Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. ________
`
`
`
`
`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.
`alleged Patent Owner
`
`
`
`Patent No. 8,306,993
`Issue Date: Nov. 6, 2012
`
`Title: METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM AN OPERATING SYSTEM
`
`_______________
`
`Inter Partes Review No. Unassigned
`____________________________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`TABLE OF CONTENTS
`
`NOTICE OF LEAD AND BACKUP COUNSEL .............................................. 1
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST ......................................... 1
`
`NOTICE OF RELATED MATTERS ................................................................. 1
`
`NOTICE OF SERVICE INFORMATION ......................................................... 1
`
`GROUNDS FOR STANDING .......................................................................... 2
`
`STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 2
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW .................... 3
`
`I.
`
`Introduction ..................................................................................... 3
`
`A.
`
`B.
`
`II.
`
`III.
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Declaration of Dr. Dennis Allison ................................................... 3
`
`Technical Background ..................................................................... 3
`
`Overview of the '993 Patent ......................................................................... 3
`
`State of the Art at the Claimed Priority Date ................................... 6
`
`Construction of the Claims .............................................................. 7
`
`Claims 1, 9, and 17 — "Contact Database" ..................................... 9
`
`Claims 1, 9, and 17 — "Initiating Electronic Communication"........ 9
`
`Allowing the User to Make a Decision Whether… .........................10
`
`Claims 6, 14, and 22 — "Input Device" ..........................................10
`
`Claims 7, 15, and 23 — "Button" ...................................................11
`
`IV.
`
`Claim-By-Claim Explanation of Grounds for Unpatentability. .......11
`
`Ground 1. Claims 1-4, 6-12, 14-20, and 22-24 are invalid under 35 U.S.C.
`§ 103 over Bonura in view of Magnanelli.......................................11
`
`1. It would have been obvious to combine Bonura with Magnanelli ..........17
`
`Ground 2. Claims 5, 13 and 21 would have been obvious as in Ground 1, in
`further view of Giordano. ...............................................................34
`
`Ground 3. Claims 1-2, 6-7, 9-10, 14-15, 17-18 and 22-23 are invalid under 35
`U.S.C. § 102(b) over Luciw............................................................35
`
`Ground 4. Claims 1-24 are invalid under 35 U.S.C. § 103 over Luciw in view
`of Bates and Giordano. ...................................................................46
`
`1. It would have been obvious to combine Luciw, Bates and Giordano .....48
`
`
`
`
`
`ii
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`
`
`Exhibit Number
`
`Exhibit Name
`
`EXHIBIT LIST
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`U.S. Patent No. 8,306,993
`
`Declaration of Dennis Allison
`
`U.S. Patent No. 5,644,735
`
`U.S. Patent No. 6,247,043
`
`U.S. Patent No. 6,870,828
`
`"Drop Zones: An Extension to LiveDoc," SigCHI Bulletin, vol.
`30 no. 2, April 1998, by Thomas Bonura and James R. Miller
`
`Academia: An Agent-Maintained Database based on Information
`Extraction from Web Documents, by Mario Magnanelli, Antonia
`Erni, and Moira Norrie.
`
`Dennis Allison Curriculum Vitae
`
`U.S. Patent No. 5,859,636
`
`U.S. Patent No. 5,644,735
`
`U.S. Patent No. 5,754,306
`
`U.S. Patent No. 5,790,532
`
`U.S. Patent No. 8,306,993 - Claim Language Comparison
`
`"http://developer.apple.com/technotes/tn/tn1005.html"
`capturedand displayed on Archive.org’s "Wayback Machine"
`downloaded by Archive.org from the web on January 17, 1999.
`
`Notice of Service of Summons on Motorola Mobility LLC
`
`"http://ftp.inf.ethz.ch/publications/papers.html" captured and
`displayed on Archive.org’s "Wayback Machine" downloaded by
`Archive.org from the web on February 10, 1998
`
`Proceedings of 14th European Meeting on Cybernetics and
`Systems Research on April 15, 1998, (taken from
`http://www.osgk.ac.at/emcsr/98/).
`
`
`
`iii
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`NOTICE OF LEAD AND BACKUP COUNSEL
`
`Counsel for Petitioners Motorola Mobility LLC and Google Inc.:
`
`Lead Counsel: Matthew A. Smith (Reg. No. 49,003); Tel: 650.265.6109
`
`Backup Counsel: Zhuanjia Gu (Reg. No. 51,758); Tel: 650 529.4752
`
`Address: Tuner Boyd LLP, 2570 W. El Camino Real Ste. 380,
`
`Mountain View, CA 94040. FAX: 650.521.5931.
`
`Counsel for Petitioner Apple Inc.:
`
`Lead Counsel: David L. Fehrman (Reg. No. 28,600); Tel: 213.892.5601
`
`Backup Counsel: Mehran Arjomand (Reg. No. 48,231); Tel: 213.892.5630
`
`Address: MORRISON & FOERSTER LLP, 707 Wilshire Blvd., Suite 6000, Los
`
`Angeles, CA 90017-3543. FAX: .213.892.5454
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST
`
`The real-parties-in-interest for this Petition are Motorola Mobility LLC for
`
`Petitioner Motorola Mobility LLC, Google Inc. for Petitioner Google Inc., and
`
`Apple Inc. for Petitioner Apple Inc.
`
`NOTICE OF RELATED MATTERS
`
`U.S. Patent no. 8,306,993 (“the '993 patent”) at issue has been asserted in the
`
`U.S. District Court for the District of Delaware in the following cases: 1-12-cv-
`
`01601, 1-12-cv-01602, 1-12-cv-01600, 1-12-cv-01599, 1-12-cv-01598, 1-12-cv-
`
`01596, 1-12-cv-01595, and 1-12-cv-01597, all filed on Nov. 29, 2012.
`
`NOTICE OF SERVICE INFORMATION
`
`
`
`1
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`Please address all correspondence to the lead counsel at the addresses shown
`
`above. Petitioners also consents to electronic service by email at the following
`
`addresses: smith@turnerboyd.com, docketing@turnerboyd.com,
`
`gu@turnerboyd.com, kent@turnerboyd.com, dfehrman@mofo.com,
`
`marjomand@mofo.com.
`
`GROUNDS FOR STANDING
`
`Petitioner hereby certifies that the patent for which review is sought is available
`
`for inter partes review and that the Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claims on the grounds
`
`identified in the petition. Motorola Mobility was served with a complaint on
`
`November 30, 2012 (see Ex. 1015), and this petition is being filed on Dec. 2, 2013
`
`(Monday) by virtue of 35 U.S.C. § 21(b). Apple Inc. was served with a complaint
`
`on December 3, 2013.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Petitioner respectfully requests that claims 1-24 of U.S. Patent No.
`
`8,306,993 ("the '993 patent") (Ex. 1001) be canceled based on the following
`
`grounds of unpatentability, explained in detail in the next section:
`
`Ground 1. Claims 1-4, 6-12, 14-20, and 22-24 are invalid under 35 U.S.C.
`
`§ 103 over Bonura in view of Magnanelli.
`
`
`
`2
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`Ground 2. Claims 5, 13 and 21 would have been obvious as in Ground 1, in
`
`further view of Giordano.
`
`Ground 3. Claims 1-2, 6-7, 9-10, 14-15, 17-18 and 22-23 are invalid under 35
`
`U.S.C. § 102(b) over Luciw.
`
`Ground 4. Claims 1-24 are invalid under 35 U.S.C. § 103 over Luciw in view
`
`of Bates and Giordano.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`
`This petition presents "a reasonable likelihood that the Petitioner would prevail
`
`with respect to at least one of the claims challenged in the petition". 35 USC
`
`§ 314(a), as shown in the Grounds explained below.
`
`I.
`
`INTRODUCTION
`
`A. Declaration of Dr. Dennis Allison
`
`The declaration of Dennis Allison is attached as Exhibit 1002.
`
`B. Technical Background
`
`Overview of the '993 Patent
`
`The disclosure of the '993 patent relates to the computerized handling of contact
`
`information. Contact information is information that is related to a person—such
`
`as the person's name, telephone number, postal address, email address, etc. Ex.
`
`1002 at ¶ 38.
`
`The '993 patent "handles" such contact information with a system that facilitates
`
`interaction between programs that use text documents (like word processors) and
`
`
`
`3
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`databases of contact information. Ex. 1002 at ¶¶ 38-39. Such databases can be
`
`called "contact databases" or "address books". Ex. 1002 at ¶ 30. These databases
`
`can contain information relating to people, such as their names, telephone
`
`numbers, email addresses, postal addresses, and notes relating to the person. Id.
`
`The interaction between programs like word processors and contact databases
`
`can be illustrated with reference to Figures 3 and 4 of the '993 patent. These
`
`figures depict screens that a person might see when using a word processing
`
`program. The relevant portions of the figures are shown side-by-side here:
`
`
`
`
`
`Fig. 3
`
`Fig. 4
`
`
`
`Figure 3 on the left shows a word processor window, in which a user has
`
`entered a name. The name is processed by the '993 patent system after the user
`
`clicks the "OneButton" 42 in the upper right part of the window. Clicking the
`
`"OneButton" causes the system to "retrieve the name… from the document" and
`
`"search[] a database for the name….". Ex. 1001 at 6:26-28. Assuming that the
`
`
`
`4
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`search finds an address associated with the name, the system then inserts the
`
`address into the word processing document, as depicted in Fig. 4 on the right. Ex.
`
`1002 at ¶ 39.
`
`The bulk of the '993 patent relates to a high-level description of operations like
`
`these. The specification describes the user taking certain actions in a GUI, which
`
`result in operations being performed on contact information. These actions can
`
`include adding a contact to a contact database, or sending an email based on the
`
`contact information. Ex. 1002 at ¶ 40.
`
`The specification of the '993 patent, however, relates mainly to the end-result of
`
`contact information handling, that is, what the user of the computer system
`
`experiences as he or she uses the system. Exactly how these end-results are
`
`achieved is described only at the highest level. For example, the '993 patent
`
`provides no source code or pseudo code. High-level flowcharts for some
`
`embodiments are included, Ex. 1001 at Figs. 1, 2, and 16, but each of these is
`
`limited to a general description of the desired functionality, with no
`
`implementation detail. Ex. 1002 at ¶¶ 40-41.
`
`In fact, the '993 patent relies on existing word processors and existing databases
`
`to implement its contact management method, assuming that the person of ordinary
`
`skill can fill in the detail. The methods of the '993 patent are implemented on
`
`standard well-known operating systems and ordinary commodity computer
`
`
`
`5
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`hardware, all of which were readily available well before the filing of the
`
`application leading to the '993 patent. Ex. 1002 at ¶¶ 42-53.
`
`II.
`
`STATE OF THE ART AT THE CLAIMED PRIORITY DATE
`
`In the years leading up to earliest possible priority date (Sep. 1998), numerous
`
`systems existed that used personal computers to manage personal contact
`
`information. These systems integrated sophisticated contact database technology
`
`available at the time (Ex. 1002 at ¶¶ 45-47) with applications like word processors
`
`as well as applications that performed communications (such as email
`
`applications). Ex. 1002 at ¶ 30-37.
`
`For example, systems had been developed for analyzing text in a document to
`
`detect contact information in a document, and assisting the user in taking
`
`appropriate actions based on the information discovered. For example U.S. Patent
`
`No. 5,644,735 to Luciw (Ex. 1003)
`
`describes a system for detecting
`
`structures in text and using a template-
`
`based system to offer the user options
`
`for handling the data so identified.
`
`Figures 6a and 6b, which illustrate a
`
`user entering a name and having the
`
`system provide a full name, are shown
`
`
`
`6
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`at right. Ex. 1002 at ¶ 28.
`
`Another example was the "Drop Zones" system described in an article by
`
`Bonura and Miller (Ex. 1006). Drop Zones integrated a text recognition approach
`
`akin to Luciw into common applications like word processors. The text
`
`recognition system of Drop Zones identified things like names, telephone numbers
`
`and email addresses, and allowed the designer of the system to create arbitrary
`
`tasks. The Drop Zones system also used an electronic address book to convert
`
`between different kinds of contact information, and allowed the applications to
`
`update the address book with identified contact information. Fig. 2 of the Bonura
`
`article is shown below, and depicts how a name identified in a document can be
`
`used to cause a lookup on a name to retrieve an email address, thereby allowing an
`
`email to be sent. Ex. 1002 at ¶¶ 29, 92-93.
`
`III. CONSTRUCTION OF THE CLAIMS
`
`
`
`7
`
`
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`A claim in inter partes review is given the "broadest reasonable construction in
`
`light of the specification." See 37 C.F.R. § 42.100(b). As stated by the Federal
`
`Circuit in the case In re ICON Health and Fitness, Inc.:
`
`"[T]he PTO must give claims their broadest reasonable construction
`
`consistent with the specification. Therefore, we look to the
`
`specification to see if it provides a definition for claim terms, but
`
`otherwise apply a broad interpretation."
`
`496 F.3d 1374, 1379 (Fed. Cir. 2007). In particular, claims in inter partes
`
`review should not be limited by party argument (whether in this or a prior
`
`proceeding). To the extent that the Patent Owner desires a claim term to be
`
`interpreted more narrowly than its broadest reasonable interpretation in light of the
`
`specification, the Patent Owner must show that the specification provides an
`
`express definition for the relevant portions of the claims, or amend the claims. See
`
`SAP v. Versata, CBM2012-00001, Pat. App. LEXIS 3788, *8 (PTAB June 11,
`
`2013). As found by the en banc Federal Circuit:
`
`"If, in reexamination, an examiner determines that particular claims
`
`are invalid and need amendment to be allowable, one would expect an
`
`examiner to require amendment rather than accept argument alone."
`
`Marine Polymer Tech., Inc. v. HemCon, Inc., 672 F.3d 1350, 1364 (Fed. Cir.
`
`2012)(en banc).
`
`For the purposes of this proceeding, claim terms are presumed to take on their
`
`
`
`8
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`broadest reasonable ordinary meaning. This meaning is explained in certain
`
`instances in the following subsections. The Petitioners note that the standard of
`
`claim construction used in district courts differs from the standard applied before
`
`the USPTO. Any claim constructions in this Petition are directed to the USPTO
`
`standard, and are not necessarily the constructions that the Petitioners believe
`
`would be adopted in court. The Petitioners do not acquiesce or admit to the
`
`constructions reflected herein for any purpose outside of this proceeding.
`
`A. Claims 1, 9, and 17 — "Contact Database"
`
`The term "contact database" is used in the independent claims of the '993
`
`patent. The term is not expressly defined in the specification. The word
`
`"database" is used broadly. Ex. 1001 at 4:11-14; 9:40-55 and 12:7-14; Ex. 1002 at
`
`¶¶ 60-62. The only apparent requirement of the database is that it must allow
`
`access to stored information. Ex. 1002 at ¶¶ 60-62. As to the word "contact", the
`
`specification includes in the concept of "contact information" names and addresses,
`
`but also "other information, such as telephone numbers, fax numbers, e-mail
`
`addresses, etc.," as well as "mailing lists." Ex. 1001 at 4:42-48; Ex. 1002 at ¶¶ 60-
`
`62. Therefore, the broadest reasonable interpretation of the term "contact
`
`database" is "software that allows access to information related to a person".
`
`B. Claims 1, 9, and 17 — "Initiating Electronic Communication"
`
` The term "initiating electronic communication" is used in claims 1, 9, and 17.
`
`
`
`9
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`The specification has little discussion of initiating electronic communications. Ex.
`
`1002 at ¶ 63-64, Ex. 1001 at 4:42-48. Under the broadest reasonable
`
`interpretation, the term "initiating an electronic communication" should thus mean
`
`"starting a process that leads to an electronic communication". Ex. 1002 at ¶¶ 63-
`
`64.
`
`C. Allowing the User to Make a Decision Whether…
`
`The independent claims require in element (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;" Ex. 1001 at
`
`claim 1 (emphasis added).
`
`This limitation 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." The latter
`
`interpretation presents the user either with a choice to store or not to store, or with
`
`a choice to update or not to update. Ex. 1002 at ¶¶ 65-67. The specification
`
`supports the second interpretation. Ex. 1001 at 6:47-64; 10:17-24;8:62-9:10, Figs.
`
`11 and 13; Ex. 1002 at ¶¶ 67-69. Because the term is ambiguous, the broadest
`
`reasonable interpretation should include either construction. Ex. 1002 at ¶70.
`
`D. Claims 6, 14, and 22 — "Input Device"
`
`In the '993 patent, the term "input device" includes a GUI element on screen,
`
`
`
`10
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`and is thus not limited to hardware devices. Ex. 1002 at ¶71.
`
`E. Claims 7, 15, and 23 — "Button"
`
`The specification of the '993 patent defines the term "button" as "a touch screen,
`
`keyboard button, icon, menu, voice command device, etc. (hereinafter called
`
`‘button’)," Ex. 1001 at 1:22-24; Ex. 1002 at ¶ 72.
`
`IV. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY.
`
`Ground 1. Claims 1-4, 6-12, 14-20, and 22-24 are invalid under 35 U.S.C.
`§ 103 over Bonura in view of Magnanelli.
`
`Claims 1-24 are invalid under 35 U.S.C. § 103 over Thomas Bonura and James
`
`R. Miller, "Drop Zones: An Extension to LiveDoc," SigCHI Bulletin, vol. 30 no. 2,
`
`April 1998 ("Bonura") (Ex. 1006) in view of Mario Magnanelli, Antonia Erni, and
`
`Moira Norrie, "ACADEMIA: An Agent-Maintained Database based on
`
`Information Extraction from Web Documents," Proceedings of the 14th European
`
`Meeting on Cybernetics and Systems Research, Vienna Austria, April
`
`1998 ("Magnanelli")(Ex. 1007).
`
`Bonura is an article published in the bulletin for the Association for Computing
`
`Machinery’s "Special Interest Group on Computer-Human Interaction," also
`
`known as the SigCHI Bulletin, in April 1998. Ex. 1002 at ¶¶ 73-74. Bonura
`
`therefore qualifies as prior art under 35 U.S.C. §§ 102(a) and (b). Magnanelli is an
`
`article paper presented at a conference on April 15, 1998, and included in the
`
`
`
`11
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`proceedings of that conference. Ex. 1017. Furthermore, Magnanelli was presented
`
`at a conference on April 14, 1998 and available online and indexed by the
`
`archive.org servers no later than Feb. 10, 1998. Ex. 1016. Magnanelli was thus
`
`publicly accessible as of these dates. Ex. 1002 at ¶ 104. Therefore, Magnanelli is
`
`prior art under 35 U.S.C. § 102(a) and (b).
`
`The level of ordinary skill in the art is provided in the Allison declaration (Ex.
`
`1002) at ¶¶ 19-37. The Background and claim construction sections are
`
`incorporated in this Ground.
`
`Bonura teaches a computer system for analyzing text in a document, and then
`
`allowing the user to take specific actions based on identified text. Ex. 1002 at ¶ 75.
`
`The process of identifying specific text in a document is based on the Macintosh
`
`LiveDoc system. As Bonura explains:
`
`"LiveDoc [6] is an extension to the Macintosh user experience that
`
`allows documents to reveal structured information in such a way
`
`that it can be readily identified and used to achieve specific actions.
`
`Various kinds of recognizers, including context free grammars, are
`
`used to describe the structures to be found; these structures can be
`
`made up of either a single lexical term (either a variable structure like
`
`a phone number, or a collection of static strings, like company names)
`
`or multiple terms (for instance, a meeting can be defined as a
`
`combination of date, time, and venue structures). Small pieces of
`
`code can then be associated with each structure to instruct
`
`applications to carry out specific user actions on the discovered
`
`
`
`12
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`structures- perhaps to tell a telephony application to "Dial this
`
`phone number." These actions can then be offered to users by
`
`visually highlighting the discovered structures and attaching pop-
`
`up menus to the highlights." Ex. 1006, p. 59, left column (emphasis
`
`added). Ex. 1002 at ¶ 86.
`
`Bonura discloses that the information identified in a document can be a name,
`
`telephone number (see quote above), an email address (Fig 1 and caption, Fig. 3),
`
`etc. Ex. 1002 at ¶ 88-90.
`
`Bonura describes extending the LiveDoc system with "Drop Zones". Ex. 1006,
`
`p. 60, left column. Drop Zones allows a user to make context-based decisions on
`
`the identified information. For example, Bonura discloses that Drop Zones can
`
`interact with an address book (contact database). Ex. 1002 at ¶ 77. The address
`
`book can be searched by Drop Zones to convert an identified phone number into an
`
`email address in the address book. The email address, for example, can then be
`
`used to send an email. This is shown in Fig. 1 of Bonura, reproduced here with red
`
`annotations:
`
`
`
`13
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`
`
`In Fig. 2, the name "Tom Bonura" (red box at top) has been identified by the
`
`system using text analysis. Ex. 1002 at ¶81-82. A user indicates takes advantage
`
`of this analysis by initiating an email to Tom Bonura (red box at bottom: "Send
`
`email"). Ex. 1002 at ¶¶ 81-82, 93. Behind the scenes, the Drop Zones system
`
`queries the address book, using the identified name, to come up with an email
`
`address stored in the address book. Ex. 1002 at ¶¶ 89, 93.
`
`Bonura discloses that virtually any action could be attached to the identified
`
`text. Ex. 1002 at ¶ 78. For example, Bonura states that:
`
`"[T]hinking about [a name and phone number] from the perspective of
`
`an address book easily leads to the interpretation, 'Add this person
`
`to my address book'." Ex. 1006, p. 60 (left column)(emphasis added)
`
`Ex. 1002 at ¶ 77-78.
`
`
`
`14
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`Bonura is thus very similar to the '993 patent claims.
`
`Magnanelli, in turn, teaches a system ("Academia") for scanning documents (in
`
`this case, Web pages), where the scanned information can be used to interact with
`
`a contact database. Ex. 1002 at ¶ 105. Figure 1 of Magnanelli, reproduced below,
`
`shows the basic system:
`
`
`The user in the left interacts directly with an "Academia Database", which is a
`
`database containing information—including contact information—about people
`
`whose work the user has chosen to follow. Magnanelli, p. 00002, left column at
`
`bottom through right column at middle; Ex. 1002 at ¶ 31. Magnanelli expressly
`
`states, however, that "the general concepts of this system may be used in other
`
`applications". Magnanelli, Ex. 1007, p. 00002, left column, middle.
`
`Magnanelli's system also has an Academia Agent (shown at right in the
`
`
`
`15
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`diagram). The Academia Agent performs scanning of documents to recognize
`
`structures of interest in the documents (Ex. 1002 at ¶105), just like Bonura.
`
`The document scanning in Magnanelli can identify particular structures that
`
`represent contact and other information about a person. Ex. 1002 at ¶ 111-112,
`
`114. Magnanelli teaches that, when potential additional contact information is
`
`identified for a contact, the system can give the user a choice as to whether the
`
`contact database should be updated with the new information. Ex. 1002 at ¶¶ 115-
`
`117. For example, Magnanelli states:
`
`"The key contact information in the database consists of person names
`
`and WWW addresses. The name is necessary to identify the person,
`
`while the address is a general starting point for the agent to search for
`
`updates. 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. The user accesses the database directly to
`
`retrieve and process information on academic contacts. The Academia
`
`agent provides a value-added service by using information extracted
`
`from Web documents to maintain the database and ensure its
`
`currency. The agent may either update the database directly, or
`
`consult with the user as to whether or not it should perform the
`
`updates." Magnanelli, Ex. 1007, p. 00002 (right column).
`
`
`
`16
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`1. It would have been obvious to combine Bonura with Magnanelli
`
`It would have been obvious to combine Bonura with Magnanelli. Ex. 1002 at
`
`¶¶ 126-137. Bonura discloses a base system that provides semantically appropriate
`
`choices to a user upon the identification in a document of certain kinds of
`
`structures. Ex. 1006, p. 60, left column; Ex. 1002 at ¶ 125. The structures can
`
`include the kinds of information normally found in a contact information database
`
`(typically called an "address book"). Ex. 1006, p. 60, left column. For example,
`
`an address book will typically contain names and phone numbers. Bonura teaches
`
`automatically recognizing such address-book type information in text documents.
`
`Ex. 1006, p. 59 Introduction; p. 60, left column; Ex. 1002 at ¶ 125.
`
`Bonura further teaches that, as an extension of LiveDoc, the disclosed "Drop
`
`Zones" system can cause processing functions (executable code) to be associated
`
`with the identification of such contact information. For example, Bonura states:
`
`"Various kinds of recognizers, including context free grammars, are
`
`used to describe the structures to be found; these structures can be
`
`made up of either a single lexical term (either a variable structure like
`
`a phone number, or a collection of static strings, like company names)
`
`or multiple terms (for instance, a meeting can be defined as a
`
`combination of date, time, and venue structures). Small pieces of
`
`code can then be associated with each structure to instruct
`
`applications to carry out specific user actions on the discovered
`
`structures- perhaps to tell a telephony application to "Dial this phone
`
`
`
`17
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`number." These actions can then be offered to users by visually
`
`highlighting the discovered structures and attaching pop-up menus to
`
`the highlights." Bonura, Ex. 1006, p. 59, (left column)(emphasis
`
`added); Ex. 1002 at ¶126.
`
`Bonura explains that the code that can be associated with particular structures is
`
`more-or-less arbitrary. Ex. 1002 at ¶ 127. In fact, developers could develop so
`
`many different functions to be executed based on the identification of a particular
`
`structure in a document that the choice between them would threaten to overwhelm
`
`the user. Ex. 1006, p. 59, right column. To assist in selecting the appropriate
`
`functions for any given situation, Bonura described a contextual, semantic process
`
`for choosing functions to associate with certain structures. That is, Bonura teaches
`
`extending the functions available to a user upon automatic recognition of structures
`
`in a document, while still making sure that the functions available are appropriate
`
`for the context. Ex. 1002 at ¶ 127.
`
`In the context of contact information, Bonura teaches several functions that are
`
`appropriate. Ex. 1002 at ¶ 128. If a telephone number is found, for example,
`
`Bonura teaches initiating a telephone call (Ex. 1006, p. 59, left column), or using
`
`the telephone number to look up an email address and send an email (Ex. 1006, pp.
`
`60-61, text associated with Fig. 2). Bonura also teaches that it would be
`
`appropriate to add the identified contact information to the address book (contact
`
`database). Ex. 1002 at ¶ 128. For example, Bonura states:
`
`
`
`18
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`"The important aspect of the Drop Zone interface is that it allows the
`
`user to work with the objects of interest in specific, understandable
`
`contexts. Simply working with the semantics of a set of individually
`
`meaningful objects, such as a personal name, a time and a telephone
`
`number, is too open-ended to permit much useful assistance to the
`
`user: there are too many ways in which these objects might be
`
`combined. However, thinking about the name of a person and a
`
`phone number from the perspective of making a telephone call
`
`easily leads to the interpretation, 'Call this person at this number'.
`
`Similarly, thinking about this information from the perspective of
`
`an address book easily leads to the interpretation, 'Add this
`
`person to my address book'." Ex. 1006, p. 60, (left
`
`column)(emphasis added).
`
`Magnanelli likewise teaches actions that would be appropriate and desirable to
`
`carry out when contact information is discovered in a document. Ex. 1002 at
`
`¶ 129. Like Bonura, Magnanelli thus provides a document-scanning system that
`
`recognizes contact information. Id. When the contact information is recognized,
`
`Magnanelli teaches that it would be desirable for the user to have the option to
`
`update an existing record in a contact database to achieve the "value-added" benefit
`
`of keeping the contact database current. Ex. 1002 at ¶ 133. Bonura, in turn,
`
`teaches a general platform for enabling exactly the kinds of actions proposed by
`
`Magnanelli. Ex. 1002 at ¶ 133. Like Magnanelli, Bonura teaches recognizing
`
`contact information in documents. Bonura teaches that virtually any function can
`
`
`
`19
`
`

`
`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
`
`be associated with the contact information once identified, as long as it makes
`
`sense in context. Bonura further teaches that updating an address book (contact
`
`database) is one action that "easily" follows from considering the context
`
`surrounding recognizing contact information. Ex. 1002 at ¶ 133.
`
`Thus, adding Magnanelli's contact information update option to the system of
`
`Bonura represents an extension of Bonura in the manner in which Bonura was
`
`intended to be extended (by adding another sensible option associated with
`
`locating contact information). Ex. 1002 at ¶ 134. Furthermore, Bonura quite
`
`reasonably states that considering recognized contact information in the context of
`
`an address book "easily leads to the interpretation, 'Add this person to my address
`
`book'". Ex. 1002 at ¶ 134. Adding a record to an address book is technically very
`
`similar to updating a record in an address book. Ex. 1002 at ¶ 134. The
`
`combination would have led to the express "value-added" benefit taught by
`
`Magnanelli of keeping the address book current. Magnanelli, Ex. 1007, p. 00002,
`
`right column; Ex. 1002 at ¶ 134.
`
`Furthermore, Bonura was a known system, and Magnanelli's approach to
`
`updating contacts represented a known technique that could have been applied to
`
`Bonura's system, without any unpredictable results. Ex. 1002 at ¶ 1