Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 42
`
`Entered: March 27, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MICROSTRATEGY, INC.
`Petitioner
`
`v.
`
`ZILLOW, INC.
`Patent Owner
`____________
`
`Case IPR2013-00034
`Patent 7,970,674
`____________
`
`
`
`
`
`Before JAMESON LEE, JOSIAH C. COCKS, and
`MICHAEL W. KIM, Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 42
`
`Entered: March 27, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MICROSTRATEGY, INC.
`Petitioner
`
`v.
`
`ZILLOW, INC.
`Patent Owner
`____________
`
`Case IPR2013-00034
`Patent 7,970,674
`____________
`
`
`
`
`
`Before JAMESON LEE, JOSIAH C. COCKS, and
`MICHAEL W. KIM, Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2013-00034
`Patent 7,970,674
`
`I.
`
`INTRODUCTION
`
`
`
`MicroStrategy, Inc. (“Petitioner”) filed a petition on November
`
`13, 2012, requesting an inter partes review of claims 1-40 of U.S.
`
`Patent No. 7,970,674 (“the ‟674 patent”) pursuant to 35 U.S.C. §§
`
`311-319 Paper 7 (“Pet.”). Zillow, Inc. (“Patent Owner”) filed a
`
`patent owner preliminary response. Paper 16 (“Prelim. Resp.”).
`
`Taking into account Patent Owner‟s preliminary response, the Board
`
`determined that the information presented in the petition demonstrated
`
`that there was a reasonable likelihood that the challenged claims are
`
`unpatentable. Pursuant to 35 U.S.C. § 324, the Board instituted this
`
`trial on April 2, 2013, on the patentability of claims 2, 5-17, and 26-40
`
`of the ‟674 patent. Paper 17 (“Dec.”).
`
`During the trial, Patent Owner filed a patent owner response
`
`(Paper 24, “PO Resp.”), and Petitioner filed a reply to the patent
`
`owner response (Paper 28, “Reply”). An oral hearing was held on
`
`November 21, 2013.1
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This
`
`decision is a final written decision, under 35 U.S.C. § 318(a), on the
`
`patentability of claims 2, 5-17, and 26-40 of the ‟674 patent. We hold
`
`that claims 15 and 17 of the ‟674 patent are unpatentable under
`
`35 U.S.C. § 102(b), and that claims 2, 5-11, 13, 14, 16, 26, 28-33, 35-
`
`37, 39, and 40 are unpatentable under 35 U.S.C. § 103(a). We also
`
`
`
`1 A transcript of the oral hearing is included in the record as Exhibit
`3001.
`
`2
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`IPR2013-00034
`Patent 7,970,674
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`hold that Petitioner has not met its burden of proof, by a
`
`preponderance of the evidence, that claims 12, 27, 34, and 38 of
`
`the ‟674 patent are unpatentable.
`
`A. Related Proceedings
`
`Petitioner indicates that the ‟674 patent is involved in: Zillow,
`
`Inc. v. Trulia, Inc., Case No. 2:12-cv-1549 (W.D. Wash). Pet. 1. The
`
`‟674 patent also is subject to a covered business method patent review
`
`in CBM2013-00056.
`
`B. The ’674 patent
`
`The ‟674 patent states:
`
`[The invention] is directed to the field of electronic
`commerce techniques, and, more particularly, to the field
`of electronic commerce techniques relating to real estate.
`
`Ex. 1001, 1:9-12. As explained in the ‟674 patent, it is difficult to
`
`determine accurately a value for real estate properties. The most
`
`reliable method for valuing a home, if it recently was sold, is to regard
`
`the selling price as its value. Ex. 1001, 1:25-26. Only a small
`
`percentage of homes, however, are sold at any given time. Ex. 1001,
`
`1:26-30. Another widely used approach is professional appraisal. Ex.
`
`1001, 1:33-34. Appraisals are subjective, however, and they “[are]
`
`expensive, can take days or weeks to complete, and may require
`
`physical access to the home by the appraiser.” Ex. 1001, 1:37-44.
`
`Moreover, designing automatic valuation systems that only consider
`
`3
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`IPR2013-00034
`Patent 7,970,674
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`information available from public databases may be inaccurate. Ex.
`
`1001, 1:45-51. Accordingly, the ‟674 patent discloses an approach
`
`where valuing homes is responsive to owner input, allegedly resulting
`
`in a more accurate, inexpensive, and convenient valuation. Ex, 1001,
`
`1:52-56.
`
`Claims 2 and 15 are independent. Claims 5-8 and 14 depend
`
`directly from claim 2; claims 9-13 depend indirectly from claim 2;
`
`claims 16, 17, 26, 29, 30, and 40 depend directly from claim 15; and
`
`claims 27, 28, and 31-39 depend indirectly from claim 15. Claim 15,
`
`reproduced below, is illustrative of the claimed subject matter of the
`
`‟674 patent.
`
`15. A method in a computing system for
`refining an automatic valuation of a distinguished home
`based upon input from a user knowledgeable about the
`distinguished home, comprising:
`
`obtaining user input adjusting at least one aspect of
`information about the distinguished home used in the
`automatic valuation of the distinguished home;
`
`automatically determining a refined valuation of
`the distinguished home that is based on the adjustment of
`the obtained user input; and
`
`the
`presenting
`distinguished home.
`
`refined
`
`valuation
`
`of
`
`the
`
`C. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Dugan
`Kim
`
`
`
`US 5,857,174
`US 2005/0154657
`
`Jan. 5, 1999
`July 14, 2005
`
`Ex. 1003
`Ex. 1004
`
`4
`
`
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`IPR2013-00034
`Patent 7,970,674
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`US 2004/0049440
`US 2002/0087389
`
`Shinoda
`Sklarz
`
`Internal Revenue Service Publication 946, How to Depreciate
`Property (“IRS Pub. 946”) 2004
`
`
`
`Ex. 1009
`
`Mar. 11, 2004
`July 4, 2002
`
`Ex. 1006
`Ex. 1010
`
`D. Grounds of Unpatentability
`
`The Board instituted inter partes patent review of the ‟674
`
`patent based on the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`15 and 17
`
`§ 102
`
`Dugan
`
`2, 5-10, 13, 14, 16,
`26, 27, 29-33, 35-
`37, 39, and 40
`
`§ 103
`
`Dugan and Kim
`
`11 and 12
`
`§ 103
`
`Dugan, Kim, and Shinoda
`
`28
`
`§ 103
`
`Dugan, Kim, and IRS Pub. 946
`
`34 and 38
`
`§ 103
`
`Dugan, Kim, and Sklarz
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light
`
`of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012). Claim terms are also given their ordinary and
`
`5
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`IPR2013-00034
`Patent 7,970,674
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`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).
`
`If an inventor acts as his or her own lexicographer, the
`
`definition must be set forth in the specification with reasonable
`
`clarity, deliberateness, and precision. Renishaw PLC v. Marposs
`
`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
`
`If a feature found in the specification is not necessary to give
`
`meaning to what the inventor means by a claim term, it would be
`
`“extraneous” and should not be read into the claim. Renishaw PLC,
`
`158 F.3d at 1249; E.I. du Pont de Nemours & Co. v. Phillips
`
`Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The
`
`construction that stays true to the claim language and most naturally
`
`aligns with the inventor‟s description is likely the correct
`
`interpretation. Renishaw PLC, 158 F.3d at 1250.
`
`1. “automatic valuation of a distinguished home”
`
`Independent claim 15 recites “automatic valuation of a
`
`distinguished home.” As reflected in their analysis of the prior art,
`
`Patent Owner asserts that “automatic valuation of a distinguished
`
`home” should be construed as an Automated Valuation Model
`
`(“AVM”), which Patent Owner contends is a term of art indicating a
`
`particular valuation model that includes very specific features, such as
`
`an absence of an appraiser, a regression based on values generated by
`
`a data set, and a capability of performing mass valuations. PO Resp.
`
`6
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`IPR2013-00034
`Patent 7,970,674
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`19-26. Petitioner counters that “automatic valuation of a
`
`distinguished home” is not a term of art, and should be construed as “a
`
`calculation of a value of a distinguished property or home performed
`
`without human intervention.” Reply 5-9. We agree with Petitioner
`
`for the reasons set forth below.
`
`The Specification of the ‟674 patent does not set forth expressly
`
`a definition of “automatic valuation.” Nor is it apparent what
`
`definition is implicit within the Specification. The parties also do not
`
`identify any prosecution history that purportedly would offer a
`
`definition for the term. Instead, Petitioner proposes that “automatic
`
`valuation of a distinguished home” should be construed with its
`
`ordinary and customary meaning as “a calculation of a value of a
`
`distinguished property or home performed without human
`
`intervention.” For support, Petitioner cites the testimony of their
`
`expert, Dr. Borst (Ex. 1023 ¶¶ 13-18). This construction is consistent
`
`with the Specification, which discloses using computer system 100 to
`
`perform home valuations (Ex. 1001, Fig. 1), and thus is appropriately
`
`broad and reasonable in light of the Specification, as required by our
`
`rules. It is also consistent with dictionary definitions of “automatic”2
`
`
`
`2 automatic: pertaining to a function, operation, process, or device
`that, under specified conditions, functions without intervention by a
`human operator. THE AUTHORITATIVE DICTIONARY OF IEEE
`STANDARDS TERMS 64 (7th ed. 2000).
`7
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`IPR2013-00034
`Patent 7,970,674
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`and “valuation”3 which, when combined for a definition of “automatic
`
`valuation,” results in the following: pertaining to an estimation or
`
`determination of a market value of a thing that, under specified
`
`conditions, functions without intervention by a human operator.
`
`Accordingly, we construe “automatic valuation of a distinguished
`
`home” as “a calculation of a value of a distinguished property or home
`
`performed without human intervention.”
`
`Patent Owner asserts that one of ordinary skill would have
`
`understood “automatic valuation” more narrowly as a term of art
`
`indicating an AVM or “computer assisted mass appraisal”
`
`(“CAMA”). For support, Patent Owner cites the testimony of their
`
`expert Dr. Kilpatrick and the cross-examination testimony of
`
`Petitioner‟s expert Dr. Borst, and further asserts that the Specification
`
`discloses only one type of “automatic valuation”: an AVM. PO Resp.
`
`12-13. Petitioner counters that the Specification including the claims
`
`does not recite the term “AVM.” Petitioner further counters that
`
`because AVMs were known at the time of the invention, if Patent
`
`Owner desired to limit “automatic valuation” to an AVM, either the
`
`claims should recite “AVM,” or the Specification should expressly
`
`define “automatic valuation” as an AVM. Petitioner cites the
`
`testimony of Dr. Borst in support of this position, who in turn cites
`
`several industry documents as extrinsic evidence in support. Ex. 1023
`
`
`
`3 valuation: the estimated or determined market value of a thing.
`MERRIAM WEBSTER‟S COLLEGIATE DICTIONARY 1382 (11th ed. 2003).
`8
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`IPR2013-00034
`Patent 7,970,674
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`¶¶ 13-18. After reviewing all arguments and the testimony of both
`
`Dr. Kilpatrick and Dr. Borst, we credit the testimony of Dr. Borst over
`
`that of Dr. Kilpatrick, and thus, agree with Petitioner. See Yorkey v.
`
`Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010).
`
`The testimony of Dr. Kilpatrick and the cross-examination of
`
`the testimony of Dr. Borst cited by Patent Owner concerning this
`
`construction largely falls into three categories, which collectively are
`
`insufficient to outweigh the contrary testimony of by Dr. Borst. First,
`
`Dr. Kilpatrick testifies that there are two types of valuations:
`
`traditional appraisals and AVMs. Ex. 2001 ¶¶ 26, 36, 40. It is not
`
`apparent how that assertion supports Patent Owner‟s position that
`
`“automatic valuation” is a term of art indicating an AVM. Dr.
`
`Kilpatrick does not state that traditional appraisals are not automatic,
`
`or that, aside from AVMs, there are no other automatic types of
`
`valuation. Even assuming such conclusions are what Dr. Kilpatrick
`
`intended to draw, we are not persuaded by his testimony, for reasons
`
`discussed below.
`
`Patent Owner has asserted throughout this proceeding that
`
`traditional appraisals require an appraiser, and that AVMs have very
`
`specific features such as the absence of an appraiser, a regression
`
`based on values generated by a data set, and a capability of
`
`performing mass valuations. Given those positions, it logically
`
`follows that traditional appraisals and AVMs do not cover the
`
`universe of valuations. For example, a valuation conducted by a non-
`
`9
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`IPR2013-00034
`Patent 7,970,674
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`appraiser but without regression would not fall into either category.
`
`Accordingly, given that AVMs cannot logically occupy all the space
`
`in the valuation universe unoccupied by traditional appraisals, we are
`
`not persuaded that every automatic valuation - something that is not a
`
`traditional appraisal - is covered by AVM, which Patent Owner
`
`asserts is synonymous with “automatic valuation.”
`
`Second, Dr. Kilpatrick testifies that Dugan does not disclose an
`
`AVM. Ex. 2001. ¶¶ 33, 41, 45. It is not apparent how this assertion is
`
`relevant to Patent Owner‟s position that “automatic valuation” is a
`
`term of art indicating an AVM. Patent Owner appears to be asserting
`
`that because Dugan discloses traditional appraisals, it does not
`
`disclose an AVM, but that is inapposite to the claim construction of
`
`“automatic valuation.”
`
`Third, Patent Owner cites the testimony of Dr. Kilpatrick and
`
`the cross-examination testimony of Dr. Borst as supporting the
`
`proposition that the only type of “automatic valuation” disclosed in
`
`the Specification is an AVM. Ex. 2001 1013 ¶ 12; Ex. 2016, 60:2-5,
`
`61:5-6. That alleged fact is not disputed by Petitioner. Patent Owner
`
`appears to be asserting that, because the Specification only discloses
`
`an AVM, this lone embodiment in the Specification should be
`
`imported into the claims. We decline to do so. CollegeNet, Inc. v.
`
`ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (stating that
`
`while the specification can be examined for proper context of a claim
`
`term, limitations from the specification will not be imported into the
`
`10
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`IPR2013-00034
`Patent 7,970,674
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`claims). Indeed, the Specification recites the following: “[w]hile the
`
`foregoing description makes reference to particular embodiments, the
`
`scope of the invention is defined solely by the claims that follow and
`
`the elements recited therein.” Ex. 1001, 19:23-26.
`
`Alternatively, Patent Owner indicates that they disavow
`
`expressly, in this proceeding, any claim scope of “automatic
`
`valuation” that is broader than an AVM, and that the Board should
`
`take this express disavowal into account and construe “automatic
`
`valuation” as an AVM. Patent Owner cites several cases that they
`
`assert both support and oppose their position that an adjudicative body
`
`can take such express disavowals into account in the same proceeding
`
`in which the disavowal was made. Petitioner asserts that it would be
`
`unfair and confusing to Petitioner and the public to permit Patent
`
`Owner to disavow claim scope in this manner, especially where Patent
`
`Owner has the option of amending their claim to clarify claim scope.
`
`We agree with Petitioner.
`
`Generally speaking, in applying for a patent, Patent Owner is
`
`requesting a right to exclude others that is provided by the United
`
`States government. In return, it is incumbent upon Patent Owner to
`
`define adequately the limits of that right to exclude through claims,
`
`such that the public is on notice as to the scope of that right.
`
`We are not aware of any proceeding where a tribunal has taken
`
`into account a disavowal made in the same proceeding (“same
`
`proceeding disavowal”). Instead, we are only aware of situations
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`11
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`IPR2013-00034
`Patent 7,970,674
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`where a tribunal has taken into account disavowals made in prior,
`
`completed proceedings. Specifically, in district court infringement
`
`suits, claims have a presumption of validity. And as district courts are
`
`tasked with construing claims with an eye toward preserving their
`
`validity over the prior art, the district court considers all materials at
`
`its disposal, which would include the prosecution history, and,
`
`specifically, any previous disavowals made by the patentee that are set
`
`forth in the prosecution history.
`
`Furthermore, even if a tribunal were permitted, generally, to
`
`take into account a disavowal made during the same proceeding, as
`
`opposed to a prior, completed proceedings, absent extraordinary
`
`circumstances, we are not persuaded that such same proceeding
`
`disavowals are proper in a proceeding where amendments are
`
`available. This is because when claim amendments are available, a
`
`patent owner has an opportunity to amend claims to a scope it desires,
`
`so as to have the substance of any purported same proceeding
`
`disavowal reflected in the claim language expressly. The public
`
`should not be burdened with inadequate notice concerning the scope
`
`of claims, where the Patent Owner has been provided with an
`
`opportunity to amend claims to reflect the scope it desires. If Patent
`
`Owner chooses not to avail itself of the opportunity to amend, it is
`
`reasonable to accord the claims their scope under the broadest
`
`reasonable construction, without regard to the substance of any same
`
`proceeding disavowal.
`
`12
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`IPR2013-00034
`Patent 7,970,674
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`Patent Owner cites the following cases to show that federal
`
`courts have relied on statements made in pending re-examination
`
`proceedings in construing claims: Grober v. Mako Prods., Inc., 686
`
`F.3d 1335, 1341-42 (Fed. Cir. 2012); RMail Ltd. v. Amazon.com, Inc.,
`
`2013 WL 968246, at *2, *20 (E.D. Tex. March 12, 2013); Life Techs.
`
`Corp. v. Illumina, Inc., 2010 WL 5343177, at *18 (D. Del. Dec. 15.
`
`2010). Patent Owner‟s citations are inapposite, because the patent
`
`owner in the aforementioned cases did not have the opportunity to
`
`amend their claims in the same proceeding. Patent Owner may be
`
`asserting that when the federal courts construe the claims, the federal
`
`courts will take into account any express disavowals of claim scope
`
`made before the Board. As we are the tribunal before which such
`
`disavowals are made and not a court reviewing such proceedings,
`
`Patent Owner‟s assertion is inapposite. Patent Owner‟s same
`
`proceeding disavowal here is a post-litigation position, which does not
`
`affect our broadest reasonable construction of claim terms. Also,
`
`absent extraordinary circumstances, which are absent here, same
`
`proceeding disavowals do not apply where the patent owner has an
`
`opportunity to amend the claims to limit their scope to that
`
`commensurate with an application of the desired same proceeding
`
`disavowal.
`
`Patent Owner further cites the following cases to show that a
`
`disavowal may be considered in pending examination appeals and re-
`
`examination proceedings, and thus should also be considered in the
`
`13
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`IPR2013-00034
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`instant proceeding: Tempo Lighting, Inc. v. Patent of Tivoli LLC,
`
`2012 WL 627809, at *3 (BPAI Feb. 24, 2012); Ex Parte Jacobus,
`
`2009 WL 2137370, at *4-5 (BPAI July 16, 2009); Ex Parte Aloni,
`
`2013 WL 3324253, at *2, n. 1 (PTAB May 14, 2013). We are not
`
`persuaded. Concerning whether the PTO should consider disavowals,
`
`generally, our reviewing court has held the following: “[t]his court
`
`also observes that the PTO is under no obligation to accept a claim
`
`construction proffered as a prosecution history disclaimer, which
`
`generally only binds the patent owner.” Tempo Lighting, Inc. v.
`
`Patent of Tivoli LLC, ___ F.3d ___, 2014 WL 503128, at *4 (Fed. Cir.
`
`2014). Moreover, while in a reexamination proceeding conducted at
`
`the PTO prior to appeal, the patent owner has an opportunity to amend
`
`the claims, when the reexamination is appealed to the Board,
`
`however, prosecution has closed. Thus, consideration of disavowals,
`
`made at an earlier stage during prosecution, by the Board during a
`
`reexamination appeal, may be appropriate. In the instant proceeding,
`
`however, Patent Owner has an opportunity to amend the claims to
`
`make the scope of the same proceeding disavowal manifest. If Patent
`
`Owner chooses not to avail themselves of this opportunity, it is
`
`reasonable to resolve any claim ambiguity against Patent Owner,
`
`notwithstanding any same proceeding disavowal.
`
`At oral hearing, Patent Owner explained its reasons for not
`
`amending its claims in the following exchange:
`
`14
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`IPR2013-00034
`Patent 7,970,674
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`JUDGE LEE: Why didn‟t you amend your claims to say
`automatically determining a valuation for a subject home
`without substantial involvement of an appraiser?
`
`MR. AL-SALAM: Because we felt that was implicit based on
`the disclosure --
`
`JUDGE LEE: But it would take you a few pages in an
`amendment with hardly anything more to argue.
`
`MR. AL-SALAM: But that would suggest an admission that it
`was not already -- it would not already be construed in that
`manner by somebody of ordinary skill in the art.
`
`JUDGE LEE: But it‟s a substitution amendment. It‟s a
`contingent. You know, if the Board didn't agree with you, you
`end up with that claim.
`
`MR. AL-SALAM: I understand and certainly that is something
`we could do. These claims are in litigation, so making that
`amendment would suggest that we‟re admitting that already the
`claims would not be construed to --
`
`JUDGE LEE: All right. So, that‟s a litigation choice.
`
`Ex. 3001, 62:17-63:11. Patent Owner‟s choice limits its options, but
`
`it is free to make that choice. In this case, the Board does not accept
`
`Patent Owner‟s same proceeding disavowal as a basis to alter the
`
`meaning of claims which have been properly construed under a
`
`broadest reasonable construction. Patent Owner has presented no
`
`persuasive arguments to permit it to take the route of same proceeding
`
`disavowal, rather than to file a motion to amend claims so that the
`
`claim scope reflects the desired scope after application of the same
`
`proceeding disavowal.
`
`15
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`IPR2013-00034
`Patent 7,970,674
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`Patent Owner additionally asserts the following:
`
`In exhibit ZILLOW 2016, at 145:21-149:10,
`[Petitioner‟s expert] Dr. Borst testified that several of his
`earlier publications related to mass appraisal and CAMA
`systems do not use the word “AVM” and that a CAMA
`system is fundamentally the same as an AVM. This
`testimony is relevant to the assertion on page 6 of the
`Reply that “the term of art „Automated Valuation Model‟
`was not included anywhere in the specification of
`[Cheng], nor was it ever before mentioned by the Patent
`Owner during the original prosecution of [Cheng].” The
`testimony is relevant because it illustrates that an AVM
`system can be described, and has been described, without
`using the terms “AVM” or “Automated Valuation
`Model.”
`
`Paper 31 at 1-2. Patent Owner‟s assertion is inapposite. We agree
`
`that AVM can be described in other terms such as “mass appraisal”
`
`and “CAMA.” However, independent claim 15 does not recite those
`
`terms; it recites “automatic valuation.” Patent Owner has not shown
`
`adequately that “automatic valuation” is a term of art indicating an
`
`AVM.
`
`Patent Owner asserts that “automatic valuation” refers to a
`
`“market valuation [that] is not based on individual preferences of the
`
`buyer or seller, but on the value generated by the data set.”
`
`PO Resp. 22-23 (citing Ex. 2001 ¶¶ 45, 46) (emphasis omitted).
`
`Petitioner asserts that neither Patent Owner nor Dr. Kilpatrick cite any
`
`intrinsic or extrinsic evidence in support of their assertions. We agree
`
`with Petitioner. As referenced earlier in the Declaration of Dr.
`
`16
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`IPR2013-00034
`Patent 7,970,674
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`Kilpatrick, a value generated by a data set is a feature of an AVM.
`
`Ex. 2001 ¶ 12. As set forth above, we are not persuaded that
`
`“automatic valuation” is a term of art indicating an AVM.
`
`Furthermore, Patent Owner‟s assertion and Dr. Kilpatrick‟s testimony
`
`that “automatic valuation” refers to a “market valuation [that] is not
`
`based on individual preferences of the buyer or seller” appears in a
`
`context of distinguishing Dugan in a conclusory manner, which we do
`
`not prescribe much weight. Neither Patent Owner nor Dr. Kilpatrick
`
`explains how the Specification or the state of the art supports this
`
`construction. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir.
`
`2003) (“In giving more weight to prior publications than to
`
`subsequent conclusory statements by experts, the Board acted well
`
`within [its] discretion”). Indeed, in preceding paragraphs 42-44 of the
`
`Declaration, Dr. Kilpatrick testifies “[t]here is no one universally-
`
`accepted standard definition of market value,” casting doubt on the
`
`assertion that all plausible definitions of “automatic valuation,” in the
`
`context of the Specification, would exclude market valuation based on
`
`individual preferences of the buyer or seller.
`
`Patent Owner and Petitioner dispute whether an AVM includes
`
`various features, such as an absence of an appraiser, a regression
`
`based on values generated by a data set, and a capability of
`
`performing mass valuations. However, the disagreement is
`
`inconsequential, because we have determined that the recited
`
`17
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`IPR2013-00034
`Patent 7,970,674
`
`limitation “automatic valuation” is not a term of art that indicates an
`
`AVM.
`
`Apart from whether “automatic valuation” is an AVM, Patent
`
`Owner asserts the following:
`
`MR. AL-SALAM: As Cheng [the ‟674 patent] itself
`says, Cheng itself defines automatic valuation. I mean, I
`keep hearing that Cheng didn‟t tell us what automatic
`valuation means when I think it‟s very clear it does. It
`tells us precisely that automatic valuation is based on
`what‟s in a public database and without input from a
`homeowner or presumably
`from anybody
`that‟s
`knowledgeable about the property, such as an appraiser
`who could become knowledgeable if he or she were
`going to do an appraisal inspection.
`
`Ex. 3001, 40:1-8. In effect, Patent Owner asserts that the inventor
`
`acted as his or her own lexicographer, and that the Specification
`
`defines “automatic valuation” to include very specific features. We
`
`disagree. If an inventor acts as his or her own lexicographer, the
`
`definition must be set forth in the specification with reasonable
`
`clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at
`
`1249. To that end, Patent Owner cites the following portion of the
`
`Specification as defining “automatic valuation”:
`
`While it might be possible to design systems that
`automatically value homes, such automatic valuations
`would generally be performed based upon the contents of
`a public database, and without input from each home's
`owner or other information not in the public database.
`
`18
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`IPR2013-00034
`Patent 7,970,674
`
`Ex. 1001, 1:45-49 (quoted at Ex. 3001, 46:1-47:5, 62:3-10) (emphasis
`
`added). However, this disclosure in the Specification does not rise to
`
`the level of a definition because the use of the word “systems”
`
`indicates that there is more than one type of “automatic valuation,”
`
`and the purported definition is qualified by the term “generally.” This
`
`was confirmed by Patent Owner as follows:
`
`JUDGE LEE: We‟re beginning to understand. So, AVM
`is just a name that people tag onto automatic valuation.
`It‟s not as though there's some other AVM model of, you
`know, having this algorithm. It‟s just a name people --
`
`MR. AL-SALAM: It is a name --
`
`JUDGE LEE: -- automatic valuation.
`
`MR. AL-SALAM: It is a name that had become more
`and more accepted as the term to cover a generic -- not a
`generic, but a class of automatic valuations. There are
`different types of automatic valuations and AVM –
`
` So it doesn't cover all automatic
`JUDGE LEE:
`valuations. Some are excluded from the term AVM?
`
`MR. AL-SALAM: I would say it covers all automatic
`valuations that have the properties that I‟ve mentioned;
`those properties being there‟s not an appraiser involved.
`
`Ex. 3001, 50:15-51:5. As is evident from the above-noted exchange
`
`between the Board and counsel, any special “definition” stemming
`
`from the Specification is less than reasonably clear, deliberate, and
`
`precise. See Renishaw PLC, 158 F.3d at 1249. If anything, it
`
`indicates that “automatic valuation” covers more than AVM.
`
`19
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`IPR2013-00034
`Patent 7,970,674
`
`By a preponderance of the evidence, we determine that
`
`“automatic valuation of a distinguished home” is not a term of art and
`
`was not defined in the Specification, and thus should be construed
`
`broadly, but reasonably, as “a calculation of a value of a distinguished
`
`property or home performed without human intervention.”
`
`Independent claim 2 recites “automatic valuation of a
`
`distinguished property.” For the same reasons as set forth above, we
`
`construe “automatic valuation of a distinguished property” broadly,
`
`but reasonably, as “a calculation of a value of a distinguished property
`
`or home performed without human intervention.”
`
`2. “user knowledgeable about the distinguished home”
`
`Independent claim 15 recites “user knowledgeable about the
`
`distinguished home.” The Board construed “user knowledgeable
`
`about the distinguished home” as any person “knowledgeable about
`
`the distinguished home,” not limited to the owner of a home or
`
`someone with equivalent knowledge to the owner of a home. Dec. 9-
`
`10. Patent Owner asserts “user knowledgeable about the
`
`distinguished home” should be construed as “the owner or a person
`
`with equivalent knowledge to the owner,” because Patent Owner has
`
`expressed in this proceeding a disavowal of any broader construction.
`
`PO Resp. 18-19. Petitioner asserts that it would be unfair and
`
`confusing to Petitioner and the public to permit Patent Owner to
`
`disavow claim scope in this manner, especially where Patent Owner
`
`has the option of amending their claim to reflect a claim scope that
`
`20
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`
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`IPR2013-00034
`Patent 7,970,674
`
`takes into account the substance of the same proceeding disavowal.
`
`Reply 2-5. Again, we agree with Petitioner. Our analysis as to the
`
`impropriety of same proceeding disavowals is set forth above in the
`
`analysis of our construction of “automatic valuation,” and thus need
`
`not be repeated here.
`
`Through their analysis of the prior art, Patent Owner attempted
`
`to distinguish an appraisal from “automatic valuation.” For example,
`
`at oral hearing, Patent Owner stated as follows:
`
`MR. AL-SALAM: We believe that based on the
`specification,
`the only reasonable
`interpretation of
`automatic valuation in Cheng is that valuation is done
`without any appraiser input.
`
`Ex. 3001, 33:12-14. We are not persuaded, for the reasons set forth
`
`above. However, although the above assertions were set forth in
`
`another context, we believe those assertions are applicable to a proper
`
`construction of “user knowledgeable about the distinguished home.”
`
`To that end, we are persuaded that in light of the Specification, a
`
`broadest reasonable construction of “user knowledgeable about the
`
`distinguished home” excludes appraisers. Specifically, the
`
`Specification discloses the shortcomings of appraisals done by
`
`appraisers, and excludes appraisers from the list of user from which
`
`input is sought. Ex. 1001, 1:33-44, 2:64-67, 3:64-67, 4:5-10, 4:21-24.
`
`Indeed, Petitioner does not dispute its own expert Dr. Borst‟s cross-
`
`examination testimony that the process described in the Specification
`
`21
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`IPR2013-00034
`Patent 7,970,674
`
`does not result in an appraisal. Paper 34 at 4-5 (citing Ex. 1023 ¶ 31;
`
`Ex. 2016, 120:2-21).
`
`We modify our previous construction of “user knowledgeable
`
`about the distinguished home” to the following: “any person, other
`
`than an appraiser, knowledgeable about the distinguished home.”
`
`Under this construction, such a person is not limited to the owner of a
`
`home or someone with equivalent knowledge to the owner of a home.
`
`Independent claim 2 recites “obtaining user input from the
`
`owner.” For the same reasons as set forth above, we determine that
`
`“obtaining user input from the owner” excludes obtaining user input
`
`from an appraiser.
`
`3. “owner . . . of the distinguished property”
`
`Independent claim 2 recites “owner . . . of the distinguished
`
`property.” Petitioner sets forth a claim construction of “owner” as
`
`“seller.” Pet. 12, 37, 40-41. The Board construed “owner . . . of the
`
`distinguis
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