IPR2013-00479
`U.S. Patent No. 5,832,494
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`Petitioners
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner
`
`
`Patent No. 5,832,494
`Issue Date: November 3, 1998
`Title: METHOD AND APPARATUS FOR INDEXING,
`SEARCHING AND DISPLAYING DATA
`
`________________
`
`Inter Partes Review No. IPR2013-00479
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`

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`I.
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`II.
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`Page
`Claim Construction ......................................................................................... 1
`A.
`“Database.” ........................................................................................... 1
`B.
`“Numerical Representation.” ............................................................... 1
`The Fox Papers Render Obvious Claims 18-20, 48, and 49. ......................... 2
`Claim 18 Preamble. ........................................................................................ 2
`“Identifying” and “Displaying” Steps. ........................................................... 4
`Claim 19. ......................................................................................................... 5
`Claim 20. ......................................................................................................... 6
`Claim 48. ......................................................................................................... 7
`Claim 49. ......................................................................................................... 7
`III. Claims 45 and 51 Are Obvious Over the Fox Papers in View of Saito
`Clustering and Fox Envision. ......................................................................... 8
`IV. Claim 54 is Obvious Over Fox Papers + Saito + Fox Envision + Little ........ 9
`V.
`The Tapper Papers Render Obvious Claims 18-20, 48, and 49. .................. 10
`Claim 18 Preamble. ...................................................................................... 10
`“Database” Argument. ....................................................................... 10
`“Numerical” Representation .............................................................. 10
`“Generating” Step. ........................................................................................ 11
`“Storing” Step. .............................................................................................. 12
`Claim 19. ....................................................................................................... 13
`Claim 20. ....................................................................................................... 13
`Claim 48. ....................................................................................................... 14
`Claim 49. ....................................................................................................... 15
`VI. PO Shows No Nexus For Its Alleged Secondary Considerations ................ 15
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`Table of Contents
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`-i-
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`IPR2013-00479
`U.S. Patent No. 5,832,494
`I.
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`Claim Construction
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`Patent Owner’s (“PO”) arguments assume overly narrow constructions of
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`two terms that the Board did not construe, which are discussed here.
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`A.
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`“Database.” PO contends that “database” should be limited to “the
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`contents of . . . the database of numerically represented objects” or “an organized
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`collection of electronic documents.” (Ex. 2113, ¶ 98, n. 12; Ex. 1234, 12:9-15.)
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`But the specification states that the database “can be any device which will hold
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`data,” for example, “any type of magnetic or optical storing device,” located
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`locally to or remotely from the computer. (Ex. 1001, 9:46-51.)
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`B.
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`“Numerical Representation.” PO contends that a “numerical
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`representation” must consist solely of human-readable numbers and cannot include
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`letters. (Patent Owner Response (“POR”) at 11, 36.) But the specification does
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`not support such a narrow reading. A “numerical representation” instead includes
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`any representation of binary or digital data that can be processed and analyzed by a
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`computer. The specification describes a “citation vector” that PO concedes is a
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`“numerical representation” (POR at 10), but the specification does not mandate
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`any format for the data – let alone require that the vector consists only of human-
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`readable numbers. (Ex. 1201, 16:47-17:32; Ex. 1235, 302:7-305:2, 320:19-325:4.)
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`The intrinsic record refutes PO’s assertion that a “numerical representation”
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`consists solely of human-readable numbers. The ’494 patent discusses prior art
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`U.S. Patent No. 5,832,494
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`“key numbers” used by Westlaw. (Ex. 1201, 2:25-29.) As confirmed in
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`Westlaw’s patent cited during the ’494 prosecution, key “numbers” include letters
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`as well as numbers. (Ex. 1237, col. 8:18-20, 11:3-12:8 (cited Westlaw patent
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`identifying exemplary “Key Numbers” such as “170AK2515”).) “[P]rior art cited
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`in a patent or cited in the prosecution history of the patent constitutes intrinsic
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`evidence” for claim construction purposes. Powell v. Home Depot U.S.A., Inc.,
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`663 F.3d 1221, 1231 (Fed. Cir. 2011). A “numerical representation” therefore is
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`not limited to human-readable numbers and may include letters or other data.
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`II. The Fox Papers Render Obvious Claims 18-20, 48, and 49.
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`Claim 18 Preamble. The Board correctly found that the Fox Papers
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`disclose analyzing “a database having objects and a first numerical representation
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`of direct relationships in the database.” (Paper 18 at 14.) The Board correctly
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`found that the Fox Papers’ tuples, which are stored in a storage device (database)
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`and analyzed, disclose a “first numerical representation of direct relationships” in
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`the database. (Paper 18 at 11, 14, citing Ex. 1008 at 29-30; Ex. 1218, ¶¶ 94, 102.)
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`The Fox Papers explain that the SMART system’s storage device contains
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`document objects (e.g., files including textual Abstract, bibliographic data, etc.)
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`and a set of numerical tuples “describing which documents are cited by others.”
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`(Fox SMART at 29-30; Ex. 1206 at 14-15 (describing “Raw_data (citing, cited)
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`which contained pairs of identifiers”); Fox Thesis at 211 (document id’s are
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`U.S. Patent No. 5,832,494
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`numbers); Ex. 1218, ¶¶ 75-89.) The Fox Papers therefore disclose a database with
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`objects and a first numerical representation (citation data) of direct relationships in
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`the database.
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`PO presents a series of arguments that appear to be based on language that
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`does not appear in claim 18, but instead pertain to claim 26 of the ’352 patent, the
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`subject of the separate IPR2013-00478 proceeding. PO appears to have copied-
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`and-pasted arguments about claim 26 of the ’352 patent from its written response
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`in IPR2013-00478 into its response here. (POR at 8-10, 13-15, 22-23, 24-25, 36-
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`37.) But unlike the ’352 patent, the challenged claims of the ’494 patent do not
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`recite the step of “creating” the first numerical representation. The claims also do
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`not require that objects have “direct relationships with other objects in the
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`database.” PO’s arguments based on non-existent claim language therefore fail.
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`PO’s related argument that the Fox Papers relate only to “printed documents
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`that were never stored in any electronic database” (POR at 12) is irrelevant. As
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`noted, Fox discloses a database with objects having relationships as reflected by
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`the citation data. For example, the SMART system described in the Fox Papers
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`discloses a storage device (database) having identifiers, Abstracts and portions of
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`text and other data from the papers (e.g. “objects”), along with citation data (e.g.
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`“relationships”). Whether the system stored the full-text of the printed documents
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`is irrelevant to whether it disclosed “objects” in a database as claimed.
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`U.S. Patent No. 5,832,494
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`And even if the PO could show that the claim requires a database with the
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`actual full text of the documents, Fox makes clear that it would have been obvious
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`to “store the full text” of the documents “being manipulated.” (Ex. 1206 at 6; Fox
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`SMART at 1, 80 (system intended for “full text” retrieval).) This would have
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`simply entailed adding the full-text of the papers to the existing objects in Fox (e.g.
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`Abstract, textual portions, etc.), which would have been obvious to one of skill in
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`the art. (Ex. 1218, ¶¶ 89, 75-76; Ex. 1233, ¶¶ 334-339.) It was also obvious to
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`combine the Fox Papers’ relevant teachings regarding the same SMART system,
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`which are naturally complementary. (Ex. 1233, ¶¶ 350-397.)
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`“Identifying” and “Displaying” Steps. PO argues that the Fox Papers do
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`not teach the “identifying” and “displaying” steps of claim 18. (POR at 25-27.)
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`More specifically, PO argues that the Fox Papers disclose only “programs
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`internally calling other programs without display.” (POR at 26.)
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`This argument is baseless. The Fox Papers make clear that the SMART
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`system displays objects from the database. For example, when the user submits a
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`query, including a “p-norm” query, the system retrieves documents to “display”
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`“portions of text” to the user. (Fox SMART at 10-11, 23-24; Paper 1 at 12-14.)
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`Figure 14 also describes a p-norm search using the stored bc and cc in which the
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`“user submits initial query” and three “documents . . . are retrieved” in response.
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`(Fox SMART at 41.) Seeing those results, the “[u]ser requests articles linked,
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`U.S. Patent No. 5,832,494
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`bibliographically coupled, or co-cited with” one document. (Id.) The search uses
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`the previously-stored bc and cc subvectors, as PO does not dispute. (POR at 32;
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`Ex. 1218, ¶¶ 108, 131, 196, 202.) Then the “[s]ystem responds with retrieval
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`results” and the search ends—the system displays the “retrieval results.” (Fox
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`SMART at 41; Ex. 1218, ¶¶ 184, 196.) The Fox Papers plainly disclose and render
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`obvious the “identifying” and “displaying” steps.
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`Claim 19. PO’s arguments about claim 19 are equally baseless and ignore
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`the Fox Papers’ description of the specific process for updating the bc and cc
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`subvectors, which discloses the generation of the claimed second numerical
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`representation. (Paper 1 at 14-15; Fox SMART at 32-34, Fig. 11; Ex. 1218, ¶ 126.)
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`Fox SMART teaches claim 19’s “selecting” step by describing the ability to select
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`the “newly added document.” This newly-added document has “new tuples”
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`expressing its citation relationships (the claimed “first numerical representation”).
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`(Fox SMART at 32-33.) With respect to claim 19’s “analyzing” and “creating”
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`steps, Fox SMART explains that these tuples are analyzed to create updated bc and
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`cc submatrices, which correspond to the claimed “second numerical
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`representation.” (Id. at 33-34; Ex. 1218, ¶ 126.) In particular, the system analyzes
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`the direct relationships expressed by the tuples for indirect relationships to form
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`the bc and cc subvectors. (Id., ¶¶ 78-88, 185-190, 127-129, 197-201.)
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`PO’s arguments about claim 19 also depend on the erroneous assumption
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`U.S. Patent No. 5,832,494
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`that the claim requires selecting and analyzing a full-text document that contains
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`citations. (POR at 28-31.) But as noted above, the claimed “object” need not be
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`full-text. Claim 19 merely recites “analyzing the direct relationships expressed by
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`the first numerical representation,” which does not require any full-text analysis of
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`the underlying documents. (See also Ex. 1233, ¶¶ 215-225.)
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`Claim 20. PO’s arguments about claim 20 fail for the same reasons as its
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`arguments about “displaying” addressed for claim 18 above. (POR at 31-32.)
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`Figure 14 in Fox SMART shows display of “retrieval results” in response to a
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`query for documents that are “linked, bibliographically coupled, or co-cited with” a
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`given document. (Fox SMART at 41; Ex. 1218, ¶¶ 108, 131, 196, 202.) PO’s
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`rehashed argument should be rejected.
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`PO also presents a series of confusing arguments about “cluster searching”
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`(POR at 32), but cluster searching is an additional and separate invalidating
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`disclosure. (Paper 1 at 16, 12-13.) PO’s only argument against cluster searching is
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`that documents in a cluster “need not have any direct or indirect relationships.”
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`(POR at 32.) But PO ignores the teaching that clustered documents should have
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`such relationships: “the bc, cc, and ln submatrices should be used as the basis for
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`clustering.” (Fox Thesis at 213; see also Ex. 1233, ¶¶ 228, 69-72.) PO’s
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`speculation about clusters that may sometimes lack relationships is irrelevant.
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`Federal Circuit law is clear that “a prior art product that sometimes, but not always,
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`U.S. Patent No. 5,832,494
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`embodies a claimed method nonetheless teaches that aspect of the invention.”
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`Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003).
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`Claim 48. The Fox Papers teach “identifying” and “displaying” objects
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`using the second numerical representation (bc or cc) and “semantical factors” to
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`rank objects for display, as recited in claim 48. (Paper 18 at 15; Ex. 1218, ¶¶ 192,
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`203-204.) Fox SMART Figure 14 discloses searching using “Multiple Concept
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`Types” (ctypes) to retrieve and rank documents. (Fox SMART at 41.) Steps 1-2
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`show a user query using three ctypes: 0 (terms), 1 (authors), and 2 (dates). (Id.)
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`Step 3 returns documents “with highest similarity to the query,” ranking the
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`documents based on ctype factors. (Id.) Steps 4-5 show a query using ctypes 2
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`and 3, plus ctypes 4 and 5 which use bc and cc. (Id.) Figure 14 teaches that a
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`query on these Concept Type factors to obtain documents ranked by similarity.
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`(Paper 18 at 15; Fox SMART at 41; Ex. 1218, ¶ 203; Ex. 1233, ¶¶ 231-236.)
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`Furthermore, it was obvious to use bc and cc and semantical factors to rank
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`objects for display. Fox SMART teaches that the system should “rank the
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`documents retrieved by a Boolean search according to some other similarity
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`function” – such as the bc and cc similarity measures in Figure 14. (Fox Thesis at
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`9-11; Ex. 1218, ¶¶ 192, 203-204.) Similarly, “[r]anking of documents should be
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`possible for any type of search method, for both initial and feedback searches.”
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`(Fox Thesis at 9-11, 20-21 (ranking factors), 58-59 (same); Ex. 1233, ¶¶ 231-236.)
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`U.S. Patent No. 5,832,494
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`Claim 49. Fox SMART discloses and renders obvious that the step of
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`generating the second numerical representation (bc or cc) considers a “quantity of
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`direct relationships” from an object to other objects. PO argues that the disclosed
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`process involves only “indirect relationships, not direct links.” (POR at 34.) That
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`is incorrect. As the Board correctly noted, CITED tuples indicate the direct
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`relationship that one document cites another document. (Paper 18 at 14; Fox
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`SMART at 29-31; Fox Thesis at 181; Ex. 1218, ¶¶ 127-128, 205.) The co-citation
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`(cc) analysis considers the quantity of citation relationships from an object to other
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`objects – it determines that one document cites two other documents. (Id.; Ex.
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`1233, ¶¶ 237-239.) The analyses to create bc and cc also consider quantities of
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`direct citations at other stages. (Ex. 1233, ¶¶ 238-239.)
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`PO suggests the claimed “quantity” must be of “direct relationships in the
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`database.” (POR at 34.) But claim 49 does not recite that its objects must have
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`any relationships “in a database.” In any event, the Fox Papers teach and render
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`obvious to use full-text documents in the retrieval system, as set forth above.
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`III. Claims 45 and 51 Are Obvious Over the Fox Papers in View of Saito
`Clustering and Fox Envision.
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`Claims 45 and 51 depend from claim 19 and 48 respectively, which the Fox
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`Papers render obvious as set forth above. Claim 45 adds that the “direct
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`relationships are hyperlink relationships between objects on the world wide web,”
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`and recites “analyzing direct link weights in a set of paths between two indirectly
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`U.S. Patent No. 5,832,494
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`weighted objects.” Claim 51 adds that “identified objects include websites,” and
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`identifying a web page within a website using a Universal Resource Locator.
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`PO attempts to distinguish Saito Clustering from claim 45 by arguing that “a
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`directed walk is not a link.” (POR at 45.) But the ’494 patent describes a “link” as
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`merely “another name or identification for a relationship between two nodes.”
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`(Ex. 1201, 12:66-13:3.) A link may be “stated, implied, direct, indirect, actual,
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`statistical and/or theoretical.” (Id.) Saito Clustering discloses analyzing the
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`“weight” (such as 1/k or 1/k2) assigned to each direct link (citation relationship) in
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`a set of citation link paths of length k between two articles i and j. (Ex. 1212 at
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`176, 177; Paper 18 at 20, 21.)
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`For claim 45, PO also asserts that the prior art does not suggest “that
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`hyperlinks should be treated as citations for purposes of citation analysis.” (POR
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`at 45.) For claim 51, PO states, with no argument, that it was not obvious that the
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`“objects” would be websites or to use a URL to identify a web page. (POR at 46.)
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`But Fox Envision teaches precisely what these claims recite: to apply known
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`techniques to Web hyperlinks and URLs, as “objects of all types” – understood to
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`include webpages within websites – “are interrelated by links . . . that capture
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`citation (reference),” understood to include hyperlinks and URLs. (Ex. 1210 at
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`482; Paper 1 at 48-50; Ex. 1218, ¶¶ 208, 210; Ex. 1233, ¶¶ 426-427.)
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`IV. Claim 54 is Obvious Over Fox Papers + Saito + Fox Envision + Little
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`U.S. Patent No. 5,832,494
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`PO makes no arguments directed at dependent claim 54.
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`V. The Tapper Papers Render Obvious Claims 18-20, 48, and 49.
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`Claim 18 Preamble. As with the Fox Papers, PO argues that the Tapper
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`Papers do not disclose limitations recited only in ’352 claim 26, not in the ’494
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`claims. (POR at 14-15 (“Claim 26 requires . . .”).) The Board correctly found that
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`the Tapper Papers teach a database having a first numerical representation of direct
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`relationships (citation vectors; weight values). (Paper 18 at 18.)
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`“Database” Argument. The ’494 claims do not require a first
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`numerical representation based on citations among full-text objects in a database,
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`as noted above. Moreover, the Tapper Papers teach citation vector techniques for
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`“the retrieval of legal information” from full-text systems such as Westlaw and
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`LEXIS. (Tapper 1976 at 260, 270-271; Tapper 1982 at 159-61; Ex. 1233, ¶¶ 245,
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`100-105, 152.) They teach algorithms to extract citations from text, and suggest
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`using citation vectors to “group documents together in the database” and to search
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`for and “look at” “cases in the database.” (Tapper 1976 at 262, 271, 275.)
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`“Numerical” Representation. PO shows no error in the Board’s
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`finding that Tapper’s citation vectors disclose a “numerical representation.” (Paper
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`18 at 18.) PO argues that the vectors are not “numerical” because, as explained
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`above, PO contends that a “numerical” representation can have only numbers.
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`(POR at 11, 36.) PO’s interpretation is incorrect as stated in Part I.B above.
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`U.S. Patent No. 5,832,494
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`Tapper’s citation vectors are processed by computer and numerically, like those in
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`the ’494 patent. (Tapper 1982 at 142-143; Tapper 1976 at 272; Ex. 1201, 16:47-
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`17:32.) Moreover, the legal citations in Tapper clearly qualify as numerical
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`representations. For example, Tapper’s exemplary citation for a case, “500 F.2d
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`411,” identifies the volume number (500), reporter series number (2nd series,
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`Federal Reporter), and page number (411) for the case. (Ex. 1233, ¶¶ 244, 117-9.)
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`Even if PO’s construction of “numerical representation” had merit, there is
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`nothing non-obvious about creating citation vectors consisting solely of numbers.
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`The Tapper Papers describe assigning each case in the database a unique ID
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`number. (Tapper 1982 at 148, n.3 (noting that “cases in the British database” have
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`“numbers allocated” to them in the order they were reported), 154; Tapper 1976 at
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`268-69 (“cases 1, 2, 3 and 4”).) Cases can also be split into subparts with a vector
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`for each. (Tapper 1976 at 259, 269.) And one could “very easily” use a “simple
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`conversion table” to map “extracted” citations to any “chosen style.” (Tapper 1982
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`at 136.) As PO’s expert testified, it was a “simple matter to map a string citation to
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`a case number once you have already numbered a set of cases in the database,”
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`such as using a table, to create a “vector that’s comprised of numbers.” (Ex. 1235,
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`313:7-316:23, 339:3-342:6; Ex. 1233, ¶¶ 244, 107-115, 410-18.)
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`“Generating” Step. PO argues that the Tapper Papers do not teach the step
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`of “generating a second numerical representation using the first numerical
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`U.S. Patent No. 5,832,494
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`representation.” (POR at 37-8.) PO also argues that the Petitioners rely on the
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`same structure for both the first and second numerical representations. (Id.)
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`PO’s arguments improperly ignore the teachings of Tapper of (1) analyzing
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`citation vectors to generate a “second generation” vector (Tapper 1976 at 266); (2)
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`analyzing vectors to generate correlation “hits” (including matrices and clusters)
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`representing the indirect relationship that two cases cite a third case (Tapper 1976
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`at 266, 272; Tapper 1982 at 142-144); and (3) analyzing numeric weight strings
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`(number values B(21), C(13) etc.) to generate correlation values of the indirect
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`relationships between two cases (Tapper 1982 at 143). Each of these three features
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`independently discloses the claimed second numerical representation.
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`The Board correctly observed that Tapper 1976 discloses the claimed
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`generation step through “second generation” citations. (Paper 17 at 22.) Where “a
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`case cites cases ‘A,’ ‘B’ and ‘C,’” the first case can be “represented by a
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`combination of its own vector, and those of cases ‘A, ‘B’ and ‘C’.” (Tapper 1976
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`at 266.) These second generation citations were generated from an analysis of
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`first-generation vectors, i.e. the vector (“first numerical representation”) for each
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`case. (Ex. 1233, ¶¶ 247, 132-35.)
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`“Storing” Step. PO suggests that the Tapper Papers do not disclose
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`“storing” the second numerical representations for “searching.” (POR at 38-9.)
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`But the Tapper Papers teach full-text searching by “matching” stored citation
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`vectors, “enriching” full-text search with stored correlation data, and enabling a
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`“document to be retrieved” (i.e. searching) based on stored vector correlation and
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`stored relationship that two documents are “associated with a third.” (Tapper 1976
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`at 270-1, 262; Tapper 1982 at 160, 143-5; Ex. 1233, ¶¶ 248, 151-152, 254-259.)
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`Claim 19. The same teachings above for claim 18’s “generating” step also
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`disclose the steps of claim 19, including selecting an object (case / citation vector),
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`“analyzing” direct relationships, and “creating” a second representation.
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`As noted, the correlation analysis in Tapper 1976 identifies when “two cases
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`both cite the same case,” such as where the vectors for cases “1” and “2”
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`“overlap . . . in citing case C.” (Tapper 1976 at 264, 268-269, 272, 274; Ex. 1233,
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`¶¶ 250-252, 139-149.) This identifies an “indirect relationship” between Case 1
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`and Case 2. PO nonetheless argues that where Case 1’s vector includes its own
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`citation, one of its correlation “hits” with Case 2’s vector might identify that Case
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`2 cites Case 1. (POR at 41.) This argument is flawed for several reasons. First,
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`Tapper teaches an embodiment in which the citation vector for a case does not
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`include its own citation and includes “as vector elements only cited cases.” (Tapper
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`1982 at 139 (emphasis added), 158 (easy to include cited cases automatically).)
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`Second, whether a citation vector for a case contains its own citation is irrelevant.
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`The claim language only requires a numerical representation “of direct
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`relationships in the database.” Tapper’s citation vector satisfies this requirement.
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`IPR2013-00479
`U.S. Patent No. 5,832,494
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`Claim 20. PO argues that the Tapper Papers do not disclose “searching for
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`objects in a database using the stored numerical representation” as claim 20 recites.
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`(POR at 42.) The argument is baseless. As set forth above for the “storing” step of
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`claim 18, Tapper teaches to use the stored second numerical representations to
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`search for documents in “a full-text retrieval system.” (Paper 1 at 28-31, 33-34;
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`Ex. 1204 at 270-271, 272; Ex. 1205 at 143-144; Ex. 1233, ¶¶ 253-259.)
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`PO argues that Tapper 1976 does not suggest using the second generation
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`citation vector for searching. (POR at 42.) That is incorrect. Tapper 1976 teaches
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`the second generation vector to account for old and little-cited, but relevant, legal
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`authority. (Ex. 1204 at 265-6.) Tapper thus motivates using that vector in vector-
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`matching searching for legal research. (Id. at 270-71; Ex. 1233, ¶ 257.)
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`Claim 48. The Board correctly found that the Tapper Papers teach and
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`render obvious using both the stored second numerical representations and
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`semantical factors to rank objects for display. (Paper 18 at 18-19; Ex. 1205 at 160;
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`Ex. 1204 at 254, 272.) Tapper 1976 discloses “ranking algorithms” for semantical
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`search results in full-text systems. (Ex. 1205 at 254.) It also discloses “rank[ing]”
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`citation vector-based search results by “closeness of fit,” and the citation vectors
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`are used with full-text retrieval. (Id. at 270-271.) It also teaches that the stored
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`correlation data could be useful “in a full-text retrieval system” for “enriching”
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`search formulations. (Ex. 1204 at 272.) This teaches to enrich ranked semantical
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`IPR2013-00479
`U.S. Patent No. 5,832,494
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`search results with the stored representations. (Ex. 1233, ¶¶ 260-262.) Combining
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`adjacent embodiments in a prior art reference “does not require a leap of
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`inventiveness.” Boston Scientific v. Cordis, 554 F. 3d 982, 991 (Fed. Cir. 2008).
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`Claim 49. PO argues that the Tapper Papers do not disclose that generating
`
`the second numerical representation “considers a quantity of direct relationships
`
`from an object to other objects.” (POR at 43-44.) To the contrary, Tapper teaches
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`a “frequency” value or weight based on the quantity of times a case cites another
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`case, and that value is used to generate the correlation value. (Tapper 1982 at 142,
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`143; Tapper 1976 at 270 (weight by number of citations); Ex. 1233, ¶¶ 263-267.)
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`VI. PO Shows No Nexus For Its Alleged Secondary Considerations
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`Federal Circuit law clearly establishes that a patentee must establish a
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`“nexus” between evidence of secondary considerations (e.g. commercial success)
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`and the features of the claimed invention and not an element of the prior art. See
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`Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); In re Kao, 639
`
`F.3d 1057, 1068 (Fed. Cir. 2011). PO states that “[t]here is a nexus between the
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`commercial success of Google and PageRank.” (POR at 60.) But PO never proves
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`that Google practiced the claims, let alone earned its success from practicing the
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`claimed features as opposed to using “an element in the prior art.” Tokai v.
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`Easton, 632 F.3d 1358, 1369 (Fed. Cir. 2011). PO has not shown that Google’s
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`success was in any way attributable to any feature in the challenged claims.
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`IPR2013-00479
`U.S. Patent No. 5,832,494
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`
`
`DATED: September 5, 2014
`
`Cooley LLP
`Patent Docketing
`Attn: Heidi L. Keefe
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: 650-843-5001
`Fax: 650-849-7400
`
`
`
`
`
`
`Respectfully submitted,
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners Facebook, Inc,
`LinkedIn Corp., and Twitter Inc.
`
`
`16
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`IPR2013-00479
`U.S. Patent No. 5,832,494
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE and Exhibits 1233
`
`to 1238 were served on September 5, 2014 by electronic mail directed to the
`
`attorneys of record at the following address:
`
`Martin M. Zoltick
`Nancy J. Linck
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Service Email: SRA-IPR@rfem.com
`
`
`
`
`
`
`
`Lead and Backup Counsel for Patent
`Owner
`
`
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners Facebook, Inc.,
`LinkedIn Corp., and Twitter Inc.
`
`
`17
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