`U.S. Pat. No. 8,306,993
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`Paper No. ________
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`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
`
`
`
`Case IPR2014-00203
`Patent 8,306,993
`
`
`____________________________________________________________
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
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`Petition for Inter Partes Review
`U.S. Pat. No. 8,306,993
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`TABLE OF CONTENTS
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`NOTICE OF LEAD AND BACKUP COUNSEL .............................................. 1
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST ......................................... 1
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`NOTICE OF RELATED MATTERS ................................................................. 1
`
`NOTICE OF SERVICE INFORMATION ......................................................... 1
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`GROUNDS FOR STANDING .......................................................................... 2
`
`STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 2
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`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW .................... 3
`
`I.
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`Introduction ..................................................................................... 3
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`A.
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`B.
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`II.
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`III.
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`A.
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`B.
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`C.
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`D.
`
`E.
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`Declaration of Dr. Dennis Allison ................................................... 3
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`Technical Background ..................................................................... 3
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`Overview of the '993 Patent ......................................................................... 3
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`State of the Art at the Claimed Priority Date ................................... 6
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`Construction of the Claims .............................................................. 7
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`Claims 1, 9, and 17 — "Contact Database" ..................................... 9
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`Claims 1, 9, and 17 — "Initiating Electronic Communication"........ 9
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`Allowing the User to Make a Decision Whether… .........................10
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`Claims 6, 14, and 22 — "Input Device" ..........................................10
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`Claims 7, 15, and 23 — "Button" ...................................................11
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`IV.
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`Claim-By-Claim Explanation of Grounds for Unpatentability. .......11
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`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. ...............................................................33
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`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
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`EXHIBIT LIST
`
`Exhibit Number
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`Exhibit Name
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`U.S. Patent No. 8,306,993
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`Declaration of Dennis Allison
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`U.S. Patent No. 5,644,735
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`U.S. Patent No. 6,247,043
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`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
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`U.S. Patent No. 5,754,306
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`U.S. Patent No. 5,790,532
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`U.S. Patent No. 8,306,993 - Claim Language Comparison
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`"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/).
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`NOTICE OF LEAD AND BACKUP COUNSEL
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`Counsel for Petitioners Motorola Mobility LLC and Google Inc.:
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`Lead Counsel: Matthew A. Smith (Reg. No. 49,003); Tel: 650.265.6109
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`Backup Counsel: Zhuanjia Gu (Reg. No. 51,758); Tel: 650 529.4752
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`Address: Tuner Boyd LLP, 2570 W. El Camino Real Ste. 380,
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`Mountain View, CA 94040. FAX: 650.521.5931.
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`Counsel for Petitioner Apple Inc.:
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`Lead Counsel: David L. Fehrman (Reg. No. 28,600); Tel: 213.892.5601
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`Backup Counsel: Mehran Arjomand (Reg. No. 48,231); Tel: 213.892.5630
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`Address: MORRISON & FOERSTER LLP, 707 Wilshire Blvd., Suite 6000, Los
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`Angeles, CA 90017-3543. FAX: .213.892.5454
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`NOTICE OF EACH REAL-PARTY-IN-INTEREST
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`The real-parties-in-interest for this Petition are Motorola Mobility LLC for
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`Petitioner Motorola Mobility LLC, Google Inc. for Petitioner Google Inc., and
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`Apple Inc. for Petitioner Apple Inc.
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`NOTICE OF RELATED MATTERS
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`U.S. Patent no. 8,306,993 (“the '993 patent”) at issue has been asserted in the
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`U.S. District Court for the District of Delaware in the following cases: 1-12-cv-
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`01601, 1-12-cv-01602, 1-12-cv-01600, 1-12-cv-01599, 1-12-cv-01598, 1-12-cv-
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`01596, 1-12-cv-01595, and 1-12-cv-01597, all filed on Nov. 29, 2012.
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`NOTICE OF SERVICE INFORMATION
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`U.S. Pat. No. 8,306,993
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`Please address all correspondence to the lead counsel at the addresses shown
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`above. Petitioners also consents to electronic service by email at the following
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`addresses: smith@turnerboyd.com, docketing@turnerboyd.com,
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`gu@turnerboyd.com, kent@turnerboyd.com, dfehrman@mofo.com,
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`marjomand@mofo.com.
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`GROUNDS FOR STANDING
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`Petitioner hereby certifies that the patent for which review is sought is available
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`for inter partes review and that the Petitioner is not barred or estopped from
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`requesting an inter partes review challenging the patent claims on the grounds
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`identified in the petition. Motorola Mobility was served with a complaint on
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`November 30, 2012 (see Ex. 1015), and this petition is being filed on Dec. 2, 2013
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`(Monday) by virtue of 35 U.S.C. § 21(b). Apple Inc. was served with a complaint
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`on December 3, 2013.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`The Petitioner respectfully requests that claims 1-24 of U.S. Patent No.
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`8,306,993 ("the '993 patent") (Ex. 1001) be canceled based on the following
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`grounds of unpatentability, explained in detail in the next section:
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`Ground 1. Claims 1-4, 6-12, 14-20, and 22-24 are invalid under 35 U.S.C.
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`§ 103 over Bonura in view of Magnanelli.
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`Ground 2. Claims 5, 13 and 21 would have been obvious as in Ground 1, in
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`further view of Giordano.
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`Ground 3. Claims 1-2, 6-7, 9-10, 14-15, 17-18 and 22-23 are invalid under 35
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`U.S.C. § 102(b) over Luciw.
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`Ground 4. Claims 1-24 are invalid under 35 U.S.C. § 103 over Luciw in view
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`of Bates and Giordano.
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`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
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`This petition presents "a reasonable likelihood that the Petitioner would prevail
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`with respect to at least one of the claims challenged in the petition". 35 USC
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`§ 314(a), as shown in the Grounds explained below.
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`I.
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`INTRODUCTION
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`A. Declaration of Dr. Dennis Allison
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`The declaration of Dennis Allison is attached as Exhibit 1002.
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`B. Technical Background
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`Overview of the '993 Patent
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`The disclosure of the '993 patent relates to the computerized handling of contact
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`information. Contact information is information that is related to a person—such
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`as the person's name, telephone number, postal address, email address, etc. Ex.
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`1002 at ¶ 38.
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`The '993 patent "handles" such contact information with a system that facilitates
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`interaction between programs that use text documents (like word processors) and
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`databases of contact information. Ex. 1002 at ¶¶ 38-39. Such databases can be
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`called "contact databases" or "address books". Ex. 1002 at ¶ 30. These databases
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`can contain information relating to people, such as their names, telephone
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`numbers, email addresses, postal addresses, and notes relating to the person. Id.
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`The interaction between programs like word processors and contact databases
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`can be illustrated with reference to Figures 3 and 4 of the '993 patent. These
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`figures depict screens that a person might see when using a word processing
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`program. The relevant portions of the figures are shown side-by-side here:
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`Fig. 3
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`Fig. 4
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`Figure 3 on the left shows a word processor window, in which a user has
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`entered a name. The name is processed by the '993 patent system after the user
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`clicks the "OneButton" 42 in the upper right part of the window. Clicking the
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`"OneButton" causes the system to "retrieve the name… from the document" and
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`"search[] a database for the name….". Ex. 1001 at 6:26-28. Assuming that the
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`search finds an address associated with the name, the system then inserts the
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`address into the word processing document, as depicted in Fig. 4 on the right. Ex.
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`1002 at ¶ 39.
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`The bulk of the '993 patent relates to a high-level description of operations like
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`these. The specification describes the user taking certain actions in a GUI, which
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`result in operations being performed on contact information. These actions can
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`include adding a contact to a contact database, or sending an email based on the
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`contact information. Ex. 1002 at ¶ 40.
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`The specification of the '993 patent, however, relates mainly to the end-result of
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`contact information handling, that is, what the user of the computer system
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`experiences as he or she uses the system. Exactly how these end-results are
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`achieved is described only at the highest level. For example, the '993 patent
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`provides no source code or pseudo code. High-level flowcharts for some
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`embodiments are included, Ex. 1001 at Figs. 1, 2, and 16, but each of these is
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`limited to a general description of the desired functionality, with no
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`implementation detail. Ex. 1002 at ¶¶ 40-41.
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`In fact, the '993 patent relies on existing word processors and existing databases
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`to implement its contact management method, assuming that the person of ordinary
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`skill can fill in the detail. The methods of the '993 patent are implemented on
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`standard well-known operating systems and ordinary commodity computer
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`hardware, all of which were readily available well before the filing of the
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`application leading to the '993 patent. Ex. 1002 at ¶¶ 42-53.
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`II.
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`STATE OF THE ART AT THE CLAIMED PRIORITY DATE
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`In the years leading up to earliest possible priority date (Sep. 1998), numerous
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`systems existed that used personal computers to manage personal contact
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`information. These systems integrated sophisticated contact database technology
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`available at the time (Ex. 1002 at ¶¶ 45-47) with applications like word processors
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`as well as applications that performed communications (such as email
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`applications). Ex. 1002 at ¶ 30-37.
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`For example, systems had been developed for analyzing text in a document to
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`detect contact information in a document, and assisting the user in taking
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`appropriate actions based on the information discovered. For example U.S. Patent
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`No. 5,644,735 to Luciw (Ex. 1003)
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`describes a system for detecting
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`structures in text and using a template-
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`based system to offer the user options
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`for handling the data so identified.
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`Figures 6a and 6b, which illustrate a
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`user entering a name and having the
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`system provide a full name, are shown
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`at right. Ex. 1002 at ¶ 28.
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`Another example was the "Drop Zones" system described in an article by
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`Bonura and Miller (Ex. 1006). Drop Zones integrated a text recognition approach
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`akin to Luciw into common applications like word processors. The text
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`recognition system of Drop Zones identified things like names, telephone numbers
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`and email addresses, and allowed the designer of the system to create arbitrary
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`tasks. The Drop Zones system also used an electronic address book to convert
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`between different kinds of contact information, and allowed the applications to
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`update the address book with identified contact information. Fig. 2 of the Bonura
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`article is shown below, and depicts how a name identified in a document can be
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`used to cause a lookup on a name to retrieve an email address, thereby allowing an
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`email to be sent. Ex. 1002 at ¶¶ 29, 92-93.
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`III. CONSTRUCTION OF THE CLAIMS
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`A claim in inter partes review is given the "broadest reasonable construction in
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`light of the specification." See 37 C.F.R. § 42.100(b). As stated by the Federal
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`Circuit in the case In re ICON Health and Fitness, Inc.:
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`"[T]he PTO must give claims their broadest reasonable construction
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`consistent with the specification. Therefore, we look to the
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`specification to see if it provides a definition for claim terms, but
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`otherwise apply a broad interpretation."
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`496 F.3d 1374, 1379 (Fed. Cir. 2007). In particular, claims in inter partes
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`review should not be limited by party argument (whether in this or a prior
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`proceeding). To the extent that the Patent Owner desires a claim term to be
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`interpreted more narrowly than its broadest reasonable interpretation in light of the
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`specification, the Patent Owner must show that the specification provides an
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`express definition for the relevant portions of the claims, or amend the claims. See
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`SAP v. Versata, CBM2012-00001, Pat. App. LEXIS 3788, *8 (PTAB June 11,
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`2013). As found by the en banc Federal Circuit:
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`"If, in reexamination, an examiner determines that particular claims
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`are invalid and need amendment to be allowable, one would expect an
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`examiner to require amendment rather than accept argument alone."
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`Marine Polymer Tech., Inc. v. HemCon, Inc., 672 F.3d 1350, 1364 (Fed. Cir.
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`2012)(en banc).
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`For the purposes of this proceeding, claim terms are presumed to take on their
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`broadest reasonable ordinary meaning. This meaning is explained in certain
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`instances in the following subsections. The Petitioners note that the standard of
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`claim construction used in district courts differs from the standard applied before
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`the USPTO. Any claim constructions in this Petition are directed to the USPTO
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`standard, and are not necessarily the constructions that the Petitioners believe
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`would be adopted in court. The Petitioners do not acquiesce or admit to the
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`constructions reflected herein for any purpose outside of this proceeding.
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`A. Claims 1, 9, and 17 — "Contact Database"
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`The term "contact database" is used in the independent claims of the '993
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`patent. The term is not expressly defined in the specification. The word
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`"database" is used broadly. Ex. 1001 at 4:11-14; 9:40-55 and 12:7-14; Ex. 1002 at
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`¶¶ 60-62. The only apparent requirement of the database is that it must allow
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`access to stored information. Ex. 1002 at ¶¶ 60-62. As to the word "contact", the
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`specification includes in the concept of "contact information" names and addresses,
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`but also "other information, such as telephone numbers, fax numbers, e-mail
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`addresses, etc.," as well as "mailing lists." Ex. 1001 at 4:42-48; Ex. 1002 at ¶¶ 60-
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`62. Therefore, the broadest reasonable interpretation of the term "contact
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`database" is "software that allows access to information related to a person".
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`B. Claims 1, 9, and 17 — "Initiating Electronic Communication"
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` The term "initiating electronic communication" is used in claims 1, 9, and 17.
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`The specification has little discussion of initiating electronic communications. Ex.
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`1002 at ¶ 63-64, Ex. 1001 at 4:42-48. Under the broadest reasonable
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`interpretation, the term "initiating an electronic communication" should thus mean
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`"starting a process that leads to an electronic communication". Ex. 1002 at ¶¶ 63-
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`64.
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`C. Allowing the User to Make a Decision Whether…
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`The independent claims require in element (iii):
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`"allowing the user to make a decision whether to store at least part of
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`the first contact information in the contact database as a new contact
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`or to update an existing contact in the contact database;" Ex. 1001 at
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`claim 1 (emphasis added).
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`This limitation is ambiguous. It could mean the user is allowed to make a
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`decision between storing and updating, or that the user is allowed to make a
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`"decision whether to store…or a decision whether to update." The latter
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`interpretation presents the user either with a choice to store or not to store, or with
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`a choice to update or not to update. Ex. 1002 at ¶¶ 65-67. The specification
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`supports the second interpretation. Ex. 1001 at 6:47-64; 10:17-24;8:62-9:10, Figs.
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`11 and 13; Ex. 1002 at ¶¶ 67-69. Because the term is ambiguous, the broadest
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`reasonable interpretation should include either construction. Ex. 1002 at ¶70.
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`D. Claims 6, 14, and 22 — "Input Device"
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`In the '993 patent, the term "input device" includes a GUI element on screen,
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`and is thus not limited to hardware devices. Ex. 1002 at ¶71.
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`E. Claims 7, 15, and 23 — "Button"
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`The specification of the '993 patent defines the term "button" as "a touch screen,
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`keyboard button, icon, menu, voice command device, etc. (hereinafter called
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`‘button’)," Ex. 1001 at 1:22-24; Ex. 1002 at ¶ 72.
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`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,
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`April 1998 ("Bonura") (Ex. 1006) in view of Mario Magnanelli, Antonia Erni, and
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`Moira Norrie, "ACADEMIA: An Agent-Maintained Database based on
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`Information Extraction from Web Documents," Proceedings of the 14th European
`
`Meeting on Cybernetics and Systems Research, Vienna Austria, April
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`1998 ("Magnanelli")(Ex. 1007).
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`Bonura is an article published in the bulletin for the Association for Computing
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`Machinery’s "Special Interest Group on Computer-Human Interaction," also
`
`known as the SigCHI Bulletin, in April 1998. Ex. 1002 at ¶¶ 73-74. Bonura
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`therefore qualifies as prior art under 35 U.S.C. §§ 102(a) and (b). Magnanelli is an
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`article paper presented at a conference on April 15, 1998, and included in the
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`proceedings of that conference. Ex. 1017. Furthermore, Magnanelli was presented
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`at a conference on April 14, 1998 and available online and indexed by the
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`archive.org servers no later than Feb. 10, 1998. Ex. 1016. Magnanelli was thus
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`publicly accessible as of these dates. Ex. 1002 at ¶ 104. Therefore, Magnanelli is
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`prior art under 35 U.S.C. § 102(a) and (b).
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`The level of ordinary skill in the art is provided in the Allison declaration (Ex.
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`1002) at ¶¶ 19-37. The Background and claim construction sections are
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`incorporated in this Ground.
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`Bonura teaches a computer system for analyzing text in a document, and then
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`allowing the user to take specific actions based on identified text. Ex. 1002 at ¶ 75.
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`The process of identifying specific text in a document is based on the Macintosh
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`LiveDoc system. As Bonura explains:
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`"LiveDoc [6] is an extension to the Macintosh user experience that
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`allows documents to reveal structured information in such a way
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`that it can be readily identified and used to achieve specific actions.
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`Various kinds of recognizers, including context free grammars, are
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`used to describe the structures to be found; these structures can be
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`made up of either a single lexical term (either a variable structure like
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`a phone number, or a collection of static strings, like company names)
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`or multiple terms (for instance, a meeting can be defined as a
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`combination of date, time, and venue structures). Small pieces of
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`code can then be associated with each structure to instruct
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`applications to carry out specific user actions on the discovered
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`structures- perhaps to tell a telephony application to "Dial this
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`phone number." These actions can then be offered to users by
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`visually highlighting the discovered structures and attaching pop-
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`up menus to the highlights." Ex. 1006, p. 59, left column (emphasis
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`added). Ex. 1002 at ¶ 86.
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`Bonura discloses that the information identified in a document can be a name,
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`telephone number (see quote above), an email address (Fig 1 and caption, Fig. 3),
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`etc. Ex. 1002 at ¶ 88-90.
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`Bonura describes extending the LiveDoc system with "Drop Zones". Ex. 1006,
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`p. 60, left column. Drop Zones allows a user to make context-based decisions on
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`the identified information. For example, Bonura discloses that Drop Zones can
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`interact with an address book (contact database). Ex. 1002 at ¶ 77. The address
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`book can be searched by Drop Zones to convert an identified phone number into an
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`email address in the address book. The email address, for example, can then be
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`used to send an email. This is shown in Fig. 1 of Bonura, reproduced here with red
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`annotations:
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`
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`In Fig. 2, the name "Tom Bonura" (red box at top) has been identified by the
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`system using text analysis. Ex. 1002 at ¶81-82. A user indicates takes advantage
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`of this analysis by initiating an email to Tom Bonura (red box at bottom: "Send
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`email"). Ex. 1002 at ¶¶ 81-82, 93. Behind the scenes, the Drop Zones system
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`queries the address book, using the identified name, to come up with an email
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`address stored in the address book. Ex. 1002 at ¶¶ 89, 93.
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`Bonura discloses that virtually any action could be attached to the identified
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`text. Ex. 1002 at ¶ 78. For example, Bonura states that:
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`"[T]hinking about [a name and phone number] from the perspective of
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`an address book easily leads to the interpretation, 'Add this person
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`to my address book'." Ex. 1006, p. 60 (left column)(emphasis added)
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`Ex. 1002 at ¶ 77-78.
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`Bonura is thus very similar to the '993 patent claims.
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`Magnanelli, in turn, teaches a system ("Academia") for scanning documents (in
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`this case, Web pages), where the scanned information can be used to interact with
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`a contact database. Ex. 1002 at ¶ 105. Figure 1 of Magnanelli, reproduced below,
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`shows the basic system:
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`The user in the left interacts directly with an "Academia Database", which is a
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`database containing information—including contact information—about people
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`whose work the user has chosen to follow. Magnanelli, p. 00002, left column at
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`bottom through right column at middle; Ex. 1002 at ¶ 31. Magnanelli expressly
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`states, however, that "the general concepts of this system may be used in other
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`applications". Magnanelli, Ex. 1007, p. 00002, left column, middle.
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`Magnanelli's system also has an Academia Agent (shown at right in the
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`diagram). The Academia Agent performs scanning of documents to recognize
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`structures of interest in the documents (Ex. 1002 at ¶105), just like Bonura.
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`The document scanning in Magnanelli can identify particular structures that
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`represent contact and other information about a person. Ex. 1002 at ¶ 111-112,
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`114. Magnanelli teaches that, when potential additional contact information is
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`identified for a contact, the system can give the user a choice as to whether the
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`contact database should be updated with the new information. Ex. 1002 at ¶¶ 115-
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`117. For example, Magnanelli states:
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`"The key contact information in the database consists of person names
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`and WWW addresses. The name is necessary to identify the person,
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`while the address is a general starting point for the agent to search for
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`updates. The database also stores general facts about persons such as
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`title, address, photo and information about research activities
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`including the titles of publications, URLs leading to abstracts or a
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`publication file, project titles and URLs of pages containing further
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`information on the project. The user accesses the database directly to
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`retrieve and process information on academic contacts. The Academia
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`agent provides a value-added service by using information extracted
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`from Web documents to maintain the database and ensure its
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`currency. The agent may either update the database directly, or
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`consult with the user as to whether or not it should perform the
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`updates." Magnanelli, Ex. 1007, p. 00002 (right column).
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`1. It would have been obvious to combine Bonura with Magnanelli
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`It would have been obvious to combine Bonura with Magnanelli. Ex. 1002 at
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`¶¶ 126-137. Bonura discloses a base system that provides semantically appropriate
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`choices to a user upon the identification in a document of certain kinds of
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`structures. Ex. 1006, p. 60, left column; Ex. 1002 at ¶ 125. The structures can
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`include the kinds of information normally found in a contact information database
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`(typically called an "address book"). Ex. 1006, p. 60, left column. For example,
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`an address book will typically contain names and phone numbers. Bonura teaches
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`automatically recognizing such address-book type information in text documents.
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`Ex. 1006, p. 59 Introduction; p. 60, left column; Ex. 1002 at ¶ 125.
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`Bonura further teaches that, as an extension of LiveDoc, the disclosed "Drop
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`Zones" system can cause processing functions (executable code) to be associated
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`with the identification of such contact information. For example, Bonura states:
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`"Various kinds of recognizers, including context free grammars, are
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`used to describe the structures to be found; these structures can be
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`made up of either a single lexical term (either a variable structure like
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`a phone number, or a collection of static strings, like company names)
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`or multiple terms (for instance, a meeting can be defined as a
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`combination of date, time, and venue structures). Small pieces of
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`code can then be associated with each structure to instruct
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`applications to carry out specific user actions on the discovered
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`structures- perhaps to tell a telephony application to "Dial this phone
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`number." These actions can then be offered to users by visually
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`highlighting the discovered structures and attaching pop-up menus to
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`the highlights." Bonura, Ex. 1006, p. 59, (left column)(emphasis
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`added); Ex. 1002 at ¶126.
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`Bonura explains that the code that can be associated with particular structures is
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`more-or-less arbitrary. Ex. 1002 at ¶ 127. In fact, developers could develop so
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`many different functions to be executed based on the identification of a particular
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`structure in a document that the choice between them would threaten to overwhelm
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`the user. Ex. 1006, p. 59, right column. To assist in selecting the appropriate
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`functions for any given situation, Bonura described a contextual, semantic process
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`for choosing functions to associate with certain structures. That is, Bonura teaches
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`extending the functions available to a user upon automatic recognition of structures
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`in a document, while still making sure that the functions available are appropriate
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`for the context. Ex. 1002 at ¶ 127.
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`In the context of contact information, Bonura teaches several functions that are
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`appropriate. Ex. 1002 at ¶ 128. If a telephone number is found, for example,
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`Bonura teaches initiating a telephone call (Ex. 1006, p. 59, left column), or using
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`the telephone number to look up an email address and send an email (Ex. 1006, pp.
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`60-61, text associated with Fig. 2). Bonura also teaches that it would be
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`appropriate to add the identified contact information to the address book (contact
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`database). Ex. 1002 at ¶ 128. For example, Bonura states:
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`"The important aspect of the Drop Zone interface is that it allows the
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`user to work with the objects of interest in specific, understandable
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`contexts. Simply working with the semantics of a set of individually
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`meaningful objects, such as a personal name, a time and a telephone
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`number, is too open-ended to permit much useful assistance to the
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`user: there are too many ways in which these objects might be
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`combined. However, thinking about the name of a person and a
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`phone number from the perspective of making a telephone call
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`easily leads to the interpretation, 'Call this person at this number'.
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`Similarly, thinking about this information from the perspective of
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`an address book easily leads to the interpretation, 'Add this
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`person to my address book'." Ex. 1006, p. 60, (left
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`column)(emphasis added).
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`Magnanelli likewise teaches actions that would be appropriate and desirable to
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`carry out when contact information is discovered in a document. Ex. 1002 at
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`¶ 129. Like Bonura, Magnanelli thus provides a document-scanning system that
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`recognizes contact information. Id. When the contact information is recognized,
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`Magnanelli teaches that it would be desirable for the user to have the option to
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`update an existing record in a contact database to achieve the "value-added" benefit
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`of keeping the contact database current. Ex. 1002 at ¶ 133. Bonura, in turn,
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`teaches a general platform for enabling exactly the kinds of actions proposed by
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`Magnanelli. Ex. 1002 at ¶ 133. Like Magnanelli, Bonura teaches recognizing
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`contact information in documents. Bonura teaches that virtually any function can
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`be associated with the contact information once identified, as long as it makes
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`sense in context. Bonura further teaches that updating an address book (contact
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`database) is one action that "easily" follows from considering the context
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`surrounding recognizing contact information. Ex. 1002 at ¶ 133.
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`Thus, adding Magnanelli's contact information update option to the system of
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`Bonura represents an extension of Bonura in the manner in which Bonura was
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`intended to be extended (by adding another sensible option associated with
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`locating contact information). Ex. 1002 at ¶ 134. Furthermore, Bonura quite
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`reasonably states that considering recognized contact information in the context of
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`an address book "easily leads to the interpretation, 'Add this person to my address
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`book'". Ex. 1002 at ¶ 134. Adding a record to an address book is technically very
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`similar to updating a record in an address book. Ex. 1002 at ¶ 134. The
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`combination would have led to the express "value-added" benefit taught by
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`Magnanelli of keeping the address book current. Magnanelli, Ex. 1007, p. 00002,
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`right column; Ex. 1002 at ¶ 134.
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`Furthermore, Bonura was a known system, and Magnanelli's approach to
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`updating contacts represented a known technique that could have been applied to
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`Bonura's system, without any unpredictable results. Ex. 1002 at ¶ 135. At the
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`level of the claims of the '993 patent, the relevant field is predictable. Id. None of
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`the '993 patent, Bonura nor Magnanelli report any unpredictab