`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Motorola Mobility LLC, Google Inc. and Apple Inc.,
`
`Petitioners,
`
`v.
`
`Arendi S.A.R.L.,
`
`Patent Owner.
`
`____________
`
`Case No. IPR2014-00203
`
`Patent No. 8,306,993
`
`____________
`
`PATENT OWNER ARENDI S.A.R.L.’S PRELIMINARY RESPONSE
`
`UNDER 35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ................................................................................. iii
`
`EXHIBIT LIST ..................................................................................................... iv
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................... 1
`
`OVERVIEW OF THE ‘993 PATENT .......................................................... 1
`
`III. CLAIM CONSTRUCTION ......................................................................... 7
`
`A.
`
`“allowing the user to make a decision whether to store at
`least part of the first contact information in the contact
`database as a new contact or to update an existing contact in
`the contact database” means presenting to the user a choice
`between competing alternatives of storing a new contact or
`updating an existing contact. ................................................................... 8
`
`IV. OVERVIEW OF THE PRIOR ART .......................................................... 12
`
`A. Overview of Drop Zones ....................................................................... 12
`
`B.
`
`C.
`
`Overview of LiveDoc ............................................................................ 15
`
`Overview of Magnanelli ........................................................................ 18
`
`D. Overview of Luciw ............................................................................... 19
`
`E.
`
`F.
`
`Overview of Bates ................................................................................. 22
`
`Overview of Giordano ........................................................................... 24
`
`V.
`
`SINCE THE PRIOR ART DOES NOT ANTICIPATE OR RENDER
`ANY CLAIM OBVIOUS, NO INTER PARTES REVIEW SHOULD
`BE INITIATED ......................................................................................... 25
`
`A. Overview of Reasons for Denying Inter Parties Review ........................ 25
`
`B.
`
`Because an action can be triggered in the Drop Zones
`system only after entering two execute commands, Drop
`i
`
`

`

`C.
`
`D.
`
`E.
`
`F.
`
`Zones fails to disclose “providing for the user an input
`device configured so that a single execute command from
`the input device is sufficient to cause the performing”, and
`therefore Ground 1 fails to establish a prima facie case for
`obviousness. .......................................................................................... 27
`
`Because neither Drop Zones nor Magnanelli discloses
`“allowing the user to make a decision whether to store at
`least part of the first contact information in the contact
`database as a new contact or to update an existing contact in
`the contact database”, Ground 1 for this additional reason
`fails to establish a prima facie case for obviousness. ............................. 32
`
`Because Luciw’s handling of a search input does not involve
`identifying the input as contact information, Luciw fails to
`disclose “analyzing in a computer process textual
`information in a document … to identify a portion of the
`document as first contact information, without user
`designation of a specific part of the textual information to be
`subject to the analyzing”, and therefore Ground 3 fails to
`establish anticipation by Luciw. ............................................................ 34
`
`Because none of Luciw, Giordano, or Bates discloses or
`suggests “allowing the user to make a decision whether to
`store at least part of the first contact information in the
`contact database as a new contact or to update an existing
`contact in the contact database”, Ground 4 fails to establish a
`prima facie case for obviousness and Ground 3 fails for this
`additional reason to establish anticipation by Luciw. ............................. 43
`
`Because none of Luciw, Giordano, and Bates discloses or
`suggests “providing for the user an input device configured
`so that a single execute command from the input device is
`sufficient to cause the performing”, for this additional reason
`Ground 4 fails to establish a prima facie case for
`obviousness and Ground 3 fails for this additional reason to
`establish anticipation by Luciw. ............................................................ 50
`
`VI. CONCLUSION .......................................................................................... 53
`
`CERTIFICATE OF SERVICE ............................................................................. 54
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) ............................... 7
`
`Statutes
`
`35 U.S.C. § 314 ...................................................................................................... 1
`
`37 C.F.R. § 42.100(b) ............................................................................................. 7
`
`
`
`
`
`
`
`iii
`
`

`

`EXHIBIT LIST
`
`Arendi Exhibit Number Description
`
`Third Supplement to Response H, filed November 3,
`2011, for Serial No. 11/745,186, the application for
`the ‘993 Patent
`
`Miller and Bonura, “From documents to objects: An
`overview of LiveDoc”, 30 SIGCHI Bulletin No. 2, 53-
`58.
`
`2001
`
`2002
`
`
`
`
`iv
`
`

`

`I.
`
`INTRODUCTION
`
`Patent Owner Arendi S.A.R.L. (“Arendi” or “Patent Owner”) respectfully
`
`requests that the Board decline to initiate inter partes review of claims 1-24 of U.S.
`
`Patent No. 8,306,993 (the “’993 Patent”) because Petitioners Apple Inc., Google
`
`Inc., and Motorola Mobility LLC (“Petitioners”) have failed to show that they have
`
`a reasonable likelihood of prevailing with respect to any of the challenged claims.
`
`35 U.S.C. § 314.
`
`Petitioners have submitted proposed grounds for challenge based on
`
`anticipation or obviousness. However, for each proposed ground, at least one
`
`claim limitation is missing from the relied-upon reference or combination of
`
`references. Thus, Petitioners have failed to meet their initial burden to show that
`
`each element was known in the prior art.
`
`II. OVERVIEW OF THE ‘993 PATENT
`
`The ‘993 Patent is directed, among other things, to computer-implemented
`
`processes for automating a user’s interaction between a first application, such as a
`
`word processing application or spreadsheet application, on the one hand, and a
`
`second application, such as contact management application having a database, on
`
`the other hand. In the ‘993 Patent, Exhibit 1001, Figs. 1 and 2 are flow charts
`
`showing for these interactions a number of scenarios, which are described from
`
`col. 4, line 55 to col. 6, line 12. Further details of the interactions are provided in
`
`1
`
`

`

`discussion thereafter of the other figures of the ‘993 Patent, and the discussion
`
`includes references back to relevant portions of the flow charts in Figs. 1 and 2.
`
`Fig. 1 is reproduced below.
`
`
`
`In various scenarios, text in a document in the first application is analyzed
`
`(in step 2 of Fig. 1) to identify contact information. Exhibit 1001, col. 4, line 55 to
`
`col. 5, line 2. The analysis takes place without user designation of a specific part
`
`of the document to be subject to the analyzing. Id.
`
`Once contact information has been identified, a number of different
`
`scenarios can follow, depending on the circumstances. In one scenario, if the
`
`identified contact information includes a name, a search is initiated in the database
`2
`
`

`

`associated with the second application for the name. Id., Fig. 1, steps 6, 12, and
`
`14. If the contact information identified in the document included only a name,
`
`and if only a single entry is found in the database for the name and the entry
`
`includes a single address, then the address is inserted into the document. Id., Fig.
`
`1, steps 6, 12, 18, and 22; Fig. 4; col. 6, lines 21-32. Fig. 4, which is reproduced
`
`below, shows the document displayed in Microsoft Word after the address has
`
`been inserted.
`
`Shown in Fig. 4 is the One Button 42, which, when pressed, launches the
`
`processes just recited, including analyzing the document to identify contact
`
`
`
`3
`
`

`

`information, the searching in the database, and inserting of the address. Id., Fig. 2,
`
`step 1; col. 4, lines 55-58; col. 6, lines 21-32.
`
`On the other hand, if multiple addresses are found in searching the database
`
`for the identified name, these found addresses are displayed, and the user is
`
`presented with a choice of which of the addresses to insert. Id., Fig. 1, steps 18,
`
`20, and 22; Fig. 10; col. 7, line 55 to col. 8, line 33.
`
`In another scenario, when the user clicks on the “One Button” while viewing
`
`a document that includes a name and an address, the document is analyzed as
`
`before (per Fig. 1, step 4) to identify the name and the address. Next, the database
`
`is searched for the identified name (per Fig. 1, step 14). If the name happens to be
`
`in the contact database but the address in the contact database for that name differs
`
`from the address typed by the user into the document (per Fig. 1, step 26), then the
`
`user is prompted to make a choice (per Fig. 1, step 30). The user is presented with
`
`4
`
`

`

`a screen shown in Fig. 9, which is reproduced below.
`
`
`
`Fig. 9 represents a screen presented to the user in which the user is given a
`
`series of choices that can be made in this specific context. Id., Col. 7, lines 27-51.
`
`The screen reproduces the name that is both in the document and in the contact
`
`database, and it also displays the address that is in the contact database for that
`
`name. Below this information, the screen offers a total of four choices in two
`
`categories. As shown in Fig. 9 and explained in the ‘993 Patent, the user is
`5
`
`

`

`enabled to select one of the four choices. Id. The first category is that “This is
`
`another contact”, and the choice under this category is to “Add a new contact with
`
`the same name”. The second category is that “This is the same contact”, and the
`
`user is given three other choices for the contact: (a) “Change the current address in
`
`the contact register”; (b) “Use the above address [reproduced from the contact
`
`database] in my Word document”; and (c) “Add a new address to the contact”.
`
`These same four choices are also illustrated in connection with item 30 of
`
`Fig. 1 of the ‘993 Patent, which shows logical flow followed in described
`
`embodiments of the invention. Item 30 is labeled “PROMPT USER FOR
`
`DECISION AND REVIEW”, and there are four outcomes shown from this item:
`
`(1) “THIS ANOTHER CONTACT WITH THE SAME NAME”; (2) “THE
`
`CONTACT HAS MOVED, THIS IS THE NEW ADDRESS”; (3) “THIS IS
`
`A ONE-TIME OCCURRENCE: NO ACTION”; and (4) “THIS IS ADDITIONAL
`
`ADDRESS FOR THIS CONTACT”. These choices are described in the ‘993
`
`Patent, col. 5, lines 26-37.
`
`It can be seen that the first of the four choices is to add a new contact, and
`
`two of the remaining choices are specific ways of updating an existing contact.
`
`(Another choice offered is to do neither of these and simply use the address in the
`
`Word document as typed.) Consequently, the screen of Fig. 9 presents to the user
`
`6
`
`

`

`a choice, among other things, between competing alternatives of storing a new
`
`contact or updating an existing contact.
`
`III.
`
` CLAIM CONSTRUCTION
`
`In an inter partes review, the Patent Trial and Appeal Board gives patent
`
`claims their “broadest reasonable interpretation in light of the specification of the
`
`patent.” 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`
`Cir. 2005) (en banc). The prosecution history is also relevant to identify the
`
`correct construction of claim terms. Phillips v. AWH Corp., 415 F.3d at 1317.
`
`Extrinsic evidence may also be relevant to establish the meaning of terms, but such
`
`evidence is only relevant to the extent it is consistent with the specification and file
`
`history. Id., 1319.
`
`Patent Owner Arendi proposes construction of certain claim terms below
`
`pursuant to the broadest reasonable interpretation consistent with the specification
`
`standard. The proposed claim constructions are offered for the sole purpose of this
`
`proceeding and thus do not necessarily reflect appropriate claim constructions to be
`
`used in litigation and other proceedings wherein a different claim construction
`
`standard applies.
`
`7
`
`

`

`A. “allowing the user to make a decision whether to store at least
`part of the first contact information in the contact database as a
`new contact or to update an existing contact in the contact
`database” means presenting to the user a choice between
`competing alternatives of storing a new contact or updating an
`existing contact.
`
`This phrase appears as one of three potential actions, in independent claims
`
`1, 9, and 17, referenced in the limitation:
`
`after identifying the first contact information, performing at
`least one action from a set of potential actions, using the first contact
`information previously identified as a result of the analyzing, wherein
`the set of potential actions includes:
`
`In other words, these claims require (among other things), after textual
`
`information in the document has been analyzed to identify first contact
`
`information, “(iii) allowing the user to make a decision whether to store at least
`
`part of the first contact information in the contact database as a new contact or to
`
`update an existing contact in the contact database”.
`
`A linguistic analysis of the phrase shows that the phrase requires allowing
`
`the user to make “a decision”. The decision is “whether [1] to store at least part of
`
`the first contact information ... as a new contact or [2] to update an existing
`
`contact”. The phrase therefore requires allowing the user to make a decision
`
`between competing alternatives of storing a new contact or updating an existing
`
`contact.
`
`8
`
`

`

`This limitation is supported in the ‘993 Patent by Fig. 9 and the discussion in
`
`the patent’s description relating to Fig. 9. See ‘993 Patent, Exhibit 1001, Col. 7,
`
`lines 27-42, and the discussion of the ‘993 Patent in section II above. In particular,
`
`Fig. 9, shows a screen displayed to the user when the user clicks on the “One
`
`Button” after having typed into the document a name and an address, and the name
`
`happens to be in the contact database but the address in the contact database for
`
`that name differs from the address typed by the user into the document. Figure 9 is
`
`reproduced below again for convenience.
`
`
`
`9
`
`

`

`As discussed in detail in section II, this screen gives the user a choice,
`
`among other things, between (1) adding a new contact or (2) updating an existing
`
`contact. Thus Fig. 9 is consistent with the linguistic analysis above that the phrase
`
`therefore requires allowing the user to make a decision between competing
`
`alternatives, storing a new contact or updating an existing contact. (See also the
`
`choices at item 30 of Fig. 1, discussed in section II, and described in the ‘993
`
`Patent at col. 5, lines 26-37.) Specifically, since the ‘993 Patent is for a computer-
`
`implemented invention, the method, computer-readable medium, and apparatus of
`
`independent claims 1, 9, and 17 must have a computer process that includes
`
`presenting to the user a choice at least between competing alternatives of storing a
`
`new contact or updating an existing contact.
`
`Moreover, when, in prosecution of the application for the ‘993 Patent, this
`
`phrase was inserted into the claim, Both Fig. 1 and Fig. 9, discussed above, were
`
`cited as support for the claim:
`
`Claims 119, 125, and 131 have been amended to require
`“allowing the user to make a decision whether to store at least part of
`the first contact information in the contact database as a new contact
`or to update an existing contact in the contact database.” This
`amendment was previously offered in Response H, filed July 22,
`2011. Support for this amendment can be found in Figure 1, numerals
`28, 30, 34, and 36; Fig. 9; and page 9, lines 4-12 [corresponding to
`col. 5, lines 26-37 of the ‘993 Patent.]
`
`10
`
`

`

`Arendi Exhibit 2001, Third Supplement to Response H, filed November 3, 2011,
`
`for Serial No. 11/745,186, page 22.
`
`The Petitioners argue that this phrase is ambiguous. “It could mean the user
`
`is allowed to make a decision between storing and updating, or that the user is
`
`allowed to make a "decision whether to store...or a decision whether to update.”
`
`Petition at 10. However, the second construction offered by the Petitioners, “that
`
`the user is allowed to make a ‘decision whether to store...or a decision whether to
`
`update’” is not supported the structure of the phrase, which is in the form “to make
`
`a decision whether to [X] or to [Y]”. The word “decision” is in the singular and is
`
`followed by a single occurrence of the word “whether”. The structure of the
`
`phrase makes clear that there is a single decision and it is between (at least) these
`
`two choices. By way of contrast, the phrase is not in the form “to make decisions
`
`whether to [X] or whether to [Y]”, which would support the Petitioners’ second
`
`construction—such a form puts “decision” in the plural and has two occurrences of
`
`the word “whether”, one occurrence for each decision.
`
`Besides ignoring the linguistic structure of the phrase, the Petitioners fail to
`
`take any notice of Fig. 9 and its accompanying text or of Fig. 1 at item 30 and its
`
`accompanying text, and Petitioners fail to take any notice of the procedural history,
`
`recited above, of the phrase. Given the rich context of the figures and description
`
`in the application, and the express reference to these figures and description in the
`
`11
`
`

`

`procedural history of the phrase, there is no reasonable basis for the Petitioner’s
`
`second construction. There is no doubt that “allowing the user to make a decision
`
`whether to store at least part of the first contact information in the contact database
`
`as a new contact or to update an existing contact in the contact database” means
`
`presenting to the user a choice between competing alternatives of storing a new
`
`contact or updating an existing contact.
`
`IV. OVERVIEW OF THE PRIOR ART
`
`A. Overview of Drop Zones
`
`Drop Zones, Exhibit 1006, is entitled “Drop Zones / An Extension of
`
`LiveDoc”. Specifically, “Drop Zone provides users with an interface for managing
`
`LiveDoc objects in the context of a set of typical user tasks.” Exhibit 1006, 30
`
`SIGCHI Bulletin No. 2 at 60. Drop Zones is thus an implementation that uses the
`
`functionality of LiveDoc. (The authors of the Drop Zones article, Miller and
`
`Bonura, are the authors of the related article entitled “From documents to objects:
`
`An overview of LiveDoc” (hereinafter the “LiveDoc article”, Patent Owner’s
`
`Exhibit 2002), appearing in the same issue of SIGCHI Bulletin as their Drop Zone
`
`article, 30 SIGCHI Bulletin No. 2, 53-58Error! Bookmark not defined.: LiveDoc
`
`is discussed in section IV(B) below.)
`
`Operation of the Drop Zone system uses Live Doc windows, as shown in
`
`Figures 1 and 2 of Drop Zones. The caption for Figure 1 states that “Drop zone is
`
`12
`
`

`

`shown in the window labeled ‘Activities’. The window at the top called ‘Test’ is a
`
`LiveDoc window showing proper names, e-mail addresses phone number, URL,
`
`date and stock market ticker codes.” Exhibit 1006, 30 SIGCHI Bulletin No. 2 at
`
`60. Similarly in Figure 2 (reproduced below), which illustrates “A user interaction
`
`with Drop Zones”, the same LiveDoc window is displayed. Id. To use Drop
`
`Zones, as discussed in connection with Figure 2, the user must first select a
`
`structure in a LiveDoc window. Id.
`
`Figure 2: A user interaction with Drop Zones.
`
`
`
`
`
`13
`
`

`

`Specifically, to use the Drop Zone system, as described further below, the
`
`user must first enter “LiveDoc mode” by pressing and holding a function key in
`
`order to cause highlighting to be displayed over the document. Once “LiveDoc
`
`mode” has been entered, as shown in Fig. 2, the user uses the mouse to select an
`
`item of information that has been highlighted (here the name Tom Bonura) and
`
`(while still holding down the mouse button), then drags the selected item to the
`
`window labeled “Activities” over a desired category (here “Email Assistant”) and
`
`then drops the selected name on the category (by releasing the mouse button).
`
`Dropping the item causes a menu of actions to appear in the Assistant window
`
`(shown to the left of the Activities window in Figure 2), and from that menu, the
`
`mouse is used to select a desired action. Id., Exhibit 1006, 30 SIGCHI Bulletin
`
`No. 2 at 60-61.
`
`Although the Drop Zones article does not explain how the LiveDoc window
`
`is invoked to show the information highlighted in it, the Drop Zones article points
`
`to the LiveDoc article. Citing the LiveDoc article (which is reference [6] therein),
`
`the Drop Zones article begins with a description of LiveDoc, explaining that
`
`LiveDoc reveals structural information in a document, such as a phone number or
`
`company names or a meeting, and then allows the user to invoke an action with
`
`respect to a recognized structure. Exhibit 1006, 30 SIGCHI Bulletin No. 2 at 59.
`
`The Drop Zones article explains that Drop Zones “is a framework centered on
`
`14
`
`

`

`representing the meaning of LiveDoc objects, composing those objects might into
`
`other higher-level objects, and enabling users to take action on those
`
`compositions.” Exhibit 1006, 30 SIGCHI Bulletin No. 2 at 60.
`
`As explained in Section IV(B) immediately below, because Drop Zones
`
`depends on the functionality of LiveDoc, when using Drop Zones, the structures
`
`identified by LiveDoc are not made visible to the user unless and until the user has
`
`entered an execute command by pressing and holding the function key. Only at
`
`that point can the Drop Zones interface be used to select an identified structure and
`
`to select an action for use with that structure.
`
`B. Overview of LiveDoc
`
`As mentioned in the Drop Zones article discussed above in section IV(A), to
`
`see highlighted structures in a LiveDoc window, the user needs to invoke
`
`“LiveDoc mode”. The LiveDoc article explains that LiveDoc mode is invoked by
`
`pressing and holding the function key. Exhibit 2002, LiveDoc article, 30 SIGCHI
`
`Bulletin No. 2 at 56. By way of background, as shown by Figure 3 (reproduced
`
`below) in the LiveDoc article, the LiveDoc system operates outside of any
`
`application, such as a word processor. Id. at 55-56.
`
`15
`
`

`

` Figure 3: The high-level LiveDoc architecture.
`
`
`
`
`As can be seen from the labels in the right-hand column in Fig. 3, the
`
`Applications (such as word processing) are shown separately from the LiveDoc
`
`Manager and from the Analyzer server. The article explains that the LiveDoc
`
`Manager “acts as an intermediary between the application making use of LiveDoc
`
`and the various internals of LiveDoc itself.” Id., Exhibit 2002, LiveDoc article, 30
`
`SIGCHI Bulletin No. 2 at 55. Furthermore, “the Analyzer System is made up of a
`
`16
`
`

`

`set of detectors that analyze the content of the document passed to LiveDoc, a set
`
`of actions (typically, but not necessarily, implemented as AppleScripts) that carry
`
`out the various operations on the discovered structures, a table that specifies the
`
`mapping between detectors and actions, and an Analyzer Server that coordinates
`
`all these functions.” Id. Since LiveDoc operates outside of the application,
`
`“LiveDoc must ask the application for the information about the structures it has
`
`found via a callback. Once this information is available, the highlights and their
`
`associated mouse-sensitive regions can be constructed.” Id. Exhibit 2002,
`
`LiveDoc article, 30 SIGCHI Bulletin No. 2 at 56.
`
`If one is viewing a document in a word processing program on a computer
`
`that is running LiveDoc, the structures identified by LiveDoc are not visible in the
`
`word processing program itself; instead one must first enter “LiveDoc mode” by
`
`pushing and holding the function key in order to see the structures: “The LiveDoc
`
`Manager also controls the events that occur when the user presses the function key
`
`to enter LiveDoc mode, and when the mouse button is pressed while over a
`
`LiveDoc item. The LiveDoc Manager updates the display to present the highlight
`
`information over the discovered structures when the function key is pressed, and to
`
`remove the highlights when the function key is released.” Id.
`
`17
`
`

`

`C. Overview of Magnanelli
`
`Magnanelli discloses a system “to reduce the work of an academic in finding
`
`and updating information about other researchers”. P. 2, col. 1. The system
`
`includes a database that stores “person names and WWW addresses”. P. 2, col. 2.
`
`The name identifies the research and the web address “is a general starting point
`
`for the agent to search for updates” to the information in the database. Id. “The
`
`database also stores general facts about persons such as title, address, photo and
`
`information about research activities including the titles of publications, URLs
`
`leading to abstracts or a publication file, project titles and URLs of pages
`
`containing further information on the project.” Id.
`
`The user of the Magnanelli system accesses the “database directly to retrieve
`
`and process information on academic contacts”. Id. The system additionally
`
`provides an automated process, termed an “agent”, that runs “to maintain the
`
`database and ensure its currency” . Id. The agent “runs in the background
`
`according to the periodicity specified by the user”. Id.
`
`While running in the background, the agent searches on the World Wide
`
`Web for information that may be used to update the database. P. 2, col. 2 to P. 3,
`
`col. 1. After searching the Web, the agent interacts with the database. Whenever
`
`the agent finds a relevant item of data, if the item has a confidence value over a
`
`user-specified threshold, then “the agent writes the fact in the database and records
`
`18
`
`

`

`this action in a log which the user may access to examine the agent’s actions.” Id.
`
`In other words, the agent operates in the background to update the database
`
`automatically whenever the item has a confidence value over the user-specified
`
`threshold. Only if the item has a confidence value below the user-specified
`
`threshold, “the agent will later consult the user who decides whether the
`
`fact will be stored or not.” Id.
`
`It can be seen that because the agent of the Magnanelli system runs in the
`
`background, there is no user command to cause the system to commence operation.
`
`In fact, the only user command that is even implied in the context of the
`
`Magnanelli system is when the item has a confidence value below the threshold
`
`and “the agent will later consult the user who decides whether the fact will be
`
`stored or not.”
`
`D. Overview of Luciw
`
`Luciw describes logical processes, usable by a pen-based computer system
`
`that functions as a personal organizer, to provide “implicit or explicit assistance”
`
`for “user supportive information functions”. Luciw, Exhibit 1003, col. 4, lines 14-
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`18 (pen-based computer system); col. 2, lines 16-19 (implicit or explicit
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`assistance).
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`The pen-based computer system has a database that can be queried. Id., col.
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`8, lines 31-34. Luciw describes “implicit” assistance, wherein a user has used a
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`19
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`smart field to enter a word used for look up in the database or has otherwise
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`similarly triggered a database lookup, and “explicit” assistance, wherein the user
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`explicitly invokes assistance from the device as by using pen 38 of Fig. 2. See Id.,
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`col. 8, lines 11-62.
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`The logical processes used by the Luciw device for providing implicit and
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`explicit assistance are shown in Fig. 3 of Luciw. Id., col. 8, lines 2-6. A review of
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`Fig. 3 shows that the database is queried in step 106 if it is determined in step 104
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`that there is an implicit assist. On the other hand, if in step 104 it is determined
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`that there is not an implicit assist, and if further it is determined that there is an
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`explicit assist, there is no database query, because the only database query
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`indicated is in step 106, exclusively where there is an implicit assist.
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`As an example of implicit assist, Luciw provides Figs. 4b, 4c, 5, 6a and 6b,
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`which describe use of a “smart field”. Id., col 10, line 23 et seq. (beginning
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`discussion of smart fields in connection with Fig. 4b). According to Luciw, “[a]
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`smart field is considered to be a predefined region on screen 52 of computer
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`system 10 shown in FIG. 2, or a predefined region within a window which appears
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`on screen 52”. Id. col. 8, lines 16-19. Fig. 4b is reproduced below.
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`20
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`
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`According to Luciw, Fig. 4b “shows a phone slip window 170 with a smart
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`name field 175 which has for example been evoked by either highlighting the verb
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`‘call’ or by simply writing the word on the display surface either before or after
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`establishment of window 170.” Id., col 10, lines 24-28. Operation of the phone
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`slip window is explained in the lines thereafter in Luciw:
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`Once the particular window 170 is presented to the user, the
`name ISAAC can be handwritten into the particular smart field 175.
`The assistance process recognizes the handwritten name “Isaac,” and
`either continues operation as suggested at step 106 in FIG. 3 directly,
`or concurrently displays the recognized name in formal font form, as
`suggested in FIG. 4c, in the same position of the smart field, where
`formerly the handwritten name “Isaac” had been established. As will
`readily be recognized, window 170 in FIG. 4b may contain several
`smart fields, in this case for example definable for either the “name”
`field 175 or a “phone” field shown at step 177.
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`21
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`Id., col. 10, lines 27-39.
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`Because the user of the Luciw device uses the smart field to specify the field
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`for which a database search is desired—a name in the name field 175 or a phone
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`number in the phone field 177—the Luciw device uses the entered item to search
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`for in the database for an item that has the same value for a corresponding
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`attribute. Id., col. 10, line 51 to col. 12, line 11.
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`E. Overview of Bates
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`Bates concerns “[a]pparatus, program products, and methods” that
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`“implement various intelligent contact management operations to improve the
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`productivity of users of electronic messaging systems and the like.” Bates, Exhibit
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`1004, Abstract.
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`One of the features disclosed in Bates is intelligent name lookup, and a
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`second feature is storing new contacts automatically. Bates explains these
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`features: “A first intelligent management function is that of intelligent name
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`lookup, where a favored user may be located from a contact database based upon a
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`predetermined affinity criteria. A second intelligent contact management function
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`that may be supported is that of the automated addition of new entries to a contact
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`database based upon the number of contacts between users.” Id., col. 10, lines 22-
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`29.
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`22
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`The intelligent name lookup procedure tracks past activity in order to
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`establish these affinity criteria. Intelligent name lookup is implemented in a search
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`routine, and affinity criteria influence the way results are displayed. Id., col. 10,
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`lines 42-51. In various embodiments, “affinity is determined based upon the
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`number of contacts between the local user and the users found in the search.
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`Contacts are typically monitored during certain operations performed in the
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`electronic messaging system to determine the number of times certain activities
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`occur with respect to a pair of users.” Id., col. 11, lines 35-40.
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`For the purpose of these affinity criteria, the system of Bates uses an “update
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`contact routine” after a user has accepted the displayed name, as discussed
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`beginning at col. 12, line 41 and continuing to col. 13, line 13. Despite its name,
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`the “update contact routine” does not update contacts in a local contact database.
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`Rather, the update contact routine tracks “contacts between the local user and other
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`users in the electronic messaging system so that the contact affinity