Filed on behalf of Improved Search, LLC.
`
`By: Keith Kline (Reg. No. 32,737)
`
`Carr & Ferrell LLP
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`Tel: 650.812.3400
`Email: kkline@carrferrell.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`GOOGLE INC.
`
`Petitioner
`
`v.
`
`IMPROVED SEARCH LLC
`
`Patent Owner
`___________________________
`
`Case No.: IPR2016-00797
`
`U.S. Patent No. 6,604,101
`___________________________
`
`
`PATENT OWNER IMPROVED SEARCH LLC'S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`AOL Ex. 1009
`Page 1 of 58
`
`
`
`By: Keith Kline (Reg. No. 32,737)
`
`Carr & Ferrell LLP
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`Tel: 650.812.3400
`Email: kkline@carrferrell.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`GOOGLE INC.
`
`Petitioner
`
`v.
`
`IMPROVED SEARCH LLC
`
`Patent Owner
`___________________________
`
`Case No.: IPR2016-00797
`
`U.S. Patent No. 6,604,101
`___________________________
`
`
`PATENT OWNER IMPROVED SEARCH LLC'S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`AOL Ex. 1009
`Page 1 of 58
`
`
`
`
`TABLE OF CONTENTS
`
`BACKGROUND AND SUMMARY OF ARGUMENT ................................ 1
`
`I.
`
`II. RELATED MATTERS ................................................................................... 3
`
`III. THE ‘101 PATENT ......................................................................................... 3
`
`IV. CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`The Claim Language Mandates The Claimed Steps In Each
`Challenged Claim To Be Performed In Order. ...................................11
`
`B.
`
`Petitioner’s Proposed Constructions Are Not Reasonable. .................15
`
`1.
`
`2.
`
`3.
`
`“dialectal standardization” ........................................................16
`
`“contextual search” ...................................................................23
`
`Erroneous Means-Plus-Function Construction .........................25
`
`V. NONE OF THE PRIOR ART TEACH THE LIMITATIONS
`CONTAINED IN EACH OF THE CHALLENGED CLAIMS ....................28
`
`
`A.
`
`B.
`
`Fluhr ‘97 ..............................................................................................28
`
`Fluhr ‘98 ..............................................................................................36
`
`1.
`
`Petitioner’s Ground 1 ................................................................37
`
`C.
`
`Yamabana ............................................................................................42
`
`1.
`
`Petitioner’s Ground 2 ................................................................43
`
`D.
`
`Bian ......................................................................................................45
`
`1.
`
`2.
`
`Petitioner’s Grounds 3 and 4 .....................................................46
`
`Petitioner’s Ground 5 ................................................................48
`
`VI. CONCLUSION ..............................................................................................50
`
`
`
`
`
`
`i
`
`AOL Ex. 1009
`Page 2 of 58
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003) .......................................................................... 13
`
`Page(s)
`
`
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
`262 F.3d 1258, 1271 (Fed. Cir. 2001) ............................................................... 20
`
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288, 1299 (Fed. Cir. 2009) ............................................................... 27
`
`
`Hologic, Inc. v. SenoRx, Inc.,
`639 F.3d 1329, 1338 (Fed. Cir. 2011) ............................................................... 20
`
`
`Cuozzo Speed Technologies, LLC v. Lee,
`579 U.S. __ (slip op. June 20, 2016); 2016 WL 3369425 ................................... 8
`
`
`In re Cortright,
`165 F.3d 1353, 1358 (Fed. Cir. 1999) ................................................................. 9
`
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 34
`
`
`In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006) ..................................................................... 2
`
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed Cir. 2010) ............................................................................. 9
`
`
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ........................................................................ 8, 9
`
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 9
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 2
`
`ii
`
`AOL Ex. 1009
`Page 3 of 58
`
`
`
`
`Loral Fairchild Corp. v. Sony Corp.,
`181 F.3d 1313 (Fed. Cir. 1999) .......................................................................... 12
`
`
`Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc.,
`152 F.3d 1368 (Fed. Cir. 1998) .................................................................... 12, 15
`
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................... 8, 19, 20
`
`
`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) ..................................... 16, 19, 21, 41, 45, 48, 50
`
`
`Pacing Technologies, LLC v. Garmin Int’l, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) .................................................................... 10, 11
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................... 9, 10
`
`
`Regents of Univ. of Minn. V. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ............................................................................ 19
`
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) ....................................................... 10, 17, 18, 22
`
`
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973, 977 (Fed. Cir. 2014) ..................................................................... 9
`
`
`Transocean Offshore Deepwater Drilling v. Maersk Drilling USA,
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 41
`
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) .......................................................................... 19
`
`
`Watts v. XL Sys., Inc.,
`232 F.3d 877, 880 (Fed. Cir. 2000) ................................................................... 26
`
`
`Williamson v Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ............................................................. 16, 25, 27
`
`
`
`iii
`
`AOL Ex. 1009
`Page 4 of 58
`
`
`
`Statutes
`
`35 U.S.C. § 112 ................................................................................................. 25, 26
`
`35 U.S.C. § 313 ......................................................................................................... 2
`
`35 U.S.C. § 314(a) ............................................................................................... 1, 57
`
`
`
`Regulations
`
`37 C.F.R. § 42.104(b)(3) .......................................................................................... 27
`
`37 C.F.R. § 42.104(b)(5) ........................................................................................ 1, 2
`
`37 C.F.R. § 42.107 ................................................................................................. 1, 2
`
`42 C.F.R. § 42.100(b) ................................................................................................ 8
`
`
`
`
`
`
`iv
`
`AOL Ex. 1009
`Page 5 of 58
`
`
`
`LIST OF EXHIBITS
`
`
`
`
`
`DESCRIPTION
`
`File History, U.S. Patent Application No. 09/606,655
`
`Merriam-Webster Online Dictionary – “Dialectal”
`
`Merriam-Webster Online Dictionary – “Standardization”
`
`IMPROVED
`SEARCH
`EXHIBIT NO.
`
`2002
`
`2003
`
`2004
`
`
`
`v
`
`AOL Ex. 1009
`Page 6 of 58
`
`
`
`
`
`Patent Owner Improved Search LLC (“Patent Owner” or “Improved
`
`Search”) hereby submits this Preliminary Response under 37 C.F.R. § 42.107 to
`
`Google Inc.’s (“Petitioner” or “Google”) Petition for Inter Partes Review of U.S.
`
`Patent No. 6,604,101 (“the ‘101 Patent”), filed March 25, 2016.
`
`I.
`
`BACKGROUND AND SUMMARY OF ARGUMENT
`
` Inter partes review is not appropriate in this case and Google’s Petition
`
`should be denied under 35 U.S.C. § 314(a) because Petitioner cannot establish a
`
`reasonable likelihood of success on any claim challenged. “The Director may not
`
`authorize an inter partes review to be instituted unless the Director determines that
`
`the information presented in the petition filed under section 311 . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged . . . .” 35 U.S.C. §314(a). As discussed below, each
`
`proposed obviousness rejection is deficient for failing to set forth each and every
`
`feature arranged as recited by the respective claims of the ‘101 Patent.
`
`Additionally, the secondary references do not teach the missing features, and thus
`
`fail to establish a prima facie case of obviousness. The Petition’s proposed
`
`obviousness rejections also fail to identify specific portions of the evidence that
`
`support the obviousness challenges and fail to articulate a sound basis for a legal
`
`conclusion of obviousness. Accordingly, the proposed obviousness rejections fail
`
`to comply with Patent Office Rules and Supreme Court precedent. See 37 C.F.R.
`
`
`
`1
`
`AOL Ex. 1009
`Page 7 of 58
`
`
`
`§ 42.104(b)(5); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`The following limitations (and their analogs) are not taught by any of the
`
`references cited in the Petition:
`
`(1) “performing dialectal standardization of the at least one content word,”
`
`(2) “performing a contextual search,” and
`
`(3) the order of each step as recited in independent claims 1, 22 and 23.
`
`Petitioner mistakenly argues that “dialectal standardization” and “contextual
`
`search” merely limit the claims to replacing terms with synonyms and identifying
`
`documents from a larger collection. Petition at 11-13. This argument misconceives
`
`the claimed invention and reads out the core innovation of standardizing a query to
`
`a commonly known word prior to translation of that query, and only then
`
`performing a contextual search of a computer network such as the Internet. Indeed,
`
`the specification makes clear that dialectally standardizing an extracted content
`
`word allows for conducting a translingual search of the fast expanding terrain of
`
`information available via the Internet, as opposed to just on a pre-specified and
`
`pre-processed document database in which the database itself is used to help
`
`translate the query words.
`
`This filing is timely under 35 U.S.C. §313 and 37 C.F.R § 42.107 as it is
`
`being filed within three months of the date noticed. Improved Search, by
`
`
`
`2
`
`AOL Ex. 1009
`Page 8 of 58
`
`
`
`submitting this response, does not waive its rights to add or modify arguments
`
`should the Board decide to institute a trial on this matter. Improved Search does
`
`not waive or admit any matters, arguments, contentions or other material presented
`
`in the Petition regardless whether they are addressed or rebutted in this response.
`
`II. RELATED MATTERS
`
`Patent Owner notes that U.S. Patent No. 6,604,101 is involved in the court
`
`proceeding identified by Petitioner, Improved Search LLC v. AOL Inc., Civ. No.
`
`15-262 (D. Del. filed March 25, 2015).
`
`III. THE ‘101 PATENT
`
`The ‘101 patent describes an improved method for the search and retrieval
`
`of multilingual information on a computer network. See, e.g., Google Ex. 1001.
`
`The ‘101 patent covers methods and systems for conducting a translingual search
`
`on the Internet and accessing multilingual Web sites through dialectal
`
`standardization, pre-search translation and post-search translation.
`
`At the time of the ‘101 patent application, the field of translingual or cross-
`
`lingual information retrieval (“CLIR”) was active. The main focus of research in
`
`the area was how to produce good retrieval results given a query in one language
`
`and a document stored in a different language. That is, prior to the ‘101 patent
`
`application, CLIR focused primarily on accurate cross-lingual retrieval of
`
`
`
`3
`
`AOL Ex. 1009
`Page 9 of 58
`
`
`
`documents from a fixed, pre-indexed collection of documents (i.e., a database of
`
`documents whether in one physical location or in a handful of locations).
`
`Research at the time focused on recall – conducting searches that did not
`
`miss relevant documents. The standard evaluation metrics were recall and
`
`precision, the former being the fraction of relevant documents actually received
`
`from the database, and the latter being the fraction of retrieved documents deemed
`
`relevant. Recall is particularly important for domains such as the medical and legal
`
`industries where there is a potentially high cost for missing a relevant diagnosis or
`
`a relevant prior case. Both academia and industry, encouraged by the United States
`
`National Institute of Standards and Technology (NIST), used precision-recall
`
`curves to evaluate how one measure traded off against the other for a given
`
`retrieval system or algorithm.
`
`Web search, however, is very different than information retrieval from fixed
`
`collections of documents in databases. The size of the Web is truly vast – it cannot
`
`be pre-translated or even pre-analyzed in any great depth, it can only be indexed by
`
`the large search engines. Exhibit 1001 at 1:16-20. At the time of the ‘101 patent
`
`application, the volume of documents (e.g., Web pages or other accessible sources
`
`of information) available over the Internet was rapidly expanding and exceeding
`
`hundreds of millions of documents. Id. Moreover, Web pages, even those in a
`
`given language, could be written in many dialects without editorial control. These
`
`
`
`4
`
`AOL Ex. 1009
`Page 10 of 58
`
`
`
`Web pages could include slang, geographical and linguistic variants, for example.
`
`In addition, only precision truly matters in Web searching, not recall. A user wants
`
`to see only relevant documents, and among them only the most relevant at the top
`
`of the results list. It does not matter that there may be tens of thousands of
`
`additionally potentially relevant documents.
`
`Information retrieval from fixed collections of documents later evolved into
`
`what is now known as a “library search” or “enterprise search” (versus current
`
`“Web search”), even if the information retrieval searched multiple document
`
`databases in an enterprise. At the time of the ‘101 patent application, Web search
`
`was already popular but not in cross-lingual settings. Exhibit 1001 at 2:9-24.
`
`The inventors of the ‘101 patent anticipated these trends: the needs of non-
`
`English-speaking Internet users to access English Web search tools, and similarly
`
`the needs of English-speaking Internet users to access non-English Web search
`
`tools. The specification explains: “A need exist[ed] for a translingual search engine
`
`with a built-in translator . . . capable of standardizing the query or phrase input by
`
`the user to a commonly known word and then translating the same into a target
`
`language prior to a search for sites that satisfies the search criteria.” Id. at 2:45-50.
`
`The invention is thus premised on specific, delineated, carefully ordered steps that
`
`allow the user of an Internet search engine to retrieve Web pages and/or documents
`
`in a target language using search terms written in a different source language.
`
`
`
`5
`
`AOL Ex. 1009
`Page 11 of 58
`
`
`
`The prior art systems at the time failed to address the needs of the user, as
`
`further described in detail in the specification:
`
`There are some web sites, which offer translation
`services, but such sites merely create an illusion of multilingual
`search and information retrieval. What these sites offer in effect
`are machine translation services. Machine translation services
`are services that provide a literal translation of the words
`queried by users. Such translations are often found to be
`unintelligible and incomprehensible and as a result fall short of
`fulfilling any meaningful objective of users.
`
`Systems have also been developed which attempt to
`transform a query input by the user in the native language also
`referred to as source language into a resulting language also
`referred to as a target language and provide as many
`translations as possible in the target language. The idea is to
`have such a transformed query ready for use in any of the
`available information retrieval systems.
`
`However, this system is similar to the other search tools
`discussed earlier that fail to placate the long standing need for a
`one stop shop for users to dialectally standardize a user query to
`a more commonly known word and then translate this
`standardized word intelligently to the target language prior to
`search. Such a tool being also capable of conducting a search in
`the target language through the input of the translated keyword
`into a search engine of the target language and producing search
`results, and even generating translations of the search results in
`the source language.
`
`Exhibit 1001 at 2:66-3:23.
`
`Figure 2 of the ‘101 patent presents an embodiment of the invention
`
`whereby the general steps of content word extraction, dialectal standardization,
`
`
`
`6
`
`AOL Ex. 1009
`Page 12 of 58
`
`
`
`pre-search translation, and post-search translation are employed. In particular, the
`
`specification discloses the steps of:
`
`A. receiving a query in a source language (Exhibit 1001 at 5:24-27);
`
`B. processing the query to extract a content word out of the query (Id. at
`
`5:27-30);
`
`C. performing dialectal standardization of the content word extracted
`
`from the query (Id. at 5:30-55);
`
`D. translating the dialectal standardized content word into a second
`
`language (Id. at 6:5-9);
`
`E. performing a contextual search in the second language based on the
`
`translated content word, using a search engine in the second language
`
`(Id. at 6:11-16); and
`
`F. obtaining the search results in the second language, satisfying a search
`
`criteria (Id. at 6:16-22).
`
`After extracting the content word(s) from the query, the system then proceeds to
`
`dialectally standardize the content word(s) to more commonly known and/or used
`
`term(s). Id. at 4:23-29. In this way, “dialectal standardization is distinctly helpful
`
`because standardizing the word to a commonly known word insures that the target
`
`language search engine will recognize it.” Id.
`
`The specification emphasizes the importance of the dialectal standardization:
`
`
`
`7
`
`AOL Ex. 1009
`Page 13 of 58
`
`
`
`In particular, the importance of dialectal standardization cannot
`be undermined in the present invention where the identified
`keyword needs to be given one consistent meaning. Otherwise,
`a single inconsistency could result in a wrong translation and
`ruin the entire search process during subsequent stages of
`search and information retrieval.
`
`Id. at 5:50-55.
`
`IV. CLAIM CONSTRUCTION
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b); see Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. __ (slip
`
`op. June 20, 2016); 2016 WL 3369425. In some circumstances, the broadest
`
`reasonable interpretation (BRI) standard should yield a construction that is in all
`
`essential respects identical to the construction that the courts would apply after
`
`engaging in the Federal Circuit guided Markman procedure. In Microsoft Corp. v.
`
`Proxyconn, Inc., 789 F. 3d 1292, 1298 (Fed. Cir. 2015), the court explained that
`
`the BRI standard does not give the Board authority to reach an interpretation
`
`unhinged from the specification and file history:
`
`That is not to say, however, that the Board may construe claims
`during IPR so broadly that its constructions are unreasonable
`under general claim construction principles. As we have
`explained in other contexts, “[t]he protocol of giving claims
`their broadest reasonable interpretation . . . does not include
`giving claims a legally incorrect interpretation.” In re Skvorecz,
`580 F.3d 1262, 1267 (Fed. Cir. 2009); see also In re Suitco
`Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (“The
`broadest construction rubric coupled with the term ‘comprising’
`
`
`
`8
`
`AOL Ex. 1009
`Page 14 of 58
`
`
`
`does not give the PTO an unfettered license to interpret claims
`to embrace anything remotely related to the claimed
`invention.”). Rather, “claims should always be read in light of
`the specification and teachings in the underlying patent.”
`Suitco, 603 F.3d at 1260. The PTO should also consult the
`patent’s prosecution history in proceedings in which the patent
`has been brought back to the agency for a second review. See
`Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir.
`2014). Even under the broadest reasonable interpretation, the
`Board’s construction “cannot be divorced from the specification
`and the record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288
`(Fed. Cir. 2011), and “must be consistent with the one that
`those skilled in the art would reach,” In re Cortright, 165 F.3d
`1353, 1358 (Fed. Cir. 1999). A construction that is
`“unreasonably broad” and which does not “reasonably reflect
`the plain language and disclosure” will not pass muster. Suitco,
`603 F.3d at 1260. Id. at 1298.
`
`To arrive at the legally correct construction, the PTAB must consider the
`
`patent and file history as a whole to determine meaning, even in cases where
`
`the dictionary definition of the claim term might lead one to a broader
`
`interpretation. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
`
`(en banc). Indeed, the Federal Circuit has often stated that claim construction
`
`is the process of determining “the reasonable” construction of the claim.
`
`Surely, those cases cannot be interpreted as accepting only one of a wide
`
`range of possible constructions. See In re Suitco Surface, Inc., 603 F.3d
`
`1255, 1260 (Fed Cir. 2010); In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
`
`2009); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011).
`
`
`
`9
`
`AOL Ex. 1009
`Page 15 of 58
`
`
`
`With the extensive tools provided to the PTO and the lower courts, the
`
`governing case law provides the appropriate method for determining the
`
`“true meaning of language used in the patent claims.” Phillips, 415 F. 3d at
`
`1318. Claims must be construed as a whole; the context of the claim often
`
`provides convincing evidence of the meaning of terms within the claim. Id.
`
`at 1313 (“Importantly, the person of ordinary skill in the art is deemed to
`
`read the claim term not only in the context of the particular claim in which
`
`the disputed term appears, but in the context of the entire patent, including
`
`the specification.”).
`
`The Federal Circuit recently reiterated and reinforced these
`
`restrictions on the PTAB’s authority to construe terms under its BRI
`
`standard in a far different manner than a district court would in patent
`
`infringement litigation . In Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`
`806 F.3d 1356 (Fed. Cir. 2015), the Federal Circuit overturned a finding of
`
`invalidity on the basis that the Board had improperly broadened the “plain”
`
`reading of the claim by reference to material in the specification: “For that
`
`reason, the court has repeatedly stated since Phillips that redefinition or
`
`disavowal is required where claim language is plain, lacking a range of
`
`possible ordinary meanings in context. See Pacing Technologies, LLC v.
`
`
`
`10
`
`AOL Ex. 1009
`Page 16 of 58
`
`
`
`Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (citing
`
`authorities).”
`
`Patent Owner provides the broadest reasonable interpretation of three
`
`elements that none of the prior art references offered by Petitioner teach, two
`
`of which Patent Owner disputes over the Petition. The Board should
`
`construe these terms because they distinctly point out ways in which the
`
`present invention is distinguishable from Petitioner’s prior art references,
`
`Fluhr ’97, Fluhr ’98, Yamabana, and Bian.
`
`A. The Claim Language Mandates The Claimed Steps In Each
`Challenged Claim To Be Performed In Order.
`
`
`The claims recite multiple, separate and different steps to perform a
`
`contextual search and retrieval of documents in a computer network. Ex. 1001 at
`
`7:66-8:15 (Claim 1). In particular, claim 1 is an independent claim which recites
`
`six (6) steps of “receiving,” “processing,” “performing dialectal standardization,”
`
`“translating,” “performing a contextual search,” and “obtaining.” For convenience,
`
`we refer to each step in the order that they are recited in the claims, i.e., the first,
`
`second, third, fourth, fifth, and sixth claimed steps will be referred to as “Step
`
`[A],” “Step [B],” “Step [C],” “Step [D],” “Step [E],” and “Step [F],” respectively,
`
`or collectively as “Steps [A]-[F].”
`
` Step [A] recites receiving a query in a first language through an input
`
`device (Claim 1). Step [B] recites processing said query to extract at least one
`
`
`
`11
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`AOL Ex. 1009
`Page 17 of 58
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`
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`content word from the query (Claims 1, 22, and 23). Step [C] recites performing
`
`dialectal standardization of, or dialectally standardizing, the at least one content
`
`word extracted from the query (Claims 1, 22, and 23). Step [D] recites translating
`
`the at least one dialectally standardized content word into a second language
`
`(Claims 1, 22, and 23). Step [E] recites performing a contextual search in the
`
`second language based on the at least one translated content word (Claims 1, 22,
`
`and 23). Step [F] recites obtaining the search results in the second language
`
`(Claims 1, 22, and 23).
`
`It is clear from this plain language of Claim 1, and the same language in
`
`Claims 22 and 23, that each step must occur after each previous step. See, e.g.,
`
`Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375-76 (Fed.
`
`Cir. 1998) (requiring steps to be performed in order when a subsequent step
`
`requires the prior step to have been performed); Loral Fairchild Corp. v. Sony
`
`Corp., 181 F.3d 1313, 1321-22 (Fed. Cir. 1999) (sequence required when claim
`
`language indicates steps must be performed in their written order). For example,
`
`Claim 1 recites:
`
`Step [A]:
`
`receiving through an input device, a query in a first language;
`
`Step [B]:
`
`processing said query to extract at least one content word
`from the query;
`
`Step [C]:
`
`performing dialectal standardization of the at least one
`content word extracted from the query;
`
`
`
`12
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`AOL Ex. 1009
`Page 18 of 58
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`
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`Step [D]:
`
`translating the at least one dialectally standardized content
`word into a second language through a translator;
`
`Step [E]:
`
`performing a contextual search in the second language based
`on the at least one translated content word, using a search
`engine in the second language; and
`
`Step [F]:
`
`obtaining the search results in the second language in the form
`of at least one of site names (URLs) and documents, satisfying
`a search criteria.
`
`Step [B] must be performed after Step [A] because Step [B] requires “said
`
`query” that was received in Step [A] (“receiving . . . a query”). Similarly, Step [C]
`
`requires “the at least one content word” that was extracted from the query in Step
`
`[B].
`
`Step [D] requires the translation of “the at least one dialectally standardized
`
`content word” that was generated by the “dialectal standardization” of Step [C].
`
`Furthermore, Step [E] requires a contextual search in the second language of “the
`
`at least one translated content word” that was generated from the “translating” of
`
`Step [D]. Lastly, Step [F] requires obtaining “the search results” in the second
`
`language that had been generated in Step [E].
`
`Because the logic and grammar of the claims dictate that the method steps be
`
`performed in the order as written, there is generally no need to look to the
`
`specification. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. Cir.
`
`2003). Nevertheless, the specification also supports the logically ordered claim
`
`steps to be performed in the written order. Fig. 2 illustrates “a schematic diagram
`
`
`
`13
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`AOL Ex. 1009
`Page 19 of 58
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`
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`of the different steps involved in the process of translingual translation,” wherein
`
`the “different steps take place in the three stages of dialectal standardization, pre-
`
`search translation and post-search translation.” Ex. 1001, 5:16-21. Each “stage” is
`
`completed in turn. For example, the “pre-search translation” stage requires that
`
`“the dialectally standardized output for the identified keyword is input 126 into the
`
`translator,” which then “translates the standardized keyword into an equivalent in a
`
`target language.” Id. at 6:3-5. Thus, the specification is consistent with the ordering
`
`of Step [C] and Step [D] as required by the claims.
`
`Furthermore, the specification discloses that the steps illustrated in Fig. 3 are
`
`performed in order. In particular, the specification describes the steps being
`
`performed one after the other, i.e., “the process begins with,” Id. at 7:5-6, and “this
`
`is followed by,” Id. at 7:6-7. In addition, blocks 152 (“dialectal controller uses
`
`logic to identify keyword,” corresponding to Step [B]) and 158 (“translate
`
`standardized keyword to target language,” corresponding to Step [D]) only occur if
`
`the query received in block 148 (corresponding to Step [A]) is adequate and the
`
`standardization in block 154 (corresponding to Step [C]) is successful,
`
`respectively. Id. at 7:8-19. This logically requires each block as shown in the flow
`
`diagram of Fig. 3 to be performed in order and is consistent with the ordering of
`
`Steps [A]-[F]. As such, a person having ordinary skill in the art would not interpret
`
`the claimed steps in any random order because the specification does not suggest
`
`
`
`14
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`AOL Ex. 1009
`Page 20 of 58
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`
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`otherwise. Mantech, 152 F.3d at 1376 (construing logically ordered claim steps in
`
`a sequence when “the sequential nature of the claim steps is apparent from the
`
`plain meaning of the claim language and nothing in the written description
`
`suggests otherwise”).
`
`Accordingly, the broadest reasonable interpretation, or reading, of Claims 1,
`
`22 and 23 requires each of Step [B], Step [C], Step [D], Step [E], and Step [F] to
`
`occur after Step [A], Step [B], Step [C], Step [D], and Step [E], respectively. See
`
`Mantech, 152 F. 3d at 1376 (rejecting argument that neither the claim language nor
`
`the specification requires the claimed steps be performed in sequence where a
`
`subsequent step requires the prior step to have been performed).
`
`B.
`
`Petitioner’s Proposed Constructions Are Not Reasonable.
`
`Petitioner has offered constructions of ten (10) terms from the patent claims.
`
`Petitioner’s constructions are not “broadest reasonable interpretations” of the
`
`terms. Nonetheless, only two (2) issues of claim construction must be resolved in
`
`order to deny institution of a proceeding here. Those issues are how “dialectal
`
`standardization” and “contextual search” should be interpreted. 1 In construing
`
`
`1 Petitioner seeks construction of a number of claim terms which are not germane
`to the validity arguments that it makes. For example, it seeks to narrow the
`meaning of “query input device for inputting a query in a first language” to a
`“keyboard or equivalents.” Petition at 15. The Board should only construe those
`terms needed to determine the validity of the claims, rather than serve as the
`provider of advisory claim constructions on terms that may only have
`
`
`
`15
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`AOL Ex. 1009
`Page 21 of 58
`
`
`
`these terms, the Board must be careful to apply an interpretation that is consistent
`
`with the context of the particular claim in which the term appears “(including
`
`surrounding claim language) and in the context of the specification of the [‘101]
`
`Patent.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1346 (Fed. Cir. 2016).
`
`Furthermore, Petitioner erroneously applies Williamson v. Citrix Online, LLC to
`
`construe five claim terms as being means-plus-function limitations, then fails to
`
`rely on the resulting constructions in its arguments for obviousness. See Petition at
`
`13-18 (citing to Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir.
`
`2015)).
`
`1.
`
`“dialectal standardization”
`
`This claim element is included in each independent claim of the ‘101 patent.
`
`This term means “to map keywords from different styles and dialects into standard
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