Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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` Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
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`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 Review No. IPR2014-00079
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`TABLE OF CONTENTS
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`I.
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`II.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW .............................................................................. 4
`A.
`Certification the ’682 Patent May Be Contested by Petitioner ............ 4
`Fee for Inter Partes Review (§ 42.15(a)) ............................................. 4
`B.
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 5
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 5
`2.
`Other Proceedings (§ 42.8(b)(2)) ............................................... 5
`3.
`Designation of Lead and Backup Counsel ................................. 6
`4.
`Service Information (§ 42.8(b)(4)) ............................................ 6
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 6
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 6
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 7
`A.
`Effective Filing Date and Prosecution History of the ’682
`Patent .................................................................................................... 7
`Person of Ordinary Skill in the Art ...................................................... 8
`Construction of Terms Used in the Claims .......................................... 8
`1.
`“container” ................................................................................. 9
`2.
`“register” and “container register” ........................................... 10
`3.
`“gateway” ................................................................................. 11
`4.
`Analogous Sets of Independent Claims ................................... 12
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 13
`A.
`Claims 1, 19 and 21 Are Anticipated by Ex. 1005 (Wachtel) ........... 13
`B.
`Claim 23 is Anticipated by Ex. 1005 (Wachtel) ................................ 16
`C.
`Claims 18, 20 and 22 Are Anticipated by Ex. 1005 (Wachtel) ......... 19
`D.
`Ex. 1005 (Wachtel) Would Have Rendered Claims 18, 20 and
`22 Obvious ......................................................................................... 23
`Claim 2 Is Anticipated by Ex. 1005 (Wachtel) .................................. 24
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`B.
`C.
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`E.
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`F.
`G.
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`H.
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`I.
`J.
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`Claims 3 Is Anticipated by Ex. 1005 (Wachtel) ................................ 24
`Ex. 1005 (Wachtel) in View of Ex. 1006 (Culliss) Would Have
`Rendered Claim 3 Obvious ................................................................ 25
`Ex. 1005 (Wachtel) in View of Ex. 1008 (Chang) Would Have
`Rendered Claim 3 Obvious ................................................................ 26
`Claim 4 Is Anticipated by Ex. 1005 (Wachtel) .................................. 26
`Ex. 1005 (Wachtel) in View of Ex. 1007 (SavvySearch) Would
`Have Rendered Claim 4 Obvious ....................................................... 27
`Claim 5 Is Anticipated by Ex. 1005 (Wachtel) .................................. 28
`Ex. 1005 (Wachtel) in View of Ex. 1007 (SavvySearch) Would
`Have Rendered Claims 5 and 6 Obvious ........................................... 28
`Ex. 1005 (Wachtel) in View of Ex. 1008 (Chang) Would Have
`Rendered Claims 5 and 6 Obvious ..................................................... 29
`Claim 6 Is Anticipated by Ex. 1005 (Wachtel) .................................. 30
`Ex. 1005 (Wachtel) Would Have Rendered Obvious Claim 6 .......... 30
`Claim 7 Is Anticipated by Ex. 1005 (Wachtel) .................................. 31
`Ex. 1005 (Wachtel) in View of Ex. 1007 (SavvySearch) Would
`Have Rendered Claim 7 Obvious ....................................................... 31
`Claim 8 Is Anticipated by Ex. 1005 (Wachtel) .................................. 32
`R.
`Claim 9 Is Anticipated by Ex. 1005 (Wachtel) .................................. 33
`S.
`Claim 10 Is Anticipated by Ex. 1005 (Wachtel) ................................ 33
`T.
`Claim 11 Is Anticipated by Ex. 1005 (Wachtel) ................................ 34
`U.
`Claim 12 Is Anticipated by Ex. 1005 (Wachtel) ................................ 34
`V.
`W. Claim 13 Is Anticipated by Ex. 1005 (Wachtel) ................................ 35
`X.
`Claim 14 Is Anticipated by Ex. 1005 (Wachtel) ................................ 36
`Y.
`Claim 15 Is Anticipated by Ex. 1005 (Wachtel) ................................ 37
`Z.
`Claim 16 Is Anticipated by Ex. 1005 (Wachtel) ................................ 37
`AA. Claim 17 Is Anticipated by Ex. 1005 (Wachtel) ................................ 38
`CONCLUSION ............................................................................................. 38
`V.
`Attachment A. Proof of Service of the Petition
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`N.
`O.
`P.
`Q.
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`K.
`L.
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`M.
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`I.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’682 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 7,702,682 (the ’682 patent) (Ex.
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`1001) is available for inter partes review. Petitioner certifies that it is not barred or
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`estopped from requesting inter partes review of the claims of the ’682 patent on
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`the grounds identified in this Petition. Neither Petitioner, nor any party in privity
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`with Petitioner, has filed a civil action challenging the validity of any claim of the
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`’682 patent. The ’682 patent has not been the subject of a prior inter partes review
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`by Petitioner or a privy of Petitioner.
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`Petitioner certifies this petition for inter partes review is filed within one
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`year of the date of service of a complaint alleging infringement of a patent.
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`Petitioner was served with a complaint alleging infringement of the ’682 patent on
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`October 23, 2012, which led to Civil Action No. 3:13-cv-04201-LB in the
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`Northern District of California. Ex. 1011. As the date of this petition is less than
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`one year from October 23, 2012, this petition complies with 35 U.S.C. § 315(b).
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`Fee for Inter Partes Review (§ 42.15(a))
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`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 50-1597.
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party of interest of this petition pursuant to § 42.8(b)(1) is Apple
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`Inc. (“Apple”) located at One Infinite Loop, Cupertino, CA 95014.
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`2. Other Proceedings (§ 42.8(b)(2))
`The ’682 patent is the subject of civil action no. 2:12-cv-02829-JPM, served
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`on Petitioner on October 10, 2012, and naming Petitioner as defendant. The ’682
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`patent has been asserted against other parties, namely:
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`• 6:12-cv-00783-MHS-CMC Evolutionary Intelligence, LLC v. Apple
`Inc.
`• 6:12-cv-00784-MHS-CMC Evolutinary Intelligence, LLC v.
`Facebook, Inc.
`• 6:12-cv-00785-MHS-CMC Evolutionary Intelligence, LLC v.
`Foursquare Labs, Inc.
`• 6:12-cv-00787-MHS-CMC Evolutionary Intelligence, LLC v.
`Groupon, Inc.
`• 6:12-cv-00789-MHS-CMC Evolutionary Intelligence, LLC v.
`LivingSocial, Inc.
`• 6:12-cv-00790-MHS-CMC Evolutionary Intelligence, LLC v.
`Millennial Media, Inc.
`• 6:12-cv-00791-MHS-CMC Evolutionary Intelligence, LLC v. Sprint
`Nextel Corporation et al.
`• 6:12-cv-00792-MHS-CMC Evolutionary Intelligence, LLC v.
`Twitter, Inc.
`• 6:12-cv-00794-MHS-CMC Evolutionary Intelligence, LLC v. Yelp,
`Inc.
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`The ’682 patent is also the subject of a concurrently filed petition for inter
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`partes review, filed by the present Petitioner; namely, IPR2014-00080.
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`Designation of Lead and Backup Counsel
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`3.
`Lead Counsel
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
`(202) 736-8914
`(202) 736-8711 (fax)
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`Backup Lead Counsel
`Douglas I. Lewis
`Reg. No. 39,748
`dilewis@sidley.com
`(312) 853-4169
`(312) 853-7036 (fax)
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`Service Information (§ 42.8(b)(4))
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`4.
`Service on Petitioner may be made by mail or hand delivery to: Sidley
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`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax numbers for
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`lead and backup lead counsel are shown above.
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`Proof of Service (§§ 42.6(e) and 42.105(a))
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`D.
`Proof of service of this petition is provided in Attachment A.
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`Identification of Claims Being Challenged (§ 42.104(b))
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`Claims 1-23 of the ’682 patent are unpatentable as being anticipated under
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`II.
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`35 U.S.C. § (e), and/or for being obvious over the prior art under 35 U.S.C. § 103.
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`Specifically:
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`(i)
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`Claims 1-23 are anticipated by Ex. 1005 (Wachtel) under 35 U.S.C. §
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`102(e).
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`(ii) Claims 18, 20 and 22 are obvious by Ex. 1005 (Wachtel) under 35
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`U.S.C. § 103.
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`(iii) Claims 3, 5, and 6 are obvious by Ex. 1005 (Wachtel) in view of Ex.
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`1006 (Culliss) under 35 U.S.C. § 103.
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`Petition for Inter Partes Review of U.S. Patent No. 7,702,682
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`(iv) Claims 3, 5, and 6 are obvious by Ex. 1005 (Wachtel) in view of Ex.
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`1008 (Chang) under 35 U.S.C. § 103
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`(v) Claim 6 is obvious by Ex. 1005 (Wachtel) under 35 U.S.C. § 103
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`(vi) Claims 4, 5, 6 and 7 are obvious by Ex. 1005 (Wachtel) in view of
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`Ex. 1007 (SavvySearch)
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`Petitioner’s proposed construction of the contested claims, the evidence relied
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`upon, and the precise reasons why the claims are unpatentable are provided in
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`§ IV, below. The evidence relied upon in support of this petition is listed in
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`Attachment B.
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`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’682 Patent
`The ’682 patent issued from U.S. Patent Application No. 11/280,700, filed
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`November 14, 2005. The ’700 application is designated a continuation of
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`09/284,113, filed as PCT/US99/01988 on January 29, 1999. The ’113 application,
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`in turn, claims priority to Provisional Application No. 60/073,209, filed on January
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`30, 1998. The disclosure of the ’209 provisional application is not identical to the
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`disclosure of the ’682 patent, which raises questions regarding whether the claims
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`would be entitled to claim priority to the ’209 provisional application. Without
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`waiving its right to contest the effective filing date of the claims of the ’682 patent,
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`Petitioner has assumed – solely for the purposes of this proceeding – that the
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`earliest effective filing date of claims 1-23 is not earlier January 30, 1998.
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`Person of Ordinary Skill in the Art
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`B.
`A person of ordinary skill in the art in the field of the ’536 patent would
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`have been someone with a good working knowledge of computer programming,
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`data structures, and object oriented programming. The person would have gained
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`this knowledge either through an undergraduate education in computer science or
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`comparable field, in combination with training or several years of practical
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`working experience.
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`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
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`construction in light of the specification. 37 CFR § 42.100(b). The broadest
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`reasonable construction should reflect subject matter that Patent Owner contends
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`literally infringes the claims, as well as constructions proposed by Patent Owner in
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`past or concurrent litigation. Also, if Patent Owner contends terms in the claims
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`should be read to have a special meaning, those contentions should be disregarded
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`unless Patent Owner also amends the claims compliant with 35 U.S.C. § 112 to
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`make them expressly correspond to those contentions. See 77 Fed. Reg. 48764 at
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`II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012).
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`Petitioner identifies below and in applying the prior art certain subject matter
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`that falls within the scope of the claims, read with their broadest reasonable
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`construction. Petitioner submits this is sufficient for the purposes of this
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`proceeding to evaluate the claims against the prior art.
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`“container”
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`1.
`The ’682 specification defines a “container” as being “a logically defined
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`data enclosure which encapsulates any element or digital segment (text, graphic,
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`photograph, audio, video, or other), or set of digital segments, or referring now to
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`FIG. 3C, any system component or process, or other containers or sets of
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`containers.” Ex. 1001 at 9:2-7. The ’682 patent continues, stating “[a] container
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`100 at minimum includes in its construction a logically encapsulated portion of
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`cyberspace, a register and a gateway” and “…at minimum encapsulates a single
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`digital bit, a single natural number or the logical description of another container,
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`and at maximum all defined cyberspace, existing, growing and to be discovered,
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`including but not limited to all containers, defined and to be defined in
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`cyberspace.” Ex. 1001 at 9:7-14. The ’682 patent also states a container “contains
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`the code to enable it to interact with the components enumerated in 2A, and to
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`reconstruct itself internally and manage itself on the network 201.” Ex. 1001 at
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`9:14-17. The broadest reasonable construction of “container” therefore
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`encompasses a logically defined data structure that contains a whole or partial
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`digital element (e.g., text, graphic, photograph, audio, video, or other), or set of
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`digital segments, or any system component or process, or other containers or sets
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`of containers.
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`“register” and “container register”
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`2.
`The ’682 patent explains that “registers 120” are “user or user-base created
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`or system-created values or ranges made available by the system 10 to attach to a
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`unique container, and hold system-set, user-set, or system-evolved values.” Ex.
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`1001 at 14:24-26. The ’682 patent adds that “[v]alues may be numeric, may
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`describe domains of time or space, or may provide information about the container
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`100, the user, or the system 10” and that “[r]egisters 120 may be active, passive or
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`interactive and may evolve with system use.” Ex. 1001 at 14:24-29. The ’682
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`patent similarly explains that “container registers 120” are “interactive dynamic
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`values appended to the logical enclosure of an information container 100, and
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`serve to govern the interaction of that container 100 with other containers 100,
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`container gateways 200 and the system 10, and to record the historical interaction
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`of that container 100 on the system 10.” Ex. 1001 at 9:19-22. It also explains that
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`“[c]ontainer registers 120 may be values alone or contain code to establish certain
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`parameters in interaction with other containers 100 or gateways 200.” Ex. 1001 at
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`9:22-23. The broadest reasonable construction of “register” thus consequently
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`would encompass a value or code associated with a container, while the broadest
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`reasonable construction of “container register” would be a register that is appended
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`to the logical enclosure of an information container.
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`“gateway”
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`3.
`The ’682 patent does not expressly define the term “gateway.” However, its
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`usage of this term indicates that the term is being used generally to refer to the
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`interface between processes, system components and data files (e.g., “container” or
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`“registers”). For example, the ’682 patent observes:
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`Gateways gather and store container register information according to
`system-defined, system-generated, or user determined rules as
`containers exit and enter one another, governing how containers
`system processes or system components interact within the domain of
`that container, or after exiting and entering that container, and
`governing how containers, system components and system processes
`interact with that unique gateway, including how data collection and
`reporting is managed at that gateway.
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`Ex. 1001 at 4:66-5:6. The ’682 patent also states that “Container gateways 200 are
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`logically defined gateways residing both on containers 100 and independently in
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`the system 10” and “Gateways 200 govern the interactions of containers 100
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`within their domain, and alter the registers 120 of transiting containers 100 upon
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`ingress and egress.” Ex. 1001 at 9:28-32. See also Ex. 1001, 15:50-58.
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`Patent Owner has contended in litigation that “gateways” can be algorithms
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`and Application Program Interfaces (APIs) that, with respect to space, are
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`“attached to and forming part of the CLLocation, CLLocationManager,
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`CLPlacemark, CLRegion, and CLHeading containers.” (Ex. 1012 at 81). In other
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`words, Patent Owner has alleged that code that executes by calling objects via an
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`API will be a “gateway” within the meaning of the claims.
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`The broadest reasonable construction of “gateway” thus would encompass
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`code that governs interactions between containers and that can alter registers
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`associated with containers.
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`Analogous Sets of Independent Claims
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`4.
`The ’682 patent presents two sets of highly similar independent claims.
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`First, independent claims 1, 19 and 21 recite, respectively, a method, a computer
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`program product and an apparatus, but otherwise employ the same operative
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`language.1 In a similar manner, claims 18, 20, and 22 recite, respectively, a
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`method, a computer program product and an apparatus, but otherwise employ the
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`same operative language. Because each set of three claims differs solely with
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`respect to form, each set of claims will be analyzed concurrently relative to the
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`prior art.
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`1 Claim 21 employs “means-plus-function” language to define the elements,
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`but the ’682 disclosure does not identify corresponding structures for these
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`“means” elements. Claim 21 is thus invalid under 35 U.S.C. § 112, paragraph 6.
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`Claim 23 recites a method highly analogous to the method of claim 1, with
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`only minor variations in certain of the claim elements (e.g., “providing a list
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`characterizing the identified containers” in claim 1 vs. “providing a list
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`characterizing the identified one or more search query templates to formulate
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`subsequent search queries” in claim 23). These minor distinctions will be
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`addressed below.
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`IV. Precise Reasons for Relief Requested
`A. Claims 1, 19 and 21 Are Anticipated by Ex. 1005 (Wachtel)
`Ex. 1005 describes systems and methods for performing personalized web
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`searches. Ex. 1003 at ¶¶ 33. The searches are performed using computers able to
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`communicate with the Internet. Id. Ex. 1005 thus discloses a computer-
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`implemented method, a computer program product and an apparatus, per claims 1,
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`19 and 21, respectively.
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`Ex. 1005 discloses several ways in which a search query can be received,
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`which thus shows receiving a search query pursuant to claims 1, 19 and 21. Ex.
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`1003 at ¶¶ 37-40.
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`Ex. 1005 describes using continually and dynamically updated information
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`stored on a client computer to search for and locate information. Ex. 1003 at ¶
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`113. For example, Ex. 1005 shows use of a “shared information database, a shared
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`category database, a shared interest profile database and a shared client
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`enhancement database, each of which is continually and dynamically updated.”
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`Ex. 1005 at 3:18-21; Ex. 1003 at ¶ 87, 230. The client-based information includes
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`such things as interest categories, information units previously accessed by the
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`user, profile numbers and previously rejected categories. Ex. 1003 at ¶¶ 114-116.
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`The client-based repositories of information can be organized into a database or
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`other ordered data formats. See, e.g., Ex. 1003 at ¶¶ 81, 84-88. The client-based
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`information also can contain a subset of information stored in corresponding
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`categories on a server, where the information on the client is a subset of the
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`information in that category on the server and is generated by reference to actions
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`by the user of the client computer. See, e.g., Ex. 1005 at 3:26-35; Ex. 1003 at
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`¶¶ 114, 117. Searches may be performed using, inter alia, these client-based
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`collections of information. See, e.g., Ex. 1003 at ¶¶ 91 - 103. Ex. 1005 thus
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`describes processes and systems which search, using a computer, “first container
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`registers encapsulated and logically defined in a plurality of containers to identify
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`identified containers responsive to the search query” as specified in claim 1, and as
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`reflected in claims 19 and 21.
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`The information stored at the client and used in the searching procedures of
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`the Ex. 1005 includes data representing historical interactions between a user and
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`various collections of information. Ex. 1003 at ¶¶ 128-130. For example, Ex.
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`1005 describes use of a computer script that tracks and records user interactions
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`with data in various collections of information stored on the client computer. See,
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`e.g., Ex. 1003 at ¶¶ 66-69. This information is then added to the pre-existing
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`information stored on the client computer and used in subsequent searching and
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`classification activities of the system. Id. Ex. 1005 thus shows processes and
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`systems where the “…the container registers having defined therein data
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`comprising historical data associated with interactions of the identified containers
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`with other containers from the plurality of containers, wherein searching the first
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`container registers comprises searching the historical data…” as specified in
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`claim 1, and reflected in claims 19 and 21.
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`The tracking information collected in the processes shown in Ex. 1005 is
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`stored in updated information collections when additional data has been captured.
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`In the processes described in Ex. 1005, new information is collected with each user
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`search or interaction, and this new information is then written to one or more local
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`files on the client computer. Ex. 1003 at ¶¶ 74-81, 91-103, 130-135. When this
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`occurs, the client computer ordinarily will create and write to storage new file
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`containing the new and old information. See, e.g., Ex. 1003 at ¶ 70-72, 130-135.
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`Ex. 1005, thus, shows “encapsulating the identified containers in a new container”
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`as specified in claim 1, and as reflected in claims 19 and 21.
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`Ex. 1005 shows that in its systems, several collections of information are
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`maintained and continually updated on the client computer (e.g., the interest profile
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`database, the client database enhancement list). Ex. 1003 at ¶¶ 137, 66, 87. This
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`updating process captures input from the user’s actions and from prompts of the
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`user for usefuleness of the prior search. Id. The captured information is then itself
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`used to update the data maintained on the client computer. Id. Consequently, Ex.
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`1005 shows a process whereby a “second container registers” are updated with
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`“data associated with interactions of the identified containers with the new
`
`container” as specified in claim 1, and as reflected in claims 19 and 21.
`
`The processes and systems described in Ex. 1005 return lists of results
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`matching search criteria entered by a user. Ex. 1003 at ¶ 141-144. Several
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`examples of results lists are provided, with each showing varying types of
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`characterizations of the search results (e.g., a prioritized list of articles). Id. Ex.
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`1005 therefore shows a process that provides “a list characterizing the identified
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`containers” as specified in claim 1, and as reflected in claims 19 and 21.
`
`Because every element in claims 1, 19 and 21 are described in Ex. 1005,
`
`these claims are anticipated by Ex. 1005 under 35 U.S.C. § 102(e). See Ex. 1003
`
`¶¶ 105-144.
`
`B. Claim 23 is Anticipated by Ex. 1005 (Wachtel)
`Claim 23 closely tracks claim 21, as illustrated below (bracket annotations
`
`have been added to identify steps):
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`1. A computer-implemented method
`comprising:
`
`
`
`
`
`
`23. A computer-implemented method
`comprising:
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`[i] receiving a search query;
`[ii] searching, using the computer, first
`container registers encapsulated and
`logically defined in a plurality of
`containers to identify identified
`containers responsive to the search
`query, the container registers having
`defined therein data comprising
`historical data associated with
`interactions of the identified containers
`with other containers from the plurality
`of containers,
`wherein searching the first container
`registers comprises searching the
`historical data;
`[iii] encapsulating the identified
`containers in a new container;
`[iv] updating second container registers
`of the identified containers with data
`associated with interactions of the
`identified containers with the new
`container; and
`[v] providing a list characterizing the
`identified containers.
`
`
`
`[i] receiving a search query;
`[ii] Searching, using the computer,
`first container registers encapsulated
`and logically defined in a plurality of
`containers to identify search query
`templates encapsulated in identified
`containers, the first container registers
`having defined therein data
`comprising historical data associated
`with interactions of the identified
`containers with other containers from
`the plurality of containers, wherein
`searching container registers
`comprises searching the historical
`data;
`[iii] encapsulating the identified
`containers in a new container;
`[iv] updating second container
`registers of the identified containers
`with data associated with interactions
`of the identified containers with the
`new container; and
`[v] providing a list characterizing the
`identified one or more search query
`templates to formulate subsequent
`search queries.
`
`As shown above, steps [i], [iii] and [iv] are identical, and these elements of
`
`claim 23 are thus described in Ex. 1005 for the reasons noted in § B, above.
`
`Step [ii] in each process differs by inclusion in claim 23 of the phrase
`
`“search query templates encapsulated in identified containers” rather than simply
`
`“identified containers responsive to the search query.” The ’682 patent does not
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`define the term “search query template” and indeed only uses this term in claim
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`23. The ’682 patent does state that a “search template is here defined as one or
`
`more text phrases, graphics, video or audio bits, alone or in any defined outline or
`
`relational format designed to accomplish an inquiry.” See Ex. 1001 at 2:33-36. If
`
`a “search query template” is considered to be similar to a “search template”
`
`pursuant to the ’682 patent disclosure, then a text phrase “alone or in any defined
`
`outline or relationship format designed to accomplish an inquiry” would constitute
`
`a search query template. In addition, in step [ii] the search query templates are to
`
`be “encapsulated in identified containers.” Step [ii] also specifies in claim 23 the
`
`term “first container registers” while claim 1 uses the phrase “the container
`
`registers” which is a difference without any apparent distinction.
`
`Ex. 1005 describes a search query containing structured data, which operates
`
`as search query templates. Ex. 1003 at ¶ 93. Within the structured data is, for
`
`example, key word data. Ex. 1003 at ¶ 93. Ex 1005 shows comparing key word
`
`data to data within articles to find a match, returning the matching articles to the
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`user. Ex. 1003 at ¶ 93. The search results, therefore, match the search query data,
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`thereby “encapsulating” that template data of the original search. Thus, Ex. 1006
`
`discloses step [ii] of claim 23.
`
`Step [v] in claim 23 differs from this step in claim 1 by reciting that the list
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`characterizes “one or more search query templates to formulate subsequent search
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`queries” rather than simply “identified containers.” As noted above, the examples
`
`shown in Ex. 1005 of processes that provide search results concerning bulletin
`
`board systems and archie servers are each an example of a process that returns a
`
`list of search queries that, when performed, will return the desired information.
`
`For example, when the process in Ex. 1005 is used in conjunction with an archie
`
`server, it will provide a list of FTP sites that may be queried to return a desired file
`
`that was the subject of the original query. See, e.g., Ex. 1003 at ¶¶ 91-97.
`
`Similarly, query directed to specified bulletin boards will return a “search
`
`template” per claim 23 that will, when executed, provide the underlying
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`information that is the subject of the query. See, e.g., Ex. 1003 at ¶ 103.
`
`Consequently, because Ex. 1005 describes a process meeting every element
`
`of claim 23, it anticipates this claim under 35 U.S.C. § 102(e). See Ex. 1003 ¶¶
`
`105-144.
`
`C. Claims 18, 20 and 22 Are Anticipated by Ex. 1005 (Wachtel)
`Claims 18, 20 and 22 are similar to claims 1, 19 and 21 (e.g., claims 1 and
`
`18 recite a method, claims 19 and 20 recite a computer program product, and
`
`claims 21 and 22 recite an apparatus).
`
`A comparison of claims 1 and 18 is provided below:
`
`1. A computer-implemented method
`comprising:
`
`[i] receiving a search query;
`
`18. A computer-implemented method
`comprising:
`
`[i] receiving a search query;
`
`
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`[ii] searching, using the computer, first
`container registers encapsulated and
`logically defined in a plurality of
`containers to identify identified
`containers responsive to the search
`query, the container registers having
`defined therein data comprising
`historical data associated with
`interactions of the identified containers
`with other containers from the plurality
`of containers,
`wherein searching the first container
`registers comprises searching the
`historical data;
`
`
`
`
`
`[iii] encapsulating the identified
`containers in a new container;
`
`[iv] updating second container registers
`of the identified containers with data
`associated with interactions of the
`identified containers with the new
`container; and
`
`[v] providing a list characterizing the
`identified containers.
`
`
`[ii] polling, using the computer, a
`plurality of gateways to identify
`registers encapsulated therein, the
`gateways having a plurality of
`containers coupled thereto, the
`identified registers relating to
`identified containers logically defining
`data contained therein associated with
`the search query, the identified
`containers having container registers
`defined therein, the container registers
`containing data comprising historical
`data associated with in