Filed on behalf of: Software Rights Archive, LLC Paper ____
`
`
`
`
`
`By: Martin M. Zoltick, Lead Counsel
`Nancy J. Linck, Back-up Counsel
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Telephone: 202-783-6040
`Facsimile: 202-783-6031
`E-mail: mzoltick@rfem.com
` nlinck@rfem.com
`
`
`
`
`
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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
`_______________
`
`Case IPR2013-00479
`Patent 5,832,494
`_______________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: Martin M. Zoltick, Lead Counsel
`Nancy J. Linck, Back-up Counsel
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Telephone: 202-783-6040
`Facsimile: 202-783-6031
`E-mail: mzoltick@rfem.com
` nlinck@rfem.com
`
`
`
`
`
`
`
`
`
`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
`_______________
`
`Case IPR2013-00479
`Patent 5,832,494
`_______________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
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`
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`Case IPR2013-00479
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`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... ii
`LIST OF EXHIBITS ................................................................................................ iii
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF REASONS WHY NO INTER PARTES REVIEW
`II.
`SHOULD BE INSTITUTED UNDER 35 U.S.C. § 314 FOR GROUNDS
`4, 5, AND 10 .................................................................................................... 4
`A. Grounds 4 and 5 .................................................................................... 4
`1.
`Thompson does not Anticipate any Claim of the ‘494 Patent
`(Ground 4) ................................................................................... 5
`Thompson does not Render Obvious any Claim of the ‘494
`Patent (Ground 5) ...................................................................... 13
`Ground 10 ............................................................................................ 17
`1.
`The Fox Papers are Cumulative of Salton 1963 ....................... 18
`2.
`Both Salton 1963 and Salton 1990 were Considered by the
`Office in a Related Reexamination ........................................... 21
`III. GROUNDS NOT ADDRESSED IN PRELIMINARY RESPONSE ........... 25
`IV. CONCLUSION .............................................................................................. 25
`
`
`2.
`
`B.
`
`
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`i
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`Case IPR2013-00479
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd.,
`IPR2013-00038 (Paper 9) (PTAB Mar. 31, 2013) ............................................... 24
`
`Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd.,
`IPR2013-00066 (Paper 10) (PTAB Apr. 24, 2013) .............................................. 24
`
`Facebook, Inc. v. Software Rights Archive, LLC,
`IPR2013-00480 (Paper 2) (PTAB July 30, 2013) ................................................ 21
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ................................................................................ 11
`
`In re Robertson,
`169 F.3d 743, 49 USPQ2d 1949 (Fed. Cir. 1999) ................................................ 11
`
`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Paper 7) (PTAB Oct. 25, 2012) .............................................. 18
`
`Nissan N. Am., Inc. v. Bd. of Regents, The Univ. of Texas Sys.,
`IPR2012-00035 (Paper 30) (PTAB Mar. 19, 2013) ............................................. 18
`
`Statutes
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`35 U.S.C. § 323 .......................................................................................................... 4
`
`35 U.S.C. § 324 .......................................................................................................... 4
`
`35 U.S.C. § 325(d) ................................................................................................... 22
`
`Rules
`
`37 C.F.R. § 42.108 ................................................................................................... 17
`
`37 C.F.R. § 42.207(a) ................................................................................................. 1
`
`
`
`ii
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`Case IPR2013-00479
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`LIST OF EXHIBITS
`
`Gerard Salton and Chris Buckley, “Approaches to Text
`Retrieval for Structured Documents,” Department of Computer
`Science, Cornell University, January 1990, pp. 1-19.
`
`Reexamination Control No. 90/011,010, Notice of Intent to
`Issue Ex Parte Reexamination Certificate, mailed on June 29,
`2011.
`
`IBM Dictionary of Computing 654 (10th ed. 1994).
`
`Sams Computer Dictionary 479 (4th ed. 1986).
`
`Reexamination Control No. 90/011,010, Order Granting
`Request for Ex Parte Reexamination, mailed on August 2,
`2010.
`
`U.S. Patent No. 5,544,352, issued on August 6, 1996.
`
`Reexamination Control No. 90/011,010, Office Action, mailed
`on December 10, 2010.
`
`
`
`
`
`iii
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`
`Exhibit 2001:
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`
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`Exhibit 2002:
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`
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`Exhibit 2003:
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`Exhibit 2004:
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`Exhibit 2005:
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`Exhibit 2006:
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`Exhibit 2007:
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`Case IPR2013-00479
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`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, Software Rights Archive,
`
`LLC, submits this Preliminary Response to the Petition for Inter Partes Review of
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`U.S. Patent No. 5,832,494 (“’494 patent”) filed by Facebook, Inc. (“Facebook”),
`
`LinkedIn Corp. (“LinkedIn”), and Twitter, Inc. (“Twitter”) (together the
`
`“Petitioners”).
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`The Board should deny, at least in part, the petition for two independent
`
`reasons.
`
`First, Petitioners have failed to meet the threshold set forth in 35 U.S.C. §
`
`314(a) for institution of inter partes review based on Grounds 4 and 5, which
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`allege, respectively, that claims 18-20, 48, and 49 are anticipated and obvious in
`
`view of Rodger H. Thompson, “The Design and Implementation of an Intelligent
`
`Interface for Information Retrieval,” University of Massachusetts, Computer and
`
`Information Science Department, Thesis, COINS Technical Report 88-89, pp. 1-
`
`216, 1989 (“Thompson”) (Ex. 1214, Parts 1-5). Petitioners have failed to show
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`that there is a reasonable likelihood that they would prevail in showing that any of
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`the claims are unpatentable in view of Thompson. As is clear from Thompson
`
`itself, as well as Petitioners’ limited citations to the reference’s actual disclosure,
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`Thompson fails to teach, and would not have suggested, numerous features of
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`claims 18-20, 48, and 49.
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`1
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`Case IPR2013-00479
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`Petitioners have attempted to remedy the deficiencies of Thompson through
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`a declaration of its author; however, the declaration merely highlights the deficient
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`teachings of the reference, and emphasizes the fact that much of what Petitioners
`
`assert is not actually disclosed in Thompson. The author’s recollections of what
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`may or may not have been done, or what could have been done, are irrelevant to
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`whether the asserted Thompson publication anticipates or renders obvious any
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`claim of the ‘494 patent. Accordingly, Patent Owner respectfully submits that the
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`Board should not institute review on the basis of Grounds 4 and 5.
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`Second, Ground 10 alleges anticipation of claims 18-20, 48, and 49 of the
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`‘494 patent in view of “Associative Document Retrieval Techniques Using
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`Bibliographic Information,” Harvard University Study, 1963, by Gerard Salton
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`(“Salton 1963”). Salton 1963 is redundant of the Fox Papers relied upon in
`
`Grounds 1-3 for the same claims.1 Moreover, Salton 1963 and a second reference
`
`1 See Fox, Edward A., “Extending the Boolean and Vector Space Models of
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`Information Retrieval with P-Norm Queries and Multiple Concept Types,” Cornell
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`University – Thesis, 1983, pp. 1-364 (the “Fox Thesis”) (Ex. 1209); Fox, Edward
`
`A., “Some Considerations for Implementing the SMART Information Retrieval
`
`System Under UNIX,” TR 83-560, Cornell University, Department of Computer
`
`Science, September 1983, pp. 1-88 (“Fox SMART”) (Ex. 1208); and Fox, Edward
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`A., “Characteristics of Two New Experimental Collections in Computer and
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`
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`2
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`by the same author, “Approaches to Text Retrieval for Structured Documents,”
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`Dept. of Computer Science, Cornell University, Jan. 1990, pp. 1-19 (“Salton
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`1990”) (Ex. 2001), were before the Office in a prior reexamination of similar
`
`claims, were identified as creating a “substantial new question of patentability,”
`
`and then dismissed as cumulative by the Examiner and successfully overcome by
`
`the Patent Owner. See Reexamination Control No. 90/011,010, Notice of Intent to
`
`Issue Ex Parte Reexamination Certificate, mailed June 29, 2011 (Ex. 2002). As
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`such, Patent Owner respectfully submits that the Board should not initiate review
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`on the basis of Ground 10, which is cumulative of other grounds and based on a
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`reference that has already been before the Office in a related proceeding.
`
`In deference to the Board’s mandate that the proceedings be completed
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`within a year from institution and ability to institute on some, but not all, grounds,
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`Patent Owner submits that the scope of any inter partes review of the claims of the
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`‘494 patent should exclude those grounds for which Petitioners have failed to meet
`
`its threshold burden, and where argument of cumulative or redundant references
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`would only serve to obfuscate the underlying issues. This narrowing of issues will
`
`
`Information Science Containing Textual and Bibliographic Concepts,” TR 83-561,
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`Cornell University, Department of Computer Science, September 1983, pp. 1-64
`
`(“Fox Collection”) (Ex. 1206) (together the “Fox Papers”).
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`3
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`Case IPR2013-00479
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`prevent the unnecessary exhaustion of time and resources that would accompany a
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`review of all claims and all requested grounds.
`
`II.
`
`STATEMENT OF REASONS WHY NO INTER PARTES REVIEW
`SHOULD BE INSTITUTED UNDER 35 U.S.C. § 314 FOR GROUNDS
`4, 5, AND 10
`Petitioners’ request for inter partes review of claims 18-20, 48, and 49 on
`
`Grounds 4-5 and 10 should be denied for at least the reasons discussed in detail
`
`below.2
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`A. Grounds 4 and 5
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`Patent Owner submits that the Board should not initiate review on the basis
`
`of Grounds 4 or 5 because Petitioners have failed to demonstrate that there is a
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`reasonable likelihood that they would prevail in showing that any of the claims are
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`unpatentable in view of Thompson.
`
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`2 Petitioners did not include a statement of material facts in support of their
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`petition. Accordingly, Patent Owner has not included a separate statement
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`identifying material facts in dispute. In accordance with 35 U.S.C. § 313, this
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`response is “preliminary” and Patent Owner reserves the right, should the petition
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`be granted on any grounds, to dispute in the Patent Owner’s Response any fact
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`alleged to be material by Petitioners, and to provide further material facts in
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`support of Patent Owner’s position.
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`4
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`Case IPR2013-00479
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`Thompson is directed to an Intelligent Interface for Information Retrieval
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`(I3R), which attempts to combine the benefits of commercial retrieval systems
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`with those of an intermediary service. See Ex. 1214-Part 1, at pp. 15-17. As
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`explained in Thompson, “documents are represented by lists of concepts that occur
`
`in them,” including authors, and their frequency in the document. See id. at p. 24.
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`Also, citation information can be retained as well as the “document nearest
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`neighbors, which is a link based on the similarity of the representations of two
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`documents.” Id. This information is combined to form the “concept/document
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`knowledge base.” Id. Thus, Thompson uses extensive lists of terms and concepts
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`to aid in information retrieval.
`
`In contrast, the ‘494 patent describes and claims a non-semantical method
`
`and system for representing and then searching for objects that are located in a
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`computer database using numerical representations. See, e.g., Ex. 1201, col. 3,
`
`lines 27-34; col. 16, line 54 – col. 18, line 19; col. 53, lines 27-40. The numerical
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`representations are used to capture the direct and indirect relationships between
`
`and among these objects. Id.
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`1.
`
`Thompson does not Anticipate any Claim of the ‘494 Patent
`(Ground 4)
`
`Claim 18 of the ‘494 patent requires using a first numeric representation of
`
`direct relationships in a database to generate a second numeric representation that
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`5
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`accounts for indirect relationships, and three additional steps involving storing the
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`second representation, identifying objects using it, and displaying the objects:
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`Case IPR2013-00479
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`A method of analyzing a database having objects and a first numerical
`representation of direct relationships in the database, comprising the
`steps of:
`
`generating a second numerical representation using the first numerical
`representation, wherein the second numerical representation accounts
`for indirect relationships in the database;
`
`storing the second numerical representation;
`
`identifying at least one object in the database, wherein the stored
`numerical representation is used to identify objects; and
`
`displaying one or more identified objects from the database.
`
`Col. 53, ll. 27-39. Thompson fails to teach the above-identified features for any of
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`the following reasons.3
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`First, it appears that Petitioners have taken the position that the “citation
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`links” stored in the “VAX/RMS” type files described in Thompson correspond to
`
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`3 Patent Owner does not agree with Petitioners’ claim construction and reserves the
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`right to construe these claim terms in the Patent Owner Response should the Board
`
`institute inter partes review for the ‘494 patent. However, Patent Owner submits
`
`that, even under Petitioners’ claim construction, the above-identified features of
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`claim 18 are neither disclosed nor suggested in Petitioners’ references.
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`6
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`Case IPR2013-00479
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`the claimed “first numerical representation.” See Petition at p. 19.4 However, a
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`mere list of citations does not teach the “first numerical representation,” as
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`claimed. The default key data type for a VAX/RMS file is expressly identified as a
`
`string. Ex. 1215 at pp. 5-15 (“KEYSC_STRING ... Left-justified string of
`
`unsigned, 8-bit bytes. This is the default.”) (emphasis added). Petitioners provide
`
`no evidence that the disclosed citation links, stored as strings, are, or could
`
`reasonably be considered, a “numerical representation” of direct relationships in a
`
`database, as required by claim 18. See, e.g., IBM Dictionary of Computing (10th
`
`ed. 1993) (Ex. 2003) (defining “string” as “[i]n programming languages, the form
`
`of data used for storing and manipulating text.”); Sams Computer Dictionary
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`(Sippl 4th ed. 1986) (Ex. 2004) (defining “string” as “a connected sequence of
`
`characters, words, or other elements”); see also Thompson Decl., ¶¶ 56-57 (Ex.
`
`
`4 Patent Owner notes that the Thompson Decl. does not specifically address the
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`“first numerical representation” with respect to claim 18, or “generating a second
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`numerical representation using the first numerical representation, wherein the
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`second numerical representation accounts for indirect relationships in the
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`database,” as required by claim 18. Rather, the declarant merely references his
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`opinions regarding claim 26 of the ‘352 patent.
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`7
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`Case IPR2013-00479
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`1219).5 In fact, Petitioners’ introduction to Ground 5 appears to recognize that the
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`claimed numerical representation is not “expressly described” by Thompson. See
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`Petition at p. 26.
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`Thompson is silent regarding a “first numerical representation” as claimed.
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`Because Petitioners have failed to even identify a numerical representation
`
`corresponding to this claim limitation, Ground 4 is defective on its face. For at
`
`least this reason, Patent Owner respectfully submits that Petitioners have failed to
`
`meet their threshold burden regarding anticipation, and the Board should not grant
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`inter partes review on Ground 4.
`
`
`5 To the extent that Petitioners assert that the mere storage of information in a
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`computer discloses a “numerical representation,” such an interpretation is
`
`unreasonable and would render the claims meaningless. See Thompson Decl., ¶¶
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`56-57 (Ex. 1219). The content of VAX/RMS type files is strings that, by
`
`themselves, do not disclose the use of numerical representations. Also, the
`
`Petition’s frequent citation to numerical values such as “keys,” “pointers,” and
`
`“document numbers” is a red herring – the Petition does not identify any of these
`
`in subsequent claim steps as the claimed first or second “numerical
`
`representation.” Only the citation links, which are stored as strings in VAX/RMS
`
`type files, are used in the Petition’s subsequent arguments.
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`Case IPR2013-00479
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`Second, Thompson does not disclose “generating a second numerical
`
`representation using the first numerical representation, wherein the second
`
`numerical representation accounts for indirect relationships in the database,” as
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`required by claim 18. In support of their position that Thompson discloses this
`
`feature, the Petitioners’ chart relies on page 96 of Thompson, which is reproduced
`
`below for the Board’s convenience:
`
`Each document also contains citation links, which connect it to other
`documents; these are important since they represent author judgments
`of what other documents are related to the contents of their
`documents. They can be used directly to facilitate finding other
`documents, or they can be used to generate two other kinds of
`document-document similarity links called bibliographic coupling
`(BC) links and co-citation (CC) links [Salton 83, Mansur 80]. The
`first is based on the overlap of two documents' reference lists, and the
`second is based on the number of times that two documents appear
`together in reference lists of other documents. Due to some
`deficiencies in the test collection that is currently used by I3R, the BC
`and CC links are not generated. Specifically, the citation information
`available for each document only references other documents in the
`collection. Consequently, accurate determination of bibliographic
`coupling links could not be made, since much many references were
`missing.
`
`Ex. 1214-Part 3 at p. 8 (emphasis added); see Petition at pp. 21.
`
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`Case IPR2013-00479
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`Contrary to Petitioners’ assertions, this passage of Thompson actually
`
`teaches that the bibliographies of the documents are used, rather than a “numerical
`
`representation of direct relationships in the database,” as required by claim 18. A
`
`careful reading of the relied-upon portions of Thompson reveals that one cannot
`
`use the citation links stored in the VAX/RMS files in creating BC or CC links;
`
`rather, the bibliographies of the documents themselves must be used. In
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`Thompson, to the extent that “citation links” may be used to generate “similarity
`
`links,” such as BC and CC links, those citation links must be within the
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`document’s bibliography rather than those stored in the VAX/RMS files: “Each
`
`document also contains citations links.” Ex. 1214-Part 3 at p. 8. Thompson
`
`further describes the use of the underlying documents to create the BC and CC
`
`links and explicitly states that the BC links are “based on the overlap of two
`
`documents’ reference lists” and the CC links are “based on the number of times
`
`that two documents appear together in reference lists of other documents.” Id.
`
`(emphasis added). Thus, the relied-upon portion of Thompson does not disclose
`
`generating a second numerical representation “using the first numerical
`
`representation,” as alleged by Petitioners.
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`For at least this reason, Petitioners have failed to meet their threshold burden
`
`and the Board should not grant inter partes review on Ground 4.
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`To the extent that Petitioners assert that the above-identified missing
`
`features of Thompson are inherent, they have failed to carry their burden. To
`
`establish inherency, the extrinsic evidence “must make clear that the missing
`
`descriptive matter is necessarily present in the thing described in the reference, and
`
`that it would be so recognized by persons of ordinary skill. Inherency, however,
`
`may not be established by probabilities or possibilities. The mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient.” In re
`
`Robertson, 169 F.3d 743, 745, 1950-51 (Fed. Cir. 1999) (emphasis added) (internal
`
`citations omitted); see also In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)
`
`(“The fact that a certain result or characteristic may occur or be present in the prior
`
`art is not sufficient to establish the inherency of that result or characteristic.”). The
`
`Petition fails to allege that any teaching not expressly disclosed in Thompson is
`
`“necessarily present.” Similarly, the Thompson declaration makes no such
`
`averment. To the contrary, the Thompson declaration actually highlights what was
`
`possible or could have been done, further supporting the fact that any missing
`
`disclosure is not inherent.
`
`Finally, the Thompson declaration does not remedy the deficiencies of the
`
`Thompson reference. Statements made by Mr. Thompson in his declaration
`
`(signed in 2013) cannot alter the express and contradictory statements he made in
`
`1989, nor do they change what the Thompson reference would have taught or
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`11
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`suggested to one of ordinary skill in the art at the time the ‘494 patent was filed.
`
`Moreover, the Thompson declaration is focused on the claims of the ‘352 patent
`
`rather than the specific limitations of claim 18 of the ‘494 patent. Patent Owner
`
`respectfully submits that Petitioners’ inclusion of the declaration, and citations to
`
`the declaration in the claim charts, merely serve to highlight the fact that the actual
`
`reference does not teach every feature of claim 18.
`
`Mr. Thompson’s declaration is not prior art. His opinion regarding what he
`
`could have done or what the “bibliographic coupling links and co-citation links
`
`would” have been had he done something other than what is disclosed should not
`
`be relevant to the Board’s consideration of the Thompson reference. Moreover,
`
`Mr. Thompson’s averments in the declaration are directly contradicted by the plain
`
`language of the Thompson reference. For instance, in his analysis of the features
`
`of claim 26 of the ‘352 patent, Mr. Thompson states that it would have been
`
`“convenient and efficient” to use the citation links stored in the
`
`DOC_DOC_CITATION file to generate BC and CC links (Ex. 1219 at ¶ 60);
`
`however, the Thompson reference does not actually teach the use of these stored
`
`links, and plainly states that the “BC and CC links are not generated” because an
`
`“accurate determination of bibliographic coupling links could not be made”
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`(emphasis added). The actual disclosure of the Thompson reference does not
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`anticipate claim 18.
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`Case IPR2013-00479
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`The Petition’s assertions with respect to numerous dependent claims are also
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`unsupported by the cited art. However, because independent claim 18 has been
`
`addressed, a further discussion of these dependent claims is unnecessary at this
`
`time.
`
`Patent Owner respectfully submits that the Board should not initiate inter
`
`partes review on the basis of Ground 4.
`
`2.
`
`Thompson does not Render Obvious any Claim of the ‘494
`Patent (Ground 5)
`
`
`
`Petitioners did not provide a separate claim chart for their assertion that
`
`claims 18-20, 48, and 49 are obvious in view of Thompson (Ground 5). Rather,
`
`Petitioners’ argument, in total, is as follows:
`
`In addition to anticipating claims 18-20, 48, and 49, Thompson also
`renders them obvious, which Petitioners address to the extent PO
`argues Thompson does not expressly describe features such as
`“numerical” first and second representations, storing the second
`representation, or generating the second representation from the first.
`Thompson Decl. ¶¶ 55-68, 91. The skilled artisan would have
`recognized that Thompson’s VAX/RMS files (including the citation
`links file) contain numerical data, and it also would have been
`obviously convenient and efficient to represent the data numerically
`(as opposed to alphabetic or other non-numerical form) for
`computerized, mathematical processing purposes. The skilled artisan
`also would have recognized the BC and CC indirect citation links as
`obviously numerical data that is conveniently and efficiently
`
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`Case IPR2013-00479
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`generated using citation link data that the system stores, and is stored
`for use in searching.
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`Petition at p. 26.
`
`It appears that the primary thrust of Petitioners’ obviousness argument is that
`
`it “would have been obviously convenient and efficient to represent the data
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`numerically.” See also Thompson Decl., ¶¶ 56 and 57 (Ex. 1219). However, this
`
`position is unsupported by the Thompson reference and the Thompson declaration.
`
`Moreover, Petitioners’ obviousness section fails to address the additional
`
`deficiencies of the Thompson reference described above with respect to Ground 4.
`
`For instance, neither the text of the Petition nor the Thompson declaration
`
`address the deficiencies of Thompson with respect to “generating a second
`
`numerical representation using the first numerical representation, wherein the
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`second numerical representation accounts for indirect relationships in the
`
`database,” as required by claim 18. Neither the Petition nor the Thompson
`
`Declaration provides an explanation as to why this claim limitation is allegedly
`
`obvious though not disclosed in the Thompson reference. In fact, the relied-upon
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`portions of the Thompson declaration are actually directed to claims 26, 29, 30, 32,
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`and 39 of the ‘352 patent.6
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`6 Paragraph 91 of the Thompson declaration notes that “the 494 patent is closely
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`analogous to the elements of claim 26 of the ‘352 patent” and “my opinions
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`14
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`Case IPR2013-00479
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`As discussed above, the citation links of the VAX/RMS files are merely
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`strings, and there is no teaching or suggestion in the Thompson reference that they
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`are numerical representations. See discussion supra at II.A.1. Neither Petitioners
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`nor Mr. Thompson has provided a reason why one of ordinary skill in the art
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`would have converted these strings to the claimed numerical representations, what
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`such a conversion would entail, or whether such a conversion would even be
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`possible. For instance, neither has identified any weakness of the system disclosed
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`in Thompson that would have motivated, or been addressed, by the cumbersome
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`process of attempting to convert the citation link strings to numerical
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`representations as claimed. In effect, Petitioners have merely taken the position
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`that numerical records are convenient. The Thompson reference neither teaches
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`nor suggests the claimed first numerical representation, and thus, the Board should
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`not grant inter partes review on Ground 5 for at least this reason.
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`regarding claim 26 of the ‘352 patent apply to the corresponding claim limitations
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`of claim 18.” Patent Owner notes that the claim language of claim 26 of the ‘352
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`patent and claim 18 of the ‘494 patent do not directly “correspond.” The declarant
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`has elected not to address the actual limitations of claim 18 of the ‘494 patent, or
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`opine on why its limitations would have been obvious to one of ordinary skill in
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`the art.
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`15
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`Case IPR2013-00479
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`There is also no explanation as to how the missing teachings of Thompson
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`with respect to the claimed step of “generating a second numerical representation
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`using the first numerical representation” were allegedly obvious. The citation
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`links, which are stored within the VAX/RMS files, and which Petitioners have
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`identified as the “first numerical representation,” are not used to generate a second
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`numerical representation that “accounts for indirect relationships in the database,”
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`as required by claim 18. Rather, the bibliographies of the documents would be
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`used (their use is not actually disclosed).
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`Moreover, the relied-upon passage teaches away from the claimed invention,
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`explicitly stating that “the BC and CC links are not generated” and that an
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`“accurate determination of bibliographic coupling links could not be made.” Based
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`on the reference’s explicit warning, one of ordinary skill in the art would have
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`readily recognized that the citation links of the VAX/RMS could not be used in the
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`process to generate BC and CC links. The reason that the strings stored in the
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`VAX/RMS could not be used is expressly stated: “the citation information
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`available for each document only refers to other documents in the collection,” and
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`thus, “many references were missing.” Ex. 1214-Part 3 at p. 8. This reasoning is
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`Case IPR2013-00479
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`based on the difference between a “closed collection” and an “open collection,” a
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`distinction that Petitioners have wholly overlooked. 7
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`Given his statements at the time he authored the reference, Mr. Thompson’s
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`current position that use of the stored citation links would have been “the obvious
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`way to generate BC and CC links,” after having read the ‘494 patent disclosure,
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`appears disingenuous. One of ordinary skill in the art would not have arrived at
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`claim 18 based on the limited disclosure of Thompson. The Thompson declaration
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`does not change this fact, as it merely describes what allegedly “would” have been
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`done had he attempted to apply the process of claim 18, rather than what he
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`actually did or what is described in the reference.
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`In view of the foregoing, Patent Owner respectfully submits that the Board
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`should not initiate inter partes review on the basis of Ground 5.
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`B. Ground 10
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`7 The problem that Thompson is referring to is that, in the system of his thesis,
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`there were referenced papers that were not in the collection, and that those
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`references were missing from the citation data. In other words, the data he had
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`represented a closed collection; i.e., one in which references are considered only
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`between documents within the collection itself. What he recognized is that there
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`was no point in attempting to compute BC or CC using a closed collection.
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`17
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`Case IPR2013-00479
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`Patent Owner respectfully submits that the Board should not initiate review
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`on the basis of Ground 10, which relies on Salton 1963, since it is redundant of
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`Grounds 1-3 for the same claims based on the Fox Papers. Further, the Salton
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`1963 reference has already been before the Office in a reexamination proceeding
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`involving a related patent, U.S. Patent No. 5,544,352 (“‘352 patent”).
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`The Board has authority to institute inter partes review (IPR) on all or some
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`of the grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108. As
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`such, the Board has the authority to deny some grounds of unpatentability as
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`redundant to other presented grounds. See, e.g., Nissan N. Am., Inc. v. Bd. of
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`Regents, The Univ. of Texas Sys., IPR2012-00035 (Paper 30), at *18 (PTAB Mar.
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`19, 2013) (citing Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-
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`00003 (Paper 7), at *2 (PTAB Oct. 25, 2012). If the Board finds that there is a
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`reasonable likelihood of success for the grounds of unpatentability based on the
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`Fox Papers, the Board should deny the ground of alleged unpatentability over
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`Salton 1963 because the Fox Papers are cumulative of Salton 1963, and thus,
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`Ground 10 is redundant to Grounds 1-3.
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`1.
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`The Fox Papers are Cumulative of Salton 1963
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`Ground 10 of the petition alleges that Salton 1963 anticipates claims 18-20,
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`48, and 49 of the ‘494 patent. Claim 18 is independent; claims 19, 20, 48
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