UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner,
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
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`Patent No. 7,702,682
`Issued: April 20, 2010
`Filed: November 14, 2005
`Inventor: Michael De Angelo
`Title: SYSTEM AND METHOD FOR CREATING AND MANIPULATING
`INFORMATION CONTAINERS WITH DYNAMIC REGISTERS
`
`Inter Partes Reviews Nos. IPR2014-00079
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`PRELIMINARY RESPONSE BY PATENT OWNER
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`UNDER 37 C.F.R. § 42.107
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Patent No. 7,702,682
`Issued: April 20, 2010
`Filed: November 14, 2005
`Inventor: Michael De Angelo
`Title: SYSTEM AND METHOD FOR CREATING AND MANIPULATING
`INFORMATION CONTAINERS WITH DYNAMIC REGISTERS
`
`Inter Partes Reviews Nos. IPR2014-00079
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
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`TABLE OF CONTENTS
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`I. TECHNOLOGY BACKGROUND ..................................................................... 5
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`II. OVERVIEW OF THE ASSERTED PRIOR ART ........................................... 9
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`III. THE PETITION SHOULD BE DENIED ....................................................... 12
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`A. The Petition Fails To Explain the Relevance Of The References To The
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`Claims As Required By 37 C.F.R. § 104(b)(5) ....................................................... 12
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`B. The Petition Violates Rule 42.6 by Incorporating the Substance of Its
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`Arguments By Reference ........................................................................................ 16
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`C. The Petition Fails to Establish that Ex. 1010 (RFC) is a Prior Art Publication
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`23
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`D. There Is No Reasonable Likelihood of the Claims Being Invalidated ............ 25
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`1. Petitioner Fails to Construe and/or Incorrectly Construes Terms Material to
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`all Claims .............................................................................................................. 25
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`a. “Container” .................................................................................................. 28
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`b. “Register” and “Container Register” ........................................................... 30
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`c. “Gateway” .................................................................................................... 33
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`d. “Encapsulated”/”Encapsulating” ................................................................. 35
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`e. “New Container”.......................................................................................... 36
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`f. “Polling” ....................................................................................................... 37
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`g. Means-Plus-Function Limitations ............................................................... 39
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`2. There Is No Reasonable Likelihood Of Claims 1, 19, or 21 Being Found To
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`ii
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`Be Anticipated By Wachtel (Ex. 1005). ........................................................ 40
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`3. There Is No Reasonable Likelihood Of Claim 23 Being Found To Be
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`Anticipated By Wachtel (Ex. 1001). ............................................................ 44
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`4. There Is No Reasonable Likelihood Of Claims 18, 20, or 22 Being Found To
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`Be Anticipated in View of Wachtel (Ex. 1005). ........................................... 46
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`5. There Is No Reasonable Likelihood Of Claim 6 Being Found Rendered
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`Obvious in View of Wachtel (Ex. 1005) Based on “General Knowledge” . 51
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`6. There Is No Reasonable Likelihood Of Claims 3-7 Being Found Rendered
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`Obvious in View of Wachtel (Ex. 1005) in Combination with Culliss (Ex.
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`1003), SavvySearch (Ex. 1007), or Chang (Ex. 1008) .................................. 52
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`7. There Is No Reasonable Likelihood Of Claims 18, 20, or 22 Being Rendered
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`Obvious in View of Wachtel (Ex. 1005). ...................................................... 52
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`8. There Is No Reasonable Likelihood Of Claim 4 Being Found to Be
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`Anticipated Wachtel (Ex. 1005) and RFC (Ex. 1010). ................................. 53
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`IV. CONCLUSION .................................................................................................. 54
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`ii
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`PRELIMINARY RESPONSE BY PATENT
`OWNER UNDER 37 C.F.R. § 42.107
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`Patent Owner Evolutionary Intelligence LLC hereby respectfully submits
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`this Preliminary Response to the Petition seeking inter partes review of U.S. Patent
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`No. 7,702,682.
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`The Petition is deficient and relies on prior art references that are entirely
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`distinct from the ’682 patent. The Petition should be rejected for three independent
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`reasons. First, the Petition fails to explain the relevance of the prior art to the
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`claims as required by 37 C.F.R. § 104(b)(5), including failing to establish that the
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`prior art discloses all elements “arranged as in the claims.” Second, the Petition is
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`deficient because it violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against
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`incorporating other arguments by reference. Third, even setting aside these critical
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`defects, the Petition should be rejected on the merits, because it fails to
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`demonstrate a reasonable likelihood of any claims being invalid—particularly
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`because it relies on unreasonably broad constructions for and fails to construe
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`terms that are material to all of the claims at issue. For at least these reasons, the
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`Petition does not show a reasonable likelihood of prevailing with respect to any of
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`the challenged claims, and inter partes review should not be instituted.
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`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
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`being filed within three months of the October 28, 2013 mailing date of the Notice
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`4
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`granting the Petition a filing date of October 23, 2013. Patent Owner has limited its
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`identification of deficiencies in Petitioner’s argument in this Preliminary Response;
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`no arguments are waived with respect to issues not addressed in this Preliminary
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`Response.
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`I.
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`Technology Background
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`The ’682 patent describes a “System and Method for Creating and
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`Manipulating Information Containers With Dynamic Registers.” The invention is
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`directed at improving searches for information in “information containers” (e.g.,
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`web pages or documents stored on various computers). At the time of the
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`invention, searching information resources on a computer network (e.g., the
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`internet) was “accomplished by individuals directing a search effort by submitting
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`key words or phrases to be compared to those key words or phrases contained in
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`the content or description of that information resource, with indices and contents
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`residing in a fixed location unchanging except by human input.” Ex. 1001 at 1:30-
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`37. As the ’682 patent notes, this “static” information model was limited, because,
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`inter alia, the information being searched did not evolve to reflect its actual utility
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`to the people using it, and successful search strategies were not available to others.
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`Ex. 1001 at 1:63-2:58. At most, the prior art allowed “hits” for a given web page to
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`be tracked, without any record of the page’s utility. See Ex. 1001, 2:30-3:6.
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`5
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`The invention solved this problem through the use of “dynamic” information
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`containers. The dynamic information containers include dynamic registers that
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`attach to and form part of the container. Ex. 1001 at 3:10-15. Each container has
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`an information element (e.g., text, audio, or video), a plurality of registers, and a
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`gateway. The plurality of registers for each container include (i) a unique
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`identification register for that container; (ii) a second register governing the
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`interactions of the container according to utility of the information in the
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`information element relative to space or time; (iii) an active register controlling
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`whether the container acts upon other containers according at a given time or
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`location; (iv) a passive register controlling whether the container can be acted upon
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`by other containers at a given time or location; and (v) a neutral register controlling
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`whether a container may interact with other containers at a given time or location.
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`“Gateways” are programmed with rules to enable the interaction among the various
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`containers, gateways, and system components. Id. at 4:63-5:19.
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`Other methods of searching that “improved upon” basic search engines were
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`known at the time of the filing of the ’682 patent, such as use of “meta” search
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`engines. But these “improved” methods still suffered from most or all of the
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`drawbacks associated with basic search engines and subject matter indexes known
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`as of the date of filing of the patent, such as failing to update the information
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`container itself with data reflecting the utility of the information in the containers
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`6
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`identified by the search. The challenged claims of the ’682 patent are directed to
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`methods that overcome shortcomings in the prior art.
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`The ’682 patent describes a “System and Method for Creating and
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`Manipulating Information Containers With Dynamic Registers.” In the system and
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`method of the ’682 patent, dynamic registers encapsulated within a plurality of
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`information containers are updated with data regarding interactions between
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`different information containers as searches are performed. This allows
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`information regarding the different information containers to evolve as information
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`within the containers is accessed.
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`The ’682 patent builds on the invention of the ’536 patent, directed to an
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`apparatus comprised of a plurality of containers, each container comprising
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`information elements encapsulated with time- and space-based dynamic registers,
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`thereby facilitating access to the information at appropriate times and in relation to
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`pertinent locations. As users access the information containers, the dynamic
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`registers are updated with information regarding their use, allowing them to
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`evolve. The dynamic nature of the invention of the ’536 patent is also evident in
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`its other continuation, U.S. Patent No. 7,873,682. The ’3,682 patent is directed to
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`methods and systems using at least two information containers with dynamic
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`registers to evolve information containers over time.
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`7
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`Claims 1-17 are directed to computer-implemented methods for performing
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`a search query on a plurality of containers, comprising searching first container
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`registers having historical data, encapsulating the identified containers in a new
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`containers, updating second container registers of the identified containers with
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`data associated with interactions of the identified containers with the new
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`container, and providing a list characterizing the identified containers. In claims 1-
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`17, the first container registers have data comprising historical data associated with
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`the interactions of the identified containers with other containers of the plurality of
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`containers.
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`Claim 18 is similar to claim 1, except that the computer polls a plurality of
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`gateways to identify registers encapsulated therein, the gateways having a plurality
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`of containers coupled thereto, the identified registers relating to identified
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`containers logically defining data therein associated with the search query. The
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`identified containers have container registers containing data comprising historical
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`data, which is searched as part of the polling of the plurality of gateways. Like
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`claims 1-17, claim 18 recites encapsulation of the identified containers in a new
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`container, updating the container registers of the identified containers with data
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`associated with the interactions of the identified containers with the new container,
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`and provision of a list characterizing the identified containers.
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`8
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`Claims 19 and 20 are directed to computer programs operable to perform the
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`methods of claims 1 and 18, tangibly embodied on computer-readable media.
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`Claims 21-22 are directed to systems that perform the operations of claims 1-18.
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`Claim 23 is directed to a method similar to that of claim 1, but where the first
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`container registers are searched to identify “search query templates” that are used
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`to form subsequent queries.
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`II. Overview of the Asserted Prior Art
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`The petition for IPR2014-0079 relies upon four references:1
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`• Wachtel, U.S. Patent No. 6,195,654 (Ex. 1005) (“Wachtel”);
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`• Culliss, U.S. Patent No. (Ex. 1006) (“Culliss”); and
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`• A document titled “SSavvySearch: A Meta-Search Engine that Learns
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`which Search Engines to Query” (Ex. 1007) (“SavvySearch”)
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`• Chang et. al., U.S. Patent No. 6,298,343 (Ex. 1008) (“Chang”) ; and
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`• An “EARN” memo labelled “Request for Comments:1580” titled
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`“Guide to Network Resource Tools” (EX. 1010) (“RFC”).
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`Wachtel is the primary reference asserted by the Petition, and is asserted
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`against all claims. The remaining references are directed to supplying missing
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`elements to support obviousness rejections of dependent claims.
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`1 Although listed in the 2014-0079 petition, Petitioner asserts Culliss, U.S. Patent
`No. 6,006,222 (Ex. 1006), as anticipatory in the same-day petition for IPR 2014-
`0080.
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`9
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`Wachtel, Culliss, SavvySearch, and Chang are each directed to systems and
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`methods for improving search results, but none discloses or renders obvious any of
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`the challenged claims, including encapsulating identified containers in a new
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`container and updating second registers of the identified containers with data
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`regarding the interactions of the identified containers with the new containers.
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`Wachtel discloses a “networked information sharing model” using “a shared
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`information database, a shared category database, a shared interest profile
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`database, and a client enhancement list.” Ex. 1005 at 3:16-20. The “shared
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`category database contains categories of interest within which are weighted and
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`marked information units, weights arrived at by empirical use and marks
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`maintained to distinguish where the information came from and to access
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`information according to client source preference.” Id. at 3:22-26. A “client
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`specific database” is maintained with “client categories,” “preferred information
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`sources,” and other information. Id. at 3: 26-31. “Clients” are connected through
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`the shared databases, which use interest profiles and shared categories to “provide
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`intelligence information sharing.” Id. at 3:31-35. The information sharing is
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`implemented through offering and deleting categories of interest and information
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`contained therein, such as offering billboard categories that are related to identified
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`interests, and autopopulating a bulletin board with pointers to articles of interest.
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`See id. at 3:8-4:22.
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`10
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`Users can offer information units for inclusion in the shared database of
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`Wachtel. Id. at 7:35-38. The usefulness of information provided by various users
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`is tracked. Id. at 6:43-46. Users who provide information that other users find
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`useful (“preferred IDs”) are given a higher priority, making the information of the
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`“preferred ID” clients show up higher in the list for a given category. Id. at Fig. 10.
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`Wachtel discloses using this system in connection with searching “a database,”
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`such as by an “Archie server.” The user’s utility rating is used to determine that
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`amount of server time that user is given.
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`The databases of Wachtel (e.g, the shared databases) are never disclosed as
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`being “searched.” The data in those databases are used only to control other
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`functions of the system (e.g., prioritization of results and server time).
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`Furthermore, Wachtel provides no detail regarding how search results are
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`processed or presented. And, Wachtel does not disclose any container that is
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`returned in response to a search being updated with data. Accordingly, Wachtel
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`never discusses searches of “first container registers” with historical data
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`regarding interactions of the identified containers with other containers,
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`“encapsulating the identified containers in a new container,” or “updating of
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`second container registers of the identified containers with data associated with
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`the interactions of the identified containers with the new containers.”
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`11
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`III. The Petition Should be Denied
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`The Petition should be rejected for three independent reasons. First, the
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`Petition fails to explain the relevance of the prior art to the claims as required by
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`37 C.F.R. § 104(b)(5), including failing to establish that the prior art discloses all
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`elements “arranged as in the claims.” Second, the Petition is deficient because it
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`violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against incorporating other
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`arguments by reference. Third, even setting aside these critical defects, the Petition
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`should be rejected on the merits, because it fails to demonstrate a reasonable
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`likelihood of any claims being invalid—particularly because it relies on
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`unreasonably broad constructions for and fails to construe terms that are material
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`to all of the claims at issue.
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`A. The Petition Fails To Explain the Relevance Of The References
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`To The Claims As Required By 37 C.F.R. § 104(b)(5)
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`37 C.F.R. § 104(b)(5) states (emphasis added): “the petition must set forth: .
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`. . (5) The exhibit number of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge. The
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`Board may exclude or give no weight to the evidence where a party has failed to
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`state its relevance or to identify specific portions of the evidence that support the
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`challenge.” In addition, in order to invalidate a claim, a prior art reference “must
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`12
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`not only disclose all elements of the claim within the four corners of the document,
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`but must also disclose those elements ‘arranged as in the claim.’” See MPEP 2131;
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`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Failure
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`to satisfy these requirements is grounds to dismiss an IPR petition in its entirety.
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`See, e.g., Synopsis, Inc. v. Mentor Graphics Corp., IPR 2012-0041, Dkt. No. 16,
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`12-13 (PTAB 2013) (declining, under 37 CFR § 104(b)(5), to institute IPR due to
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`petitioner’s failure to establish that elements were “arranged as in the claim”).
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`The Petition fails to mention, let alone satisfy, these requirements. For
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`example, the Petition provides no explanation of how Wachtel shows each and
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`every element “arranged as required by the claim,” as required for a proper
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`anticipation rejection. See id. Instead, the Petition consists of a series of
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`conclusory statements that various elements of the claims are present in the
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`asserted prior art. There is little or no explanation in the Petition of specifically
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`how the claim terms are being applied by the Petitioner or why the highlighted
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`language corresponds to (or is otherwise relevant to) the claim elements. Even the
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`Declaration of Henry Houh (Ex. 1003), upon which the Petition is based, contains
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`many conclusory statements that elements are met, but fails to provide the
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`explanation required by the PTO’s regulations.2
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`2 The supporting declaration of Apple’s expert also repeatedly omits the “arranged
`as required by the claim” requirement for anticipation. See Ex. 1003 at 26
`(representing that § 102 is satisfied because “every element” is present, without
`13
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`A prime example of the Petition’s failure to explain how the cited references
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`meet the limitations is its application of “encapsulating the identified containers in
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`a new container.” The Petition merely states that “tracking information collected
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`during the processes [of Wachtel] is stored in updated information collections
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`when additional data has been captured,” asserting that “this new information” is
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`written to “one or more files.” Petition at 15. But the Petition provides no
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`explanation of how the disclosures in Wachtel correspond to the elements of the
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`claims. Instead, the Petition cites 30 paragraphs spanning 11 pages of the Houh
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`Declaration, leaving it to the reader to figure out why and how those paragraphs
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`are relevant to the process of “encapsulating the identified containers in a new
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`container.” See Petition at 15 (citing Ex. 1003 at ¶¶ 70-72, 74-81, 91-103, 130-
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`135). Examining the cited portions of the Houh Declaration does not clarify the
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`Petitioner’s argument, because all the argument in the supporting declaration is
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`either irrelevant or incorrect. (See discussion below in section III.B.)
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`Additional deficiencies are highlighted below:
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`• Claim 1 requires the step of “receiving a search query. At page 13, the
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`Petition states without explanation that Wachtel discloses several ways
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`of doing this, citing Ex. 1003 at ¶¶ 37-40. The cited paragraphs of Ex.
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`1003 state the legal standard for obviousness.
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`addressing how the elements are arranged).
`14
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`
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`• Claim 1 also refers to “the container registers having defined therein
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`data comprising historical data associated with interactions of the
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`identified containers with other containers from the plurality of
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`containers, wherein searching the first container registers comprises
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`searching the historical data.” For this element of claim 1, the Petition
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`again provides no explanation of how the searched data is “associated
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`with the interactions of the identified containers with other containers.”
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`• Claim 19 recites an apparatus to search “content and first container
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`registers” where claim 1 recites only searching “first container
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`registers.” The Petition fails to address this distinction between claim 1
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`and claim 19, asserting without analysis or explanation that Culliss and
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`SavvySearch satisfy claim 19 for the same reasons it satisfies claim 1.
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`This is relevant because Culliss and SavvySearch each disclose a
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`searching an index that is separate and independent from the content.
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`• Claims 18, 20, and 22 recite “polling” of gateways. The petition not
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`only adopts an incorrect construction of “polling,” it fails to apply that
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`construction, instead broadly reading the term “polling” as “using.” See,
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`e.g., Ex. 1003, ¶ 165-166 (stating that Wachtel shows “using
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`personalized historical information,” and then concluding without
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`15
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`
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`explanation that “Wachtel thus shows, ‘wherein polling the plurality of
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`gateways comprises searching the historical data.’”).
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`• Claims 21-23 recite means-plus-function elements. The Petition asserts
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`that these claims are indefinite due to lack of support in the written
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`description, while simultaneously asserting that they are anticipated by
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`Wachtel. But because the Petition never even proposes constructions for
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`these means-plus-function elements, it cannot have established that
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`Wachtel discloses these elements, much less disclosing them “as
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`arranged in the claims.”
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`B.
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`The Petition Violates Rule 42.6 by Incorporating the Substance of
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`Its Arguments By Reference
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`Rule 42.24 of the PTAB’s Rules for Trial Practice limits petitions for inter
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`partes review to 60 pages. The PTO adopted this page limit after substantial public
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`commentary, in an attempt to reduce the burden of petitions for review on the
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`PTAB and patent owners. To ensure that Petitioners adhere to this page limit, the
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`PTO explicitly prohibits incorporation of arguments by reference. See 37 C.F.R.
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`42.6(a)(3) (“Arguments must not be incorporated by reference from one document
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`into another document.”); see also Rules of Practice for Trials Before the Patent
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`Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board
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`Decisions (“Rules of Practice”), Fed. Reg. 77, No. 157, p. 48617 (noting that,
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`16
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`
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`under § 42.6, petitions are subject to Fed. R. App. Proc. 32, which prohibits
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`incorporation by reference). As the PTO explained:
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`incorporation by reference
`The prohibition against
`minimizes the chance that an argument would be
`overlooked and eliminates abuses
`that arise from
`In DeSilva
`incorporation
`and
`combination.
`v.
`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), the
`court rejected ‘‘adoption by reference’’ as a self-help
`increase in the length of the brief and noted that
`incorporation is a pointless imposition on the court’s time
`as it requires the judges to play archeologist with the
`record. The same rationale applies to Board proceedings.
`Cf. Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005
`WL 3077915, *1 (D. N.J. 2005) (Defendants provided
`cursory statements in motion and sought to make its case
`through incorporation of expert declaration and a claim
`chart. Incorporation by reference of argument not in
`motion was held to be a violation of local rules governing
`page limitations and was not permitted by the court). . . .
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`The PTO noted that that Board applied page limits to both arguments and findings
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`of fact because the failure to do so resulted in “abuses of the system.” Fed. Reg.
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`77 at 48620. The PTO noted that patent cases before the PTAB are no exception to
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`the standards of district courts, where motion practice does not require federal
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`judges to “shovel through steaming mounds of pleonastic arguments in Herculean
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`effort to uncover a hidden gem of logic.” Id.
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`Despite this prohibition on incorporation by reference, the Petition
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`incorporates most of its actual analysis of Wachtel by referring to its supporting
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`declaration. See, e.g., Petition at 14 (citing Ex. 1003 at ¶¶ 81, 84-88, 91-103, 114-
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`17
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`
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`117, 128-130, and 203), 15 (citing Ex. 1003, ¶¶ 66-69, 74-81, 103, and 130-135),
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`and 16 (citing Ex. 1003, ¶¶ 66, 87, 137, and 141-144). This single example
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`amounts to incorporation of roughly 30 pages of argument just to address
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`anticipation of claim 1 of the ’682 patent.
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`One example of the Petition’s abuse of incorporation by reference is where
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`the petition cites 30 paragraphs spanning 11 pages of the Houh Declaration
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`regarding the term “encapsulating the identified containers in a new container.”
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`Petition at 15 (citing “Ex. 1003 at ¶¶ 74-81, 91-103, 130-135” and “Ex.1003 at ¶¶
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`70-72, 130-135”). This is a particularly egregious violation because the Petition
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`barely discusses the term. Rather, the Petition merely states that the limitation is
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`met because “tracking information collected during the processes [of Wachtel] is
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`stored in updated information collections when additional data has been captured,”
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`asserting that “this new information” is written to “one or more files.” Petition at
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`15. The Petition provides no analysis at all regarding the disclosure in Wachtel,
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`and instead relies entirely on the Declaration to do the work that the Petition
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`should have done, leaving it to the reader to figure out why and how the cited
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`paragraphs are relevant to the process of “encapsulating the identified containers in
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`a new container.”
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`This Petitioner’s failure to abide by the regulations is not merely technical; it
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`directly impacts the substance of the issues in the Petition. Because the Petitioner
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`18
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`failed to include its analysis and support in the Petition itself, it is very difficult to
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`understand the Petitioner’s arguments. This enabled the Petitioner to disguise the
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`fact that the cited portions of the declaration do not support the conclusion that
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`Wachtel discloses “encapsulating the identified containers.”
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`• Paragraph 117 of the Houh Declaration states that the “identified
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`containers” are the “specific results” responsive to the search query
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`(e.g., articles). See Ex. 1003 at ¶ 117-118 (“[E]ach collection of
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`information will include data (“registers”) associated with specific
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`results (“containers”) that are responsive to a query. . . . Wachtel thus
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`shows searching to identify identified containers.”).
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`• Paragraphs 74-79 of Ex. 1003 cite variables in the client’s user
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`profile, not responsive articles.
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`• Then, paragraphs 80 and 81 inexplicably switch back and forth
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`between (i) a discussion of “information units” and aggregation of
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`“usefulness weights” that are calculated based on accumulated “client
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`values” (which are stored on Wachtel’s “server 24”) and (ii) use of
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`client preferences to prioritize preferred sources of information (which
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`are stored on client “computer 22”). Again, there is no explanation of
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`how or why this relates to or establishes “encapsulating the identified
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`19
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`containers [i.e., the actual responsive information] in a new
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`container.”
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`• Paragraph 132 states that Wachtel discloses that (i) “a category may
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`be offered to a client from a server of baseball stadium statistics,” (ii)
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`“the server may provide the client a list of bulletin board answers
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`prioritized base on the most helpful answer,” and (iii) “a server may
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`gather interesting articles for a user to review.” Even if these are
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`assumed to correspond to “the identified containers”—which
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`Petitoiner never establishes—none of these disclosures establishes
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`encapsulation of “identified containers.”
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`Adding insult to injury, ¶ 132 refers the reader back to ¶¶ 91-103, but most
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`of those paragraphs have absolutely no relation to the Petition’s “encapsulation”
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`argument. The actual disclosures of Wachtel referred to by ¶ 132 can be identified
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`in three short statements in Ex. 1003 at 4:1-2 (offering of new “categories” of
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`baseball statistics to a client); 4:5-12 (identifying offering bulletin board answers in
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`response to a request for a prediction of “what will occur in the next Yankee
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`game”); and 4:13-18 (automated gathering of pointers to articles of interest).
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`Again, there is no actual discussion in Wachtel of “encapsulating” any of these
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`results. Indeed, there is no discussion at all of how this information is presented.
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`Further, it does not appear that any of the three allegedly “encapsulated”
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`20
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`“identified containers” occur in response to receipt of a “search query.” That is,
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`none of them are responses to search requests. All the items are automatic
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`offerings supplied to a client database without human interaction. See Ex. 1003 at
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`4:2-4 (decision to offer new “interest category” to user made by artificial
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`intelligence); 4:11-12 (prioritization will occur “without human interaction); and
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`4:19-21 (“Again, the gathering of information and the offering occurs without
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`human interaction.”). Items (i) and (iii) appear to be based solely on the client’s
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`“interest categories.” Item (ii) is in response to a “request for a prediction,” but the
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`system of Wachtel does not perform a search, it merely prioritizes the “bulletin
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`board answers” provided by other users and returns those results. See Ex. 1003 at
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`5-12.
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`The extensive incorporation by reference identified above is exactly the kind
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`of abuse that the Rule 42.6(a)(3) is designed to prevent. The entire argument
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`incorporated by reference is a mish-mash of disparate and unrelated elements, none
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`of which actually establish “encapsulating the identified containers in a new
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`container” as alleged by the Petition. By hiding all the detail of its arguments in
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`the underlying declaration, Petitioner invites the PTAB “to shovel through” its
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`arguments in effort “to uncover a hidden gem of logic.” Rules of Practice, Fed.
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`Reg. 77 at 48620.
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`21
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`And the above abuse of argument by incorporation is not Petitioner’s only
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`violation of this rule. In its anticipation arguments relating to Ex. 1005 and claim
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`4, Petitioner uses incorporation by reference to disguise its attribution of
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`disclosures of Ex. 1010 (RFC) to Ex. 1005 (Wachtel). Not only does the Petition
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`itself never identify that it is using Ex. 1010 in combination with Ex. 1005, it uses
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`the extensive cross-referencing of multiple paragraphs spread over six non-
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`contiguous pages of the declaration to hide its sleight of hand.
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`It is impossible for Evolutionary to walk the PTAB through every Byzantine
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`argument presented by Petitioner, because that would require parsing over 100
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`pages of Ex. 1003 and the Petition, which would exceed the page limit for this
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`Preliminary Response. The Petition itself is 38 pages. But the Petition does not
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`contain any of the actual evidence of anticipation or obviousness, because it
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`contains few, if any, citations of actual text from the asserted prior art. Instead, the
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`Petition moves all of its discussion of the actual disclosures of the prior art to Ex.
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`1003. The bulk of Petitioner’s argument—far more than the 22 pages that
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`Petitioner had left at its disposal—is in the underlying declaration and incorpora
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