Trials@uspto.gov
`571-272-7822
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` Paper 50
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` Entered: July 28, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIBRANT MEDIA, INCORPORATED,
`Petitioner,
`
`v.
`
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`____________
`
`Case IPR2013-00172
`Patent 6,092,074
`____________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN,
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`Opinion for the Board filed by Administrative Patent Judge Chang.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge Weatherly.
`
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1
`
`SAMSUNG 1049
`Samsung Electronics v. SmartFlash
`CBM2014-00192
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 50
`
`
`
` Entered: July 28, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIBRANT MEDIA, INCORPORATED,
`Petitioner,
`
`v.
`
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`____________
`
`Case IPR2013-00172
`Patent 6,092,074
`____________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN,
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`Opinion for the Board filed by Administrative Patent Judge Chang.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge Weatherly.
`
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1
`
`SAMSUNG 1049
`Samsung Electronics v. SmartFlash
`CBM2014-00192
`
`
`
`IPR2013-00172
`Patent 6,092,074
`
`I.
`
`INTRODUCTION
`
`Vibrant Media Corporation (“Vibrant Media”) filed a Petition on
`
`February 27, 2013, requesting an inter partes review of claim 1–12 of Patent
`
`No. US 6,092,074 (Ex. 1001; “the ’074 patent”). Paper 1 (“Pet.”). General
`
`Electric Company (“GE”) did not file a Patent Owner Preliminary Response.
`
`We determined that the information presented in the Petition demonstrated
`
`that there was a reasonable likelihood that Vibrant Media would prevail with
`
`respect to claims 1–12. Pursuant to 35 U.S.C. § 314, we instituted this trial
`
`as to those claims. Paper 8 (“Dec.”).
`
`After institution, GE filed a Patent Owner Response (Paper 19,
`
`“PO Resp.”), but elected not to file a Motion to Amend Claims. In response,
`
`Vibrant Media filed a Reply to the Patent Owner Response (Paper 25, “Pet.
`
`Reply”). Oral hearing was held on February 24, 2014.1
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a). We conclude that
`
`claims 1–12 of the ’074 patent are unpatentable under 35 U.S.C. § 103(a).
`
`A. Related Proceeding
`
`Vibrant Media indicates that the ’074 patent is the subject of litigation
`
`titled General Electric Co. v. Vibrant Media, Inc., No. 1:12-cv-00526-UNA
`
`(D. Del.). Pet. 1. Vibrant Media also filed another Petition in IPR2013-
`
`
`
`1This proceeding and IPR2013-00170 involve the same parties and similar
`issues. The oral arguments for both inter partes reviews were merged and
`conducted at the same time. A transcript of the oral hearing is included in
`the record as Paper 49.
`
`2
`
`
`
`IPR2013-00172
`Patent 6,092,074
`
`00170, seeking inter partes review of Patent No. US 6,581,065 B1, which is
`
`a continuation of the ’074 patent.
`
`B. The ’074 patent
`
`The ’074 patent relates to a computer system for providing hypertext
`
`anchor codes and destination addresses for a user-readable text file.
`
`Ex. 1001, 1:7–9. At the time of the invention, hypertext was a common
`
`method of linking related computer files or pages. Id. at 1:19–23.
`
`According to the ’074 patent, it would be desirable to provide a system that
`
`automatically enters hypertext links into a computer file, such as a news
`
`article or other sequence of user-readable character strings. Id. at 3:35–38.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 3, 6, 7, 9, and 12 are independent
`
`claims. Claim 7, reproduced below, is illustrative:
`
`7. A method for providing hypertext links for a plurality
`of character strings including a first character string, said
`method comprising the steps of:
`providing an annotation database associated with a
`primary computer which comprises a plurality of linkable
`character strings;
`providing a destination database associated with said
`primary computer which comprises a plurality of destination
`addresses;
`determining a matching linkable character string for said
`first character string, if present, in said annotation database;
`wherein said matching linkable character string is
`associated with at least one of said destination addresses;
`wherein said annotation database further comprises a
`plurality of class codes which are associated with said plurality
`
`3
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`IPR2013-00172
`Patent 6,092,074
`
`of linkable character strings;
`the matching linkable character string has a plurality of
`class codes associated therewith; and
`said destination database comprises a plurality of
`destination addresses corresponding to said plurality of class
`codes of the matching linkable character string;
`said method comprising the further steps of:
`querying said destination database to obtain the plurality
`of destination addresses corresponding
`to the associated
`plurality of class codes; and
`providing a plurality of anchor codes which relate said
`matching linkable character string to said corresponding
`plurality of destination addresses to provide a corresponding
`plurality of hypertext links for said first character string.
`
`
`
`Vibrant Media relies upon the following prior art references:
`
`D. Prior Art Relied Upon
`
`van Hoff US 5,822,539
`Anthony US 5,815,830
`Kleinberg US 6,112,202
`Borden
`US 5,495,606
`Logue
`US 5,935,207
`
`Oct. 13, 1998
`Sep. 29, 1998
`Aug. 29, 2000
`Feb. 27, 1996
`Aug. 10, 1999
`
`(Ex. 1004)
`(Ex. 1005)
`(Ex. 1006)
`(Ex. 1007)
`(Ex. 1008)
`
`E. Grounds of Unpatentability
`
`We instituted the instant trial based on the following grounds of
`
`unpatentability:
`
`Claim
`
`Basis
`
`References
`
`1–5, 7–11
`
`§ 103(a)
`
`van Hoff and Anthony
`
`6, 12
`
`§ 103(a)
`
`van Hoff, Anthony, Kleinberg, and Borden
`
`9
`
`§ 103(a)
`
`van Hoff, Anthony, and Logue
`
`4
`
`
`
`IPR2013-00172
`Patent 6,092,074
`
`II. ANALYSIS
`
`A. Claim Construction
`
`Consistent with the statutory language and legislative history of the
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`
`(“AIA”), we interpret claims using the broadest reasonable construction in
`
`light of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,766 (Aug. 14, 2012). This is true even if a district court has
`
`construed the patent claims. See Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`Covered Business Method Patents, Final Rules, 77 Fed. Reg. 48,680,
`
`48,697(Aug. 14, 2012) (citing In re NTP, Inc., 654 F.3d 1269, 1274 (Fed.
`
`Cir. 2011)); see also SAP America, Inc. v. Versata Development Group, Inc.,
`
`CBM2012-00001, slip op. 7–19 (PTAB June 11, 2013) (Paper 70).
`
`Under the broadest reasonable construction standard, claim terms are
`
`presumed to have their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). An inventor may rebut that presumption by providing a definition of
`
`the term in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`
`absence of such a definition, limitations are not to be read from the
`
`specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`
`Cir. 1993).
`
`5
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`Patent 6,092,074
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`In its Patent Owner Response, GE argues that applying the broadest
`
`reasonable construction standard in the instant proceeding is improper,
`
`because GE “has neither elected to make any amendments nor reopen
`
`prosecution itself.” PO Resp. 7–8. That argument is unpersuasive.
`
`GE had the opportunity to file a motion to amend its claims, but chose
`
`not to seek to amend its claims. The mere fact that GE did not choose to
`
`seek to amend its claims is not sufficient reason to justify changing the claim
`
`construction standard. Petitioner submitted in its Petition its patentability
`
`analysis and support evidence based on the broadest reasonable construction
`
`standard. We also determined whether to institute an inter partes review
`
`based on the broadest reasonable construction standard. Dec. 5–23.
`
`For the foregoing reasons, we are not persuaded by GE’s argument
`
`that we should deviate from the broadest reasonable construction standard
`
`under 37 C.F.R. § 42.100(b).
`
`System claims that include method steps
`
`As noted in the decision on institution (Dec. 6–7), claim 9 is a system
`
`claim that includes a method step:
`
`9. A computer system for providing hypertext links for a
`plurality of character strings including a first character string,
`said computer system comprising:
`
`defining means associated with said central computer for
`defining a plurality of linkable character strings;
`
`an annotation database associated with said central
`computer for storing said plurality of linkable character strings;
`
`assigning means associated with said central computer
`
`6
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`
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`IPR2013-00172
`Patent 6,092,074
`
`for assigning at least one corresponding destination address to
`each of said linkable character strings;
`
`a destination database associated with said central
`computer for storing the assigned destination addresses;
`
`transmitting means associated with said central computer
`for transmitting specific ones of said plurality of linkable
`character strings and specific ones of said destination addresses
`to said plurality of primary computers via said communication
`network in an intermittent maintenance mode;
`
`receiving means associated with said central computer
`for receiving hit count data from said primary computers via
`said communication network;
`
`wherein each of said linkable character strings in said
`annotation database has an associated major class code,
`comprising the further steps of:
`
`qualifying the matching linkable character string according to
`qualification criteria which requires the major class code of the
`matching linkable character string to match a preferred major
`class code.
`
`Ex. 1001, 27:1–32 (emphasis added).
`
`Claims 10 and 11 directly depend from claim 9. Rather than referring
`
`back to the computer system of claim 9, each of those dependent claims
`
`refers back to “the method of claim 9” and requires an additional method
`
`step. Claims 10 and 11 are reproduced below:
`
`10. The method of claim 9, comprising the further steps of:
`receiving an administrator input which designates said preferred
`major class code.
`
`11. The method of claim 9, comprising the further step of:
`receiving a signal indicative of said preferred major class code
`from a central computer via a communication network.
`
`7
`
`
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`IPR2013-00172
`Patent 6,092,074
`
`Id. at 27:33–28:4 (emphases added). In its Patent Owner Response, GE
`
`maintains that claim 9 is directed to a system and that, in light of the
`
`Specification and file history (Ex. 1002), one of ordinary skill in the art
`
`could have interpreted the method step as a means-plus-function
`
`limitation—“further comprising: qualifying means for qualifying the
`
`matching linkable character string.” PO Resp. 4–5 (citing Ex. 2013 ¶ 45).
`
`According to GE’s expert witness, claim 9 should be read consistently with
`
`claim 3, which actually recites a means-plus-function limitation. Ex. 2013
`
`¶ 45. GE also argues that the method steps recited in claims 10 and 11
`
`should be interpreted as means-plus-function limitations—“interface means
`
`for receiving an administrator input,” and “receiving means for receiving a
`
`signal,” respectively. PO Resp. 5–7 (citing Ex. 2013 ¶¶ 48–49).
`
`We are not persuaded by GE’s arguments. GE had an opportunity in
`
`this proceeding, pursuant to 37 C.F.R. § 42.121, to file a motion to amend
`
`the claims to clarify the ambiguity, but chose not to seek to amend its
`
`claims. Each of claims 9–11 deliberately recites “comprising the further
`
`steps of.” We decline to rewrite the aforementioned method steps, on Patent
`
`Owner’s behalf, as means-plus-function limitations to invoke 35 U.S.C. 112,
`
`¶ 6.2 See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed.
`
`Cir. 2004) (The U.S. Court of Appeals for the Federal Circuit “repeatedly
`
`
`
`2 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296-07 (2011). Because the
`’074 patent has a filing date before September 16, 2012 (effective date), we
`will refer to the pre-AIA version of 35 U.S.C. § 112, in this decision.
`
`8
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`
`IPR2013-00172
`Patent 6,092,074
`
`and consistently has recognized that courts may not redraft claims, whether
`
`to make them operable or to sustain their validity.”).
`
`We are cognizant that courts may correct a patent claim in certain
`
`situations where the correction is minor, and one of ordinary skill in the art
`
`would have recognized the correction. See, e.g., Ultimax Cement Manuf.
`
`Corp. v. CTS Cement Manuf. Corp., 587 F.3d 1339, 1353 (Fed, Cir. 2009).
`
`Here, we observe, however, that rewriting a method step as a means-plus-
`
`function limitation is a material change, and not a minor one. In fact, it is
`
`well settled that the use of the word “means” creates a rebuttable
`
`presumption that the patentees intended to invoke § 112, ¶ 6, whereas failure
`
`to use the word “means” creates a rebuttable presumption that the patentees
`
`did not intend to invoke § 112, ¶ 6. Flo Healthcare Solutions, LLC v.
`
`Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012); Personalized Media
`
`Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir.
`
`1998). More importantly, “the presumption flowing from the absence of the
`
`term ‘means’ is a strong one that is not readily overcome.” Lighting World,
`
`Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).
`
`For the foregoing reasons, we decline to interpret the aforementioned
`
`method steps recited in claims 9–11, as means-plus-function limitations.
`
`Although we recognize that a claim reciting an apparatus and method
`
`steps would not be in compliance with § 112, ¶ 2, for infringement purposes
`
`(Dec. 7), we will analysis claims 9–11 in this decision to determine the
`
`patentability of those claims based on the obviousness grounds of
`
`unpatentability asserted by Vibrant Media, rather than terminating the
`
`9
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`
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`IPR2013-00172
`Patent 6,092,074
`
`proceeding as to those claims. The main issue in this decision is whether
`
`Vibrant Media has demonstrated by a preponderance of evidence that the
`
`challenged claims would have been obvious over the cited prior art
`
`references (e.g., van Hoff and Anthony). Dec. 29. Put simply, we decide on
`
`the patentability of those claims based on the grounds of unpatentability
`
`asserted by Vibrant Media, rather than infringement of those claims.
`
`See 35 U.S.C. § 318(a). It is not necessary for us to determine whether each
`
`of claims 9–11 complies with § 112, ¶ 2, for infringement purposes in this
`
`decision. More importantly, we maintain our focus on the issue of
`
`patentability based on the evidence before us.
`
`In addition, an indefiniteness determination in this proceeding would
`
`not have prevented us from deciding whether the claims would have been
`
`obvious over the cited prior art. We recognize that, in certain situations
`
`where the claim scope could not be ascertained without requiring
`
`considerable speculation, the prior art ground of unpatentability would be
`
`reversed, pro forma. For example, the court in In re Steele stated:
`
`Our analysis of the claims indicates that considerable
`speculation as to meaning of the terms employed and
`assumptions as to the scope of such claims were made by the
`examiner and the board. We do not think a rejection under 35
`U.S.C. [§] 103 should be based on such speculations and
`assumptions.
`
`305 F.2d 859, 862 (CCPA 1962) (emphasis added).
`
`In other situations, the court, however, has decided the prior art
`
`ground of unpatentability on the merits, rather than pro forma reversing the
`
`prior art rejection, even after determining that the claim does not comply
`
`10
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`IPR2013-00172
`Patent 6,092,074
`
`with § 112, ¶ 2. See, e.g., In re Collier, 397 F.2d 1003, 1005–1006 (CCPA
`
`1968) (The court affirmed the obviousness rejection based on the prior art of
`
`record, even when the claim was determined to be indefinite, failing to
`
`comply with § 112, ¶ 2.).
`
`In this proceeding, we can ascertain the scope of each claim limitation
`
`with reasonable certainty, in view of the Specification and mindful of the
`
`inventor’s actions during the prosecution of the ’074 patent.3 See Ex. 1002,
`
`160 (amendment of method claim 50, renumbered as independent claim 9, to
`
`describe a computer system). We interpret claims 9–11, for the purposes of
`
`this decision, as requiring both the recited apparatus claim elements and the
`
`recited method steps.
`
`
`
`Means-Plus-Function Limitations
`
`In the Decision on Institution, we set forth the claim constructions for
`
`eleven means-plus-function elements under 35 U.S.C. § 112, ¶ 6. Dec. 11–
`
`23. Neither GE nor Vibrant Media disputes our claim constructions for
`
`those elements. PO Resp. 9; Pet. Reply 2–3. We will apply our claim
`
`
`
`3 We acknowledge the dissent to this decision, as to claims 9–11, but
`respectfully disagree. We are unpersuaded that the interpretation of those
`claims requires considerable speculation, or our obviousness determination
`here is based on less than all of the claimed elements. We discern no reason
`why the patentability of those challenged claims cannot be determined under
`35 U.S.C. § 318(a), based on the prior art of record. Further, because the
`majority addresses all claim elements, we believe that the dissent’s concerns
`about a speculative construction are unwarranted.
`
`11
`
`
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`IPR2013-00172
`Patent 6,092,074
`
`constructions set forth in the Decision on Institution for those means-plus-
`
`function elements also in this Final Written Decision.
`
`Other Claim Terms
`
`The parties proposed claim constructions for several other terms.
`
`Pet. 5–8; PO Resp. 9–10. For the purposes of this Final Written Decision,
`
`we find it necessary to interpret expressly only the following claim terms:
`
`“destination addresses,” “class codes,” “major class code,” and “preferred
`
`major class code.”
`
`1. “Destination addresses” (claims 1, 3, 6–7, 9, 12)
`
`The term “destination addresses” is recited, for example, in claim 1—
`
`“a destination database associated with said primary computer which
`
`comprises a plurality of destination addresses” (emphasis added). As
`
`Vibrant Media points out, the Specification of the ’074 patent defines the
`
`term “destination address” as “a variable that designates the location of a
`
`network resource such as a Web page; may take the form of a URL.”
`
`Pet. 15 (citing Ex. 1001, 11:15–17). GE agrees with Vibrant Media’s claim
`
`construction. PO Resp. 9. As the definition is set forth with sufficient
`
`clarity in the Specification, we also agree with Vibrant Media’s construction,
`
`and adopt it as the broadest reasonable interpretation for the claim term
`
`“destination addresses.” See Paulsen, 30 F.3d at 1480.
`
`12
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`2. “Class codes” (claims 1 and 7), “major class code” (claims 3–5 and
`9–11), and “preferred major class code” (claims 3–5 and 9–11)
`
`The claim term “class codes” is recited, for example, in claim 1—
`
`“wherein said annotation database further comprises a plurality of class
`
`codes which are associated with said plurality of linkable character strings”
`
`(emphasis added). The claim term “major class code” is recited, for
`
`example, in claim 3—“wherein at least some of said linkable character
`
`strings in said annotation database have an associated major class code”
`
`(emphasis added). The claim term “preferred major class code” is recited,
`
`for example, in claim 3—“qualifying means associated with said annotation
`
`database for qualifying the matching linkable character string according to
`
`qualification criteria which requires the major class code of the matching
`
`linkable character string to match a preferred major class code” (emphasis
`
`added). The parties proposed the following claim constructions:
`
`Claim
`Terms
`
`Vibrant Media’s proposed claim
`constructions
`
`GE’s proposed claim
`constructions
`
`Class code
`
`Identifiers or descriptors
`(including descriptive metadata)
`or any form, each identifying or
`referring to (i) a particular area or
`type of subject or topic, and/or
`(ii) a category or function of an
`associated destination address.
`Pet. 5–6 (citing, e.g., Ex. 1001,
`13:43–48).
`
`Codes that can designate or
`identify a particular context
`or subject area or control
`the number and type of a
`destination address.
`PO Resp. 10 (citing, e.g.,
`Ex. 1001, 5:5–22, 8:29–43,
`13:43–48, 18:2–30).
`
`13
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`IPR2013-00172
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`An identifier that references or
`identifies a topic area that (i) may
`be broader, or of less specificity,
`relative to some other class codes,
`and/or (ii) encompasses certain
`other class codes or types of class
`codes. Pet. 7 (citing Ex. 1001,
`e.g., 18:9–16).
`
`Class codes that can
`designate or identify a
`particular context or
`subject area. PO Resp. 10
`(citing Ex. 1001, 6:28–35,
`7:62–67, 18:2–30, 19:41–
`20:13).
`
`An identifier that represents a
`“major class code” that is desired
`or otherwise is given priority over
`others, for example, one having a
`topic area known to be relevant or
`related to a particular article.
`Pet. 7 (citing Ex. 1001, 18:9–16).
`
`Major class code that is
`desired so as to bypass
`matching linkable character
`strings with other major
`class codes. PO Resp. 10
`(citing Ex. 1001, 6:28–41,
`9:34–43, 20:3–13).
`
`Major
`class code
`
`
`Preferred
`major
`class code
`
`
`
`Vibrant Media disagrees with GE’s proposed claim constructions for
`
`the claim terms “class code” and “major class code.” Pet. Reply 2–3.
`
`Nevertheless, we observe that GE’s constructions for those claim terms do
`
`not present a difference from Vibrant Media’s constructions that would
`
`affect the outcome of the prior art analysis. Vibrant Media agrees. See Pet.
`
`Reply 13; Tr. 8:23–10:14. Moreover, because GE’s claim constructions for
`
`those terms appear consistent with the Specification and do not import
`
`limitations from the Specification into the claims, we adopt those
`
`constructions as the broadest reasonable interpretations. See Ex. 1001, 5:5–
`
`22, 6:28–35, 7:62–67, 8:29–43, 13:43–48, 18:2–30, 19:41–20:13, 20:33–41.
`
`14
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`IPR2013-00172
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`
`However, we decline to adopt GE’s proposed construction for the
`
`claim term “preferred major class code”—“major class code that is desired
`
`so as to bypass matching linkable character strings with other major class
`
`codes” (PO Resp. 10 (emphasis added))—as it would import improperly a
`
`limitation from the Specification into the claims. See Superguide Corp. v.
`
`DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
`
`understanding the claim language may be aided by the explanations
`
`contained in the written description, it is important not to import into a claim
`
`limitations that are not a part of the claim.”). GE has not directed our
`
`attention to a special definition in the Specification. Nor does GE allege that
`
`the inventors of the ’074 patent acted as their own lexicographer and
`
`provided a special definition in the Specification for the claim term that is
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`different from its recognized meaning to one of ordinary skill in the art. It is
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`well settled that, if a feature in the specification is not necessary to give
`
`meaning to what the inventor means by a claim term, it would be
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`“extraneous” and should not be read into the claim. Renishaw PLC v.
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`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du
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`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`
`(Fed. Cir. 1988).
`
`Accordingly, we construe the claim term “preferred major class code”
`
`as a major class code that is desired or given priority, consistent with the
`
`ordinary and customary meaning of the term as would be understood by one
`
`of ordinary skill in the art in the context of the Specification of the ’074
`
`patent. See, e.g., Ex. 1001, 6:28–41, 9:34–43, 18:9–16, 20:3–13.
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`15
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`Patent 6,092,074
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`B. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of nonobviousness.
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`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
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`In that regard, an obviousness analysis “need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
`
`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
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`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`
`established when the prior art itself would appear to have suggested the
`
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
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`531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art
`
`may be reflected by the prior art of record. See Okajima v. Bourdeau,
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`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`We analyze the instituted grounds of unpatentability in accordance
`
`with the above-stated principles.
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`16
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`IPR2013-00172
`Patent 6,092,074
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`C. Claims 1–5 and 7–11 – Obvious over van Hoff and Anthony
`
`Vibrant Media asserts that claims 1–5 and 7–11 are unpatentable
`
`under 35 U.S.C. § 103(a) over van Hoff and Anthony. Pet. 18–40, 46–51.
`
`As support, Vibrant Media provides detailed explanations as to how each
`
`claim limitation is met by the cited prior art reference, and proffers the
`
`Declaration of Dr. Eric Hellman. Pet. 46–54 (citing Ex. 1003).
`
`However, GE responds that the combination of van Hoff and Anthony
`
`fails to disclose certain claim features. PO Resp. 16–19, 23–28. GE also
`
`advances several arguments under the premise that there is insufficient
`
`reason to combine the teachings of van Hoff and Anthony. Id. at 14–15.
`
`GE further proffers objective evidence of nonobviousness (Exs. 2001–08,
`
`2015–21), and directs our attention to the Declaration of Dr. Ketan Mayer-
`
`Patel (Ex. 2013). Id. at 19–23.
`
`Upon consideration of the parties’ contentions and supporting
`
`evidence, we determine that Vibrant Media has demonstrated by a
`
`preponderance of evidence that claims 1–5 and 7–11 are unpatentable over
`
`the combination of van Hoff and Anthony. In our analysis below, we
`
`address GE’s arguments presented in the Patent Owner Response, focusing
`
`on the deficiencies alleged by GE with regard to the challenged claims.
`
`van Hoff
`
`In general, van Hoff describes both a system and a method for
`
`annotating automatically a document so as to interconnect that document via
`
`hypertext links to a set of documents known to contain supplemental
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`17
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`information. Ex. 1004, Abs., 1:8–11, 2:7–11. Figure 1 of van Hoff,
`
`reproduced below, depicts van Hoff’s distributed computer system:
`
`
`
`As shown in Figure 1 of van Hoff, distributed computer system 100
`
`includes many client computers 102 connected to information server
`
`computer 104 via Internet 106. Each client computer 102 includes
`
`communication interface 103, RAM 105, CPU 106, user interface 107, and
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`memory 108. Id. at 4:1–21. In a preferred embodiment of van Hoff,
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`annotation proxy server 119 is located on the same platform as client
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`computer 102. Id. at 5:3–5.
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`18
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`Figure 2 of van Hoff is reproduced below with our annotation:
`
`
`
`As shown in Figure 2 of van Hoff, annotation proxy server 118, 119
`
`having a plurality of annotation directories 191, 192. Each annotation
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`directory includes a plurality of paired entries (e.g., 192a through 192d), and
`
`each entry includes: (1) cross-reference document source field 194, which
`
`identifies the unique location of a cross-reference document; (2) match
`
`pattern field 195, which defines a character pattern; and (3) other optional
`
`fields, such as relevance indicator field 196 to indicate the relevance or
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`importance of associated match pattern 195 or cross-reference source 194.
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`Id. at 5:27–40, 5:50–55.
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`19
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`If a character pattern is found in a requested document, an annotation
`
`linking the portion of the document associated with the matching pattern to
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`the paired cross-reference source is inserted into the requested document.
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`Id. at 5:41–54, 6:65–7:11. For instance, if a match pattern is the phrase
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`“JAVA!” and the paired cross-reference source is SUN.COM.JAVAINFO,
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`then a hyperlink annotation “<link to SUN.COM.JAVAINFO>” is added to
`
`the requested document in association with the “JAVA!” phrase pattern. Id.
`
`In a preferred embodiment, van Hoff describes that the hyperlink
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`annotation also may be provided in a hierarchical format. Id. at 8:49–50.
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`For example, when a term in the document satisfies the match pattern in the
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`annotation directory, the link may reflect a hierarchical cross-reference list
`
`in order of increasing specificity, such as “medical,” “oncology,”
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`“melanoma,” “treatment,” and radiation.” Id. Furthermore, in the situation
`
`in which a relevance indicator field is used, the hyperlink annotation
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`includes a relevance index (RI) (e.g., “<link to CR=URLX1, RI=2>”). Id. at
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`9:5–12 (emphasis added). The system allows the user to set a threshold
`
`during viewing to indicate which relevance indicator levels are to be
`
`displayed. Id. at 9:61–63.
`
`Anthony
`
`
`
`Anthony discloses a computer system and method for generating
`
`hyperlinks automatically in a text document, to facilitate cross-referencing
`
`documents, and to allow fast and easy access to relevant information.
`
`Ex. 1005, Abs, 1:6–8, 1:35–40, 2:34–43. In particular, Anthony describes a
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`20
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`system for creating associations between links and data, referred to as
`
`“Auto_HyperlinkingTM.” Id. at 5:4–11. The system finds a word or phrase
`
`in a text document that matches a topic name, and then automatically
`
`hyperlinks the word or phrase to the topic. Id. The link is made with
`
`reference to a database that stores the topic text, reference name, the location
`
`of the information for each topic, and the navigational links for the hypertext
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`jumps. Id. at 5:14–18.
`
`A plurality of class codes
`
`Claim 1 recites “the matching linkable character string has a plurality
`
`of class codes associated therewith,” and “said destination database
`
`comprises a plurality of destination addresses corresponding to said plurality
`
`of class codes of the matching linkable character string.” Claim 7 recites
`
`similar features.
`
`In its Petition, Vibrant Media asserts that the combination of van Hoff
`
`and Anthony would have rendered the aforementioned “class codes” claim
`
`features obvious to one of ordinary skill in the art at the time of the
`
`invention. Pet. 28–31, 34–37; Ex. 1003 ¶¶ 52–61. In particular, Vibrant
`
`Media asserts that the use of topic or reference names (i.e., class codes) to
`
`identify topic area was known in the art at the time of invention, as
`
`evidenced by Anthony. Id. at 29 (citing Ex. 1005, 4:10–20, 4:60–65, 5:8–
`
`18). Vibrant Media notes that Anthony discloses storing topic or reference
`
`names (class codes) with identifiers for locations of corresponding data in a
`
`database, and providing the navigational links for the hypertext jumps.
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`21
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`Ex. 1005, 2:64–3:1, 5:8–18. Anthony also describes using a topic or
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`reference name (class codes) to search for matching character strings in the
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`“Auto_HyperlinkingTM” process. Id. at 4:16–28, 4:63–65.
`
`As Vibrant Media explains, van Hoff discloses that a document term
`
`matching a match pattern may be hyperlinked with a
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