UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`COMPANY, INC., EXPEDIA, INC., HOTELS.COM LP, HOTELS.COM
`GP, LLC, HOTWIRE, INC., ORBITZ WORLDWIDE, INC.,
`PRICELINE.COM, INC., TRAVELOCITY.COM LP, and YAHOO! INC.
`Petitioner
`v.
`
`METASEARCH SYSTEMS, LLC.
`Patent Owner
`
`______________
`
`Case No. CBM2014-00001
`Patent Number 8,326,924 B1
`
`______________
`
`Before the Honorable HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`SECOND DECLARATION OF DR. JAIME CARBONELL
`IN SUPPORT OF PATENT OWNER METASEARCH SYSTEMS, LLC’S
`REPLY IN SUPPORT OF ITS MOTION TO AMEND THE CLAIMS
`
`Second Declaration of Dr. Jaime Carbonell
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`1
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 1
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`COMPANY, INC., EXPEDIA, INC., HOTELS.COM LP, HOTELS.COM
`GP, LLC, HOTWIRE, INC., ORBITZ WORLDWIDE, INC.,
`PRICELINE.COM, INC., TRAVELOCITY.COM LP, and YAHOO! INC.
`Petitioner
`v.
`
`METASEARCH SYSTEMS, LLC.
`Patent Owner
`
`______________
`
`Case No. CBM2014-00001
`Patent Number 8,326,924 B1
`
`______________
`
`Before the Honorable HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`SECOND DECLARATION OF DR. JAIME CARBONELL
`IN SUPPORT OF PATENT OWNER METASEARCH SYSTEMS, LLC’S
`REPLY IN SUPPORT OF ITS MOTION TO AMEND THE CLAIMS
`
`Second Declaration of Dr. Jaime Carbonell
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`1
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 1
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`SECOND DECLARATION OF DR. JAIME CARBONELL
`I offer this declaration in support of Patent Owner’s Reply in Support
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`1.
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`of Its Motion to Amend the Claims of U.S. Patent No. 8,326,924 (the “’924
`
`patent”). I first opine that the disclosure in the ’073 patent specification and the
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`2000 application from which the ’924 patent claims priority demonstrate that the
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`Patent Owner was in possession of the claimed invention in the 2000 application. I
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`also opine that the claims provide with reasonable certainty the scope of the
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`claimed inventions. I next opine that these disclosures enable one of skill in the art
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`to practice the full scope of the claims.
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`The Amended Claims Provide Reasonable Certainty As To Their Scope
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`2.
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`I understand that a patent specification must conclude with one or
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`more claims particularly pointing out and distinctly claiming the subject matter that
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`the applicant regards as his invention. Claims are indefinite if they do not
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`reasonably apprise those skilled in the relevant art of the applicant’s intended
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`scope of the invention when read in light of the specification
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`3.
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`I understand a claim is indefinite if it contains words or phrases whose
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`meanings are unclear when read in light of the specification. Lack of proper
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`antecedent basis results in a “zone of uncertainty” as to construction, and renders
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`the claim insolubly ambiguous or without reasonable certainty.
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`4.
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`I further understand that a claim is considered indefinite if it does not
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`reasonably apprise those skilled in the art of its scope. I understand that absolute
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`precision is not necessary in the claims, and that the claims need only provide
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`reasonable certainty. I understand that the claims are to be read in view of the
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`Second Declaration of Dr. Jaime Carbonell
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`2
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 2
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`specification and prosecution history when determining if the claims provide
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`reasonable certainty.
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`5.
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`The amended claims provide reasonable certainty as to the scope of
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`the claims when viewed in light of the specification and prosecution history. Some
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`of the claims in the ’924 patent have a classification limitation as to what items are
`
`being searched by the user, while others do not. Ex. 1001, claim 1 compared with
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`claim 2. These limitations inform one of skill in the art that using the claimed
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`method may constitute infringement of some claims when the items sought are
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`travel related. On the other hand, some claims are not limited to travel related
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`items. This difference in claims suggests to one of skill that travel related items
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`are a subset of items that may be searched by the user.
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`6.
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`The ’924 patent specification contains several examples of travel
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`related items that may be searched by a user. See, e.g., Ex. 1001 Col. 4, ll. 3-29;
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`Col. 8, ll. 29-55; Col. 114, ll. 50-69. In light of these examples and the knowledge
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`of one of ordinary skill in the art, one of skill would know with reasonable
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`certainty the scope of the claims. While there may be items that people of
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`reasonable minds may disagree are travel related items, in the context of the
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`amended claims, there is sufficient disclosure to provide reasonable certainty as to
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`the items that would be considered travel related. In particular, items such as
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`airline tickets, hotel rooms, rental cars, get-away vacation packages and so on are
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`clearly “travel related.” I note that absolute certainty is not required, which further
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`supports my opinion.
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`Second Declaration of Dr. Jaime Carbonell
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`3
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 3
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`7.
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`One of skill would understand that travel related items are a category
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`of items that may be searched for by the user. Likewise, the ’924 patent discloses
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`that financial products may be another category of items that could be searched.
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`The use of categorical labels for items rather than listing individual items does not
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`render the scope of the claims uncertain.
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`8.
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`I also observe that Petitioners did not raise this issue in their petition
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`despite being able to do so under the rules governing covered business method
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`review. This claim element of travel related items is found in the original claims
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`and was not added in the amended claims. Thus, Petitioners could have raised this
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`argument as a ground to allegedly invalidate the challenged claims, but chose not
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`to.
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`The Amended Claims Satisfy the Written Description Requirement
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`9.
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`I understand that a patent claim is invalid for lack of written
`
`description under 35 U.S.C. § 112 ¶ 1 if the specification does not “contain a
`
`written description of the invention, and of the manner and process of making and
`
`using it, in such full, clear, concise, and exact terms as to enable any person skilled
`
`in the art to which it pertains, or with which it is most nearly connected, to make
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`and use the same.” I also understand that the written description must include
`
`every feature or limitation of the claimed invention.
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`10.
`
`I understand that the written description must convey clearly to those
`
`skilled in the art, that, as of the priority date sought, the inventor was in possession
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`of the invention claimed
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`Second Declaration of Dr. Jaime Carbonell
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`4
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 4
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`11.
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`I understand that, in conducting a written description analysis:
`
`a.
`
`b.
`
`c.
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`The written description analysis is based on an objective
`
`inquiry into the four corners of the specification
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`This inquiry into the specification is done from the perspective
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`of one of ordinary skill in the art.
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`The written description requirement does not require any
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`particular form of disclosure, and support may be based on a
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`combination of figures and disclosures throughout the
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`specification.
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`d.
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`The specification need not recite the claimed invention in haec
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`verba, i.e., it need not use the same words, phrasings or
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`presentation style as the claims.
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`e.
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`f.
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`A description that merely renders the invention obvious does
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`not satisfy the written description requirement.
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`The level of detail required to satisfy the written description
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`requirement depends on (i) the nature and scope of the claims
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`and (ii) the complexity and predictability of the relevant
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`technology.
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`g.
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`Factors to be taken under consideration include the existing
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`knowledge in the particular field, the extent and content of the
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`prior art, the maturity of the science or technology, and the
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`predictability of the aspect at issue.
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`Second Declaration of Dr. Jaime Carbonell
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`5
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 5
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`12. Applying these principles and understandings to the amended claims
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`(Ex. 2018 and 2019), the amended claims satisfy the written description
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`requirement. I have reviewed the claim chart provided in the Motion to Amend,
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`pgs. 11-15, and the cited materials therein (Exs. 2001 and 2016). I incorporate
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`those arguments and citations as if fully set forth herein. The specification of
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`the ’073 patent and the 2000 application demonstrate that the Patent Owner was in
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`possession of the claimed inventions in the amended claims. The cited portions in
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`the claim chart identify at least some of the support in these disclosures for each
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`claim element. These citations provide more than sufficient support for my
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`opinion that the Patent Owner was in possession of the claimed invention in the
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`2000 application.
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`13.
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`In further support, I note that the Board rejected Petitioners’ argument
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`that the 2000 application did not support the claim elements found in the original
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`claims. This rejection is consistent with my opinion that the 2000 application does
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`demonstrate that the Patent Owner was in possession of the claim elements found
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`in the original claims. As discussed above, the support for the new limitations
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`added in the amended claims are found at the citations provided in the claim chart
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`in the Motion to Amend.
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`The Amended Claims Are Enabled
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`14.
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`I further understand that a claimed invention is not enabled under 35
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`U.S.C. § 112 ¶ 1 if the specification does not teach those of ordinary skill in the art
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`how to make and use the invention as broadly as it is claimed, without undue
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`Second Declaration of Dr. Jaime Carbonell
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`6
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 6
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`experimentation.
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`15.
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`I understand that the assessment of undue experimentation is based on
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`the level of skill in the art as of the effective filing date of the application on which
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`the ’924 patent claims priority. Thus, a specification enables a claimed invention
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`when it does in fact teach those of ordinary skill in the art how to make and use the
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`invention as broadly as it is claimed, without undue experimentation.
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`16. Additionally, I understand that, while the full scope of the claimed
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`invention must be enabled, the specification “need not enable anything broader
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`than the scope of the claims.” Accordingly, it is my understanding that the question
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`of specification enablement of a claim is whether the full scope of the claim is
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`enabled, not whether the accused device is enabled.
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`17.
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`I have reviewed the Motion to Amend, the claim chart found on pages
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`11-15 of the Motion to Amend, and the exhibits referenced in the claim chart, Exs.
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`2001 and 2016. Based on my review of these materials, the amended claims are
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`enabled by the disclosures in the specification of the ’073 patent and the 2000
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`application. These disclosures provide sufficient disclosure to enable one of skill
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`in the art, such as myself, to practice the full scope of the amended claims without
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`undue experimentation. These disclosures provide more than sufficient detail as to
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`how each step in the claimed methods is performed and the hardware performing
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`each step. Thus, the full scope of the amended claims is enabled by the
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`specification of the ’073 patent and the 2000 application.
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`I hereby declare under penalty of perjury under the laws of the United States
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`Second Declaration of Dr. Jaime Carbonell
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`7
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 7
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`of America that the forgoing is true and correct, and that all statements made of my
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`own knowledge are true and that all statements made on information and belief are
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`believed to be true. I understand that willful false statements are punishable by fine
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`or imprisonment or both (18 U.S.C. § 1001).
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`Executed on the 2nd day of October 2014, in Pittsburgh, Pennsylvania.
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`_________________________
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`Jaime Carbonell, Ph.D.
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`Second Declaration of Dr. Jaime Carbonell
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`8
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`AMERICAN EXPRESS V. METASEARCH
`CBM2014-00001 EXHIBIT 2042 - 8
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