UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent 8,326,924
`
`Inventor: Harvey Lunenfeld
`
`Filed:
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`August 1, 2012
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`Issued:
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`December 4, 2012
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`CBM2014-00001
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`Title:
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`
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`METASEARCH ENGINE FOR ORDERING AT LEAST ONE
`ITEM RETURNED IN SEARCH RESULTS USING AT LEAST
`ONE QUERY ON MULTIPLE UNIQUE HOSTS AND FOR
`DISPLAYING ASSOCIATED ADVERTISING
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
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`84447497.1
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`

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`
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`I.
`
`II.
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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ........................................................................................... 1
`
`THE ’924 PATENT IS DIRECTED AT A NOVEL, NON-OBVIOUS
`METHOD OF PERFORMING A METASEARCH ....................................... 2
`
`a.
`
`The Alleged Prior Art Asserted in the Petition. .................................... 7
`
`III. CLAIM CONSTRUCTION .......................................................................... 10
`
`a.
`
`b.
`
`Petitioners’ Proposed Constructions Are Fanciful and Not the
`Broadest Reasonable Interpretation. ................................................... 10
`
`Patent Owner’s Proposed Constructions ............................................. 11
`
`IV. THE ’924 PATENT IS NOT SUBJECT TO COVERED BUSINESS
`METHOD REVIEW ...................................................................................... 24
`
`a.
`
`b.
`
`c.
`
`The America Invents Act Limits CBM Review to a Narrow
`Range of Patents. ................................................................................. 25
`
`The Invention of the ’924 Patent Is Not a Method of “Performing
`Data Processing…of a Financial Product or Service.” ....................... 27
`
`The Invention of the ’924 Patent Is a “Patent[] for Technological
`Invention[].” ........................................................................................ 28
`
`V.
`
`PETITIONERS HAVE FAILED TO MEET THEIR BURDEN
`UNDER 35 U.S.C. § 101 ............................................................................... 28
`
`a.
`
`Analysis Under 35 U.S.C. § 101 Requires Examination of the
`Claims to Identify Meaningful Limitations That Demonstrate a
`Practical Application of an Abstract Idea. .......................................... 29
`
`i.
`
`ii.
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`Petitioners Ignore the Claim Elements and the Meaningful
`Limitations in the Challenged ’924 Patent Claims. .................. 30
`
`The Advertising Portions of the Challenged Claims are
`Meaningful Limitations. ........................................................... 31
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`84447497.1
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`Patent No. 8,326,924
`CBM2014-00001
`iii.
`
`The Challenged Claims as a Whole Recite a Specific
`Combination of Components That Interact in a Particular
`Way. .......................................................................................... 32
`
`b.
`
`The Claims of the ’924 Patent Satisfy the “Machine-Or-
`Transformation” Test Because the Data from the Results Is
`Transformed Into a Response. ............................................................. 35
`
`VI. THE LUNENFELD 2000 APPLICATION AND LUNENFELD PCT
`ARE NOT PRIOR ART TO THE ’924 PATENT AND THUS
`CANNOT RENDER THE CHALLENGED CLAIMS OBVIOUS
`UNDER 35 U.S.C. § 103 ............................................................................... 37
`
`a.
`
`b.
`
`c.
`
`d.
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`There Is No Break in the Priority Chain. ............................................ 38
`
`The Lunenfeld 2000 Application’s Specification Clearly
`Supports All Challenged Claims of the ’924 Patent. .......................... 40
`
`The CIPs Merely Add Further Description and Detail to
`Elements Already Disclosed in the ’073 Patent. ................................. 60
`
`Petitioners Have Failed to Show That Any Challenged Claim of
`the ’924 Patent Is Rendered Obvious Over the Combination of
`Lunenfeld PCT and Lunenfeld 2000 Application in View of
`Mamma.Com ....................................................................................... 63
`
`VII. PETITIONERS HAVE FAILED TO MEET THEIR BURDEN TO
`SHOW OBVIOUSNESS. .............................................................................. 63
`
`a.
`
`b.
`
`c.
`
`Petitioners Provide No Explanation as to Why One of Skill
`Would Combine These References. .................................................... 64
`
`The References Do Not Teach “Metasearching” as Required by
`All of the Challenged Claims. ............................................................. 66
`
`The References Do Not Teach or Disclose “Incorporating the
`Received Search Results Into a Results List and Incorporating
`the Results List Into a Response” Limitation Found in Claims 2
`and 6. ................................................................................................... 68
`
`VIII. CONCLUSION .............................................................................................. 70
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`
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`ii
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`
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`TABLE OF AUTHORITIES
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`Page
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`Cases
`Apple, Inc. v. Sightsound Technologies, LLC,
`CBM2013-00019, Paper 17 (Oct. 8, 2013) ............................................. 26, 33, 34
`Bilski v. Kappos,
`130 S.Ct. 3218 (2010) ............................................................................. 29, 30, 35
`CLS Banking Int’l v. Alice Corp.,
`717 F.3d 1269 (Fed. Cir. 2013) ..................................................................... 29, 30
`Corley v. U.S.,
`556 U.S. 303 (2009) ............................................................................................. 26
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) ............................................................................................. 26
`Diamond v. Diehr,
`450 U.S. 175 (1981) ...................................................................................... 26, 30
`Griffin v. Oceanic Contractors, Inc.,
`458 U.S. 564 (1982) ............................................................................................. 25
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 10
`KSR Intern. Co. v. Teleflex Inc.,
`127 S.Ct. 1727 (2007) .......................................................................................... 70
`Locite Corp. v. Ultraseal Ltd.,
`781 F.2d 861 (Fed. Cir. 1985) .............................................................................. 66
`Mayo Collaborative Services v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) .................................................................................. 29, 30
`Phillips v. AWH,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 10
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................ 60
`Research Corp. Tech., Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ....................................................................... 36, 37
`SiRF Tech., Inc. v. Int'l Trade Comm'n,
`601 F.3d 1319 (Fed. Cir. 2010) ............................................................................ 36
`
`84447497.1
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`iii
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`

`
`Patent No. 8,326,924
`CBM2014-00001
`Ultramercial, LLC, et al v. Hulu, Inc., et al,
`657 F.3d 1323 (Fed. Cir. 2011) ............................................................... 30, 33, 34
`Statutes
`35 U.S.C. § 101 ............................................................... 1, 28, 29, 33, 34, 35, 36, 37
`35 U.S.C. § 102 ........................................................................................................ 63
`35 U.S.C. § 103 ................................................................................................... 1, 37
`Other Authorities
`77 Fed. Reg. 48680 .................................................................................................. 10
`77 Fed. Reg. 48699-700 ........................................................................................... 10
`AIA § 18 ...................................................................................................... 24, 25, 28
`Rules
`37 C.F.R. § 42.300(b) .............................................................................................. 11
`37 C.F.R. § 42.304(a) ............................................................................................... 26
`37 C.F.R. § 42.64(b)(1)……………………………………………………………9
`
`
`
`
`
`iv
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`

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`Patent No. 8,326,924
`CBM2014-00001
`
`EXHIBITS
`
`
`2001
`2002
`
`U.S. Patent No. 6,789,073
`Excerpt from the prosecution of the Lunenfeld 2000 Application
`that resulted in U.S. Patent No. 6,789,073
`
`
`
`v
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`

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`
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`I.
`
`INTRODUCTION
`
`Patent Owner requests that the Patent Trial and Appeal Board (the “Board”)
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`deny Petitioners’ petition for covered business method (“CBM”) review of claims
`
`2, 6, and 8 of U.S. Patent No. 8,326,924 (the “’924 Patent”) under § 18 of the
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`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”).1
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`Petitioners have failed to show that the ’924 Patent is even subject to post-
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`grant review under CBM. The invention of the ’924 Patent is not a financial
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`product or service but is instead directed to a machine that implements a
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`technological solution. See Part IV, infra. The claimed invention of the ’924 Patent
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`is well outside the narrow subset of patents that Congress expressly allowed for
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`CBM review.
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`The Petition offers little substantive arguments to support the challenges
`
`raised. Recognizing various critical shortcomings in their position, Petitioners
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`spend most of their 80 pages making incredible assertions about various
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`descriptions of different aspects of inventions disclosed in the ’924 Patent, mostly
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`taken out of context. These absurd assertions are readily dismissed as they provide
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`1 Petitioners have agreed to limit the challenged claims in the Petition to only
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`claims 2, 6, and 8. See Joint Motion to Narrow Petitioners’ Request for Post-Grant
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`Review of U.S. Patent No. 8,326,924, CBM2014-0001, Paper 24, dated Dec. 27,
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`2013.
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`Patent No. 8,326,924
`CBM2014-00001
`no support for the grounds raised by Petitioners. When the facts actually relevant
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`to the three grounds raised by Petitioners are critically analyzed, it becomes
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`apparent that there is no support for the three grounds raised in the Petition.
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`Petitioners have failed to meet their burden to show that any challenged
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`claim of the ’924 Patent is more likely than not unpatentable under 35 U.S.C.
`
`§ 101. See Part V, infra. Petitioners have failed to show that the challenged claims
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`of the ’924 Patent lack meaningful limitations that ensure the claims cover more
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`than an abstract idea. Rather, Petitioners focus on various descriptions in the
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`specification and ignore meaningful limitations in the ’924 Patent. Consideration
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`of the claimed invention as a whole and the meaningful limitations in the claims
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`shows that the claimed invention is directed at patent-eligible subject matter.
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`Petitioners also have failed to meet their burden to show that any challenged
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`claim of the ’924 Patent is more likely than not obvious under 35 U.S.C. § 103. See
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`Parts VI & VII, infra. Petitioners do not even raise an argument that any alleged art
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`anticipates the ’924 Patent. The first combination includes the Lunenfeld 2000
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`Application, which resulted in the parent patent to the ’924 Patent, in combination
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`with screen shots of a web site, Mamma.com—cobbled together from the Internet
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`Archive’s “WayBack Machine.” This incredible assertion rests on the unfounded
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`ground that the ’924 Patent is not entitled to claim priority back to the parent
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`application. The simple facts demonstrate that chain of priority was never broken
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`1
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`Patent No. 8,326,924
`CBM2014-00001
`and the claims of the ’924 Patent are more than sufficiently supported by the
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`specification in the parent application. Thus, this combination cannot render the
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`challenged claims invalid.
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`Petitioners’ second attempted combination relies on Mamma.com WayBack
`
`Machine screenshots grouped with a physics article search engine referred to as
`
`Knowledge Broker. With no substantive support for why one of skill would
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`combine these references or how the combination allegedly teaches each element
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`of the challenged claims, the Petition fails to show that it is more likely than not
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`that the claims are obvious in view of this combination. In particular, the Petition
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`brushes over several critical elements that are not disclosed in the references. This
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`failure dooms the Petition. Thus, the Petition must be denied.
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`II. THE ’924 PATENT IS DIRECTED AT A NOVEL, NON-OBVIOUS
`METHOD OF PERFORMING A METASEARCH
`
`On December 4, 2012, the United States Patent and Trademark Office issued
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`United States Patent No. 8,326,924, entitled “Metasearch Engine for Ordering At
`
`Least One Item Returned in Search Results Using At Least One Query on Multiple
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`Unique Hosts and For Displaying Associated Advertising.” Ex. 1001. The ’924
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`Patent hails from a patent portfolio developed by the sole inventor, Harvey
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`Lunenfeld, over more than a 10 year period. The ’924 Patent—including other
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`patents in the portfolio—claims priority to the parent United States Patent
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`
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`2
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`

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`Patent No. 8,326,924
`CBM2014-00001
`Application No. 09/510,749 (the “’749 parent application”)2, which was filed with
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`the United States Patent and Trademark Office on February 22, 2000 and issued as
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`United States Patent No. 6,789,073 (the “’073 patent”). Ex. 2001. As noted in the
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`’924 Patent, clients, servers, and client-server systems were known, but at the time
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`of the invention, there was a need for client-server multitasking that allowed for
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`information or service retrieval substantially simultaneously and on-the-fly. See,
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`e.g., Ex. 1001, 2:7-14.
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`To address this problem, Mr. Lunenfeld invented a client-server multitasking
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`process capable of making multiple simultaneous searches, associating queries
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`with the appropriate sources, incorporating associated advertisements, and capable
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`of placing orders for items that were searched. The inventor initially described the
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`claimed technology in terms of “client-server multitasking” in the ’749 parent
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`application. In subsequent filings, the Examiner recommended that the technology
`
`be described in terms of “metasearching,” and Patent Owner adopted this
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`recommendation.
`
`Patent Owner did not claim that “client-server multitasking” or
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`“metasearching” was novel at the time of the invention. Rather, using ’924 Patent
`
`claim 2 as an example, the claimed invention is directed to a process for
`
`metasearching on the Internet, including a metasearch engine that receives an
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`2 Petitioners refer to the ’749 parent application as the Lunenfeld 2000 Application.
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`3
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`Patent No. 8,326,924
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`HTTP request to send at least one query to a plurality of unique hosts wherein the
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`HTTP request from the client device is associated with at least one travel related
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`item that may be ordered from a plurality of travel related items that may be
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`ordered, including limitations such as associating targeted advertisements,
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`receiving another HTTP request to place an order, and processing orders for travel
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`related items:
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`2. A process for metasearching on the Internet, wherein the steps of the
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`process are performed by a metasearch engine executing on a hardware
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`device, the process comprising the steps of:
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`(a) receiving a Hypertext Transfer Protocol request from a client device for
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`the metasearch engine to send at least one search query to a plurality of
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`unique hosts that provide access to information to be searched, wherein
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`the Hypertext Transfer Protocol request from the client device is
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`associated with at least one travel related item that may be ordered from a
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`plurality of travel related items that may be ordered;
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`(b) sending the at least one search query to the plurality of unique hosts in
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`response to the Hypertext Transfer Protocol request received from the
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`client device;
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`(c) receiving search results from the plurality of unique hosts in response to
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`the at least one search query sent to the plurality of unique hosts;
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`Patent No. 8,326,924
`CBM2014-00001
`(d) incorporating the received search results into a results list and
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`incorporating the results list into a response;
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`(e) causing at least one advertisement associated with the at least one item
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`that may be ordered to be displayed in the response;
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`(f) communicating the response from the metasearch engine to the client
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`device;
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`(g) receiving another Hypertext Transfer Protocol request from the client
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`device for placing an order for the at least one item;
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`(h) processing the order.
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`The specification provides extensive description and numerous illustrations
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`of the claimed metasearching technology, including the complex process of
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`sending at least one search query to a plurality of hosts, receiving search results
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`from multiple sources, and incorporating results into a response. Figure 63, below,
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`is an example of the illustrations and disclosures included in the ’924 Patent.
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`5
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`Patent No. 8,326,924
`CBM2014-00001
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`
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`Ex. 1001, Fig. 63.
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`The ’924 Patent claims a specific machine, comprising a metasearch engine,
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`that requires a computer and is programmed to have a specific function, structure,
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`and operation. The invention of the ’924 Patent cannot function or operate without
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`the metasearch engine programmed to perform as claimed in the ’924 Patent.
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`In addition to the art submitted with the ’749 parent application and its
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`progeny, the ’924 Patent was allowed over at least 114 pieces of art referenced on
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`6
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`Patent No. 8,326,924
`CBM2014-00001
`the face of the ’924 Patent. Notably, these references include work done by Dr.
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`Etzioni, one of the experts who filed a declaration in support of the Petition.
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`The Alleged Prior Art Asserted in the Petition.
`
`a.
`Petitioners are in the travel industry and arguably have the best access to
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`prior art. But they have not presented the Board with any art that they allege
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`anticipates. In litigation, Petitioners have produced over 40,000 pages of alleged
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`prior art. In that context, they allege anticipation by at least two specific references
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`they identified as “single-search services.” Petitioners did not present these
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`references to the Board. From the perspective of Metasearch Systems, Petitioners
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`are using CBM review to make their 101 and priority challenges, and are saving
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`what they consider to be their best prior art for district court litigation. For the
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`Board’s review, Petitioners only offer two non-anticipatory and disparate
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`“references” that fail to disclose material elements of the challenged claims.
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`The first reference cobbles together various webpage printouts from the
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`“WayBack Machine” of a website called Mamma.com. Ex. 1005.3 The webpage
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`3 Petitioners have not even attempted to meet their burden of proof to show that the
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`various “WayBack Machine” screenshots are properly authenticated and can even
`
`be considered under the Federal Rules of Evidence. Petitioners merely attach a
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`declaration from a paralegal that the paralegal navigated to a website and
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`downloaded various screenshots and source pages, purportedly showing pages that
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`Patent No. 8,326,924
`CBM2014-00001
`printouts provide a general and superficial description of what the Mamma.com
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`web site attempted to do. This promotional material simply describes Mamma.com
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`as a search engine that “will query the top search engines on the web and create a
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`virtual database.” Ex. 1005 at 3. And Ex. 1018 (apparently nothing more than the
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`HTML code of the screen shots provided in Ex. 1005) provides no relevant
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`information or support for Petitioners’ attempted combination. Mamma.com
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`appears to be just a generic metasearch engine, like others in the art considered by
`
`the Examiner during examination of the ’924 Patent.
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`The second set of references relate to Xerox’s Knowledge Broker system.
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`Exs. 1006 and 1007. This system is described as performing “document retrieval
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`from a number of Web servers, including the global network of physics
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`preprints….” Ex. 1007 at 1. These references do not contain any disclosure about
`
`conducting searches for anything other than physics articles. Moreover, there is no
`
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`existed over thirteen years ago. The declaration provides no discussion or support
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`as to the accuracy, reliability, or usefulness of the dates or contents of these third-
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`party screenshots. Patent Owner objects to Petitioners’ attempt to use these
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`screenshots and understands that the appropriate time for serving formal objections
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`as to Petitioners’ failure regarding proper authentication is within 10 business days
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`of the institution of trial under 37 C.F.R. § 42.64(b)(1).
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`Patent No. 8,326,924
`CBM2014-00001
`disclosure of associating an advertisement with the searches that one could conduct
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`on the system. The search engine described in these references was designed for a
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`very unique setting for a single purpose: the delivery of physics articles. These
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`references do not provide sufficient disclosure to support the obviousness
`
`combination attempted by Petitioners.
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`Other generic metasearch services that Petitioners discuss—but do not assert
`
`in alleged prior art combinations—were already considered during prosecution of
`
`the ’749 parent application. For example, references considered during prosecution
`
`of the ’749 parent application included discussion of various existing “multi-
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`service search” agents and engines that were known at the time of the invention,
`
`including “MetaCrawler,” one of the examples discussed by Petitioners as an
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`“early metasearch Web site.” Ex. 2001 (Dreilinger, D., Description and Evaluation
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`of a Meta-Search Agent, M.S. Thesis, Summer 1996, pp. 1-57; Selberg, E., Multi-
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`Service Search and Comparison Using the MetaCrawler, Proceedings of the Fourth
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`World Wide Web Conference, pp. 1-18, Oct. 9, 1995.) Petitioners cite nothing
`
`substantively new. In addition, myriad references already considered during
`
`prosecution and others cited on the face of the ’924 Patent are similar to the
`
`“metasearch” web sites discussed in the Petition. E.g., Petition, pg. 3-11.
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`9
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`Patent No. 8,326,924
`CBM2014-00001
`III. CLAIM CONSTRUCTION
`a.
`Petitioners’ Proposed Constructions Are Fanciful and Not the
`Broadest Reasonable Interpretation.
`
`Although claims are to be given their “broadest reasonable construction in
`
`light of the specification of the patent,” Petitioners have failed to offer claim
`
`constructions that are the broadest reasonable interpretations of the claims. 37
`
`C.F.R 42.300(b). Rather, Petitioners seek to add elements in the proposed
`
`constructions that are absurd and contrary to accepted claim construction
`
`principles. Such proposals are unreasonable and incorrect.
`
`Petitioners also fail to offer a definition of what the make-up is of one of
`
`skill in the art, a critical component for performing claim construction. In re Am.
`
`Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); Phillips v. AWH,
`
`415 F.3d 1303, 1313 (Fed. Cir. 2005); Inter Partes, Post Grant, and Covered
`
`Business Method Review Final Rules, 77 Fed. Reg. 48680, 48699-700 (Aug. 14,
`
`2012). Indeed, Petitioners assert that all other claim elements for which they did
`
`not provide a proposed construction should be construed as “understood by one of
`
`ordinary skill in the art.” Petition, pg. 36. This invitation defies logic as Petitioners
`
`have not identified or described what one of ordinary skill in the art would be for
`
`the ’924 Patent.
`
`Petitioners also seek to improperly add elements that are unnecessary and
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`would not be included by one of ordinary skill in the art. Many of the proposed
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`Patent No. 8,326,924
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`constructions include self-serving limitations meant to overcome the shortcomings
`
`in Petitioners’ arguments. Thus, Petitioners’ proposed constructions are not in
`
`compliance with the broadest reasonable interpretation.
`
`Another substantial problem with Petitioners’ proposed constructions is that
`
`Petitioners offer no expert testimony to support their constructions. This is not
`
`surprising given the fact that Petitioners failed to define who is one of ordinary
`
`skill in the art. Curiously, Petitioners submitted two expert declarations, and yet
`
`failed to have either expert offer opinions regarding claim construction.
`
`For these reasons and those articulated below, Petitioners’ proposed
`
`constructions should be rejected. Patent Owner’s proposed constructions are
`
`consistent with the plain language of the challenged claims, the specification, and
`
`how one of skill in the art would understand these terms.
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`Patent Owner’s Proposed Constructions
`
`b.
`While not necessarily needing to construe the claims to deny the Petition
`
`because of the deficiencies described in detail below, Patent Owner offers
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`proposed constructions for the terms offered by Petitioners under the broadest
`
`reasonable interpretation.4
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`4 District courts employ different standards of proof and analyses to claim
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`construction that are not applied by the USPTO during covered business method
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`review. The claim constructions provided by Petitioners herein are solely for the
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`11
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`Patent No. 8,326,924
`CBM2014-00001
`Patent Owner provides that one of ordinary skill in the art would be a person
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`with a bachelor’s degree in computer science, engineering, or a related discipline,
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`and five years of industry experience.
`
`1. metasearching: sending at least one search query to one or more
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`information sources substantially simultaneously.
`
`The preamble to each of the challenged claims recites a “process for
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`metasearching on the Internet, wherein the steps of the process are performed by a
`
`metasearch engine executing on a hardware device . . . .” Ex. 1001, 145:33-36;
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`147:15-18; 148:5-8. Although Petitioners appear to agree that the preamble is
`
`limiting, Petitioners’ claim construction for this limitation is improper and
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`inconsistent with the specification and the prosecution history, which requires that
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`“metasearching” be performed “substantially simultaneously.”
`
`Petitioners agree that the meaning of “metasearching” (or client-server
`
`multitasking as it was initially described) is defined by the inventor in the ’924
`
`Patent:
`
`The patent likewise equates its “metasearch” system/ process with its
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`“client-server multitasking” system/process. (Id., 111:64- 112:6).
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`Therefore, the scores of declarations of capabilities of the “invention”
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`purpose of this CBM. Patent Owner reserves the right to offer different
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`constructions of the claims in a different forum.
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`Patent No. 8,326,924
`CBM2014-00001
`or of the “client-server multitasking” process or system, define the
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`meaning of “metasearch” in this patent.
`
`Petition, pg. 30. Patent Owner agrees that the patent describes various capabilities
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`of the novel and unique “process for metasearching on the Internet” claimed in the
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`’924 Patent—which is distinct from the generic “metasearching” which Petitioners
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`allege was well-known prior to the invention. Patent Owner’s proposed
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`construction is consistent with the plain claim language and the specification,
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`while Petitioners’ construction ignores both.
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`For example, Petitioners ignore the express language of the specification that
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`client-server multitasking or “metasearching” as described in the ’924 Patent,
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`allows for “information and/or service retrieval from the same and/or different
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`ones of servers substantially simultaneously and on-the-fly, using the same
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`and/or different ones of queries, and sorting, grouping, and/or organizing responses
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`therefrom substantially on-the-fly.” Ex. 1001, 2:14-19; 3:1-6; 5:10-25; 6:56-64;
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`102:14-23; 103:1-6; 112:30-34; 115:27-34 (emphasis added).
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`Rather than sending one query at a time, the claimed method requires that
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`the “at least one search query” be sent to “a plurality of unique hosts” substantially
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`simultaneously in time. Id. Petitioners provide no support for ignoring this
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`limitation in the claimed process of “metasearching,” nor do they explain how this
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`comports with their proposed construction for “metasearch engine”—which
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`includes entities capable of “simultaneous searches.” Petition, pg. 30.
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`Petitioners’ proposed construction also ignores the prosecution history of the
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`’749 parent application, referred to as the Lunenfeld 2000 Application, to which
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`the ’924 Patent claims priority. The prosecution history shows that Patent Owner
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`distinguished the claimed invention from the prior art because the references do
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`not “split a search query and server address pairs into m request groups; open
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`connection to the specified servers substantially simultaneously and direct queries
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`comprising different query values to different server addresses….” Ex. 2002,
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`Preliminary Amendment, August 25, 2003 at pg. 29 (emphasis added). These
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`statements about the inventions in the Lunenfeld 2000 Application are relevant and
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`controlling as to the scope of the claimed inventions in the ’924 Patent. Here,
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`Patent Owner has limited the scope of “metasearching” to require that search
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`queries are sent “substantially simultaneously.”
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`Petitioners’ proposed construction is also improper to the extent it seeks to
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`limit “metasearching” to “unstructured keyword query(ies).” Petition, pg. 29.
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`Again, Petitioner’s claim construction is inconsistent with the plain claim language
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`and the specification. First, the plain language of the challenged claims makes
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`clear that the “at least one search query” is not limited to be either structured or
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`unstructured. In addition, the ’924 Patent discloses that users may provide user
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`input UIn through the client device as “user input values into fields or alternate
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`request links of the service and/or information entry request form IEn (38).”
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`Ex. 1001, 73:17-21. Patent Owner did not limit the structure of the query to be
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`either structured or unstructured. Petitioners’ own expert, Dr. Etzioni, noted that
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`search engines in the art could conduct searches based on structured and
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`unstructured queries. Ex. 1008, at ¶¶ 10-21. It would be improper to limit
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`“metasearching” to only “unstructured keyword query(ies)” as one of skill in the
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`art would understand this term to include both types of queries, just as described in
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`the specification of the ’924 Patent.
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`2. metasearch engine: software executing on a hardware device that
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`performs metasearching.
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`Petitioners’ construction is inconsistent with the plain language of the
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`challenged claims and the specification. Petitioners’ unwieldy, six-line
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`construction pushes the boundaries of credulity and is an improper attempt to
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`import numerous examples from the specification as additional elements to this
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`claim term.
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`First, Petitioners’ construction is incorrect to the extent it allows searches of
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`a “substantially infinite variety of hosts.” One of ordinary skill in the art would
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`have understood there to be a practical upper boundary of the number of search
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`queries consistent with the technological capabilities at the time of the invention.
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`The ’924 Patent is directed toward metasearching “at least one search query.” The
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`’924 Patent discloses a “substantially infinite” number of potential queries
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`(qun1…qunm) in connection with the claimed metasearching. Ex. 1001, 20:57-67;
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`Figs. 2, 3. One of ordinary skill in the art would have known that the “substantially
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`infinite” potential queries were not “infinite” as Petitioners suggest. Rather, one of
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`ordinary skill in the art would know that there are in reality a finite number of
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`potential queries that can be searched. Petitioners’ attempt to cherry pick the word
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`“infinite” o