Searchmetrics, Inc.v.Brightedge Technologies

Patent Trial and Appeal Board

May 26, 2015

12855668 (P.T.A.B. May. 26, 2015)

Trials@uspto.gov Paper No. 8
571.272.7822 Entered: May 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SEARCHMETRICS, INC. and SEARCHMETRICS GMBH,
Petitioner,
v.
BRIGHTEDGE TECHNOLOGIES, INC.,
Patent Owner.
_______________

Case IPR2015-00257
Patent 8,135,706 B2
_______________

Before MEREDITH C. PETRAVICK, GRACE KARAFFA OBERMANN,
and BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

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

I. INTRODUCTION
A. Background
Searchmetrics, Inc. and Searchmetrics GmbH (collectively,
“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of inter
partes review of claims 1–16, 20, and 21 of U.S. Patent No. 8,135,706 B2
(Ex. 1001, “the ’706 patent”). BrightEdge Technologies, Inc. (“Patent
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Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314.
Under 35 U.S.C. § 314(a), an inter partes review may be instituted
only if “the information presented in the petition . . . and any response
. . . shows that there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition.”
See 37 C.F.R. § 42.108(c).
For the reasons given below, on this record, we find that Petitioner has
not established a reasonable likelihood of prevailing with respect to at least
one challenged claim of the ’706 patent. Accordingly, we deny the Petition
and decline to institute an inter partes review of the ’706 patent.
B. Related Proceedings
The parties represent that the ’706 patent is asserted in BrightEdge
Technologies, Inc. v. Searchmetrics GmbH and Searchmetrics, Inc.,
No. 3:14-cv-01009-WHO (N.D. Cal.). Pet. 1; Paper 4, 1. Petitioner also
filed a petition for inter partes review of U.S. Patent No. 8,478,746 B2 (“the
’746 patent”) in IPR2014-01517. Pet. 1; Paper 4, 2. The ’746 patent issued
from an application that was a continuation of the application that issued as
the ’706 patent. Pet. 1.
C. Alleged Prior Art
Petitioner relies on the following references:
Mike Moran and Bill Hunt, Search Engine Marketing, Inc. Driving
Search Traffic to Your Company’s Web Site, IBM PRESS (2006) (Ex. 1003,
“Moran”);
U.S. Patent No. 8,041,596 B2, issued October 18, 2011 (Ex. 1004,
“Graham”);
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SEO Tools Guide – Technical User Manual, 701-296, AOL (2006)
(Ex. 1005, “SEO Tools Guide”1); and
U.S. Patent No. 6,983,282 B2, issued January 3, 2006 (Ex. 1006,
“Stern”).
D. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–16, 20, and 21 of
the ’706 patent on the following grounds:2
References Basis Claim(s) challenged
Moran and Graham § 103(a) 1–7, 11–13, 15, 16, 20, and 21
Moran, Graham, and SEO
Tools Guide § 103(a) 8, 9, and 14
Moran, Graham, and Stern § 103(a) 10
E. The ’706 Patent
The ’706 patent is directed to systems and methods for determining
shares of voice with respect to selected search terms across channels and
over time. Ex. 1001, 2:53–56. Figure 1 of the ’706 patent shows that in one
implementation, network 105 can connect the various parts of the system to
one another, including web server 110, deep index engine 120,
correlator 130, grouping engine 140, and forecasting engine 150. Id. at
3:11–16. The Specification of the ’706 patent explains that system 100 is
“configured to determine a share of voice an entity has for search terms and
groups of search terms within and across various channels using the
components described herein.” Id. at 3:21–24.

1 “SEO” refers to Search Engine Optimization. Ex. 1005, 9.
2 Petitioner supports its challenge with a declaration executed by
Ivan Zatkovich on November 11, 2014 (Ex. 1007, “Zatkovich Declaration”).
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Figure 3 of the ’706 patent is reproduced below.

Figure 3 of the ’706 patent “illustrates an exemplary method for
identifying changes in an entity’s performance according to one example[.]”
Id. at 2:36–38; see id. at 7:28–29. The method begins by determining shares
of voice at step 300; the shares of voice may be calculated in any way,
including by the exemplary method described with respect to Figure 2 of the
’706 patent. Id. at 7:29–33. At step 310, shares of voice are tracked, which
may include determining shares of voice at selected time intervals over a
selected time period. Id. at 7:39–42. Shares of voice may be tracked at the
selected time period or after the time period has passed. Id. at 7:42–44.
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At step 320, a change in performance, such as a change in revenue, is
identified. Id. at 7:45–47. The method may also include “correlating the
entity’s shares of voice for search terms across several channels with other
entities’ shares of voice for the same search terms across the same channels”
at step 330, and the correlations “may then be used to isolate potential
causes for the change in performance.” Id. at 7:54–59.
The ’706 patent explains that tracking shares of voice for various
entities may provide a competitive baseline. Id. at 7:62–63. At step 340, the
method may include “determining changes in shares of voice for the search
terms for each of the entities for the time period associated with the change
in performance.” Id. at 7:63–67. If, for example, an entity’s share of voice
decreased at the same time the entity’s competitors’ shares of voice
increased, a portion of the change in performance may be attributable to a
loss in the entity’s share of voice for those search terms. Id. at 7:67–8:3.
Changes in the relative shares of voice for the entities may be assigned
weighted values that can be analyzed based on relative sizes of the changes.
Id. at 8:4–7. The method can also include additional determining,
comparing, and displaying steps as reflected in Figure 3 and described in the
’706 patent. See, e.g., id. at 8:7–59, Fig. 3.
F. Illustrative Claims
Claims 1 and 11 are the only independent claims challenged in this
proceeding. Claims 2–10 depend directly or indirectly from claim 1, and
claims 12–16, 20, and 21 depend directly or indirectly from claim 11.
Independent claims 1 and 11 are illustrative of the claimed subject matter
and are reproduced below:
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1. A method for managing references to an entity on a
network, comprising:
determining shares of voice for an entity and other
entities across a plurality of channels with respect to a plurality
of search terms, wherein determining shares of voice includes
determining rank positions for the search terms with respect to
the entity and the other entities and multiplying the rank
positions by products of estimated click rates and volumes of
traffic on the network for the entity and the other entities;
correlating shares of voice for the entity and the other
entities with respect the search terms to determine a relative
change in share of voice for the entity with respect to the other
entities;
correlating shares of voice for the entity across the
plurality of channels to determine relative changes in share of
voice for the entity within each of the channels; and
displaying the relative change in share of voice for the
entity with respect to the other entities and the relative changes
in share of voice for the entity within each of the channels.
Ex. 1001, 14:18–38.
11. A system for optimizing online references to an entity,
the system comprising:
a processor configured to execute computer instructions
to cause the system to perform operations, the operations
comprising:
searching at least one channel on a network for
references to the entity and other entities using a plurality of
search terms to generate search results;
scoring the references associated with each of the
plurality of search terms to generate scores for the references
within the search results with respect to the entity and the other
entities;
correlating conversions by one or more visits to the entity
with the search terms that directed the visits to the entity to
determine a conversion rate;
determining shares of voice for the entity and the other
entities across a plurality of channels with respect to the
plurality of search terms, wherein determining shares of voice
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includes determining rank positions for the search terms with
respect to the entity and the other entities and multiplying the
rank positions by products of estimated click rates and volumes
of traffic on the network for the entity and the other entities;
correlating shares of voice for the entity and the other
entities with respect the search terms to determine a relative
change in share of voice for the entity with respect to the other
entities based on the scores for the references; and
correlating shares of voice for the entity across the
plurality of channels to determine relative changes in share of
voice for the entity within each of the channels based on the
scores for the references.
Id. at 15:7–39.
II. CLAIM CONSTRUCTION
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b); accord In re Cuozzo Speed Techs.
LLC, 778 F.3d 1271, 1279–82 (Fed. Cir. 2015) (“Congress implicitly
adopted the broadest reasonable interpretation standard in enacting the
AIA,” and “the standard was properly adopted by PTO regulation”); Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14,
2012) (Claim Construction). We apply this standard to the claims of the
’706 patent. See Pet. 10 (proposing to construe the claims of the ’706 patent
in accordance with the broadest reasonable interpretation standard); Prelim.
Resp. 10 (same).
In determining whether or not to institute inter partes review, we
construe claim terms as necessary to apply the references. Claim
constructions may change as a result of the developing record.
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A. “shares of voice”
The phrase “shares of voice” is recited in each of the challenged
claims. E.g., Ex. 1001, 14:20 (claim 1), 15:22 (claim 11). Petitioner does
not propose a construction for the phrase. Patent Owner proposes that we
construe the singular form of the phrase, for the purpose of determining
whether to institute an inter partes review, to mean “a proportion of a total
audience or readership, calculated by dividing each entity’s aggregate share
value to the total of all the aggregate share values” as we did in IPR2014-
01517. Prelim. Resp. 22.
In IPR2014-01517, Petitioner and Patent owner put forth competing
constructions for “share of voice.” Searchmetrics, Inc. v. Brightedge Techs.,
Inc., No. IPR2014-01517, slip op. at 8–11 (PTAB Feb. 10, 2015) (Paper 11).
After considering the ordinary and customary meaning of the phrase and the
use of the phrase in the ’746 patent, particularly with respect to the
description of Figure 2 and the disclosure regarding calculating “shares of
voice,” we construed “share of voice” to mean “a proportion of a total
audience or readership, calculated by dividing each entity’s aggregate share
value to the total of all the aggregate share values.” Id. at 11.
As noted above, the ’746 patent issued from an application that was a
continuation of the application that issued as the ’706 patent. Thus, the
written description in the two patents is essentially the same. In reviewing
the issues raised in the Petition and Preliminary Response in this case, and
Petitioner’s reliance upon a second reference, Graham, for what Petitioner
refers to as “the explicitly defined formula for share of voice found in
independent claims 1 and 11” (Pet. 13), our attention was directed to the
’706 patent’s discussion of Figure 3. In describing Figure 3, the ’706 patent
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states that “the method may begin by determining shares of voice at
step 300.” Ex. 1001, 7:29–31. Importantly, the ’706 patent then explains
that “[s]hares of voice may be calculated in any way, including by the
exemplary method for determining shares of voice described above with
reference to FIG. 2.” Id. at 7:31–33.
In light of the issues presented in this case and the ’706 patent’s
description of the method of calculating “shares of voice” as “exemplary,”
the broadest reasonable interpretation of “shares of voice” in light of the
Specification is not limited to a particular calculation method, or formula.
Thus, we determine that one of ordinary skill in the art would understand the
phrase “shares of voice” to mean “proportions of a total audience or
readership.”
B. Other Terms
While Petitioner and Patent Owner present constructions for several
other claim terms, no other terms require express construction at this initial
stage.
III. ANALYSIS
A. Obviousness over Moran and Graham
Petitioner asserts that the combination of Moran and Graham would
have rendered claims 1–7, 11–13, 15, 16, 20, and 21 obvious to one of
ordinary skill in the art at the time of the invention. Pet. 9. The Petition
includes detailed claim charts identifying where Moran and Graham
allegedly teach the limitations of each challenged claim. Id. at 23–46.
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Moran is directed to the basics of search engines and search engine
marketing and discusses search engine optimization. Ex. 1003, 324–66.3
For purposes of illustration, Moran discloses a fictitious company, Snap
Electronics, and uses this company and its search marketing campaigns to
discuss the need to set up search marketing and then to track and measure
that search marketing success in various ways. See, e.g., id. at 174–200,
492, 478–506.
Graham is directed to methods for estimating search engine market
share for websites. Ex. 1004 [54]. Graham discloses equations that permit
the calculation of a total contribution of all keywords to the market share of
a given website relative to other websites, allowing their relative market
shares to be compared. Id. at 6:65–7:21.
Patent Owner raises several arguments in response to Petitioner’s
challenge based on Moran and Graham, including that Petitioner fails to
show how Moran discloses “correlating shares of voice for the entity across
the plurality of channels to determine relative changes in share of voice for
the entity within each of the channels.” Prelim. Resp. 31–32. Patent Owner
asserts that Petitioner’s reliance upon Moran’s Tables 7-13 and 7-15 is
deficient because the tables only show “‘a guess at what the new improved
rank might’ lead to, instead of relative changes.” Id. at 32. Patent Owner
contends that Petitioner’s reliance upon Moran’s Table 7-11 is deficient for
the same reason. Id. Further, Patent Owner asserts that Petitioner’s reliance
upon Moran’s Table 15-7 fails to teach this element of the claims because

3 Exhibit pin citations are to the page numbers of the exhibit, rather than the
page number of the particular reference included as the exhibit.
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the table “merely discloses added visits, as opposed to relative changes in
share of voice.” Id.
As quoted above, claim 1 recites, inter alia, “correlating shares of
voice for the entity across the plurality of channels to determine relative
changes in share of voice for the entity within each of the channels.”
Ex. 1001, 14:32–34. Claim 11, the only other independent claim challenged
under this ground, is directed to a system and similarly recites, inter alia,
“correlating shares of voice for the entity across the plurality of channels to
determine relative changes in share of voice for the entity within each of the
channels based on the scores for the references.” Id. at 15:35–38.
Petitioner relies upon five of Moran’s tables to show that Moran
allegedly discloses this element of the claims—Tables 7-7, 7-11, 7-13, 7-15,
and 15-7. Pet. 27–28.4 We address each.
First, Petitioner asserts that “Moran discloses correlating shares of
voice for an entity for a channel (search engine) for multiple search terms.”
Id. at 27 (citing Ex. 1003, 196, Tables 7-13, 7-15). Petitioner contends that
“[i]n Tables 7-13 and 7-15, for example, monthly keyword demand and
projected monthly search referrals (share of voice) for multiple search terms
are provided from organic search engine Google.” Id.
Moran’s Table 7-13, shown below, uses “the estimated monthly
keyword demand to estimate search referrals at various clickthrough rates.”
Ex. 1003, 196.

4 Petitioner’s claim chart with respect to this element of claim 11 relies upon
Petitioner’s arguments directed to claim 1. See Pet. 41 (referring to
“limitation [1C] of claim 1”).
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Moran’s Table 7-13 shows “Snap Electronics Traffic Potential
Model.” Ex. 1003, 196 (Table 7-13). The “correlating” step of claim 1
referred to above, however, recites “correlating shares of voice . . . across
the plurality of channels.” (Emphasis added). Petitioner does not allege that
Moran’s Table 7-13 correlates across a plurality of channels.
Moran’s Table 7-15, shown below with our annotations, includes,
inter alia, one column indicating current shares of voice and a second
column indicating projected shares of voice.5 We agree with Petitioner that
the difference between the two shares of voice reflected in those columns,
for a given keyword phrase, discloses a relative change, even if only a
projected change, in share of voice. Petitioner, however, acknowledges that
Table 7-15 provides this information for only one channel—Google.
Pet. 27.

5 Moran’s Table 7-11, discussed infra, refers to the first of these columns as
“Share of Search Traffic.” Ex. 1003, 192 (Table 7-11).
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Moran’s Table 7-15, with our annotations, shows “Snap’s Organic
Traffic Model,” where “[f]or each keyword, Snap can project the percentage
of clickthrough per organic search and project added referrals.” Ex. 1003,
197 (Table 7-15).
Second, Petitioner contends that Moran discloses that each of the
major search engines and all major camera competitors can be analyzed for a
more complete approach. Pet. 27 (citing Ex. 1003, 197).
In the context of discussing Table 7-14, which shows a projected
rankings matrix, Moran discloses that each of the major search engines and
all major camera competitors could be analyzed. Ex. 1003, 197. Petitioner,
however, does not rely upon Table 7-14 when addressing this correlating
step of claim 1, and does not explain how, if at all, preparing a projected
rankings matrix for each of the major search engines and all major camera
manufacturers discloses “correlating shares . . . across the plurality of
channels to determine relative changes in share of voice for the entity within
each of the channels” as recited in claim 1. (Emphases added).
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Third, Petitioner points to Table 7-7 as an example, asserting that it
discloses a “competitor-rankings matrix for ranking keyword phrases and
comparing competitors’ rankings for each of the keyword phrases.” Pet. 27
(citing Ex. 1003, 189, Table 7-7).
Moran’s Table 7-7 is shown below.

Moran’s Table 7-7 shows “Snap Electronics Competitor-Rankings
Matrix” for different keyword phrases. Ex. 1003, 189 (Table 7-7).
Petitioner does not assert that Table 7-7 discloses “share of voice,” and our
review does not reveal that it does. Further Petitioner does not explain how,
if at all, Moran’s Table 7-7 discloses “correlating shares of voice for the
entity across the plurality of channels to determine relative changes in share
of voice for the entity within each of the channels,” as recited in claim 1.
Fourth, Petitioner contends that Table 15-7, shown below, “discloses
that, for a number of channels, such as Google (GC), Yahoo (YH) and
Microsoft (MS), a ranking and referrals for different keywords may be
determined and displayed.” Pet. 27 (citing Ex. 1003, 498, Table 15-7).
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Moran’s Table 15-7 shows “Snap’s Referrals by Keyword for July.”
Ex. 1003, 498 (Table 15-7). Although Table 15-7 includes a column
showing “Added Visits,” Table 15-7 does not include the columns from
Table 7-15, which disclosed shares of voice. In other words, Petitioner has
not shown that Moran’s Table 15-7 discloses determining “relative changes
in share of voice for the entity within each of the channels” as recited in
claim 1.
Fifth, Petitioner points to Table 7-11, asserting that “a share of search
traffic value has been determined and displayed for each keyword phrase for
a channel” and that “[t]he share of search traffic also shows a change in the
share of voice (search traffic) relative to other entities since the value is a
percentage of the search traffic.” Pet. 28 (citing Ex. 1003, 192, Table 7-11).
Moran’s Table 7-11, reproduced below, shows the same information
as Table 7-15 in the “share of search traffic” column, but only for the
current share of search traffic. Petitioner has not explained persuasively
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how Table 7-11’s indication of the current share of search traffic, reflected
as a percentage, shows a change in the share of voice relative to other
entities.

Moran’s Table 7-11 shows a “Snap Missed Opportunity Matrix,”
which “[j]uxtapos[es] the actual search referrals with the keyword demand
[to] show[] how many searchers were missed.” Ex. 1003, 192 (Table 7-11).
Lastly, Petitioner contends that “[t]he same share of search traffic may
be determined for the multiple search engines as shown in Table 15-7
because that table contains the information to determine the relative change
of share of voice.” Pet. 28.
Even if we agree with Petitioner that shares of search traffic may be
determined for multiple search engines, because Table 15-7 contains the
information to determine the relative change of share of voice, neither
Petitioner nor Petitioner’s expert, Mr. Zatkovich, explains why one of
ordinary skill in the art at the time of the invention would have been
prompted to do so. Thus, on this record, Petitioner has not shown that
Moran teaches the “correlating shares of voice for the entity across the
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plurality of channels to determine relative changes in share of voice for the
entity within each of the channels” as recited in independent claims 1 and
11, and claims 2–7, 12, 13, 15, 16, 20, and 21, which depend, respectively,
therefrom.
Accordingly, on the record before us, Petitioner has not established a
reasonable likelihood of prevailing on the assertion that the combination of
Moran and Graham would have rendered claims 1–7, 11–13, 15, 16, 20, and
21 obvious to one of ordinary skill in the art at the time of the invention.
B. Obviousness over Moran, Graham, and SEO Tools Guide &
Obviousness over Moran, Graham, and Stern
Petitioner asserts that the combination of Moran, Graham, and SEO
Tools Guide would have rendered the subject matter of claims 8, 9, and 14
obvious to one of ordinary skill in the art at the time of the invention.
Pet. 49–55. Petitioner also asserts that the combination of Moran, Graham,
and Stern would have rendered the subject matter of claim 10 obvious to one
of ordinary skill in the art at the time of the invention. Id. at 55–57.
Claims 8, 9, and 10 indirectly depend from claim 1, and claim 14
indirectly depends from claim 11. Ex. 1001, 14:65 (claim 8), 15:1 (claim 9),
15:4 (claim 10), 16:4 (claim 14). Petitioner relies upon Moran and Graham
as disclosing the elements that each of these claims has in common with the
independent claims from which it depends. Pet. 49, 53, 55; see Prelim.
Resp. 48 (noting that Petitioner’s second and third grounds of challenge are
directed solely to the additional limitations added by each of the dependent
claims and do not “cure[] the deficiencies in the[] analysis of the
independent claims”).
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For reasons we explained in the context of discussing Petitioner’s
obviousness challenge of claims 1–7, 11–13, 15, 16, 20, and 21 based on
Moran and Graham, see supra Section III.A., Petitioner has not established a
reasonable likelihood of prevailing on the assertion that Moran, Graham, and
SEO Tools Guide would have rendered the subject matter of claims 8, 9, and
14, or that Moran, Graham, and Stern would have rendered the subject
matter of claim 10, obvious to one of ordinary skill in the art at the time of
the invention.
IV. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition does not demonstrate that there is a reasonable likelihood that
Petitioner would prevail in challenging claims 1–16, 20, and 21 of the
’706 patent as unpatentable under 35 U.S.C. § 103(a).
V. ORDER
In consideration of the foregoing, it is ORDERED that the Petition is
DENIED and no trial is instituted.

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For PETITIONER:

Timothy W. Lohse
Harpreet Singh
DLA PIPER LLP (US)
2000 University Avenue
East Palo Alto, CA 94303
timothy.lohse@dlapiper.com
harpreet.singh@dlapiper.com

For PATENT OWNER:

Eliot Williams
G. Hopkins Guy
Jon V. Swenson
John F. Gaustad
1001 Page Mill Road
Building One, Suite 200
Palo Alto, CA 94304
eliot.williams@bakerbotts.com
hop.guy@bakerbotts.com
jon.swenson@bakerbotts.com
john.gaustad@bakerbotts.com