Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 1 of 21 PageID #: 24790
`Case 1:13-cv-00919—LPS Document 306-7 Filed 03/10/21 Page 1 of 21 PageID #: 24790
`
`EXHIBIT 7
`
`EXHIBIT 7
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 2 of 21 PageID #: 24791
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 2 of 21 PageID #: 24791
`
`TrialstEDusptogov
`571-272-7822
`
`Paper No. 8
`Date Entered: June 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC, GOOGLE INC., and MOTOROLA MOBILITY LLC
`Petitioner
`
`V.
`
`ARENDI S.A.R.L.
`
`Patent Owner
`
`Case IPR2014—00208
`
`Patent 7,917,843 B2
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 CFR. § 42.108
`
`I. BACKGROUND
`
`Apple Inc., Google Inc., and Motorola Mobility LLC (collectively
`
`“Petitioner”) requests inter partes review of claims 1—44 of US. Patent No.
`
`1/20
`
`SAMSUNG EX. 1006
`
`ARENDI 210101
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 3 of 21 PageID #: 24792
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 3 of 21 PageID #: 24792
`
`IPR2014—00208
`
`Patent 7,917,843 B2
`
`7,917,843 B2 (“the ”843 patent”) (Ex. 1001) under 35 U.S.C. §§ 311-319.
`
`Paper 1 (“Pet”). Arendi S.A.R.L. (“Patent Owner”) submitted a preliminary
`
`response under 37 C.F.R. § 42.107(b) on March 12, 2014. Paper 6 (“Prelim
`
`Resp”). We have jurisdiction under 35 U.S.C. § 314.
`
`For the reasons that follow, we institute an inter panes review of
`
`claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36—39, 42, and 43 of the ’843 patent.
`
`We do not institute review of challenged claims 3-7, 9-13, 18, 19, 22, 25-29,
`
`31—35, 40, 4'1, and 44.
`
`The Challenged Patent
`
`The ’843 patent relates to a computer program that receives
`
`information typed by a user into a document (as in a word processor) and
`
`searches an external source, such as a database, to determine if the typed
`
`information exists in the database. The computer program may add a user-
`
`selectable button to the word processor that causes execution of another
`
`program to receive the typed information and to search the database. Ex.
`
`1001, col. 3, 11. 35—54. Consequently, the user does not have to learn how to
`
`use and have access to the database. Id. at col. 1, 11. 43-49.
`
`Figure 3 of the ”843 patent is reproduced below.
`
`2/20
`
`SAMSUNG EX. 1006
`
`ARENDI 210102
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 4 of 21 PageID #: 24793
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 4 of 21 PageID #: 24793
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`IPR20'14—00208
`
`Patent 7,917,843 B2
`
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`Figure 3 is said to be a screen shot that illustrates the inputting of a
`
`name to be searched and an address handling button within a word
`
`processor. Id. at col. 2, ll. 51-54. The user has typed the name of an existing
`
`contact 40. The user selects button 42, marked “OneButton.” In response,
`
`the program of the invention retrieves existing contact 40 from the document
`
`and searches a database for the name of the existing contact. Id. at col. 7, 11.
`
`30—37.
`
`Figure 4 of the ”843 patent is reproduced below.
`
`U)
`
`3/20
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`SAMSUNG EX. 1006
`
`ARENDI 210103
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 5 of 21 PageID #: 24794
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 5 of 21 PageID #: 24794
`
`IPR20'14—00208
`
`Patent 7,917,843 B2
`
`W Mimosa: Word Dominant?
`
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`
`Figure 4 is said to be a screen shot illustrating a retrieved address in a
`
`word processor. Id. at col. 2, 11. 55-57. The user has typed a name and new
`
`address of existing contact 44. The user selects “OneButton” 42 and the
`
`program of the invention retrieves existing contact 44 from the document
`
`and searches a database for the name of the existing contact. Id. at col. 8, 11.
`
`13-19.
`
`4/20
`
`SAMSUNG EX. 1006
`
`ARENDI 210104
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 6 of 21 PageID #: 24795
`Case 1:13-cv-00919—LPS Document 306-7 Filed 03/10/21 Page 6 of 21 PageID #: 24795
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`IPR20'14—00208
`
`Patent 7,917,843 B2
`
`Illustrative Claim
`
`1. A computer—implemented method for finding data
`related to the contents of a document using a first computer
`program running on a computer, the method comprising:
`
`displaying the document electronically using the first
`
`computer program;
`
`while the document is being displayed, analyzing, in a
`computer process, first information from the document to
`determine if the first information is at least one of a plurality of
`types of information that can be searched for in order to find
`second information related to the first information;
`
`retrieving the first information;
`
`providing an input device, configured by the first
`computer program, that allows a user to enter a user command
`to initiate an operation, the operation comprising (i) performing
`a search using at least part of the first information as a search
`term in order to find the second information, of a specific type
`or types, associated with the search term in an information
`source external to the document, wherein the specific type or
`types of second information is dependent at least in part on the
`type or types of the first information, and (ii) performing an
`action using at least part of the second information;
`
`in con sequence of receipt by the first computer program
`of the user command from the input device, causing a search for
`the search term in the information source, using a second
`computer program, in order to find second information related
`to the search term; and
`
`if searching finds any second information related to the
`search term, performing the action using at least part of the
`second information, wherein the action is of a type depending at
`least in part on the type or types of the first information.
`
`5/20
`
`SAMSUNG EX. 1006
`
`ARENDI 210105
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 7 of 21 PageID #: 24796
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 7 of 21 PageID #: 24796
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`IPR20'14—00208
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`Patent 7,917,843 B2
`
`Relatea1 Proceedings
`
`According to the parties, the ”843 patent is involved in the following
`
`lawsuits: Arendi SARL. v. Apple Inc, No. 1:12-cv-01596-LPS (D. Del);
`
`and Arendi S.A.R.L. v. Motorola Mobility LLC, No. 1:12—cv—01601—LPS (D.
`
`Del); Arena’i S.A.R.L. v. Yahoo! Inc, No. 1:13-cv-00920 (D. Del);Arena’/T
`
`S.A.R.L. v. Google Inc, No. 1:13—cv-00919 (D. Del.);Arena’i S.A.R.L. v.
`
`HTC Corp, et al., No. 1:12-cv-01600 (D. Del); Arena’i S.A.R.L. v. Sony
`
`Mobile Communications (USA) Inc, No. l: 12-cv—01602 (D. Del); Arendi
`
`SARL. v. Nokia Corporation, et al., No. 1:12—2cv—01599 (D. Del); Arendi
`
`S.A.R.L. v. Blackberry Limited, et al., No. 1:12—cv—01597 (D. Del); Arencli
`
`S.A.R.L. v. LG Electronics Inc, et al., No. 1:12—cv—015959 (D. Del); and
`
`Arena’i S.A.R.L. v. Samsung Electronics Co. Ltd, et al., No. 1:12——cv01598
`
`(D. Del). According to Patent Owner, patents related to the ”843 patent are
`
`involved in the following inter partes reviews: 1PR2014-00206, IPR2014-
`
`00207, IPR2014—00203, and lPR2014—00214.
`
`PriorArt
`
`Miller
`
`Luciw
`
`Pandit
`
`US 5,946,647
`
`Aug. 31, 1999
`
`EX. 1007
`
`US 5,644,735
`
`Jul. 1, 1997
`
`EX. 1008
`
`US 5,859,636
`
`Jan. 12, 1999
`
`Ex. 1009
`
`Miller et 211., From Documents to Objects, An Overview of LiveDoc, 30(2)
`
`SIGCHI (April 1998) (Ex. 1010) (“LiveDoc”).
`
`Bonura et al, Drop Zones, An Extension to LiveDoc, 30(2) SIGCHI (April
`
`1998) (EX. 1010) (“Drop Zones”).
`
`6/20
`
`SAMSUNG EX. 1006
`
`ARENDI 210106
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 8 of 21 PageID #: 24797
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 8 of 21 PageID #: 24797
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`IPR20'14—00208
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`Patent 7,917,843 B2
`
`Asserted Grounds of Unpatentabtlity
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 Use. § 103(a) (Pet. 8):
`
`Reference(s)
`Claims
`
`
`LiveDoc and Drop Zones
`1—44
`
`
`Miller
`1-44
`
`
`
`
`
`
`
`Luciw
`
`1-7, 10—29, and 32—44
`
`1, 2, 8, 14—17, 20, 21, 23, 24,
`Pandit
`30, 36-39, 42, and 43
`
`II. ANALYSIS
`
`Claim Interpretation
`
`Consistent with the statute and the legislative history of the Leahy—
`
`Smith America Invents Act (AIA), the Board will construe the claims of an
`
`unexpired patent using the broadest reasonable interpretation. 37 OF .R.
`
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012). The claim language should be read in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art. In
`
`re Am. Acad. ofScz'. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
`
`Office must apply the broadest reasonable meaning to the claim language,
`
`taking into account any definitions presented in the specification. Id. (citing
`
`In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy
`
`presumption” that a claim term carries its ordinary and customary meaning.
`
`CCS Fitness, Inc. v. Brunswick Corp, 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`The “ordinary and customary meaning” is that which the term would have to
`
`7/20
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`SAMSUNG EX. 1006
`
`ARENDI 210107
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 9 of 21 PageID #: 24798
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 9 of 21 PageID #: 24798
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`a person of ordinary skill in the art in question. In re Translog/Tc Tech, Inc,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Providing An Input Device, Configured by
`the First Computer Program
`
`Each of the independent claims (1 , 20, 23, and 42) contains the phrase
`
`“providing an input device, configured by the first computer program.” The
`
`”843 patent indicates that an “input device” can be a touch screen button, a
`
`keyboard button, an icon, a menu choice, or a voice command device,
`
`suitable for calling an external program from a word processor. See EX.
`
`1001, col. 3, 11. 35—54. Petitioner submits that the ’843 patent specification
`
`“gives no guidance” regarding how the input device is “configured by” the
`
`first computer program. Pet. 7. Indeed, it appears that no form of the word
`
`“configure” is used in the patent’s description of the input device as it relates
`
`to a computer program. On the evidence before us, it appears that the phrase
`
`in question was added to the claims during prosecution, with no discussion
`
`as to how the input device may be “configured by” the first computer
`
`program, nor any indication as to how the phrase might be deemed to
`
`distinguish over the prior art. See EX. 1003 at 9-19.
`
`Patent Owner provides a general dictionary definition to indicate that
`
`“configure” means “to design, arrange, set up, or shape with a view to
`
`specific applications or uses.” Prelim. Resp. 7 citing EX. 2001 at 1. Based
`
`on this definition, Patent Owner submits that “providing an input device,
`
`configured by the first computer program” should be construed as “an input
`
`device, set up by the first computer program for use.” Prelim. Resp. 7.
`
`Patent Owner also contends that the claims require “providing” the input
`
`8/20
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`SAMSUNG EX. 1006
`
`ARENDI 210108
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 10 of 21 PageID #: 24799
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 10 of 21 PageID #: 24799
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`device, in addition to the device being “configured by” the computer
`
`program (id. at 7—8), but does not offer any interpretation for what
`
`“providing” of the input device might require.
`
`Although claims 23 and 42 are drawn to “[a]t least one non—transitory
`
`computer readable medium,” the “providing” of an input device is in the
`
`form of a method step in all the independent claims. The phrase in question
`
`does not specify that the first computer program “provides” an input device.
`
`We interpret “providing” an input device merely as requiring the presence of
`
`the device; that is, the input device is a structure that exists in steps that
`
`“allow[] a user to enter a user command to initiate an operation,” as claimed.
`
`For purposes of this decision, we adopt Patent Owner’s construction
`
`that “an input device, configured by the first computer program” means that
`
`the input device is set up by the first computer program for use. We agree
`
`with Petitioner (Pet. 7) to the extent that the “input device” is an interface to
`
`receive a user command, such as a user—selectable area or icon 011 a
`
`computer screen.
`
`Proposed Grounds of Unpatentabill'ty
`
`LiveDoc and Drop Zones
`
`Petitioner submits that LiveDoc and Drop Zones teach a computer-
`
`implemented method for finding data related to the contents of a document
`
`that includes displaying the document electronically using a first computer
`
`program. Pet. 12 (claim chart). The document shown in Figure 2 of Drop
`
`Zones (Ex. 1006 at 7')1 is displayed by using a text entry application
`
`1 Although the Petition cites to page numbers in the LiveDoc and Drop
`Zones references, we cite to corresponding pages in Exhibit 1006.
`
`9
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`9/20
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`SAMSUNG EX. 1006
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`ARENDI 210109
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`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 11 of 21 PageID #: 24800
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 11 of 21 PageID #: 24800
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`program, LiveSl'mpZeText, which the Petition maps to the claimed “first
`
`computer program.” Pet. 12. For the limitation of “providing an input
`
`device, configured by the first computer program,” Petitioner acknowledges
`
`that the “input device” in the reference (the highlighted area shown in Figure
`
`2 of LiveDoc) is not configured by the text entry application program. The
`
`reference, instead, teaches that LiveDoc “knows” where the structures
`
`appear in the text passed to it, but LiveDoc “has no idea” where in the
`
`window those characters physically appear. That information is held by the
`
`application, not by LiveDoc. Hence, LiveDoc must ask the application for
`
`the information about the structures it has found “via a callback” to the
`
`application. Pet. 13—14; Ex. 1006 at 8. To make up for the admitted
`
`deficiency of the references, Petitioner alleges that “it would have been
`
`obvious for LiveDoc to contact the word processor via callback and inform
`
`it of the position of the detected structures within text, such that the word
`
`processor would then construct the highlights (input device) by mapping
`
`positions in text to positions in the visible window.” Pet. 14. Petitioner
`
`refers, for support, to the Declaration of Dr. Daniel A. Menascé.
`
`Dr. Menasce’ testifies that the “approach” that is not described in
`
`LiveDoc would be “equivalent” and “would yield the same predictable
`
`result” to that described by the reference, apparently because it “would have
`
`been a predictable modification of LiveDoc that was well within ordinary
`
`skill, in order to perform a known function of standard word processing
`
`programs.” Ex. 1002 11 61 . Neither Petitioner nor Declarant, however,
`
`points to anything in the record to demonstrate existence of the asserted
`
`“known function of standard word processing programs” at the time of
`
`invention of the claimed subject matter of the ”843 patent. Expert testimony
`
`10
`
`10/20
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`SAMSUNG EX. 1006
`
`ARENDI 210110
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 12 of 21 PageID #: 24801
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 12 of 21 PageID #: 24801
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`that does not disclose the underlying facts or data on which the opinion is
`
`based is entitled to little or no weight. 37 C.F.R. § 42.65(a).
`
`We are persuaded by Patent Owner that Petitioner’s allegation that it
`
`would have been obvious to change the functionality of LiveDoc and the
`
`associated text entry application program in a way that is consistent with the
`
`claimed invention is, in effect, mere hindsight-driven argument. Prelim.
`
`Resp. 27 n1.
`
`Although the obviousness analysis should “take account
`of the inferences and creative steps that a person of ordinary
`skill in the art would employ,” the Supreme Court emphasized
`that this evidentiary flexibility does not relax the requirement
`that, “[t]o facilitate review, this analysis should be made
`explicit.” Id. [KSR Int’l Co. v. Teleflex, Inc, 550 US. 398, 418
`(2007)], 127 S.Ct. 1727 (citing [In re] Kahn, 441 F.3d [977,]
`988 [(Fed. Cir. 2006)]) (“[R]ejections on obviousness grounds
`cannot be sustained by mere conclusory statements; instead,
`there must be some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.”)).
`
`Perfect Web Tech, Inc. v. InfOUSA, 17/26., 587 F.3d 1324, 1330 (Fed. Cir.
`
`2009). In short, Petitioner’s allegations fail to “specify where each element
`
`of the claim is found .
`
`.
`
`.
`
`.” 37 C.F.R. § 42.104(b)(4).
`
`Each of the independent claims (1 , 20, 23, and 42) contains
`
`substantially similar limitations that are material to the deficiency with
`
`respect to what the “first computer program” requires. In view of the
`
`foregoing, we conclude that Petitioner has not demonstrated a reasonable
`
`likelihood that it would prevail with respect to any of claims 1—44 in a
`
`§ 103(a) challenge over LiveDoc and Drop Zones.
`
`11
`
`11/20
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`SAMSUNG EX. 1006
`
`ARENDI 210111
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 13 of 21 PageID #: 24802
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 13 of 21 PageID #: 24802
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`Miller
`
`Petitioner submits that the “first computer program” of claim 1 is
`
`taught by Miller’s word processor (application 167) that is depicted in
`
`Figure 1 of the reference. Pet. 25 -26. The “detect structures” button 520
`
`(Miller Fig. 5) is an input device that allows the user to enter a command for
`
`initiating program 165. Id. at 26.
`
`Figure 5 of Miller shows window 510 that presents an exemplary
`
`document. The window includes button 520 for initiating program 165 . Ex.
`
`1007, col. 5, 11. 19-24. Application (word processor) 167 presents data on
`
`the output device to a user. Id. at col. 3, 11. 34—67. Although window 510
`
`includes button 520 for initiating program 165, Petitioner does not allege
`
`that button 510 is provided by the word processor. Petitioner submits,
`
`instead, that a modification must be made to the “first computer program” in
`
`Miller to include the “input device.” “It would have been obvious for the
`
`word processor program 167 to provide an interface, such as button 520, to
`
`receive a user command.” Pet. 26. Petitioner cites to, as support, the
`
`declaration of Dr. Menasce.
`
`Dr. Menasce testifies that it was well known to configure word
`
`processing programs to add graphical user interface (GUI) elements, such as
`
`additional menu options or buttons, to provide desired functionality. Ex.
`
`1002 11 71. Dr. Menascé refers to a paper and a book, each co—authored by
`
`Declarant, which are asserted to discuss tools relating to “Visual Basic code”
`
`for customized GUI elements. Id. Declarant does not, however, provide a
`
`copy of relevant sections of the paper and book as exhibits, nor indicate or
`
`explain how the disclosures (not provided) might have led one of ordinary
`
`12
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`12/20
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`SAMSUNG EX. 1006
`
`ARENDI 210112
`
`

`

`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 14 of 21 PageID #: 24803
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 14 of 21 PageID #: 24803
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`IPR20'14—00208
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`Patent 7,917,843 B2
`
`skill in the art to modify Miller consistent with the requirements of claim 1,
`
`to support the allegation of what “would have been obvious.” We find
`
`Petitioner’s evidentiary basis for the allegation to be lacking.
`
`Each of the other independent claims (20, 23, and 42) contains
`
`substantially similar limitations that are material to the deficiency with
`
`respect to what the “first computer program” requires.
`
`In view of the
`
`foregoing, we conclude that Petitioner has not demonstrated a reasonable
`
`likelihood that it would prevail with respect to any of claims 1—44 in a
`
`§ 103(a) challenge over Miller.
`
`Luciw
`
`Claim 1 of the ”843 patent recites “while the document is being
`
`displayed, analyzing, in a computer process, first information from the
`
`document to determine if the first information is at least one of a plurality of
`
`types of information that can be searched for in order to find second
`
`information related to the first information.” For this limitation, Petitioner
`
`points to description in Luciw of entering information into a smart field.
`
`Pet. 37. Petitioner also refers to an “implicit assist” as taught by Luciw. Id.
`
`at 38.
`
`Luciw describes entering information into a smart field (e. g., Fig. 4b;
`
`“Name” field 175 in window 170). EX. 1008, cc]. 8, ll. 15—18. The
`
`reference also describes an “implicit assist” action that may be triggered by
`
`writing in the notepad outside of a smart field. Id. at col. 8, 11. 30-41.
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`As Patent Owner argues, however, by the act of using a smart field,
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`the user informs the computing device what type of information the user is
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`entering. No analysis to identify the type of information is performed or
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`ARENDI 210113
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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 15 of 21 PageID #: 24804
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 15 of 21 PageID #: 24804
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`needed. Prelim. Resp. 50. For example, as shown in Luciw’s Figure 4b,
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`information may be entered into “Name” field 175 or “Phone” field 177,
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`thus identifying the type of information.
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`Further, as noted by Patent Owner (Prelim. Resp. 51—53), Petitioner
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`has not shown that analyzing entered text is part of Luciw’s “implicit assist”
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`operation. Petitioner submits that “the device in Luciw analyzes a user’s
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`entry (first information from the document) to determine if implicit
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`assistance is possible and the kind of implicit assist indicated (determine
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`whether first information can be used to find second information)” Pet. 38
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`(referring to EX. 1008, col. 10,11. 15—20 and col. 8, 11. 7—13; Figs. 3 and 4a)
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`However, determining if implicit assist is possible, and “the kind” of implicit
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`assist indicated, has not been shown to be an analysis of the information to
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`determine if it is a type of information that can be searched for in order to
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`find second information related to the first information, in accordance with
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`the requirements of the claim. As Patent Owner points out, Luciw does not
`
`teach analyzing the information to determine information type in the implicit
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`assist operation. As shown in Luciw’s Figure 3, “Implicit Assist” (step 104)
`
`if enacted, results in “Query Database” (step 106), with no intervening step
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`of determining the type of information. EX. 1008, Fig. 3.
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`Each of the other independent claims (20, 23, and 42) contains
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`substantially similar limitations that are material to the deficiency with
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`respect to what the “analyzing” requires. In view of the foregoing, we
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`conclude that Petitioner has not demonstrated a reasonable likelihood that it
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`would prevail with respect to any of claims 1—7, 10—29, and 32—44 in a
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`§ 103(a) challenge over Luciw.
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`ARENDI 210114
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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 16 of 21 PageID #: 24805
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 16 of 21 PageID #: 24805
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`lPR20'14—00208
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`Patent 7,917,843 B2
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`Pandit
`
`Each of the independent claims of the ”843 patent recites “performing
`
`a search .
`
`.
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`. wherein the specific type or types of second information [found]
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`is dependent at least in part on the type or types of the first information [used
`
`as a search term].” Prelim. Resp. 53. Petitioner submits (Pet. 50-51) that
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`Pandit discloses performing a search in an information source external to the
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`document, which is a further requirement of the claim. Petitioner does not
`
`seem to allege that the disclosed dictionary search relates to the first and
`
`second types of information dependency in the claim. Petitioner submits,
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`however, that Pandit discloses adding an identified number to an address
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`book. Pet. 51; EX. 1009, col. 2,1. 56 — col. 3,1. 10; Figs. 1d and lf.
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`Figure 1f of Pandit is reproduced below.
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`ARENDI 210115
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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 17 of 21 PageID #: 24806
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 17 of 21 PageID #: 24806
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`
` ”/7"; File Rel}: Date EMafi
`13’
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`20
`
`.A
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`dd to address book.“ 1
`
`{11.82
`Fr: 1995 CAIS Conference<CAIS@
`Re: CAIS '95 Conference Registratio
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`Annual Conference of
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`the Canadian Assiciation for Informal
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`CONNEC’FEDNESS: INFORMATKO
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`'7» 10 june 1995
`To be held at; the School of Library an
`University of Alberta, Edmonton, All)
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`fiBfiREVIATED CONFERENCE E’R
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`THURSDAY, 61’8/ 1 995.
`
`FIG. If
`
`Figure 1f is said to show a graphical representation of text on a Video
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`monitor. Ex. 1009, col. 1, 11. 59—60. The Figure shows that text (telephone
`
`number 16) has been selected by the user and highlighted. Pull down menu
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`17 (“Phone #”) in menu bar 13 has been selected, yielding pulled—down
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`menu 20. Links in pulled-down menu 20 allow the user to, for example,
`
`select the link “Add to address book. . .” in order to call a program to add the
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`16
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`16/20
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`SAMSUNG EX. 1006
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`ARENDI 210116
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`

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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 18 of 21 PageID #: 24807
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 18 of 21 PageID #: 24807
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`selected text (telephone number 16) to the address book. Id. at col. 2, l. 1 —
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`col. 3, l. 10.
`
`In order to avoid multiple entries of the same address, Petitioner
`
`submits that it would have been obvious that the first step in adding to an
`
`address book is to search the address book to determine if an entry already
`
`exists with the entered information, and displaying any associated
`
`information that is located. Pet. 51. Petitioner refers to the declaration of
`
`Dr. Menascé. Id. Dr. Menascé concurs. EX. 1002 11 99.
`
`Patent Owner argues that Petitioner’s proposed search would fail to
`
`meet the requirements of the claim. The search for pre—exi sting entries
`
`would be a search for a duplicate telephone number. According to Patent
`
`Owner, a search for duplicate entries would be a search for “first
`
`information,” not a search “in order to find the second information, of a
`
`specific type or types,” as required by claim 1. Prelim. Resp. 58-59.
`
`We find Patent Owner’s argument to be unpersuasive. Pandit teaches
`
`that, from pulled down-menu 20 (Fig. 1f), programs that can be called may
`
`include a writeable computer database of telephone and telefax numbers.
`
`EX. 1009, col. 3, 11. 1-3. Dynamically linked libraries may contain
`
`subroutines for implementing the invention with respect to telephone and
`
`telefax numbers. Id. at col. 4, 11. 20-31. It would be reasonable to presume,
`
`as a matter of common sense, that the subroutine would search for duplicate
`
`telephone numbers and, upon locating a duplicate entry, both the first
`
`information and associated (or second) information, such as the name and/or
`
`address associated with the telephone number, would be displayed to the
`
`user. A person having a bound paper address book would look first to
`
`determine if a potential new contact had been entered previously. A
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`17
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`ARENDI 210117
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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 19 of 21 PageID #: 24808
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 19 of 21 PageID #: 24808
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`Patent 7,917,843 B2
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`computerized search for duplicate entries would be a search “in order to find
`
`the second information, of a specific type or types,” as claimed, in the same
`
`sense that the ’843 patent’s search is in order to find the second information.
`
`As shown, for example, in Figure l of the ”843 patent, a name (first
`
`information) can be searched for in a database (12), and more than one
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`possible contact or address (containing second information) may be found to
`
`match with the first information (18). The first and the second information
`
`are displayed to the user for user action (20). Searching a database for a
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`telephone number in Pandit’s system, and displaying results, would be no
`
`different in substance from searching a database for a name, and displaying
`
`results, in the disclosed example in the ”843 patent. “What matters is the
`
`objective reach of the claim. If the claim extends to what is obvious, it is
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`invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc, 550 US. 398, 419
`
`(2007).
`
`We have reviewed Petitioner’s evidence regarding the dependent
`
`claims as well and, based on this record, are persuaded that Petitioner has
`
`shown a reasonable likelihood that it would prevail in the § 103(a) challenge
`
`of claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42, and 43 ofthe ’843
`
`patent over Pandit.
`
`HI. CONCLUSION
`
`The Petition demonstrates a reasonable likelihood of prevailing on the
`
`obviousness ground of unpatentability based on Pandit.
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`The Board has not made a final determination on the patentability of
`
`any challenged claim.
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`ARENDI 210118
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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 20 of 21 PageID #: 24809
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 20 of 21 PageID #: 24809
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`IPR20'14—00208
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`Patent 7,917,843 B2
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`1V. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that an inter partes review is instituted as to ”843 patent
`
`claims 1, 2, 8, 14—17, 20, 21, 23, 24, 30, 36—39, 42, and 43 on the
`
`obviousness ground based on Pandit;
`
`FURTHER ORDERED that the Petition is denied as to all other
`
`grounds set forth in the Petition;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’843 patent is instituted with trial commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(0) and 37 C.F.R.
`
`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above and no other ground is authorized for the ’843
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`patent claims.
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`ARENDI 210119
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`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 21 of 21 PageID #: 24810
`Case 1:13-cv-00919-LPS Document 306-7 Filed 03/10/21 Page 21 of 21 PageID #: 24810
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`IPR20'14—00208
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`Patent 7,917,843 B2
`
`For Petitioner:
`
`David L. Fehrman
`
`Mehran Arj ornand
`Morrison & Foerster LLP
`
`dfehr1nar1@m0f0.com
`marj omand@mofo.com
`
`Matthew A. Smith
`
`Zhuanjia Gu
`Turner Boyd LLP
`smith@turrierboyd.com
`gu@tumerboyd.com
`
`For Patent Owner:
`
`Robert M. Asher
`
`Bruce D. Sunstein
`
`Sunstein Karin Murphy & Timbers LLP
`rasher@sunsteinlaw.com
`bsun stein@sunsteinlaw.com
`
`20
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`20/20
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`SAMSUNG EX. 1006
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`ARENDI 210120
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`