UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSTRATEGY, INC.
`Petitioner,
`
`V.
`
`Patent of ZILLOW, INC.
`Patent Owner.
`
`Case IPR2013-00034
`
`Patent No. 7,970,674
`
`PATENT OWNER'S RESPONSE TO THE REVISED PETITION
`
`FOR INTER PARTES REVIEW
`
`56920-8901.USOO/LEGAL26906IS4.3
`
`

`

`Case IPR2013-00034
`
`Patent No. 7,970,674
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ..................................................................................... 2
`
`LIST OF EXHIBITS ................................................................................................. 4
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE ........................................... 5
`
`PATENT OWNER'S RESPONSE TO THE REVISED PETITION ........................ 6
`
`I.
`
`II.
`
`BACKGROUND ............................................................................................. 6
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 7
`
`III.
`
`FULL STATEMENT OF THE REASONS FOR THE RELIEF
`
`REQUESTED ................................................................................................. 8
`A.
`GOVERNING LAW, RULES, AND PRECEDENT ........................... 8
`i. Legal Standard for Anticipation ..................................................... 8
`ii. Legal Standard for Obviousness .................................................... 9
`iii. Claim Interpretation ..................................................................... 10
`iv. Requirements for a Petition under 37 C.F.R. § 42.104 ................ 12
`The '674 Patent.................................................................................... 12
`
`B.
`
`C.
`D.
`
`E.
`F.
`
`G.
`
`H.
`1.
`J.
`K.
`L.
`M.
`N.
`
`Dugan .................................................................................................. 14
`Kim ..................................................................................................... 1 6
`
`Construction of "user knowledgeable about the distinguished home"18
`Dugan Does Not Anticipate Claim 15 ................................................ 19
`i. Dugan does not disclose an "automatic valuation" ...................... 19
`Claim 2 is Not Obvious in Light of Dugan and Kim ......................... 24
`i. Dugan and Kim, alone or in combination, neither disclose nor
`suggest an "automatic valuation" ........................................................ 24
`ii.
`It would not have been obvious to replace an appraiser with an
`owner in an appraisal system .............................................................. 26
`Claim 8 is Not Obvious in Light of Dugan and Kim ......................... 28
`Claim 30 is Not Obvious in Light of Dugan and Kim ....................... 30
`Claims 13 and 14 are Not Obvious in Light of Dugan and Kim ........ 31
`Claim 27 is Not Obvious in Light of Dugan and Kim ....................... 32
`Claim 12 is Not Obvious in Light of Dugan, Kim, and Shinoda ....... 34
`Claim 34 is Not Obvious in Light of Dugan, Kim, and Sklarz .......... 35
`Claim 38 is Not Obvious in Light of Dugan, Kim, and Sklarz .......... 36
`
`IV.
`
`CONCLUSION ............................................................................................. 39
`
`56920-890] .USOO/LEGAL26906154.3
`
`1
`
`

`

`Cases
`
`TABLE OF AUTHORITIES
`
`Glaverbel Société Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554
`(Fed. Cir. 1995)
`
`Ex parte Levy, 17 U.S.P.Q.2d 1461, 1462 (Ed. Pat. App. & Interf. 1990)
`Atlas Powder Co. v. E]. duPont De Nemours, 750 F.2d 1569, 1574 (Fed. Cir.
`1984)
`
`KSR Int’l Co. v. Teleflex Inc., 550 US. 398, 418 (2007)
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
`
`Advanced Fiber Techs. Trust v. J&L Fiber Servs., Inc., 674 F.3d 1365, 1372-73
`(Fed. Cir. 2012)
`
`Omega Eng’g, Inc. v. Raytek Corp, 334 F.3d 1314, 1324 (Fed. Cir. 2003)
`
`Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. Cir.
`2008)
`
`Grober v. Mako Prods, Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012)
`
`Krippelz v. Ford Motor Co., 667 F.3d 1261, 1267 (Fed. Cir. 2012)
`
`In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
`
`In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997)
`
`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)
`
`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007)
`
`In re Rufi’, 256 F.2d 590, 118 USPQ 340 (CCPA 1958)
`
`In re Wada and Murphy, Appeal 2007-3733 (B.P.A.I. Jan. 14, 2008)
`
`CFMT, Inc. v. Yieldup Intern. Corp, 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`56920-8901.USOO/LEGAL26906154.3
`
`2
`
`

`

`Statutes
`
`35 U.S.C. § 102(b)
`
`35 U.S.C. § 103(a)
`
`Regulations
`
`37 C.F.R. § 42.23
`
`37 C.F.R. § 42.104
`
`Other
`
`Manual of Patent Examining Procedure (MPEP) § 2111
`
`Manual of Patent Examining Procedure (MPEP) § 2143
`
`Manual of Patent Examining Procedure (MPEP) § 2144
`
`56920-8901.USOO/LEGAL26906154.3
`
`3
`
`

`

`LIST OF EXHIBITS
`
`Zillow 2001 - Microstrategy, Inc. v. Zillow, Inc., Case IPR2013-00034 (Kilpatrick
`
`Declaration)
`
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`
`4
`
`

`

`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner did not submit a statement of material facts in its petition for inter
`
`partes review.
`
`Accordingly, Patent Owner cannot properly submit, under
`
`37 CPR. § 42.23, a statement of material facts in dispute.
`
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`5
`
`

`

`PATENT OWNER'S RESPONSE TO THE REVISED PETITION
`
`I.
`
`BACKGROUND
`
`On April 2, 2013 the Patent Trial and Appeal Board ("the Board") ordered
`
`an inter partes review of US. Patent No. 7,970,674 ("the '674 Patent," Exhibit
`
`No. 1001), finding that Petitioner had shown a reasonable likelihood that Petitioner
`
`would prevail with respect to at least one of the claims challenged in the Revised
`
`Petition. Specifically, the Board granted review on the following grounds:
`
`1)
`
`claims 15 and 17 of the '674 Patent are anticipated by US. Patent
`
`No. 5,857,174 to Dugan ("Dugan," Exhibit No. 1003);
`
`2)
`
`claims 2, 5-10, 13, 14, 16, 26, 27, 29-33, 35-37, 39, and 40 ofthe '674
`
`Patent are obvious in light of Dugan and US. Patent Publication
`
`No. 2005/0154657 by Kim et al. ("Kim," Exhibit No. 1004) under
`
`35 U.S.C. § 103(a);
`
`3)
`
`claims 11 and 12 are obvious in light of Dugan, Kim, and US. Patent
`
`Publication No. 2004/0049440 by Shinoda et al. ("Shinoda," Exhibit
`
`No. 1006) under 35 U.S.C. § 103(a);
`
`4)
`
`claim 28 is obvious in light of Dugan, Kim, and Internal Revenue
`
`Service Publication 946, How to Depreciate Property, 2004 ("IRS
`
`Pub. 946," Exhibit No. 1009) under 35 U.S.C. § 103(a); and
`
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`6
`
`

`

`5)
`
`claims 34 and 38 are obvious in light of Dugan, Kim, and US. Patent
`
`Publication No. 2002/00873 89 by Sklarz et a1.
`
`("Sklarz," Exhibit
`
`No. 1010) under 35 U.S.C. § 103(a).
`
`(Decision, Institution of Inter .Partes Review, Paper 17, Pages 12, 15, 21, 23, 24,
`
`and 26.)
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Patent Owner requests that the Board find that claims 2, 5—10, 13, 14, 16, 26,
`
`27, 29-33, 35-37, 39, 40 of the '674 Patent are patentable over the applied
`
`references. Specifically, Patent Owner requests that the Board find that:
`
`1) Dugan does not anticipate claims 15 and 17,
`
`2) the combination of Dugan and Kim does not render claims 2, 5-10, 13,
`
`14, 16, 26, 27, 29-33, 35-37, 39, and 40 obvious,
`
`3) the combination of Dugan, Kim, and Shinoda does not render claims 11
`
`and 12 obvious,
`
`4) the combination of Dugan, Kim, and IRS Pub 946 does not render
`
`claim 28 obvious, and
`
`5) the combination of Dugan, Kim, and Sklarz does not render claims 34
`
`and 38 obvious.
`
`56920-8901.USOO/LEGAL26906154.3
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`7
`
`

`

`III.
`
`FULL STATEMENT OF THE REASONS FOR THE RELIEF
`
`REQUESTED
`
`A. GOVERNING LAW, RULES, AND PRECEDENT
`
`i.
`
`Legal Standard for Anticipation
`
`The Board granted review of claims 15 and 17 under 35 U.S.C. § 102(b)
`
`over Dugan. 35 U.S.C. § 102(b) provides:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in
`this or a foreign country or in public use or on sale in this country,
`more than one year prior to the date of the application for patent in the
`United States .
`.
`.
`.
`
`Anticipation requires that each claim element must be identical to a corresponding
`
`element in the applied reference. Glaverbel Socie'té Anonyme v. Northlake Mktg.
`
`& Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). To establish a prima facie
`
`case of anticipation, one must identify Where "each and every facet of the claimed
`
`invention is disclosed in the applied reference." Ex parte Levy, 17 U.S.P.Q.2d
`
`1461, 1462 (Bd. Pat. App. & Interf. 1990). The failure to mention "a claimed
`
`element (in) a prior art reference is enough to negate anticipation by that
`
`reference." Atlas Powder Co. v. E]. duPont De Nemours, 750 F.2d 1569, 1574
`
`(Fed. Cir. 1984). Under these standards, claims 15 and 17 should not be found to
`
`be anticipated by Dugan.
`
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`8
`
`

`

`ii.
`
`Legal Standard for Obviousness
`
`The Board granted review of claims 2, 5-14, 16, 26-40 under 35 U.S.C.
`
`§ 103(a) over, among other references, Dugan and Kim.
`
`35 U.S.C. §103(a)
`
`provides:
`
`[a] patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented 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 subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
`
`"A patent claim is unpatentable under 35 U.S.C. §103(a) if the 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 subject matter pertains."
`
`Decision, Institution of Inter Partes Review, Paper 17, Page 12 (citing KSR Int’l
`
`Co. v. Teleflex Inc., 550 US. 398, 406 (2007)). To reject a claim for Obviousness,
`
`the asserted references must
`
`teach or suggest each and every claim feature:
`
`"Obviousness requires a suggestion of all limitations in a claim." In re Wada and
`
`Murphy, Appeal 2007-3733 (B.P.A.I. Jan. 14, 2008), (quoting CFMT, Inc. V.
`
`Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)); see also MPEP
`
`§ 2143.03 ("All words in a claim must be considered .
`
`. .. When evaluating claims
`
`for Obviousness under 35 U.S.C. 103, all the limitations of the claims must be
`
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`9
`
`

`

`considered and given weight") To present a prima facie case of obviousness, one
`
`must show that "there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue." KSR Int'l Co. v. Teleflex Inc., 550 US.
`
`398, 418 (2007). Relevant considerations may include "interrelated teachings of
`
`multiple patents; the effects of demands known to the design community or present
`
`in the marketplace; and the background knowledge possessed by a person having
`
`ordinary skill in the art." Id. The analysis "should be made explicit." Id.
`
`Under these standards, claims 2, 5-14, 16, and 26-40 are not obvious in light
`
`of the applied references because the applied references, if combined in the ways
`
`proposed by Petitioner, together fail to disclose or suggest each and every feature
`
`of any of the claims. Therefore, these claims should not be found to be obvious in
`
`light of the relied-upon references.
`
`iii.
`
`Claim Interpretation
`
`"The Patent and Trademark Office ('PTO') determines the scope of claims in
`
`patent applications not solely on the basis of the claim language, but upon giving
`
`claims their broadest reasonable construction 'in light of the specification as it
`
`would be interpreted by one of ordinary skill in the art.'" MPEP § 2111 (citing In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed.
`
`Cir. 2004). Furthermore, the "PTO applies to verbiage of the proposed claims the
`
`broadest reasonable meaning of the words in their ordinary usage as they would be
`
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`
`10
`
`

`

`understood by one of ordinary skill
`
`in the art,
`
`taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by the
`
`written description contained in applicant’s specification." MPEP § 2111 (citing In
`
`re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997)).
`
`"Thus the focus of the inquiry regarding the meaning of a claim should be what
`
`would be reasonable from the perspective of one of ordinary skill in the art. MPEP
`
`§ 2111 (citing In re Suitco Surface, Inc, 603 F.3d 1255, 1260 (Fed. Cir. 2010) and
`
`In re Buszard, 504 F .3d 1364 (Fed. Cir. 2007)). "If a patentee makes a clear and
`
`unambiguous disavowal of claim scope during prosecution, that disclaimer informs
`
`the claim construction analysis by 'narrow[ing] the ordinary meaning of the claim
`
`congruent with the scope of the surrender.” Advanced Fiber Techs. Trust v. J&L
`
`Fiber Servs., Inc., 674 F.3d 1365, 1372-73 (Fed. Cir. 2012) (quoting Omega Eng'g,
`
`Inc. v. Raytek Corp, 334 F.3d 1314, 1324 (Fed. Cir. 2003)); see also Computer
`
`Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. Cir. 2008).
`
`Such disclaimer applies to statements made both during the original prosecution,
`
`and during reexamination and, by extension, during the new Inter Partes Review
`
`proceeding. Grober v. Mako Prods, Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012);
`
`see also Krz'ppelz v. Ford Motor Co., 667 F.3d 1261, 1267 (Fed. Cir. 2012) ("As a
`
`result of these statements [in reexamination], [the patent owner] disclaimed lamps
`
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`1 1
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`lacking the limitations, and the limitations therefore became part of the properly
`
`construed claims")
`
`iv.
`
`Requirements for a Petition under 37 C.F.R. § 42.104
`
`37 CPR. §42.104 specifies the required contents for a Petition for Inter
`
`Partes Review. 37 CPR. § 42.104(b)(4) provides that, for each challenged claim:
`
`[t]he petition must specify where each element of the claim is found in
`the prior art patents or printed publications relied upon."
`
`B.
`
`The '674 Patent
`
`The '674 Patent provides a novel solution to the problem of "determin[ing]
`
`the value of real estate properties ('properties'), such as residential real estate
`
`property ('homes')," using an "automatic valuation" model. The '674 Patent, 1:17-
`
`19.
`
`"There is. .
`
`. no question that the '674 Patent is directed to an [automatic
`
`valuation model]." Kilpatrick Declaration, Exhibit No. 2001, 1] 28. An automatic
`
`valuation, as understood by those of ordinary skill in the art, is not an appraisal.
`
`An automatic valuation model generates "automatic valuations" "without any
`
`appraiser involvement," whereas to perform an appraisal, an "appraiser must
`
`control
`
`the appraisal process" and "oversee all aspects" thereof. Kilpatrick
`
`Declaration, Exhibit No. 2001,
`
`111} 12, 26, and 31.
`
`"[W]hile the appraiser may
`
`accept
`
`input
`
`from the homeowner,
`
`the appraisal guidelines require that
`
`the
`
`appraiser stay involved in the appraisal process." Kilpatrick Declaration, Exhibit
`
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`
`12
`
`

`

`No. 2001, 1131. Furthermore, "because an appraiser must control the appraisal
`
`process," the appraiser "would oversee all aspects of the appraisal, and would not
`
`simply allow the seller to revise data sets unilaterally." Kilpatrick Declaration,
`
`Exhibit No. 2001, 1] 31.
`
`Even with "automation assistance" (e.g.,
`
`laser measuring tools, GPS for
`
`location and mapping), "the traditional manual appraisal continues to be a very
`
`different process and report from a 'fully' automated AVM," which is never "100%
`
`automated or 'automatic."' Kilpatrick Declaration, Exhibit No. 2001, W 38 and 40.
`
`Moreover, "[n]o user of appraisal services would ever confuse a 'fully’ automated
`
`AVM with a traditional manual appraisal." Kilpatrick Declaration, Exhibit
`
`No. 2001, 1] 40.
`
`The '674 Patent describes a technique for "valuing homes that [is] responsive
`
`to owner input, as well as having a high level of accuracy," that is "generally free
`
`from subjective bias" and "does not require the services of a professional
`
`appraiser." The '674 Patent, 1:53-56 and 4:21-24 (emphasis added). Accordingly,
`
`the techniques described by the '674 Patent differ from appraisal techniques, which
`
`require appraiser control. Kilpatrick Declaration, Exhibit No. 2001, 1] 31. The '674
`
`Patent describes generating "automatic valuations" for properties or homes, which
`
`are not appraisals as understood by those of ordinary skill in the art. Kilpatrick
`
`Declaration, Exhibit No. 2001, W 12, 26, and 27.
`
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`C. Dugan
`
`"Dugan does not disclose an 'automatic valuation' as is claimed in the '674
`
`Paten " but, rather, "focuses on a conventional appraiser-focused approach to
`
`appraisal, which is very different from the automatic valuation model in the '674
`
`Patent." Kilpatrick Declaration, Exhibit No. 2001, 1141. Dugan describes an
`
`"appraisal method in which the buyer of a property assigns points to a subject
`
`property and each comparable property based upon an Ideal Point System (IPS)"
`
`that "measuresthe desirability of the real estate to buyers and sellers." Dugan,
`
`Abstract. Objects of Dugan's invention include providing an appraisal method that
`
`is 1) "highly efficient and trustworthy and can be relied upon by sellers, buyers,
`
`appraisers, bankers, investors, and the like," 2) "based upon the value a potential
`
`buyer places on the property," and 3) "unbiased and based upon independent
`
`information." Dugan, 4:30-40.
`
`To appraise a subject property, Dugan's technique first "adjusts the sales
`
`prices of each comparable property prior to deriving an appraised value for the
`
`subject property." Dugan, 4:5-7. The "appraiser and the prospective buyer of a
`
`property [each] assign .
`
`.
`
`. IPS values .
`
`.
`
`. based upon the desireability [sic] factors
`
`for each of five categories of elements," including location, neighborhood,
`
`facilities,_ improvements, and utility and appeal,
`
`to the subject property and
`
`comparable properties. Dugan, 4:65-5 :4 and 7:14-17.
`
`"The appraiser IPS values
`
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`14
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`

`

`142 are preferably based, at least in part, upon the buyer IPS values" and seller IPS
`
`values. Dugan, 10:9-12 and 57-58.
`
`"Once the IPS values are determined [for a
`
`property], the property may be subsequently used as a comparable property" and
`
`the "appraiser need only select a subject property and obtain the IPS values for the
`
`seller of the subject property" to calculate adjusted sales prices for the comparable
`
`property. Dugan, 5:5-12.
`
`For each comparable property, Dugan's system divides "total IPS values for
`
`[that] comparable property," preferably using the appraiser's IPS values, by "the
`
`IPS value for the subject property to obtain a composite adjustment ratio," and then
`
`multiplies "the adjustment ratio for each comparable property .
`
`.
`
`. by the sales price
`
`[for that comparable property] to obtain an adjusted sales price." Dugan, Abstract.
`
`For example, if a subject property has a total IPS value of 80, a first comparable
`
`property with a total IPS value of 60 would have an adjustment ratio of 1.333 (i.e.,
`
`80/60) and a second comparable property with a total IPS of 90 would have an
`
`adjustment ratio of 0.888 (i.e., 80/90). Thus, if the first and second comparable
`
`properties each had a sales price of $100,000, the first comparable property's
`
`adjusted sales price would be $133,333.33 for the purpose of valuing the subject
`
`property, while the second comparable property's adjusted sales price would be
`
`$88,888.88. These values could then be used to generate an appraisal or appraised
`
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`1 5
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`

`value for the subject property based on, for example, "the calculated average
`
`adjusted sales price" (e.g., ($133,333.33 + $88,888.88)/2 or $111,111.11).
`
`Although "the actual buyer and seller IPS values 140, 148 could be used to
`
`calculate an adjusted sales price," Dugan's technique "preferably relies upon the
`
`appraiser's IPS values 142 from the comparable and subject properties" because the
`
`"appraiser evaluates the property based, in part, on the seller or buyer's IPS values,
`
`140, 148 in order to best estimate the IPS values of a typical buyer or seller"
`
`
`whereas "the buyer and seller IPS values 140, 148 only represent the values for that
`
`particular buyer and seller, and not necessarily the typical buyer and seller."
`
`Dugan, 13:30-41. Thus, Dugan is directed to an appraisal system that appraises
`
`properties based on preferences of particular buyers or sellers.
`
`D. Kim
`
`Kim's "invention relates generally to property appraisal systems, and more
`
`particularly to condition scoring in a real estate property appraisal system." Kim,
`
`11 [0003]. Kim's "appraisal system collects and quantifies subjective information
`
`about the condition of a subject property as well as the conditions of potential
`
`comparable properties in order to evaluate this information using an appraiser
`
`valuation engine." Kim, 11 [0031].
`
`Once a subject property is identified, Kim's "appraiser valuation engine
`
`generates a condition and weighting page" that includes "the subject property
`
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`l 6
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`

`address, owner name, year of construction (YOC), sub-division information, and
`
`other characteristics" along with "data retrieved from a tax record database. .
`
`.
`
`which the user may verify and, if necessary, correct." Kim, 1] [0045].
`
`"The
`
`appraiser is then prompted to enter additional
`
`information,
`
`including special
`
`amenities, such as 'Pool' or 'Storm Windows', condition characteristics, such as
`
`'Needs Repair' and 'Updated Bathroom', location features, such as 'View' or Home
`
`Property', and other characteristics (all of which may be considered to have
`
`subjective 'condition' characteristics for the purposes of this description)" Kim,
`
`1] [0036] (emphasis added).
`
`After an appraiser "enter[s] subjective property information regarding a
`
`subject property into an appraisal system," Kim's technique extracts "key condition
`
`data" from the subjective condition characteristics" and categorizes elements of the
`
`key condition data "into one or more predefined condition categories, wherein each
`
`predefined condition category is associated with a condition contribution score."
`
`Kim,
`
`1H] [0008] and [0010].
`
`These "condition contribution scores" can be
`
`"combined and converted into a composite condition score, which may be used in
`
`identifying appropriate comparable properties and determining the value of the
`
`I
`subject property.‘ Kim, 1] [0037]. Kim's subjective condition scores serve as a
`
`basis for adjusting an estimated appraisal score of the subject property. Kim,
`
`1] [0095]-[0113] and Figure 14.
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`56920-8901.USOO/LEGAL26906154.3
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`17
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`E. Construction of "user knowledgeable about
`
`the distinguished
`
`home"
`
`"A claim in an unexpired patent shall be given its broadest reasonable
`
`construction in light of the specification of the patent
`
`in which it appears."
`
`37 C.F.R. § 42.100(b). "If a patentee makes a clear and unambiguous disavowal of
`
`claim scope during prosecution, that disclaimer informs the claim construction
`
`analysis by 'narrow[ing] the ordinary meaning of the claim congruent with the
`
`scope of the surrender.” Advanced Fiber Techs. Trust v. J&L Fiber Servs., Inc,
`
`674 F.3d 1365, 1372-73 (Fed. Cir. 2012) (quoting Omega Eng'g, Inc. v. Raytek
`
`Corp, 334 F.3d 1314, 1324 (Fed. Cir. 2003)); See also Computer Docking Station
`
`Corp. v. Dell, Inc, 519 F.3d 1366, 1374-75 (Fed. Cir. 2008). Such disclaimer
`
`applies to statements made both during the original prosecution, and during
`
`reexamination. Grober v. Mako Prods,
`
`Inc., 686 F.3d 1335, 1341 (Fed.
`
`Cir. 2012); see also Krippelz v. Ford Motor Co., 667 F.3d 1261, 1267 (Fed. Cir.
`
`2012) ("As a result of these statements [in reexamination], [the patent owner]
`
`disclaimed lamps lacking the limitations, and the limitations therefore became part
`
`of the properly construed claims") This doctrine applies to determine the meaning
`
`of "user knowledgeable about the distinguished home."
`
`The Board "construe[d] a 'user knowledgeable about
`
`the distinguished
`
`Ill
`
`home,
`
`as claim 15 recites,
`
`"to be any person 'knowledgeable about
`
`the
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`56920-8901.USOO/LEGAL26906154.3
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`1 8
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`

`

`distinguished home,’ and is not limited to the owner of a home or someone with
`
`equivalent knowledge to the owner of a home." Decision, Institution of Inter
`
`Partes Review, Paper 17, Pages 9-10. Patent Owner respectfully submits that any
`
`proper construction of this term must be limited to the owner of a home, or
`
`someone with equivalent knowledge, because Patent Owner has made a clear and
`
`unambiguous disavowal of any broader construction, or, if not deemed to have
`
`previously done so, at the very least herein expressly disclaims any construction
`
`that is broader than "the owner or a person with equivalent knowledge to the
`
`owner." Thus, the broadest reasonable interpretation of "user knowledgeable about
`
`the distinguished home," as claim 15 recites, is no broader than "the owner or a
`
`person with equivalent knowledge to the owner."
`
`F. Dugan Does Not Anticipate Claim 15
`
`i.
`
`Dugan does not disclose an "automatic valuation"
`
`Claim 15 recites an "automatic valuation" of a distinguished home.
`
`Petitioner points to Dugan at 4:31-34, 7:46-47, 8:30-60, and Figure 3 as disclosing
`
`an automatic valuation, pointing specifically to "appraisals" or "appraised values"
`
`as corresponding to the recited "automatic valuation." Revised Petition for Inter
`
`Partes Review, November 13, 2012, Pages 37-39. Dugan's "appraisals" and
`
`"appraised values" are not "automatic valuations," as understood by those of
`
`ordinary skill in the art.
`
`56920-890 I .USOO/LEGAL26906 I 54.3
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`1 9
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`

`

`As is known to those of ordinary skill in the art, "[i]n property valuation,
`
`there are basically two kinds of analyses:
`
`the traditional 'manual' appraisal (which
`
`is still most commonly used for individual property valuations) and the Automated
`
`(or "Automatic") Valuation Model, or AVM .
`
`.
`
`. ." Kilpatrick Declaration, Exhibit
`
`No. 2001, 1] 36.
`
`"An appraisal is conducted by an appraiser, while an automatic
`
`valuation model works 'automatically' based upon a data set, without appraiser
`
`involvement." Kilpatrick Declaration, Exhibit No. 2001, 11 12. Thus, the ordinary
`
`meaning of "automatic valuation," which is consistent with the '674 specification
`
`(e.g., the specification makes clear that appraiser involvement is unnecessary (The
`
`'674 Patent, 4:21-22», is sufficient to distinguish Dugan. To the extent that the
`
`Board does not recognize this ordinary meaning, however, Patent Owner hereby
`
`expressly disclaims any claim scope that would encompass computerized tools
`
`used by appraisers to perform appraisals.
`
`The relied-upon portions of Dugan describe appraisals, not automatic
`
`valuations at
`
`least because Dugan’s approach requires appraiser involvement.
`
`Dugan at 4:31-34 provides that Dugan‘s "appraisal method" can be "relied upon by
`
`sellers, buyers, appraisers, bankers, investors, and the like."
`
`(Emphasis added.)
`
`Dugan at 7:46-47 provides that an "operator may M a subject property."
`
`(Emphasis added.) Dugan at 8:30-60 describes techniques for determining
`
`"appraised values" based on comparable properties and allowing an operator to
`
`56920-8901 .USOO/LEGAL26906154.3
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`20
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`

`

`update a list of comparables to modify a "current appraisal evaluation" and perform
`
`more than one "appraisal." (Emphasis added.) As Petitioner points out, Figure 3
`
`illustrates a process that allows an operator to "iteratively appraise a subject
`
`property, revise the record of the subject property, and re-appraise the subject
`
`H
`property to account for the revision. Revised Petition for Inter Partes Review,
`
`November 13, 2012, Page 37. As discussed above, Dugan's appraisal technique
`
`includes
`
`1) an "appraiser and [a] prospective buyer of a property [each]
`
`assign[ing] .
`
`.
`
`. IPS values .
`
`.
`
`. based upon the desireability [sic] factors",and 2) an
`
`"appraiser need[ing] only [to] select a subject property and obtain the IPS values
`
`for the seller of the subject property. Dugan, 4:65-5:12. Because Dugan requires
`
`the involvement of an appraiser, Dugan's appraisals are not "automatic valuations"
`
`as understood by those of ordinary skill in the art. Accordingly, because each of
`
`the relied-upon portions of Dugan describes appraisals, Petitioner fails to identify
`
`any portion of Dugan that
`
`identically discloses an "automatic valuation," as
`
`claim 15 recites.
`
`Petitioner asserts that "[t]he appraisals described by Dugan are automatically
`
`calculated," pointing specifically to Dugan at 8:50-52, which describes that "[o]nce
`
`the selected records are to the appraiser's satisfaction...
`
`the system 10 will
`
`determine the appraised value.‘ Thus, even though Dugan's "appraised values"
`
`may be automatically calculated by a "system," Dugan's "appraised values" are still
`
`56920-8901.USOO/LEGAL269061543
`
`21
`
`

`

`appraisals that require "appraiser" oversight and, therefore, are not "automatic
`
`valuation[s]" as understood by those of skill in the art.
`
`Claim 15 further recites "automatically determining a refined valuation,"
`
`which "would be understood by a person of ordinary skill in the art as allowing a
`
`user to input the data directly into the automatic (aka 'automated') valuation model
`
`(AVM) (as opposed to simply reporting information to an appraiser working on a
`
`conventional
`
`appraisal)."
`
`Kilpatrick Declaration, Exhibit No. 2001,
`
`1] 26.
`
`Petitioner points to Dugan's discussion at 8:30-46 of an operator revising a list of
`
`comparable properties prior to generating an appraisal as disclosing this feature,
`
`asserting that "the user can adjust the comparable properties that were used by the
`
`system 10 in determining the previous appraisal value so that the revised appraisal
`
`
`value is based upon a different set of comparable properties." Revised Petition for
`
`Inter Partes Review, November 13, 2012, Page 39 (emphasis added).
`
`In other
`
`words, Petitioner again points to Dugan's appraisals as corresponding to the recited
`
`H
`"automatically determin[ed] refined valuation. However, Dugan's appraisals are
`
`not automatically determined refined valuations, as understood by those of skill in
`
`the art, at least because appraisals require appraiser oversight.
`
`Moreover, a person of ordinary skill in the would understand that the recited
`
`valuations (e.g., "automatic valuation" or "refined valuation") "refer to a market
`
`valuation" that "is not based on individual preferences of the buyer or seller, but on
`
`56920-8901.USOO/LEGAL26906IS4.3
`
`22
`
`

`

`the value generated by the data set." Kilpatrick Declaration, Exhibit No. 2001,
`
`1] 45 (emphasis added). Dugan, in contrast, describes a process for appraising a
`
`home based on subjective preferences of a particular buyer or seller. For example,
`
`Dugan describes that "buyer and seller IPS values 140, 148 could be used to
`
`calculate an adjusted sales price 156 and appraised value 158" but that the "present
`
`invention preferably relies upon the appraiser's
`
`IPS values 142 from the
`
`H
`comparable and subject properties. Dugan, 13:31-38. Dugan's appraiser IPS
`
`values, however are "based, in part, on the seller or buyer's IPS values," which
`
`"only represent the values for that particular buyer and seller." Dugan, 13:39-40.
`
`Thus, regardless of the IPS values used (e.g., buyer IPS values, seller IPS values,
`
`or appraiser IPS values), Dugan's appraisal is based on subjective preferences of a
`
`particular buyer or seller.
`
`"Since market value is a unique finding for a given
`
`subject property, the fact that a number of different values can come out of Dugan
`
`based on varying preference sets suggests something very different [than market
`
`value." Kilpatrick Declaration, Exhibit No. 2001, 1] 33. Accordingly, Dugan does
`
`not disclose the recited "automatic valuation" or "refined valuation," as one of
`
`ordinary skill in the art would interpret these terms, at least because Dugan does
`
`not disclose a market valuation that is not based on individual preferences of a
`
`particular buyer or seller. Kilpatrick Declaration, Exhibit No. 2001, 1111 45 and 46.
`
`56920-8901.USOO/LEGAL26906l54.3
`
`23
`
`

`

`Based on the foregoing, Patent Owner
`
`respectfully submits that
`
`the
`
`Petitioner has failed to identify where Dugan identically discloses each and every
`
`element of claim 15. Accordingly, Patent Owner respectfully requests that the
`
`Board find that Dugan does not anticipate claim 15 or its dependent claim 17.
`
`G. Claim 2 is Not Obvious in Light of Dugan and Kim
`
`i.
`
`Dugan and Kim, alo