UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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. IPR2014-00080
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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. IPR2014-00080
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. TECHNOLOGY BACKGROUND .................................................................. 5
`
`II. OVERVIEW OF THE ASSERTED PRIOR ART ........................................ 9
`
`III. THE PETITION SHOULD BE DENIED...................................................13
`
`A. The Petition Fails To Explain the Relevance Of The References To The
`
`Claims As Required By 37 C.F.R. § 104(B)(5) ............................................14
`
`B. The Petition Violates 37 C.F.R. 42.6 By Incorporating Arguments By
`
`Reference .......................................................................................................20
`
`C. There Is No Reasonable Likelihood of the Claims Being Invalidated. .........24
`
`1. Petitioner Fails to Construe and/or Incorrectly Construes Terms Material to
`
`all Claims ...........................................................................................................24
`
`a. “Container” ...............................................................................................28
`
`b. “Register” and “Container Register” .......................................................30
`
`c. “Gateway” ................................................................................................32
`
`d. “Encapsulated”/”Encapsulating” .............................................................34
`
`e. “New Container” ......................................................................................36
`
`f. “Polling” ...................................................................................................36
`
`2. There Is No Reasonable Likelihood Of Claims 1, 19, or 21 Being Found
`
`To Be Anticipated By Culliss (Ex. 1006). ..................................................38
`
`
`
`
`2
`
`
`
`3. There Is No Reasonable Likelihood Of Claim 23 Being Found To Be
`
`Anticipated By Culliss (Ex. 1006). .............................................................41
`
`4. There Is No Reasonable Likelihood Of Claims 18, 20, or 22 Being Found
`
`To Be Anticipated in View of Culliss (Ex. 1006). ......................................42
`
`5. There Is No Reasonable Likelihood Of Claims 15 or 16 Being Rendered
`
`Obvious by Wachtel (Ex. 1005) and Culliss (Ex. 1006). ...........................45
`
`6. There Is No Reasonable Likelihood Of Claims 1, 19, or 21 Being Found to
`
`Be Anticipated by SavvySearch (Ex. 1007). ..............................................45
`
`7. There Is No Reasonable Likelihood Of Claim 23 Being Found to Be
`
`Anticipated by SavvySearch (Ex. 1007). ....................................................47
`
`8. There Is No Reasonable Likelihood Of Claims 18, 20, or 22 Being Found
`
`to Be Anticipated by SavvySearch (Ex. 1007). ..........................................49
`
`9. There Is No Reasonable Likelihood Of Claim 23 Being Found To Be
`
`Anticipated Or Rendered Obvious in View of SavvySearch (Ex. 1007). ..52
`
`IV. CONCLUSION ..............................................................................................54
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`PRELIMINARY RESPONSE BY PATENT
`OWNER UNDER 37 C.F.R. § 42.107
`
`Patent Owner Evolutionary Intelligence LLC hereby respectfully submits
`
`this Preliminary Response to the Petition seeking inter partes review of U.S. Patent
`
`No. 7,702,682.
`
`The Petition is deficient and relies on prior art references that are entirely
`
`distinct from the ’682 patent. The Petition should be rejected for three independent
`
`reasons. First, the Petition fails to explain the relevance of the prior art to the
`
`claims as required by 37 C.F.R. § 104(b)(5), including failing to establish that the
`
`prior art discloses all elements “arranged as in the claims.” Second, the Petition is
`
`deficient because it violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against
`
`incorporating other arguments by reference. Third, even setting aside these critical
`
`defects, the Petition should be rejected on the merits, because it fails to
`
`demonstrate a reasonable likelihood of any claims being invalid—particularly
`
`because it relies on unreasonably broad constructions for and fails to construe
`
`terms that are material to all of the claims at issue. For at least these reasons, the
`
`Petition does not show a reasonable likelihood of prevailing with respect to any of
`
`the challenged claims, and inter partes review should not be instituted.
`
`
`
`
`4
`
`
`
`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
`
`being filed within three months of the October 28, 2013 mailing date of the Notice
`
`granting the Petition a filing date of October 23, 2013.
`
`I.
`
`Technology Background
`
`The ’682 patent describes a “System and Method for Creating and
`
`Manipulating Information Containers With Dynamic Registers.” The invention is
`
`directed at improving searches for information in “information containers” (e.g.,
`
`web pages or documents stored on various computers). At the time of the
`
`invention, searching information resources on a computer network (e.g., the
`
`internet) was “accomplished by individuals directing a search effort by submitting
`
`key words or phrases to be compared to those key words or phrases contained in
`
`the content or description of that information resource, with indices and contents
`
`residing in a fixed location unchanging except by human input.” Ex. 1001 at 1:30-
`
`37. As the ’682 patent notes, this “static” information model was limited, because,
`
`inter alia, the information being searched did not evolve to reflect its actual utility
`
`to the people using it, and successful search strategies were not available to others.
`
`Ex. 1001 at 1:63-2:58. At most, the prior art allowed “hits” for a given web page to
`
`be tracked, without any record of the page’s utility. See Ex. 1001, 2:30-3:6.
`
`The invention solved this problem through the use of “dynamic” information
`
`containers. The dynamic information containers include dynamic registers that
`
`
`
`
`5
`
`
`
`attach to and form part of the container. Ex. 1001 at 3:10-15. Each container has
`
`an information element (e.g., text, audio, or video), a plurality of registers, and a
`
`gateway. The plurality of registers for each container include (i) a unique
`
`identification register for that container; (ii) a second register governing the
`
`interactions of the container according to utility of the information in the
`
`information element relative to space or time; (iii) an active register controlling
`
`whether the container acts upon other containers according at a given time or
`
`location; (iv) a passive register controlling whether the container can be acted upon
`
`by other containers at a given time or location; and (v) a neutral register controlling
`
`whether a container may interact with other containers at a given time or location.
`
`“Gateways” are programmed with rules to enable the interaction among the various
`
`containers, gateways, and system components. Id. at 4:54-5:11.
`
`Other methods of searching that “improved upon” basic search engines were
`
`known at the time of the filing of the ’682 patent, such as use of “meta” search
`
`engines. But these “improved” methods still suffered from most or all of the
`
`drawbacks associated with basic search engines and subject matter indexes known
`
`as of the date of filing of the patent, such as failing to update the information
`
`container itself with data reflecting the utility of the information in the containers
`
`identified by the search. The challenged claims of the ’682 patent are directed to
`
`methods that overcome shortcomings in the prior art.
`
`
`
`
`6
`
`
`
`The ’682 patent describes a “System and Method for Creating and
`
`Manipulating Information Containers With Dynamic Registers.” In the system and
`
`method of the ’682 patent, dynamic registers encapsulated within a plurality of
`
`information containers are updated with data regarding interactions between
`
`different information containers as searches are performed. This allows
`
`information regarding the different information containers to evolve as information
`
`within the containers is accessed.
`
`The ’682 patent builds on the invention of the ’536 patent, directed to an
`
`apparatus comprised of a plurality of containers, each container comprising
`
`information elements encapsulated with time- and space-based dynamic registers,
`
`thereby facilitating access to the information at appropriate times and in relation to
`
`pertinent locations. As users access the information containers, the dynamic
`
`registers are updated with information regarding their use, allowing them to
`
`evolve. The dynamic nature of the invention of the ’536 patent is also evident in
`
`its other continuation, U.S. Patent No. 7,873,682. The ’3,682 patent is directed to
`
`methods and systems using at least two information containers with dynamic
`
`registers to evolve information containers over time.
`
`Claims 1-17 are directed to computer-implemented methods for performing
`
`a search query on a plurality of containers, comprising searching first container
`
`registers having historical data, encapsulating the identified containers in a new
`
`
`
`
`7
`
`
`
`containers, updating second container registers of the identified containers with
`
`data associated with interactions of the identified containers with the new
`
`container, and providing a list characterizing the identified containers. In claims 1-
`
`17, the first container registers have data comprising historical data associated with
`
`the interactions of the identified containers with other containers of the plurality of
`
`containers.
`
`Claim 18 is similar to claim 1, except that the computer polls 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 therein associated with the search query. The
`
`identified containers have container registers containing data comprising historical
`
`data, which is searched as part of the polling of the plurality of gateways. Like
`
`claims 1-17, claim 18 recites encapsulation of the identified containers in a new
`
`container, updating the container registers of the identified containers with data
`
`associated with the interactions of the identified containers with the new container,
`
`and provision of a list characterizing the identified containers.
`
`Claims 19 and 20 are directed to computer programs operable to perform the
`
`methods of claims 1 and 18, tangibly embodied on computer-readable media.
`
`Claims 21-22 are directed to systems that perform the operations of claims 1-18.
`
`Claim 23 is directed to a method similar to that of claim 1, but where the first
`
`
`
`
`8
`
`
`
`container registers are searched to identify “search query templates” that are used
`
`to form subsequent queries.
`
`II. Overview of the Asserted Prior Art
`
`The petition for IPR2014-0080 relies upon nine references:1
`
`• Wachtel, U.S. Patent No. 6,195,654 (Ex. 1005) (“Wachtel”);
`
`• Culliss, U.S. Patent No. 6,006,222 (Ex. 1006) (“Culliss”);
`
`• “SSavvySearch: A Meta-Search Engine that Learns which Search
`
`Engines to Query” (Ex. 1007) (“SavvySearch”)
`
`• Chang et al., U.S. Patent No. 6,298,343 (Ex. 1008) (“Chang”);
`
`• “Eliminating Receive Livelock in an Interrupt-Driven Kernel” (Ex.
`
`1009) (“Mogul”)
`
`• An “EARN” memo labelled “Request for Comments:1580” titled
`
`“Guide to Network Resource Tools” (EX. 1010) (“RFC”);
`
`• Herz, U.S. Patent No. 6,460,036 (Ex. 1013) (“Herz”);
`
`• Kirsch, U.S. Patent No. 5,751,956 (Ex. 1014) (“Kirsch”); and
`
`• “WebSeer: An Image Search Engine for the Wolrd Wide Web” (Ex.
`
`1015) (“Webseer”)
`
`Culliss (Ex. 1006) and SavvySearch (Ex. 1007) are the primary references
`
`asserted by the Petition, and are asserted as anticipatory against all claims (as well
`
`
`1 Petitioner asserts Wachtel (Ex. 1005) as anticipatory in the petition for IPR 2014-0079.
`9
`
`
`
`
`
`
`as in combination to argue that claims 4 and 23 are obvious). The remaining
`
`references are directed to supplying missing elements for obviousness rejections of
`
`dependent claims in combination with Culliss. Arguments involving Exhibits
`
`1008; 1009; 1010; 1013; and 1015 are not presented in the Petition, but are
`
`incorporated by reference from the supporting declaration.2
`
`Culliss, Wachtel, SavvySearch, Chang, Herz, and WebSeer are each directed
`
`to systems and methods for improving search results, but none discloses or renders
`
`obvious any of the challenged claims.
`
`A. Culliss (Ex. 1006)
`
`Culliss discloses a “Method of Organizing Information” in which the search
`
`activity of a user is monitored and such activity is used to organize articles in a
`
`subsequent search by the same or another user who enters a similar search query.
`
`Ex. 1006 at Abstract. The invention operates by assigning scores to articles under
`
`the key terms in the index. Id. As users enter search queries and select articles, the
`
`scores are altered. Id. The scores are then used in subsequent searches to organize
`
`the articles that match a search query. Id.
`
`Culliss starts from the premise that documents on the internet may have “key
`
`terms” associated with them to assist searching. Ex. 1006 at 1:32-35. Individuals
`
`
`2 (N.B. The headings of several sections of the Petition mistakenly identify
`rejections based on Chang. This appears to be a typographical error, as the
`arguments presented in those sections are actually based on Herz (Ex. 1013).)
`10
`
`
`
`
`
`
`who want to locate articles use publicly available prior art search engines (e.g.,
`
`Yahoo!). The search engine “compares the search query with the key terms from
`
`the articles and retrieves at least a portion of the articles having key terms which
`
`match the search query.” Id. at 1:44-47.
`
`Culliss builds onto prior art searching by maintaining an index of “key
`
`terms.” Id. at 3:55-60. Articles are associated with the “key terms” in the index
`
`through any means (e.g., meta-tags). Id. at 3:61-65. Each index entry includes a
`
`“key term score” for each term associated with each article. See Ex. 1006 at3:65-
`
`4:10. “The invention will accept a search query for a user and a search engine
`
`[attached to the index of the invention] will identify key terms which match the
`
`search query.” Id. at 4:10-13. These “matched key terms” are used to identify
`
`relevant articles associated with the original search query. Id. at 4:13-18.
`
`“Matched articles” are displayed to the user in “squibs.” Id. at 4:26-31. As users
`
`view the articles, “key term scores” for the selected matched article are adjusted to
`
`reflect the article’s use. Id. at 4: 37-41.
`
`Although Culliss discloses a “search engine,” Culliss’ disclosure is
`
`essentially directed to searches of Culliss’ index. When discussing searches of the
`
`internet, Culliss discloses accepting and “forwarding or inputting directly a search
`
`query to another search engine available over the internet.” Id. at 13:12-15. The
`
`other search engine returns its results to the Culliss “search engine,” which then
`
`
`
`
`11
`
`
`
`generates a list of “matched articles” Id. at 13:15-19. Culliss states that its
`
`invention “can be simply incorporated into the search engine,” but provides no
`
`detail regarding how this would be implemented. Id. at 13:19-21.
`
`Culliss does not disclose “searching, using the computer, first container
`
`registers . . . in a plurality of containers, the container registers having . . .
`
`historical data associated with interactions of the identified containers with other
`
`containers from the plurality of containers.” All Culliss discloses is searching a
`
`single database to identify articles associated with key terms. Culliss also fails to
`
`disclose “encapsulating identified containers in a new container and updating
`
`second registers of the identified containers with data regarding the interactions of
`
`the identified containers with the new containers,” “polling” of gateways, and
`
`“searching” to identify “search query templates encapsulated in identified
`
`containers.”
`
`B.
`
`SavvySearch (Ex. 1007)
`
`SavvySearch discloses a meta-search engine. Ex. 1007 at 1. It allows a user
`
`to submit one query, which the meta-search engine then forwards to search engines
`
`so that a search may be performed. Id. at 2-3. SavvySearch discloses a search
`
`form. Id. at 3 “The search form, the query interface to SavvySearch, asks the user
`
`to specify a set of keywords (query terms) and options for the search.” Id. The
`
`
`
`
`12
`
`
`
`“search form” also allows user to control the number of links displayed and the
`
`amount of description displayed. Id.
`
`SavvySearch creates a “metaindex” with “learned associations between
`
`search engines and query terms.” Id. at 3. The metaindex lists the search terms
`
`and the “effectiveness value” of search engines to which those terms were
`
`submitted. Id. The “effectiveness values are derived from two types of
`
`observations” of the results of users’ searches: “no results” (i.e., failure to return
`
`links) and “visits” counts (i.e., number of items “clicked on”). SavvySearch also
`
`tracks “recent performance” of the search engine by recording “number of hits”
`
`and “response time” for the last five queries submitted. SavvySearch teaches away
`
`from use “user feedback,” due to a low rate of response. Id.
`
`SavvySearch (Ex. 1007) does not disclose its system as performing actual
`
`searches of content. Nor does SavvySearch disclose searching historical containers
`
`to identify items of interest. SavvySearch also fails to disclose “polling” of
`
`gateways and “search query templates encapsulated in identified containers.”
`
`
`
`III. The Petition Should be Denied
`
`The Petition should be rejected for three independent reasons. First, the
`
`Petition fails to explain the relevance of the prior art to the claims as required by
`
`37 C.F.R. § 104(b)(5), including failing to establish that the prior art discloses all
`
`
`
`
`13
`
`
`
`elements “arranged as in the claims.” Second, the Petition is deficient because it
`
`violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against incorporating other
`
`arguments by reference. Third, even setting aside these critical defects, the Petition
`
`should be rejected on the merits, because it fails to demonstrate a reasonable
`
`likelihood of any claims being invalid—particularly because it relies on
`
`unreasonably broad constructions for and fails to construe terms that are material
`
`to all of the claims at issue.
`
`A. The Petition Fails To Explain the Relevance Of The References
`
`To The Claims As Required By 37 C.F.R. § 104(B)(5)
`
`37 C.F.R. § 104(b)(5) states (emphasis added): “the petition must set forth: .
`
`. . (5) The exhibit number of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge. The
`
`Board may exclude or give no weight to the evidence where a party has failed to
`
`state its relevance or to identify specific portions of the evidence that support the
`
`challenge.” In addition, in order to invalidate a claim, a prior art reference “must
`
`not only disclose all elements of the claim within the four corners of the document,
`
`but must also disclose those elements ‘arranged as in the claim.’” See MPEP 2131;
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Failure
`
`to satisfy these requirements is grounds to dismiss an IPR petition in its entirety.
`
`
`
`
`14
`
`
`
`See, e.g., Synopsis, Inc. v. Mentor Graphics Corp., IPR 2012-0041, Dkt. No. 16,
`
`12-13 (PTAB 2013) (declining, under 37 CFR § 104(b)(5), to institute IPR due to
`
`petitioner’s failure to establish that elements were “arranged as in the claim”).
`
`The Petition fails to mention, let alone satisfy, these requirements. For
`
`example, the Petition provides no explanation of how the references show each and
`
`every element “arranged as required by the claim” as required for a proper
`
`anticipation rejection. See id. Instead, the Petition consists of a series of conclusory
`
`statements that various elements of the claims are present in the asserted prior art.
`
`There is little or no explanation in the Petition of specifically how the claim terms
`
`are being applied by the Petitioner or why the highlighted language corresponds to
`
`(or is otherwise relevant to) the claim elements. Even the Declaration of Henry
`
`Houh (Ex. 1003), upon which the Petition is based, contains many conclusory
`
`statements that elements are met, but fails to provide the explanation required by
`
`the PTO’s regulations.3
`
`A prime example of the Petition’s failure to satisfy § 104(b)(5) is its failure
`
`to identify adequately, for claims 1, 19, and 21, which containers in SavvySearch
`
`are the “plurality of containers” having the “container registers” that are searched
`
`by “the computer,” as well as which computer is doing the searching. The
`
`3 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
`addressing how the elements are arranged).
`15
`
`
`
`
`
`
`Petition’s discussion of the “searching . . . first container registers . . . in a
`
`plurality of containers” never actually discusses which disclosures of SavvySearch
`
`the Petition is reading these limitations onto. See Petition at 42-43 (discussing “the
`
`SavvySearch metaindex,” “other search indexes,” and “websites,” without
`
`specifying which of these is the “plurality of containers” in which the “first
`
`container registers” are located). Instead, the Petition cites nine paragraphs
`
`spanning six pages of the supporting Declaration, leaving it to the reader to figure
`
`out why and how those paragraphs are relevant to the claims 1, 19, and 21. See
`
`Petition at 42-43 (citing Ex. 1003 at ¶¶ 270, 283-287, 306-309).
`
`The first paragraph cited by the Petition merely references the SavvySearch
`
`system’s tracking of “long-term performance of search engines on specific search
`
`query terms.” Ex. 1003 at ¶ 270. The next sequence of the Declaration cited by
`
`the Petition discusses the SavvySearch system’s ranking of third party search
`
`indexes and the algorithms the system uses to accomplish this, without once
`
`identifying any of these disclosures as “first container registers” or “a plurality of
`
`containers.” Id., ¶¶ 283-287.
`
`Only ¶¶ 306-309 of Ex. 1003 discuss the claim terms in relation to
`
`SavvySearch’s disclosure, and these discussions fail to apply the claim terms to the
`
`disclosure in a clear manner. The cited paragraphs identify at least three distinct
`
`“container registers”, without ever identifying specifically which of these is
`
`
`
`
`16
`
`
`
`supposed to correspond to the “first container registers” or which “plurality of
`
`containers” the putative “first container registers” are in. See Ex. 1003 at ¶ 306
`
`(identifying “websites” searched by third party search engines as “containers” and
`
`third party “search indexes” (e.g., Lycos) as “container registers,” as well as
`
`“additional container registers . . . within the containers they represented.”); ¶ 307
`
`(asserting SavvySearch discloses “creating container registers in a metaindex” to
`
`analyze how search engines use “containers (e.g., web sites)”); ¶ 308 (identifying
`
`“web sites” as containers, and the metaindex data as the “container registers” that
`
`are “encapsulated and defined within the containers that they represented”); ¶ 309
`
`(asserting that SavvySearch chooses search engines using “container registers” in
`
`both “the SavvySearch container register (i.e., data in the metaindex) and
`
`information from other container registers (i.e., individual indexes and key word
`
`data) within the web sites themselves”).
`
`Even the Petition’s identification of “the computer” is unclear, because the
`
`Petition facially indicates that “the computer” is the SavvySearch server, while the
`
`Declaration goes back and forth between identifying the SavvySearch server and
`
`the independent search engines as supposedly meeting the limitation. Compare
`
`Petition at 42 (identifying search query received at SavvySearch server) with Ex.
`
`1003 at ¶ 309 (stating that SavvySearch “selects a set of search engines to perform
`
`the search”). In view of these (and other) ambiguities, the Petition simply does not
`
`
`
`
`17
`
`
`
`satisfy its burden of establishing a reasonable likelihood that at least one claim of
`
`the patent is invalid.
`
`A few additional deficiencies are highlighted below:
`
`• Claim 1 refers to “searching, by the computer, first container registers
`
`encapsulated and logically defined in a plurality of containers.” With
`
`respect to Culliss, the Petition cites a search of container registers in one
`
`container (i.e., one metaindex), without explaining how the one
`
`container satisfies the “plurality of containers” limitation. Claims 19 and
`
`21 contain analogous limitations that are not adequately addressed by
`
`the Petition.
`
`• Claim 19 recites an apparatus to search “content and first container
`
`registers,” where claim 1 recites only searching “first container
`
`registers.” The Petition fails to address this distinction between claim 1
`
`and claim 19, asserting without analysis or explanation that Culliss and
`
`SavvySearch satisfy claim 19 for the same reasons they satisfy claim 1.
`
`• Claims 18, 20, and 22 recite “polling” of gateways. The petition not
`
`only adopts an incorrect construction of “polling,” it fails to apply that
`
`construction, instead broadly reading the term “polling” as “querying.”
`
`See, e.g., Petition at 32 (arguing Culliss’ collecting “relevancy” scores
`
`
`
`
`18
`
`
`
`when conducting a search is “polling”); 49 (arguing SavvySearch
`
`discloses “polling” because its system searches multiple search engines).
`
`• Claims 21-23 recite means-plus-function elements. The Petition asserts
`
`that these claims are indefinite due to lack of support in the written
`
`description, while simultaneously asserting that they are anticipated by
`
`both Culliss and SavvySearch. But because the Petition never even
`
`proposes constructions for these means-plus-function elements, it cannot
`
`have established that these elements are present in the asserted prior art.
`
`• With respect to anticipation of claim 23 by SavvySearch (Ex. 1007), the
`
`Petition cites to ¶¶ 292-293 of the supporting declaration, Ex. 1003. See
`
`Petition at 47. Those paragraphs cite Ex. 1007 at “22-23.” Ex. 1007 has
`
`only 12 pages.
`
`• The Petition also cites incorrect claim language for claim 23, converting
`
`two plural elements (“identified search query templates . . . in identified
`
`containers”) to one element each (“an identified search query template .
`
`. . in an identified container”). See Petition at 46-47. The Petition also
`
`deletes “the identified” from “the identified one or more search query
`
`templates” in claim 23, thereby disguising its antecedent relationship
`
`with the previous “search query templates.” Id. at 47. The Petition then
`
`
`
`
`19
`
`
`
`reads these incorrect limitations onto disclosures that do not satisfy the
`
`correct claim language.
`
`B.
`
`The Petition Violates 37 C.F.R. 42.6 By Incorporating Arguments
`
`By Reference
`
`Rule 42.24 of the PTAB’s Rules for Trial Practice limits petitions for inter
`
`partes review to 60 pages. The PTO adopted this page limit after substantial public
`
`commentary, in an attempt to reduce the burden of petitions for review on the
`
`PTAB and patent owners. To ensure that Petitioners adhere to this page limit, the
`
`PTO explicitly prohibits incorporation of arguments by reference. See 37 C.F.R.
`
`42.6(a)(3) (“Arguments must not be incorporated by reference from one document
`
`into another document.”); see also Rules of Practice for Trials Before the Patent
`
`Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board
`
`Decisions (“Rules of Practice”), Fed. Reg. 77, No. 157, p. 48617 (noting that,
`
`under § 42.6, petitions are subject to Fed. R. App. Proc. 32, which prohibits
`
`incorporation by reference). As the PTO explained:
`
`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.
`20
`
`
`
`
`
`
`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). . . .
`
`The PTO noted that that Board applied page limits to both arguments and findings
`
`of fact because the failure to do so resulted in “abuses of the system.” Fed. Reg.
`
`77 at 48620. The PTO noted that patent cases before the PTAB are no exception to
`
`the standards of district courts, where motion practice does not require federal
`
`judges to “shovel through steaming mounds of pleonastic arguments in Herculean
`
`effort to uncover a hidden gem of logic.” Id.
`
`Despite this prohibition on incorporation by reference, the Petition
`
`incorporates most of its actual analysis by referring to its supporting declaration.
`
`See, e.g., Petition at 12 (citing Ex. 1003 at ¶¶ 106-265). Collectively, the Petition’s
`
`citations explicitly incorporate by reference 96 pages of Exhibit 1003. The Petition
`
`similarly fails to provide a description of Ex, 1007, instead incorporating ¶¶ 266-
`
`433 by reference.
`
`One example of the Petition’s abuse of incorporation by reference is its
`
`incorporation of argument, for claims 1, 19, and 21, of which disclosures of
`
`SavvySearch are the “plurality of containers” having the “container registers” that
`
`are searched by “the computer,” as well as which computer is doing the searching.
`
`
`
`
`21
`
`
`
`The Petition’s discussion of the “first container registers . . . in a plurality of
`
`containers” never actually discusses which disclosures of SavvySearch the Petition
`
`is reading these limitations onto. See Petition at 42-43 (discussing “the
`
`SavvySearch metaindex,” “other search indexes,” and “websites,” without
`
`specifying which of these is the “plurality of containers” in which the “first
`
`container registers” are located). Instead, the Petition cites nine paragraphs
`
`spanning six pages of the supporting Declaration, id. (citing “Ex. 1003 at Ex. 1003
`
`at ¶¶ 270, 283-287, 306-309”), leaving it to the reader to figure out why and how
`
`those paragraphs are relevant to the claims 1, 19, and 21.” And this is not even the
`
`full extent of the problem, as the nine paragraphs cited by the Petition contain
`
`additional references to yet other paragraphs of the Declaration. See, e.g., ¶¶ 306-
`
`309 (collectively citing id, ¶¶ 268-280 and 284-290 – a total of 21 paragraphs
`
`distributed over eleven pages).
`
`Yet another example of the Petitioner’s violation of 37 C.F.R. § 42.6 is the
`
`Petition’s discussion of why Culliss anticipates claim 1, in which the Petition reads
`
`the limitation “searching, using the computer, first container registers . . . in a
`
`plurality of containers” onto “an index to match these keywords with matching
`
`articles.” The Petition incorporates 27 paragraphs of the Declar
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
