UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.
`Petitioner
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner
`
`Case IPR2013-00479
`Patent 5,832,494
`
`DECLARATION OF PAULS. JACOBS
`in Support of Patent Owner Response
`
`EXHIBIT 2113
`Facebook, Inc. et al.
`v.
`Software Rights Archive, UC
`CASE IPR2013-00479
`
`

`

`TABLE OF CONTENTS
`
`Qualifications, Background, and Experience .................................................. 1
`I.
`Status as an Independent Expert Witness ........................................................ 3
`II.
`III. Proceedings to Date ......................................................................................... 4
`IV. Materials Reviewed ......................................................................................... 6
`V.
`Summary of Opinions ...................................................................................... 7
`VI. The Claims of the ’494 Patent ....................................................................... 21
`VII. Legal Principles Used in Analysis ................................................................. 24
`VIII. A Person of Ordinary Skill in the Relevant Art ............................................ 29
`IX. Claim Interpretation ....................................................................................... 30
`X. Opinions on Obviousness .............................................................................. 35
`A. The Cited References Do Not Teach and Would Not Have Suggested the
`Database and Object Limitations of the Claims ................................................... 36
`1. The Relied-upon Steps Pertaining to Numerical Representations Were
`Not Applied to Any Database of the Fox Papers .............................................. 37
`2. It is Incorrect to Rely Upon “The INGRES Database System” as the
`Claimed Database .............................................................................................. 47
`3. One of Ordinary Skill Would Not Have Obviously Extended the Fox
`Methods to Include Additional Data, and Simply Inserting More Text
`Would Not Have Remedied the Deficiencies of the References or
`Rendered Obvious the Claims ........................................................................... 48
`4. The Tapper Papers Also Fail to Teach and Would Not Have Suggested
`the Database and Object Features ...................................................................... 51
`B. The Individual Fox Papers Do Not Disclose Generalized Techniques that
`Would Have Been Applied in Combination or Extended to Other Collections. .. 53
`1. The Petition Incorrectly Relies on Specialized Manual Data
`Preparation Steps ............................................................................................... 56
`2. The Specialized Experiments Discussed in Fox Thesis Do Not Teach a
`General Search Method That Would be Applied to Other Collections ............. 78
`
`i
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`

`

`3. The Petition Relies on Regression Results, Which Are a Method of
`Data Analysis, Not a Generalizable Search Method ......................................... 81
`C. The Use of Indirect Relationships and Non-Semantic Searching Were Not
`Obvious Techniques that Would Yield Predictable Results at the Time of the
`Invention ............................................................................................................... 90
`1. The Use of Indirect Relationships In Searching Was Not Obvious ............ 91
`D. The Fox Papers do not Teach and Would Not Have Suggested the
`Specific Steps of the Claims ............................................................................... 107
`1. The Fox Papers do not Teach The Claimed First Numerical
`Representation ................................................................................................. 110
`2. The Fox Papers do not Teach or Suggest the “Displaying” Step in
`Combination with the Other Steps of Claim 18 .............................................. 125
`3. SRA Provided a Complete Image of the CACM Export File to the
`Patent Office During Reexamination of U.S. 5,544,352. ................................ 131
`4. The Fox Papers Teach that Co-Citation and Bibliographic Coupling,
`the Alleged Second Numerical Representations, Degrade Search Results ..... 134
`5. The Fox Papers do not Teach or Suggest the Steps of Claim 19 .............. 149
`6. The Fox Papers do not Teach or Suggest the Steps of Claim 20 .............. 157
`7. The Fox Papers do not Teach or Suggest the Additional Features of
`Claim 48 ........................................................................................................... 159
`8. The Fox Papers do not Teach or Suggest the Additional Features of
`Claim 49 ........................................................................................................... 160
`9. One of ordinary skill in the art would have understood “some 90,000
`source-cited document number pairs” to refer to co-citation relationships,
`and not direct relationships, in the ISI Collection ........................................... 161
`10. Fox SMART does not Teach a First Numerical Representation .............. 183
`11. Additional Reply and Explanation of the Fox Papers ............................... 189
`E. The Tapper Papers do not Render Obvious Claims 18-20, 48, and 49 ........ 199
`1. The Citation Vectors Discussed in the Tapper Papers are Not a
`Representation of Direct Relationships ........................................................... 205
`
`ii
`
`

`

`2. Tapper’s Citation Vectors are not a Numerical Representation ............... 207
`3. Tapper’s Citation Vectors are not a Representation of Relationships in
`the Database .................................................................................................... 208
`4. The Tapper Papers Fail To Disclose Generating and Storing a Second
`Numerical Representation as Claimed ............................................................ 210
`5. The Tapper Papers Fail to Disclose the Remaining Steps of Claim 18 .... 214
`6. The Tapper Papers do not Teach and Would Not Have Suggested the
`Additional Features of Claims 19, 20, 48, or 40 ............................................. 216
`F. Claims 45, 51, and 54 are Non-Obvious Over the Referenced Art .............. 222
`1. The References Fail to Teach and Would not have Suggested the
`Limitations of Claims 45, 51 and 54 ............................................................... 225
`2. The Analysis of Hyperlinks Would Not Have Been Obvious at the
`Time of the Invention ...................................................................................... 234
`3. The Analysis of Web-Based Links Was Not an Obvious Technique that
`Would Yield Predictable Results at the Time of the Invention ....................... 238
`XI. Conclusion ................................................................................................... 244
`
`iii
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`

`

`
`
`I, Paul S. Jacobs, declare as follows:
`
`1. My name is Paul S. Jacobs. I am the Founder and President of Jake
`
`Technologies, Inc. My business address is 27 Logan Circle NW #14, Washington,
`
`DC 20005. I understand that my declaration is being submitted in connection with
`
`the above-referenced Inter Partes Review proceeding, Case IPR2013-00479.
`
`I.
`
`Qualifications, Background, and Experience
`
`2.
`
`I received a Bachelor of Science in Applied Mathematics from
`
`Harvard University in 1981, a Master of Science in Applied Mathematics from
`
`Harvard University in 1981, and a Ph.D. in Computer Science from the University
`
`of California at Berkeley in 1985.
`
`3.
`
`I have authored or co-authored over 50 scientific and technical
`
`publications, I am listed as an inventor on two U.S. patents directed to
`
`computational lexicons, and I have over 30 years of experience in the computer
`
`and information retrieval industry.
`
`4.
`
`I have served in numerous professional and scientific capacities,
`
`including one year as a visiting professor of computer science at the University of
`
`Pennsylvania and several years as a member of the executive committee of the
`
`Association for Computational Linguistics. Currently, I serve on the Public Policy
`
`Council of the Association for Computing Machinery (USACM) and the
`
`Intellectual Property Committee of that council. I also serve on the Patent Public
`
`1
`
`

`

`Advisory Committee (PPAC) appointed by the Secretary of Commerce of the
`
`United States. I am currently a technology consultant and an adjunct lecturer at
`
`the University of Maryland in College Park, where I have taught classes in the
`
`College of Information Studies (The “iSchool”) since 2007.
`
`5.
`
`Between 1985 and 1994, I was employed as a computer scientist with
`
`General Electric (“GE”) Corporate Research and Development. I also consulted
`
`for Infonautics, an early Internet information services and advanced search
`
`company. I was the editor of a book, entitled “Text-Based Intelligent Systems.”
`
`The book was a collection of papers based on a symposium I chaired in 1990,
`
`which brought together leaders of the field of Information Retrieval to address
`
`issues related to large-scale advanced text processing.
`
`6.
`
`I joined a company named SRA International (“SRA”) in the latter
`
`part of 1994 and became director of media information technologies.1 My
`
`responsibilities included new ventures and technology activities related to the
`
`Internet and the World Wide Web. From 1994 until 2002, I held a series of
`
`technology and business management jobs in organizations focused on networked
`
`information management applications. I was CEO of IsoQuest, an SRA
`
`subsidiary, managing vice president for electronic commerce at SRA, president
`
`1 SRA International has no relationship with Software Rights Archive, LLC, owner
`
`of U.S. Patent No. 5,832,494.
`
`2
`
`

`

`and CTO of AnswerLogic, and CTO of Primus Knowledge Solutions. My
`
`responsibilities during this period included business and technical roles for a range
`
`of products and technologies focused on search-related solutions and on leveraging
`
`information on the Web.
`
`7.
`
`I have consulted with a number of law firms on intellectual property
`
`matters related to computer software. I provided deposition testimony and
`
`submitted declarations and reports in Inxight Software v. Verity (N.D. Cal., C-04-
`
`5387 CRB and C-05-01660 CRB). I submitted a declaration in Graphon v.
`
`AutoTrader (E.D. Tx., 2:05-CV-530). I submitted declarations and reports and
`
`was deposed in New River, Inc. v. Mobular Technologies, Inc. (D. Mass., 05-CV-
`
`12285-RCL). I have served as a consultant on a number of other patent-related
`
`cases.
`
`8.
`
`A more complete recitation of my professional experience including a
`
`list of my journal publications, patents, conference proceedings, book authorship,
`
`and committee memberships may be found in my Curriculum Vitae, attached to
`
`my declaration as Appendix A.
`
`II.
`
`Status as an Independent Expert Witness
`
`9.
`
`I am being compensated for my work in this matter by Software
`
`Rights Archives, LLC, at my current rate of $350 per hour. I have no personal or
`
`financial stake or interest in the outcome of the above-referenced case or any
`
`3
`
`

`

`related action. My compensation is not dependent upon my testimony or the
`
`outcome of this proceeding.
`
`10.
`
`I have also been engaged by DiNovo, Price, Ellwanger and Hardy,
`
`LLP to assist with the pending litigation involving the same patents, at the same
`
`$350 hourly rate. My compensation is not dependent on my testimony or any
`
`outcome.
`
`III.
`
` Proceedings to Date
`
`11.
`
`I have been informed that the Patent Trial and Appeal Board (the
`
`Board) has granted a petition (the “Petition”) by Facebook, Inc., LinkedIn Corp.,
`
`and Twitter, Inc. (“Petitioners”) seeking Inter Partes Review of U.S. Patent No.
`
`5,832,494 (the “‘494 patent”) (Exhibit 1201) by Daniel Egger, filed on May 17,
`
`1996, and titled “Method and Apparatus for Indexing, Searching and Displaying
`
`Data.” It is my understanding that the Board instituted review on the following
`
`grounds:
`
`Ground 3 – obviousness of claims 18-20, 48, and 49 based on Edward A. Fox,
`
`Characterization of Two New Experimental Collections in Computer and
`
`Information Science Containing Textual and Bibliographic Concepts, (Sept.
`
`1983) (Ph.D. dissertation, Cornell Univ. Dept. of Comp. Sci.) (“Fox
`
`Collection”) (Exhibit 1206); Edward A. Fox, Some Considerations for
`
`Implementing the SMART Information Retrieval System under UNIX, (Sept.
`
`4
`
`

`

`1983) (Ph.D. dissertation, Cornell Univ. Dept. of Comp. Sci.) (“Fox SMART”)
`
`(Exhibit 1208); and Edward A. Fox, Extending the Boolean and Vector Space
`
`Models of Information Retrieval with P-Norm Queries and Multiple Concept
`
`Types, (Aug.1983) (Ph.D. dissertation, Cornell Univ. Dept. of Comp. Sci.)
`
`(“Fox Thesis”) (Ex. 1209) (collectively the “Fox Papers”).
`
`Ground 8 – obviousness of claims 18-20, 48, and 49 based on Colin F.H.
`
`Tapper, Citation Patterns in Legal Information Retrieval, 3 Datenverarbeitung
`
`im Recht 249-75 (1976) (“Tapper 1976”) (Exhibit 1204) and Colin Tapper, The
`
`Use of Citation Vectors for Legal Information Retrieval, 1 J. of Law and Info.
`
`Sci. 131-61 (1982) (“Tapper 1982”) (Exhibit 1205) (collectively the “Tapper
`
`Papers”).
`
`Ground 12 – obviousness of claims 45 and 51 based on the Fox Papers in
`
`combination with Tatsuki Saito, A clustering method using the strength of
`
`citation,” J. Inf. Sci. 1990, Vol. 16,, pp. 175-181 (“Saito Clustering”) (Exhibit
`
`1212) and Edward A. Fox, Users, User Interfaces, and Objects: Envision, a
`
`Digital Library,” J. Am. Soc. Inf. Sci., September 1993, Vol. 44, No. 8, pp.
`
`480-91 (“Fox Envision”) (Exhibit 1210).
`
`Ground 13 – obviousness of claim 54 based on the combination of the Fox
`
`Papers, Saito Clustering, Fox Envision, and Thomas D.C. Little, Commerce on
`
`5
`
`

`

`the Internet, IEEE Multimedia at Work, Winter 1994, pp. 74-78 (“Little”)
`
`(Exhibit 1216).
`
`12.
`
`It is my understanding that Google, Inc. previously filed an ex parte
`
`reexamination request with the United States Patent and Trademark Office
`
`(USPTO). In this proceeding, Google asserted that a number of pieces of prior art,
`
`including several papers authored by Edward Fox, anticipated or rendered obvious
`
`certain claims of the ‘494 patent. I understand that as a result of these proceedings
`
`the USPTO issued a reexamination certificate for the patent, affirming that all of
`
`these claims were patentable over the art considered.
`
`IV. Materials Reviewed
`
`13.
`
`In performing the analysis that is the subject of my testimony, I
`
`reviewed the ‘494 patent and its file history, as well as various public documents
`
`from litigations in the U.S. District Court for Northern District of California,
`
`including Software Rights Archive, LLC v. Facebook, Inc., 12-cv-3970 (N.D. Cal.),
`
`Software Rights Archive, LLC v. LinkedIn Corp., 12-cv-3971 (N.D. Cal.), Software
`
`Rights Archive, LLC v. Twitter, Inc., 12-cv-3972 (N.D. Cal.), and Software Rights
`
`Archives, LLC v. Google, Case No. C-08-03172 RMW (N.D. Cal.). I have also
`
`reviewed, in detail, the many thousands of pages of references, charts, and other
`
`documents put forth by the petitioners in this case and in the previous related
`
`matters. The documents include: (1) the Petition and the documents and references
`
`6
`
`

`

`referred to in the Petition; (2) the declaration of Edward Fox, Ph.D. (Exhibit 1218)
`
`(the “Fox Declaration”); (3) the Patent Owner’s Preliminary Response (Paper No.
`
`15); (4) the Board’s decision regarding institution (“Institution Decision”) (Paper
`
`No. 17); and (5) the transcripts of the April 27 and 28, 2014, Deposition of Edward
`
`Fox (Exhibit 2016; the “Fox Transcript Pt. I” and Exhibit 2017; the “Fox
`
`Transcript Pt. II”), and the exhibits referred to in the Fox Deposition Transcripts.
`
`14. Additionally, I reviewed a number of materials relating to the field of
`
`information retrieval and computerized search, and in particular, the use of
`
`semantic and non-semantic indexing and search techniques both before and after
`
`the filing of the ‘494 patent. All of the materials that I considered are listed in
`
`Appendix B. I have also taken into account my knowledge of information
`
`retrieval, computerized search, and related technologies gained from over 30 years
`
`of experience in the field.
`
`V.
`
`Summary of Opinions
`
`15.
`
`It is my opinion that claims 18-20, 45, 48, 49, 51 and 54 of the ‘494
`
`patent (the “challenged claims”) are patentable over the references relied upon in
`
`the instituted Grounds. None of the Fox Papers, the Tapper Papers, nor the Fox
`
`Papers in combination with Saito Clustering, Fox Envision, and/or Little render
`
`obvious any of the challenged claims, as the concept of obviousness have been
`
`explained to me.
`
`7
`
`

`

`A. None of the References Teach or Would Have Suggested the Claimed
`Database Features
`
`16. The ‘494 patent addresses problems with computerized indexing and
`
`searching of large textual databases. As such, the claims of the ‘494 patent include
`
`methods that are expressly directed to representing, analyzing, and searching
`
`objects in a database having direct and indirect relationships in the database. In
`
`fact, claim 18 recites a “database” five times, and “object” or “objects [in the
`
`database]” 4 times. Specifically, the claim steps refer back to the database of
`
`objects recited in the preamble, which is a “database having objects and a first
`
`numerical representation of direct relationships in the database.” The “generating”
`
`step requires, for instance, that the “second numerical representation accounts for
`
`indirect relationships in the database.”
`
`17. Because the Petition2 largely ignores these requirements of claim 18,
`
`it does not explain how any reference teaches or suggests every feature of claim
`
`18. The evidence plainly shows that the relied-upon experiments did not include
`
`representing and using relationships between objects in the database, as claimed.
`
`
`2 When I refer to the “Petition” in my declaration and to the allegations and
`
`arguments put forth in the Petition, I am, in many cases, also referring to the
`
`Declaration of Dr. Fox and, to the extent that the Board has relied on these
`
`allegations and arguments, to the Board as well.
`
`8
`
`

`

`The relied-upon experiments were methods applied, by hand, to printed
`
`bibliographies and were not performed using a computerized database having
`
`objects and a first numerical representation of direct relationships in the database,
`
`or a second numerical representation that accounts for indirect relationships in the
`
`database, as claimed. None of the alleged numerical representations identified in
`
`the Petition reflect relationships in the database, as claimed.
`
`18.
`
` Moreover, the techniques discussed in the relied-upon references
`
`would not have been applied by one of ordinary skill in the art to a computer
`
`database of objects. Rather, the skilled practitioner would have recognized that the
`
`experiments (such as those of the Fox Papers that teach hand-compiled data from
`
`printed bibliographies) were limited to preparing data for specific experiments –
`
`experiments that did not involve a database having objects and direct and indirect
`
`relationships in the database, as required by claim 18. Contrary to the assertions of
`
`the Petition, the relied-upon teachings were not general methods of indexing and
`
`searching that could be applied to computer databases, but rather they were limited
`
`to use only with the specific data of the particular experiment.
`
`19. The indexing and analysis of computer databases based on direct and
`
`indirect relationships in the database, and the unique claim steps that effectively do
`
`9
`
`

`

`so, are at the heart of the ‘494 patent. Petitioners’3 oversight regarding the
`
`“database” and “object” requirements of the claims renders baseless their
`
`assertions of unpatentability. Every ground of unpatentability outlined in the
`
`Petition fails for at least this reason. Petitioners’ and Dr. Fox’s omission is not just
`
`a technicality, but illustrates a fundamental distinction between the claimed
`
`invention and the work that came before the ‘494 patent. None of the art teaches
`
`or would have suggested the claimed “database” and “object” features.
`
`
`
`B. The Fox Papers Do Not Render Obvious Any Claim of the ‘494 Patent
`
`20. The combination of Fox Papers fails to teach and would not have
`
`suggested the steps of claim 18. The deficiencies are significant, and one of
`
`ordinary skill in the art would not have overcome them based on the teachings of
`
`the Fox Papers. Further, the Fox Papers fail to teach, and would not have
`
`suggested, the additional features of the dependent claims.
`
`21. For instance, the Fox Papers do not teach, and would not have
`
`suggested, “a first numerical representation of direct relationships in the database”
`
`
`3 When I refer to the “Petitioners” in my declaration and to the allegations and
`
`arguments they put forth in these proceedings, I am, in many cases, also referring
`
`to the testimony of Dr. Fox and, to the extent that the Board has relied on these
`
`allegations and arguments, to the Board as well.
`
`10
`
`

`

`or a “second numerical representation [that] accounts for indirect relationships in
`
`the database,” as claimed.
`
`22.
`
` With respect to the claimed first numerical representation, the
`
`Petition relies on the “Raw_data” relation discussed in the Fox Collection paper,
`
`which is used only for inputting bibliographic data based on printed bibliographies.
`
`Petition at 10; see discussion, infra at ¶ 211; Fox Collection at 14. As such, the
`
`“Raw_data” relation is not a first numerical representation, as claimed, because it
`
`is not a representation of direct relationships in the database.
`
`23. Further, even if one of ordinary skill in the art were to combine the
`
`teachings of the Fox Papers and attempt to use Dr. Fox’s methods, they would not
`
`use the relied-upon bc and cc subvectors because the Fox Papers clearly show that
`
`the use of these subvectors is unnecessary, as well as impractical. The disclosed
`
`techniques for generating and using bc and cc for the CACM collection were
`
`difficult and time consuming and did not improve search results. See discussion,
`
`infra at ¶¶ 134-140.
`
`24. Regarding the ISI collection, the Petitioners claim that the single
`
`reference to “source-cited document number pairs” from one sentence of Fox
`
`Thesis teaches numerous claim steps. See, e.g., Petition at 9-11. In truth, they
`
`misinterpret this sentence, which refers to processing co-citation values (i.e., not
`
`direct references) for the ISI collection. See discussion, infra at ¶¶ 129-133.
`
`11
`
`

`

`Additionally, the ISI collection itself helps illustrate why undisclosed claim steps
`
`would not have been obvious.
`
`25.
`
`In its Institution Decision, the Board refers to the discussion of
`
`CITED tuples in Fox SMART. See Institution Decision at 14. The CITED tuples
`
`describe the raw data input that lists which articles are cited by others for a
`
`hypothetical SMART collection. Fox SMART at 29, 35 (“which lists all articles
`
`cited by a given article”). One of ordinary skill in the art would have understood
`
`that the CITED tuples are not a numerical representation. See discussion, infra at
`
`¶¶ 141-143. Further, because CITED is described as raw input, the Fox Papers’
`
`discussion pertaining to the CITED tuples does not teach and would not have
`
`suggested that CITED is a representation of relationships in a database, or that
`
`processing CITED comprises using CITED to generate a representation that
`
`accounts for indirect relationships in the database.
`
`26. Additionally, the Fox Papers fail to teach, and would not have
`
`suggested, the claimed steps of identifying and displaying. These claim steps are
`
`related, and the Petition fails to tie them together. See discussion, infra at ¶¶ 226-
`
`232. For instance, the Fox Papers do not disclose displaying anything that
`
`Petitioners have identified as the “identified objects from the database.” Id.
`
`27. The Fox Papers in combination do not teach and would not have
`
`suggested a method for computerized indexing and searching using direct and
`
`12
`
`

`

`indirect relationships. Taken together, the Fox Papers merely report on what Dr.
`
`Fox and his team did to support their studies of two unique collections. Claims 19
`
`and 20, which depend from claim 18, require additional limitations neither
`
`disclosed nor suggested by the Fox papers. See discussion, infra at ¶¶ 255-270.
`
`C. The Tapper Papers Do Not Render Obvious Any Claim of the ‘494
`Patent
`
`28. The Tapper Papers fail to teach and would not have suggested a
`
`number of the limitations of claim 18. The deficiencies are significant, and one of
`
`ordinary skill in the art could not have overcome them based on the limited
`
`teachings of the Tapper Papers. Further, the Tapper Papers fails to teach, and
`
`would not have suggested, the additional features of the dependent claims.
`
`29. For example, the Tapper Papers fail to teach, and would not have
`
`suggested, “generating a second numerical representation using the first numerical
`
`representation, wherein the second numerical representation accounts for indirect
`
`relationships in the database.” The Tapper Papers discuss “citation vectors,” which
`
`are further described as “citation string[s].” See Tapper 1982 at 142; discussion,
`
`infra at ¶¶ 356-360. The citation string is not a numerical representation, as
`
`claimed. See discussion, infra at ¶¶ 356-360 (construction of numerical
`
`representation).
`
`30. Although Tapper 1976 generally discusses including “second
`
`generation citations” as part of the citation vector for a case, this disclosure does
`
`13
`
`

`

`not teach or suggest using any first numerical representation of direct relationships
`
`in the database, as claimed. See discussion, infra at ¶¶ 361-363. Like the ISI
`
`collection discussed in the Fox Papers, the Tapper Papers’ data clearly includes
`
`references to cases that are not part of the set of cases that are clustered or
`
`compared. See Tapper 1982 at 146; discussion infra at ¶ 362 (248 cases in the U.S.
`
`set vs. 3337 cited cases). The Tapper Papers do not teach or suggest representing
`
`or analyzing relationships between cases in a database of numerically represented
`
`objects.
`
`31. Additionally, the Petition errs in its presentation of the Tapper Papers.
`
`For example, the Petition appears to read the same general discussion of “citation
`
`vectors” onto both the first and second numerical representations required by the
`
`claims. Given the express language of claim 18, it is a clear error to use the same
`
`feature for these two different claimed representations. In the absence of a
`
`teaching or suggestion of the claimed numerical representations, the Petition refers
`
`to “‘second generation citation’ vectors,” a creation of the Petition that is without
`
`support from the Tapper Papers, which rather teach that “second generation
`
`citations” are optionally included as part of the same citation vector with other
`
`citation strings. See discussion infra at ¶¶ 364-370, Petition at 49. Further
`
`deficiencies are discussed in detail in Section X (E), infra.
`
`14
`
`

`

`32. For instance, the Petition seems to acknowledge that the Tapper
`
`Papers also do not disclose the claimed steps pertaining to identifying and
`
`displaying objects using the stored second numerical representations. The Petition
`
`incorrectly focuses on a general discussion of possibilities for information retrieval
`
`systems, such as Westlaw and LEXIS; however, it is my opinion that one of
`
`ordinary skill would not have combined the teachings of the Tapper Papers with
`
`known full-text document retrieval systems such as LEXIS and Westlaw in a
`
`manner that would render the claims obvious. See discussion, infra at ¶¶ 348-349.
`
`33. The Tapper Papers do not teach, and would not have suggested, the
`
`method of the challenged claims.
`
`D. The Relied-Upon Combinations of References Do Not Render Obvious
`Any Of Claims 45, 51, and 54
`
`34. None of the cited references, whether taken alone or in combination,
`
`teach or would have suggested the additional features of dependent claims 45, 51,
`
`and 54, which extend the claims of the ‘494 patent to the World Wide Web.
`
`35. For instance, the cited references do not disclose or suggest
`
`“analyzing direct link weights in a set of paths,” as required by claim 45. The
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`Petition relies on Saito Clustering’s discussion of applying a weight, wk, to a
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`directed walk of length k. However, one of ordinary skill in the art would have
`
`understood that a directed walk is not a link, and thus, that Saito Clustering does
`
`not teach or suggest the claimed feature. See discussion, infra at ¶¶ 398-400.
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`15
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`36. Because claim 45 depends from claim 19, the limitation “the direct
`
`relationships are hyperlink relationships between objects on the world wide web”
`
`requires that hyperlink relationships are analyzed for indirect relationships
`
`involving a selected object (see claim 19). The relied-upon references fail to teach,
`
`and would not have suggested this feature. See discussion, infra at ¶¶ 401-411.
`
`37. Further, the combination of references does not teach, and would not
`
`have suggested, that “the identified objects include websites” and “the step of
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`identifying includes providing a Universal Resource Locator that identifies a web
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`page within one of said web sites,” as required by claim 51. See discussion, infra
`
`at ¶¶ 412-416.
`
`38. Moreover, it would not have been obvious to one of ordinary skill in
`
`the art at the time of the invention to analyze hypertext links. The proposed
`
`combinations, and assertions of the Petition, are plainly the product of hindsight
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`and based on the teachings of the ‘494 patent. See discussion, infra at ¶¶ 418.
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`There is simply no reason to combine the Fox Papers, Saito Clustering, and Fox
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`Envision in the manner suggested in the Petition. The analysis of web-based links
`
`was not an obvious technique that would have yielded predictable results at the
`
`time of the invention. See discussion, infra at ¶¶ 418-432.
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`16
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`39. The differences between the claim steps and the relied-upon
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`disclosures are not minor variations; they represent fundamental differences
`
`between the claimed invention and the prior art.
`
`
`
`E. One of Ordinary Skill in the Art Would Not Have Been Motivated to
`Use Indirect Bibliographic Relationships and Would Have Believed
`They Were Not Worthwhile
`
`40. As noted above, none of the relied-upon references teach, or would
`
`have suggested, all of the steps of the challenged claims, whether taken alone or in
`
`the proposed combinations. Moreover, the combinations and extensions suggested
`
`by the Petitioners and characterized as “known elements” involve pieces of
`
`experimental research that were, at best, inconclusive. Given the experimental
`
`nature of the relied-upon references and the numerous missing claim elements, the
`
`identified combinations and extensions would not have yielded any predictable
`
`results for one of ordinary skill in the art at the time of filing – one of ordinary skill
`
`in the art would not have arrived at the claimed invention of the ‘494 patent based
`
`on the cited references. Rather, the combinations and extensions have been
`
`formulated by Petitioners based on hindsight analysis and the teachings of the ‘494
`
`patent specification. Petitioner’s obviousness arguments depend on a false
`
`assumption regarding the use of indirect bibliographic relationships, such as co-
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`citation and bibliographic coupling, in computerized search.
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`17
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`41. Specifically, Petitioners erroneously suggest that it would have been
`
`obvious to one of ordinary skill at the time of the invention to use indirect
`
`bibliographic relationships, as recited in the claims, in computerized searching.
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`This assumption is refuted by the work of Petitioners’ own declarant, Dr. Fox,
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`which shows in multiple experiments that the use of co-citation and bibliographic
`
`coupling in combination with other methods of retrieval are both ineffect