UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSTRATEGY, INC.
`Petitioner
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`v.
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`ZILLOW, INC.
`Patent Owner
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`Case IPR2013-00034
`Patent 7,970,674
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`PETITIONER RESPONSE TO
`PATENT OWNER'S OBSERVATIONS ON CROSS EXAMINATION OF
`DR. RICHARD A. BORST, Ph. D.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSTRATEGY, INC.
`Petitioner
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`v.
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`ZILLOW, INC.
`Patent Owner
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`Case IPR2013-00034
`Patent 7,970,674
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`PETITIONER RESPONSE TO
`PATENT OWNER'S OBSERVATIONS ON CROSS EXAMINATION OF
`DR. RICHARD A. BORST, Ph. D.
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`Case IPR2013-00034
`Attorney Docket No: 30693-0090IP1
`In Observation (1), Zillow asserts that the testimony at 60:2-5 and 61:5-6 of Ex. 2016
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`1.
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`“contradicts the assertions on page 6 of the Reply and page 5 of the Declaration of Dr.
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`Richard Borst.” Paper 31, p. 1. However, at 60:22-24 of Ex. 2016, Dr. Borst recognized the
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`distinction between the claims and the description of the preferred embodiment. Moreover,
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`at 116:6-13 of Ex. 2016, Dr. Borst testified that the claims do not use the terms “automated
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`valuation model” or “AVM.” At 117:10-20 of Ex. 2016, Dr. Borst also testified that there was
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`evidence that the inventors of this patent were familiar with the term of art “AVM.” This
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`testimony is relevant, because it shows that Dr. Borst applied the broadest reasonable
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`interpretation standard when construing the claim language, and did not improperly import
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`the details of the specification into the claim language, as Zillow attempts to do. Thus, Dr.
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`Borst’s testimony at 60:2-5 and 61:5-6 does not contradict the assertions on page 6 of the
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`Reply and page 5 of the Declaration of Dr. Richard Borst.
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`2.
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`In Observation (3), Zillow asserts that the testimony at 27:15-28:13, 50:9-53:10, and
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`113:11-22 of Ex. 2016 “illustrates that Dugan's system does not automatically select
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`comparables in the manner of a comparable sales analysis AVM.” However, at 92:10-20,
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`Dr. Borst indicated that, in an AVM used “in [the] assessment and in [the] lending world,”
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`users “do select their own comps, if they don't like the ones that have been selected.” Ex.
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`2016, 92:10-20. Moreover, at 40:18 to 41:3 of Ex. 2016, Dr. Borst testifies that, even
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`though Dugan does not specifically describe mass appraisal, its system has the
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`Case IPR2013-00034
`Attorney Docket No: 30693-0090IP1
`components necessary for “automated comparable sales selection.” Most importantly,
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`however, the term “CSA AVM” is not recited in any claims of the ‘674 patent.
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`3.
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`In Observation (4), Zillow asserts that, at 91:24-92:9 and 93:8-94:14 of Ex. 2016, “Dr.
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`Borst testified that a comparable sales AVM has to have a computerized model for selecting
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`comparables and that, after a human creates a specification for comparables for a
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`comparable sales AVM, the computer program can select comparables for a large number
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`of residences automatically.” However, at 92:10-20, Dr. Borst indicated that, in an AVM
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`used “in [the] assessment and in [the] lending world,” users “do select their own comps, if
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`they don't like the ones that have been selected.” Ex. 2016, 92:10-20. Furthermore, at
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`40:18 to 41:3 of Ex. 2016, Dr. Borst testifies that even though Dugan does not specifically
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`describe mass appraisal, its systems has the components necessary for “automated
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`comparable sales selection.” Most importantly, however, the term “comparable sales AVM”
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`does not appear in the claims of ‘674 patent.
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`4.
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`In Observation (5), Zillow asserts that, based Dr. Borst's testimony, it is fair to
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`assume that an AVM has to be capable of doing mass appraisal, which contradicts the
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`assertion on page 9 of the Reply that “one of ordinary skill in the art would have understood
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`Dugan and Kim to describe systems that could be classified as AVMs.” However, at 92:10-
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`20 Ex. 2016, Dr. Borst indicated that, in an AVM used “in [the] assessment and in [the]
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`lending world,” users “do select their own comps, if they don't like the ones that have been
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`selected.” Ex. 2016, 92:10-20. Moreover, at 40:18 to 41:3 of Ex. 2016, Dr. Borst testifies
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`Case IPR2013-00034
`Attorney Docket No: 30693-0090IP1
`that even though Dugan does not specifically describe mass appraisal, its systems has the
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`components necessary for “automated comparable sales selection.” Therefore, Dr. Borst’s
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`testimony, as a whole, does not contradict the assertion on page 9 of the Reply.
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`5.
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`In Observation (6), Zillow asserts that testimony at 110:19 to 111 20 of Ex. 2016
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`“supports the statement on page 29 of the Response” that “the relied-upon portions of
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`[Dugan and Kim] fail to describe or suggest ‘wherein the adjustment of the obtained user
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`input includes identifying recent sales of nearby properties regarded by the owner as similar
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`to the distinguished property.’” The limitation to which Zillow refers is recited in dependent
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`claim 8, which has been rejected as obvious over Dugan and Kim under 35 U.S.C. § 103.
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`The testimony at 110:19 to 111 20 of Ex. 2016 was directed to what is explicitly recited in
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`the Dugan and Kim references, and does not address what was obvious based on the
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`Dugan and Kim references. Therefore, the testimony at 110:19 to 111 20 of Ex. 2016 does
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`not support the statement on page 29 of the Response.
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`6.
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`In observation (7), Zillow asserts that the testimony at 13:4-9, 55:4-9, and 58:11-16
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`of Ex. 2016 “supports the statement on page 29 of the Response” that “the relied-upon
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`portions of [Dugan and Kim] fail to describe or suggest ‘wherein the adjustment of the
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`obtained user input includes identifying recent sales of nearby properties regarded by the
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`owner as similar to the distinguished property.’” The limitation to which Zillow refers is
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`recited in dependent claim 8, which has been rejected as obvious over Dugan and Kim
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`under 35 U.S.C. § 103. The testimony at 13:4-9, 55:4-9, and 58:11-16 of Ex. 2016 was
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`Case IPR2013-00034
`Attorney Docket No: 30693-0090IP1
`directed to what is explicitly recited in the Dugan and Kim references, and does not address
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`what was obvious based on the Dugan and Kim references. Therefore, the testimony at
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`13:4-9, 55:4-9, and 58:11-16 of Ex. 2016 does not support the statement on page 29 of the
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`Response.
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`7.
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`In Observation (8), Zillow asserts that the testimony at 120:2-21 of Ex. 2016
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`establishes that “Dugan and Kim's appraisal-focused systems are not automatic valuations
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`as understood by those of ordinary skill in the art.” However, Dr. Borst’s Declaration clearly
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`establishes that “[i]rrespective of the language used in the ʼ674 patent, the Dugan patent,
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`and the Kim application, none of these three systems are producing an ‘appraisal.’” Ex.
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`1023, ¶ 31. Thus, Dr. Borst’s testimony at 120:2-21 of Ex. 2016 is perfectly in line with his
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`declaration. Moreover, Dr. Borst declared that “[t]he use of the word ‘appraisal’ in the
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`Dugan patent and the Kim application is simply being used in a more general sense to
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`describe a property valuation, not the more specific definition used by the USPAP and relied
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`upon by Dr. Kilpatrick to draw his distinction.” Id. Therefore, the testimony at 120:2-21 of
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`Ex. 2016 does not support the statement on page 26 of the Response that “an appraisal is
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`not an ‘automatic valuation’ as understood by those of ordinary skill in the art,” as asserted
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`by Zillow.
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`8.
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`In Observation (9), Zillow asserts that the testimony at 62:15-18 of Ex. 2016 “clarifies
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`that the output of an AVM, such as the system described in Cheng (see Observation # 1), is
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`not an appraisal.” Again, Dr. Borst’s Declaration clearly establishes that “[i]rrespective of
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`Case IPR2013-00034
`Attorney Docket No: 30693-0090IP1
`the language used in the ʼ674 patent, the Dugan patent, and the Kim application, none of
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`these three systems are producing an ‘appraisal.’” Ex. 1023, ¶ 31. Thus, Dr. Borst’s
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`testimony at 120:2-21 of Ex. 2016 is perfectly in line with his declaration. Moreover, Dr.
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`Borst declared that “[t]he use of the word ‘appraisal’ in the Dugan patent and the Kim
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`application is simply being used in a more general sense to describe a property valuation,
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`not the more specific definition used by the USPAP and relied upon by Dr. Kilpatrick to draw
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`his distinction.” Id. Therefore, the testimony at 62:15-18 of Ex. 2016 is not counter to the
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`assertion on page 12 of the Reply that “the outputs of the Dugan and Kim systems are the
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`same in nature as the output of the system described in [Cheng].”
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`9.
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`In Observation (10), Zillow asserts that the testimony at 42:12-18 of Ex. 2016
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`“supports the statements on page 23 of the Response” regarding the subjectivity of the IPS
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`values. However, nowhere in the testimony of Ex. 2016 does Dr. Borst state that the IPS
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`values of Dugan are contrary to the features of an AVM. Therefore, the testimony at 42:12-
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`18 of Ex. 2016 does not support the ultimate conclusion of page 23 of the Response that
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`“Dugan does not disclose the recited ‘automatic valuation’ or ‘refined valuation.’”
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`Date:
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`October 24, 2013
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`Thomas Rozylowicz, Reg. No. 50,620
`Attorney for Petitioner
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`Case IPR2013-00034
`Attorney Docket No: 30693-0090IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
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`October 24, 2013, a complete and entire copy of this “Petitioner Response to Patent
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`Owner's Observations on Cross Examination of Dr. Richard A. Borst, Ph.D” was provided
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`via email to the Patent Owner by serving the correspondence email addresses of record as
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`follows:
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`Steven D. Lawrenz
`Ramsey Al-Salam
`PERKINS COIE, LLP
`1201 Third Avenue, Suite 4900
`Seattle, Washington 98101
`SLawrenz@perkinscoie.com
`RAlsalam@perkinscoie.com
`patentprocurement@perkinscoie.com
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`
` /Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
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`(858) 678-5667
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