes media servers 106 (which may contain a speech recognition engine), database 100, web browsing servers 102, and firewalls 104 and 108. Id. at 5:10–18, 6:10– 12, 6:20–23, 20:26–34. Voice browsing system 118 connects on one side to voice-enabled device 112 (e.g., a telephone) through public switched telephone network 106, and to individual websites 114 through internet 110 on the other side. Id. at 19:56–20:38. Specifically, a user of the voice browsing system establishes a connection between voice enabled device 112 and media server 106 by, e.g., calling a telephone number associated with the voice browsing system. Id. at 19:59–62. Once the connection is established, media server 106 initiates IPR2020-00847 Patent 9,451,084 B2 6 an interactive voice response (IVR) application that plays audio messages to the user presenting a list of options, such as, “stock quotes,” “flight status,” “yellow pages,” “weather,” and “news.” Id. at 19:62–67. The user selects the desired option (e.g., “yellow pages”) by speaking the name of the option into the voice-enabled device 112. Id. at 20:4–18. The system asks the user further details of the user’s search, and the user speaks into telephone 112 the details of the user’s search (e.g., looking for “restaurants,” types of restaurants, zip codes for the restaurants). Id. Media server 106 uses the speech recognition engine to interpret the user’s speech commands; for example, media server 106 may identify keywords in the user’s speech. Id. at 6:60–7:2, 20:19–21. Media server 106 then uses the recognized keywords to search website records stored in database 100, retrieves an appropriate web site record from the database, and provides the record to the web browsing server 102. Id. at 6:65–7:2, 20:20–23. Information then is retrieved from the responding web site and transmitted to media server 106, for conversion into audio messages—performed by a speech synthesis software or by selecting among a database of prerecorded voice responses contained within database 100. Id. at 20:35–46. Database 100 contains sets of records for each web site accessible by the voice browsing system. Id. at 5:17–20. Figure 2, reproduced below, illustrates an example of web site record 200 in the database. Id. at 4:31–32, 5:19–20. IPR2020-00847 Patent 9,451,084 B2 7 Figure 2 illustrates an example of a web site record in database 100. Id. at 4:31–32, 5:19–20. Each web site record 200 contains rank number 202 of the web site, associated Uniform Resource Locator (URL) 204 for the website, and command 206 that enables an extraction agent to generate proper requests to the web site and to format data received from the web site. Id. at 5:20–25. For each category searchable by a user, database 100 may list several web sites, each with a different rank number. Id. at 20:47–50. As an example, three different web sites may be listed as searchable under the category of “restaurants,” and each of those web sites will be assigned a rank number such as 1, 2, or 3. Id. at 20:50–53. The web site with the highest rank (i.e., rank=1) will be the first web site accessed by web browsing server 102. Id. at 20:53–55. If the information requested by the user cannot be found at this first web site, web browsing server 102 will then search the second ranked web site and so forth down the line, until the requested information is retrieved or no more web sites are left to be checked. Id. at 20:55–59. IPR2020-00847 Patent 9,451,084 B2 8 C. Illustrative Claim Petitioner challenges claims 1, 2, 4–7, 10, and 14, of which sole independent claim 1 is illustrative. Claim 1 is reproduced below with Petitioner’s claim element identified in brackets: 1. [Preamble] A system for acquiring information from one or more sources maintaining a listing of web sites by receiving speech commands uttered by users into a voice-enabled device and for providing information retrieved from the web sites to the users in an audio form via the voice-enabled device, the system comprising: [1.a] at least one computing device, the computing device operatively coupled to one or more networks; [1.b] at least one speaker-independent speech-recognition device, the speaker-independent speech-recognition device operatively connected to the computing device and configured to receive the speech commands; [1.c] at least one speech-synthesis device, the speech- synthesis device operatively connected to the computing device; [1.d] memory operatively associated with the computing device with at least one instruction set for identifying the information to be retrieved, the instruction set being associated with the computing device, the instruction set comprising: a plurality of web site addresses for the listing of web sites, each web site address identifying a web site containing the information to be retrieved; [1.e] at least one recognition grammar associated with the computing device, each recognition grammar corresponding to each instruction set and corresponding to a speech command, the speech command comprising an information request provided by the user, [1.f] the speaker-independent speech-recognition device configured to receive the speech command from the users IPR2020-00847 Patent 9,451,084 B2 9 via the voice-enabled device and to select the corresponding recognition grammar upon receiving the speech command; [1.g] the computing device configured to retrieve the instruction set corresponding to the recognition grammar provided by the speaker-independent speech-recognition device; [1.h] the computing device further configured to access at least one of the plurality of web sites identified by the instruction set to obtain the information to be retrieved, [1.i] wherein the computing device is further configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites, [1.j] the computing device configured to access a first web site of the plurality of web sites and, if the information to be retrieved is not found at the first web site, the computer configured to access the plurality of web sites remaining in an order defined for accessing the listing of web sites until the information to be retrieved is found in at least one of the plurality of web sites or until the plurality of web sites have been accessed; [1.k] the speech synthesis device configured to produce an audio message containing any retrieved information from the plurality of web sites, and the speech synthesis device further configured to transmit the audio message to the users via the voice-enabled device. Ex. 1001, 24:2–59 (limitation numbering designated by Petitioner; see Pet. 75–77 (“CLAIMS LISTING APPENDIX”)). D. Instituted Challenges to Patentability We instituted inter partes review of claims 1, 2, 4–7, 10, and 14 of the ’084 patent on the following challenges. Dec. 2–3, 48. IPR2020-00847 Patent 9,451,084 B2 10 Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis 1, 2, 4–7, 10, 14 103(a)3 Kurganov-2624, Chakrabarti5 14 103(a) Kurganov-262, Chakrabarti, DeSimone6 1, 2, 4–7, 10, 14 103(a) Kovatch7, Chakrabarti, Neal8 14 103(a) Kovatch, Chakrabarti, Neal, DeSimone Petitioner relies, inter alia, on two Declarations from Stuart J. Lipoff (Exs. 1002, 1057), and a Declaration from Dr. Martin Walker (Ex. 1053) to support its challenges. Relevant to our disposition of this case, Patent Owner relies on a Declaration from Benedict Occhiogrosso. Ex. 2059. II. ANALYSIS A. Claim Construction Petitioner filed its Petition on April 18, 2020. Pet. 74, 80. Based on that filing date, we apply the same claim construction standard that is applied in civil actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 83 Fed. Reg. 51,340 (Oct. 11, 2018) (applicable to inter partes reviews filed on or after November 13, 2018). 3 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 ’084 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. 4 US 2001/0047262 A1, published November 29, 2001 (Ex. 1004). 5 US 6,418,433 B1, issued July 9, 2002 (Ex. 1008). 6 US 5,787,470, issued July 28, 1998 (Ex. 1009). 7 WO 2001/050453 A2, published July 12, 2001 (Ex. 1005). 8 US 6,324,534 B1, issued November 27, 2001 (Ex. 1007). IPR2020-00847 Patent 9,451,084 B2 11 Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Petition, Petitioner does not advance a specific construction for any claim term. See Pet. 5. Similarly, Patent Owner proposes no express constructions in the Patent Owner Response. See PO Resp. 18. On the fully developed record, we determine that it is not necessary to provide an express construction for any claim term for purposes of resolving the controversy. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803). B. Level of Ordinary Skill in the Art Petitioner describes a person having ordinary skill in the art as having “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. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. IPR2020-00847 Patent 9,451,084 B2 12 Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti (Ground 1) Petitioner asserts that claims 1, 2, 4–7, 10, and 14 would have been unpatentable under 35 U.S.C. § 103(a) as obvious over the combined teachings of Kurganov-262 and Chakrabarti. Pet. 6–25. For support, Petitioner relies on declaration testimony from Stuart J. Lipoff (Ex. 1002). 1. Overview of Kurganov-262 The ’084 patent claims priority to Application No. 09/776,996 through a chain of continuation applications. Ex. 1001, code (63). Kurganov-262 is the publication of Application No. 09/776,996. Ex. 1004, code (21). Petitioner indicates that the disclosure in Kurganov-262 is substantially identical to that of the ’084 patent. Pet. 11. Patent Owner states that “Kurganov-262 is the priority document for the [ʼ084] Patent and IPR2020-00847 Patent 9,451,084 B2 13 provides disclosure of each and every claim element of the challenged claims.” PO Resp. 19. 2. Overview of Chakrabarti Chakrabarti discloses a “[s]ystem and method for focused web crawling.” Ex. 1008, code (54). Chakrabarti discloses that 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 is illustrated in Figure 1, reproduced below. IPR2020-00847 Patent 9,451,084 B2 14 Figure 1 is a block diagram of a system for focused Web crawling, showing an example Web page table entry and associated link table entry in an exploded relationship to a crawl database. Id. at 3:65–67. Figure 1 illustrates system 10 for focused Web crawling. Id. at 4:13– 14. System 10 includes a digital processing apparatus (e.g., computer 12) that accesses the World Wide Web via Internet 13. Id. at 4:14–16. Computer 12 includes focused crawler 14, which may be executed by a processor within computer 12 as a series of computer-executable instructions. Id. at 4:26–28. Focused crawler 14 accesses topic analyzer 28. Id. at 4:61–62. Topic analyzer 28 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 4:63–65. System 10 generates crawl database 30 that solely contains information on Web pages that pertain to the topic or topics of interest. Id. at 5:14–17. Crawl database 30 includes Web page table 32 that includes corresponding link tables 34, each of which is an edge table relative to Web page table 32. Id. at 5:17–21. Web page table 32 includes Uniform Resource Locator (URL) field 36 that represents a Web page URL. Id. at 5:31–34. Link table 34 is further associated with URL field 36. Id. at 6:16– 17. Chakrabarti discloses that, using system 10, a user can generate a query for information using keyboard 22 or mouse 24, and in response a conventional browser or searcher 58 associated with computer 12 accesses crawl database 30 to retrieve a list of relevant Web pages therefrom. Id. at 6:35–40. Browser 58 responds to the query with Web pages relevant to the predefined topic. Id. at 6:44–46. IPR2020-00847 Patent 9,451,084 B2 15 3. The Parties’ Contentions Regarding Independent Claim 1 Petitioner asserts that claim 1 would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti. Pet. 6–25. Specifically, Petitioner notes that Kurganov-262 is the publication of application 09/776,996––within the priority chain of the ʼ084 patent––but “is [35 U.S.C. §] 102(b) prior art because the challenged claims are not entitled to priority earlier than 2004.” Pet. 11. Petitioner contends that the limitation recited in sole independent claim 1 that requires periodic search and identification of “new web sites and to add the new web sites to the plurality of web sites”––limitation 1.i––lacks written description support in application 09/776,996. Id. at 6, 76. Thus, according to Petitioner, because the full scope of the claim 1 does not have written description support in application 09/776,996, “no challenged claim is entitled to the benefit of application 09/776,996’s filing date” under 35 U.S.C. § 120. Id. at 6. Regarding the actual disclosure of Kurganov-262, Petitioner details how it believes this reference discloses each and every limitation recited in claim 1 except for “limitation 1.i.” Pet. 11–19. Petitioner asserts limitation 1.i is taught by Chakrabarti, and that the skilled artisan “would have had multiple reasons to modify Kurganov-262’s information-retrieval system to periodically search for new web sites as Chakrabarti teaches.” Id. at 19–23. Specifically, Petitioner asserts that the skilled artisan would have been motivated to apply Chakrabarti’s crawling techniques to Kurganov-262’s system “to achieve the benefits Chakrabarti discusses of adding ‘relevant, valuable’ web page addresses to make the information-retrieval database ‘comprehensive’ to increase the likelihood of finding a user’s requested information.” Id. at 21. Petitioner also asserts that Chakrabarti’s focused IPR2020-00847 Patent 9,451,084 B2 16 crawling techniques would have been well-suited to Kurganov-262’s system because the systems of these references “use a database of web site listings categorized by relevance to particular topics” and such techniques “enhance[] the ‘efficient’ use of a topic-categorized information-retrieval database like Kurganov-262’s.” Id. at 22. Petitioner asserts that incorporating Chakrabarti’s crawling techniques into Kurganov-262’s system would have been “nothing more than the predictable use of prior-art elements according to their established functions.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Patent Owner advances no specific arguments contesting Petitioner’s assertions regarding the respective disclosures of Kurganov-262 and Chakrabarti, or Petitioner’s proffered motivations to combine the teaching of these references. PO Resp. 31–36. Rather, Patent Owner argues that Kurganov-262 is not prior art because the challenged claims have written description support in the ʼ084 patent,9 thus entitling these claims to a priority date preceding that of Kurganov-262’s publication (November 29, 2001). Id. Specifically, Patent Owner points to the ʼ084 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.” Id. at 31–32 (citing Ex. 1001, Abstract, 3:13–16, 21:42– 9 The panel recognizes that the relevant issue for determining whether Kurganov-262 is prior art is whether the application 09/776,996 contains written description support for the challenged claims. However, when identifying such support, Patent Owner cites to disclosure in the ’084 patent, which both parties agree has the same disclosure (but for the claims) as Kurganov-262 and application 09/776,996. Following the parties’ convention, we also cite to the ’084 patent. IPR2020-00847 Patent 9,451,084 B2 17 44). Patent Owner also points to three paragraphs within Kurganov-262 which purport to include “getting information from Lycos and Yahoo, which include[s] web crawling functionality.” Id. at 32 (citing Ex. 1004 ¶¶ 30, 39, 42).10 Based on these disclosures, Patent Owner asserts that the 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. at 32 (citing Ex. 2059 ¶¶ 44–91, 149). Patent Owner also asserts that the first and second embodiments described in the ʼ084 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. 32. Patent Owner alleges that “the devices in the second embodiment may in fact be web sites, and operate similarly to the first embodiment.” Id. at 33. 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 ̓ 084 patent. Id. at 33–34. Patent Owner then explains how it believes the ̓ 084 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 34. Petitioner responds that most of Patent Owner’s arguments simply rehash the Preliminary Response arguments that we rejected in our 10 These paragraphs correspond to Ex. 1001, 5:47–66, 7:48–10:25, 18:53– 19:46. IPR2020-00847 Patent 9,451,084 B2 18 institution decision, and give us no reason to reconsider our earlier determinations. Reply 1. Petitioner also asserts that the Declaration that Patent Owner relies on for support “merely parrots the [Patent Owner Response] verbatim,” and is thus entitled to little or no probative weight. Id. at 1–2 (citing Ex. 2059 ¶¶ 150–153). Petitioner contends that Patent Owner provides no evidence that the skilled artisan would have recognized that the ʼ084 patent’s web search system would include the ability to identify new websites 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.” Id. at 2 (citing Ex. 1049, 84–87; Ex. 1057 ¶¶ 2–3). Petitioner also asserts that Patent Owner has not produced evidence to support its argument that limitation 1.i was reduced to practice, and “[e]ven if it had, that is irrelevant to written description in the parent specification.” Id. at 2–3. Petitioner furthermore disagrees with Patent Owner’s assertion that dynamic adaptation to changes in web sites would not be possible without identifying new websites because such changes occur “within known websites.” Id. at 3. 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, “[t]he specification directly refutes this––the second embodiment polls ‘devices . . . listed in database 508.’” Id. (citing Ex. 1001, 23:26–44). Petitioner also explains why it believes Patent Owner’s assertions regarding “polling” of websites is unsupported and erroneous. Id. at 4. In response, Patent Owner asserts that the support for limitation 1.i “comes from the knowledge of one of ordinary skill in the art and the IPR2020-00847 Patent 9,451,084 B2 19 Kurganov application’s disclosure of its second embodiment.” Sur-reply 1. 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 1–2; see also id. at 3 (advancing a similar argument). Patent Owner also asserts that “the disclosure of polling or pinging devices 500 should be understood [to] refer to the IP addresses or potential locations of devices, not [the] devices themselves.” Id. at 3. 4. Obviousness Analysis of Claim 1 A description adequate to satisfy 35 U.S.C. § 112, first paragraph, “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 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). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR, 550 U.S. at 406. Obviousness is resolved based on 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 ordinary IPR2020-00847 Patent 9,451,084 B2 20 skill in the art; and (4) objective evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have analyzed both parties’ arguments and evidence consistent with these legal principles and, on the complete record, find Petitioner has met its burden to establish by a preponderance of the evidence that Kurgonov-262 is prior art to the subject matter of claim 1, and that Kurgonov-262 and Chakrabarti render this subject matter obvious under 35 U.S.C. § 103. Our analysis begins with a discussion of written description because it relates to the threshold issue of whether Kurganov- 262 is prior art to the ʼ084 patent, even though the ʼ996 application which published as Kurganov-262 appears in the ̓ 084 patent’s priority chain. Ex. 1001, code 63. Written Description of “Limitation 1.i” We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ̓ 996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. 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 the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device 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. See PO Resp. 31–34. IPR2020-00847 Patent 9,451,084 B2 21 For example, Patent Owner provides several citations to the ʼ084 patent that lack specificity regarding limitation 1.i. Id. at 31–32. Patent Owner then points to the ̓ 084 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 the media server 106 described in the first preferred embodiment above. PO Resp. 33. 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. at 33 (emphases added). We are not persuaded by this argument. The disclosure referenced by Patent Owner indicates that the devices “appear as ‘web sites’ connected to the network.” Ex. 1001, 21:67–22:1 (emphasis added). To “appear” as a “web site” is not the same as “being” a web site. Also, the ʼ084 patent’s use of quotation marks around the term “web site” in column 21 strongly suggests that the devices are not actual web sites––particularly considering the ʼ084 patent’s numerous listings of actual web sites without such quotation marks. See, e.g., id. at 6:33, 7:9, 17:27–28, 18:55, 22:53–56 (listing actual web sites without quotations). This disclosure within the ʼ084 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 ¶ 90. We credit that testimony because it is supported by a reasonable reading of the ʼ084 patent. IPR2020-00847 Patent 9,451,084 B2 22 Furthermore, Patent Owner has not explained sufficiently how the particulars of these two embodiments would have been recognized by the 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. 33 (citing Ex. 1001, 7:17–21) (emphases added). 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’.” Dec. 33 (citing Ex. 1001, 23:38–41) (emphasis added). On the complete record, we find that the ’084 patent does not disclose that such a periodic polling of known devices 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.” Dec. 34 (citing Ex. 1001, 4:57–59). Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA 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 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. IPR2020-00847 Patent 9,451,084 B2 23 PO Resp. 33–34. These declaration paragraphs provide 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 ʼ084 patent distinguishes between “polling” and “searching.” Reply 4; Ex. 1001, 25:14–23 (claim 8, requiring the computing device of “[t]he system of claim 1 . . . [to be] further configured to periodically poll each of the web sites” (emphases added)). Therefore, we find that that the skilled artisan would not have understood the “polling” disclosed in column 23 as “including searching for new . . . web sites.” PO Resp. 33. We also reject Patent Owner’s assertion that the skilled artisan “after reading the specification of the ʼ084 Patent, would understand 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.” PO Resp. 32 (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. Furthermore, Patent Owner relies on a reduction-to-practice theory which, even if true, is not relevant to the issue of whether written description exists in the ʼ084 patent for limitation 1.i. 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 practice, does not serve to describe or identify the invention for purposes of § 112, ¶ 1.”) IPR2020-00847 Patent 9,451,084 B2 24 In sum, Petitioner has shown by a preponderance of the evidence that Kurganov-262 is prior art to the subject matter of claim 1. Obviousness over Kurganov-262 & Chakrabarti Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. 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. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. 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 disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the 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 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. IPR2020-00847 Patent 9,451,084 B2 25 Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ̓ 084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti. 5. Obviousness Analysis of Claims 2, 4–7, 10, and 14 Challenged claims 2, 4–7, 10, and 14 each depend from claim 1. Petitioner has identified disclosure within Kurgonov-262 which teaches or suggests the additional limitations of these challenged dependent claims. Pet. 23–25. Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. 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 claims 2, 4–7, 10, and 14 are disclosed in the prior art. Pet. 23–25; Ex. 1002 ¶ 115; Ex. 1004; Ex. 1008. Petitioner also persuades us that the 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 claims 2, 4–7, 10, and 14 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶ 115. Patent Owner does not raise any arguments with respect to these claims apart from the arguments discussed above with respect to whether Kurganov-262 is prior art. See generally PO Resp., Sur-Reply. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 2, 4–7, 10, and 14 of the ̓ 084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti. IPR2020-00847 Patent 9,451,084 B2 26 D. Asserted Obviousness based on Kurganov-262, Chakrabarti, and DeSimone (Ground 2), Kovatch, Chakrabarti, and Neal (Ground 3), and Kovatch, Chakrabarti, Neal and DeSimone (Ground 4) We have determined supra that Petitioner has shown by a preponderance of the evidence that claims 1, 2, 4–7, 10, and 14 would have been obvious over the combination of Kurganov-262 and Chakrabarti. Therefore, we need not address Petitioner’s separate patentability challenge of these claims based on the combined teachings of Kovatch, Chakrabarti, and Neal, or the alternative challenges to dependent claim 14. Pet. 25–71. III. CONCLUSION11 We conclude that Petitioner has satisfied its burden of demonstrating, by a preponderance of the evidence, that the subject matter of claims 1, 2, 4– 7, 10, and 14 of the ’084 patent is unpatentable. 11 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). IPR2020-00847 Patent 9,451,084 B2 27 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1, 2, 4–7, 10, and 14 of U.S. Patent No. 9,451,084 B2 have been shown to be unpatentable; and FURTHER ORDERED that, because this is a Final Written Decision, parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. Claims 35 U.S.C. § Reference(s)/Basis Claims Shown Unpatentable Claims Not shown Unpatentable 1, 2, 4–7, 10, 14 103(a) Kurganov-262, Chakrabarti 1, 2, 4–7, 10, 14 14 103(a) Kurganov-262, Chakrabarti, DeSimone 1, 2, 4–7, 10, 14 103(a) Kovatch, Chakrabarti, Neal 14 103(a) Kovatch, Chakrabarti, Neal, DeSimone Overall Outcome 1, 2, 4–7, 10, 14 IPR2020-00847 Patent 9,451,084 B2 28 FOR PETITIONER: Elisabeth H. Hunt Gregory S. Nieberg Richard F. Giunta WOLF, GREENFIELD & SACKS, P.C. ehunt-ptab@wolfgreenfield.com gnieberg-ptab@wolfgreenfield.com rgiunta-ptab@wolfgreenfield.com FOR PATENT OWNER: Michael J. McNamara Michael T. Renaud William A. Meunier MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. mmcnamara@mintz.com mtrenaud@mintz.com wameunier@mintz.com Copy with citationCopy as parenthetical citation