Patent No. 7,496,854
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Apple Inc., Google Inc., and Motorola Mobility LLC
`Petitioners
`
`v.
`
`Arendi S.A.R.L.
`Patent Owner
`
`Patent No. 7,496,854
`Issue Date: February 24, 2009
`Title: METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A COMPUTER PROGRAM
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`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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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 3
`
`III. SUMMARY OF THE '854 PATENT............................................................. 4
`
`A.
`
`B.
`
`Background Of The '854 Patent ........................................................... 4
`
`Prosecution History Of The '854 Patent ............................................... 6
`
`IV. CLAIM CONSTRUCTION ........................................................................... 6
`
`A.
`
`B.
`
`“Marking … The First Information To Alert The User” ..................... 7
`
`“Performing An Operation Related To Second Information” ............. 8
`
`C. Means-Plus-Function Limitations ........................................................ 9
`
`1.
`
`2.
`
`3.
`
`Independent Claim 31 ................................................................ 9
`
`Independent Claim 79 .............................................................. 10
`
`Independent Claim 99 .............................................................. 11
`
`D.
`
`Remaining Claim Terms .................................................................... 13
`
`V.
`
`IDENTIFICATION OF CHALLENGE ....................................................... 13
`
`VI. GROUNDS BASED ON LIVEDOC/DROP ZONES .................................. 15
`
`A.
`
`Background Of LiveDoc/Drop Zones ................................................ 15
`
`B. Ground 1: Anticipation Based On LiveDoc/Drop Zones .................. 17
`
`1. Method Claims ......................................................................... 17
`
`2.
`
`Computer Readable Medium And System Claims .................. 26
`
`C. Ground 2: Obviousness In View Of LiveDoc/Drop Zones............... 26
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`D. Ground 3: Obviousness In View Of LiveDoc/Drop Zones And
`Nielsen ................................................................................................ 29
`
`VII. GROUND BASED ON DOMINI ................................................................ 30
`
`A.
`
`Background Of Domini ...................................................................... 30
`
`B. Ground 4: Anticipation Based On Domini ........................................ 31
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`1. Method Claims ......................................................................... 31
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`2.
`
`Computer Readable Medium And System Claims .................. 38
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`
`
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`i
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`VIII. GROUNDS BASED ON MILLER .............................................................. 39
`
`A.
`
`Background Of Miller ........................................................................ 39
`
`B. Ground 5: Anticipation Based On Miller .......................................... 40
`
`1. Method Claims ......................................................................... 40
`
`2.
`
`Computer Readable Medium And System Claims .................. 44
`
`C. Ground 6: Obviousness In View Of Miller ....................................... 45
`
`IX. GROUND BASED ON LUCIW .................................................................. 49
`
`A.
`
`Background Of Luciw ........................................................................ 49
`
`B. Ground 7: Anticipation Based On Luciw .......................................... 50
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`1. Method Claims ......................................................................... 50
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`2.
`
`Computer Readable Medium And System Claims .................. 57
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`X.
`
`CONCLUSION ............................................................................................. 58
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`
`
`
`
`ii
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`
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`Exhibit List for Inter Partes Review of U.S. Patent No. 7,496,854
`
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 7,496,854 to Hedloy
`
`Declaration of Dr. Daniel A. Menascé
`
`Amendment dated January 24, 2008
`
`Amendment dated April 18, 2007
`
`SIGCHI Bulletin (April 1998) at 51-63
`
`U.S. Patent No. 6,085,206 to Domini et al.
`
`U.S. Patent No. 5,946,647 to Miller et al.
`
`U.S. Patent No. 5,644,735 to Luciw et al.
`
`U.S. Patent No. 5,963,964 to Nielsen
`
`SIGCHI Bulletin (April 1998) at 51-63 (web version)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`
`iii
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`

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`
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`Petitioners Apple Inc., Google Inc., and Motorola Mobility LLC
`
`(collectively, “Petitioners”) respectfully petition for inter partes review of claims
`
`19-35, 57-85, 96, and 99 of U.S. Patent No. 7,496,854 (“the '854 patent”
`
`(Ex. 1001)) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et
`
`seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Apple Inc. (“Apple”) is the real party-in-
`
`interest for Petitioner Apple. Google Inc. (“Google”) is the real party-in-interest
`
`for Petitioner Google. Motorola Mobility LLC (“Motorola Mobility”) is the real
`
`party-in-interest for Petitioner Motorola Mobility.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners identify the following related
`
`matters. On November 29, 2012, the Patent Owner filed suit against Apple and
`
`Motorola Mobility, among others, in the U.S. District Court for the District of
`
`Delaware alleging infringement of several patents, including the '854 patent. See
`
`Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.); Arendi S.A.R.L. v.
`
`Motorola Mobility LLC, Case No. 1:12-cv-01601-LPS (D. Del.). The Complaint
`
`was served on Motorola Mobility on November 30, 2012 and on Apple on
`
`December 3, 2012. Thus, this Petition has been filed within one year of Apple and
`
`Google (which owns Motorola Mobility) being served a complaint alleging
`
`infringement of the '854 patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`
`
`
`
`1
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`

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`
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Apple identifies the following counsel
`
`(and a power of attorney accompanies this Petition).
`
`Lead Counsel for Petitioner Apple
`
`Backup Counsel for Petitioner Apple
`
`David L. Fehrman
`dfehrman@mofo.com
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
`
`Mehran Arjomand
`marjomand@mofo.com
`Registration No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`Google and Motorola Mobility identify the following counsel (and a power
`
`of attorney accompanies this Petition).
`
`Lead Counsel for Petitioners Google
`and Motorola Mobility
`Matthew A. Smith
`smith@turnerboyd.com
`Registration No.: 49,003
`Turner Boyd LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
`Backup Counsel for Petitioners
`Google and Motorola Mobility
`Zhuanjia Gu
`gu@turnerboyd.com
`Registration No.: 51,758
`Turner Boyd LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the '854 patent is
`
`available for inter partes review and that Petitioners are not barred or estopped
`
`
`
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`2
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`

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`
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`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`II.
`
`INTRODUCTION
`
`The '854 patent is directed to a method, system, and computer readable
`
`medium for name and address handling from a computer program. For example, a
`
`user can type a name and address in a document being created with a word
`
`processing program. Through the use of a button, the document is searched and
`
`the name and address are detected. The detected information is then used with
`
`respect to a second application program, such as a database. For example, the user
`
`can add the name and address to an address book as a new entry, or edit or add
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`additional address information associated with the name if the name is already in
`
`the address book. If the user types only a name into the document and the database
`
`has the name and a corresponding address, the user can insert the address for the
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`name into the document being created by the word processing program.
`
`The claims of the '854 patent may be divided into two groups: (1) claims
`
`directed to performing an operation, such as updating a database with an address;
`
`and (2) claims directed to inserting information into the document, such as an
`
`address. This Petition addresses the first set of claims (i.e., claims 19-35, 57-85,
`
`96, and 99). A related petition, filed concurrently, addresses the second set of
`
`
`
`
`3
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`

`
`
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`claims (i.e., claims 1-18, 36-56, 86-95, 97, 98, 100, and 101). Two other petitions,
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`also filed concurrently, address related U.S. Patent Nos. 7,917,843 and 8,306,993.
`
`Petitioners present herein references (including several originating from
`
`Apple) that anticipate or render obvious the challenged claims of this Petition. The
`
`references make clear that the purported invention of the challenged claims was
`
`well known before the '854 patent. Section III of this Petition summarizes the '854
`
`patent and relevant aspects of its prosecution history. Sections V-IX set forth the
`
`detailed grounds for invalidity of the challenged claims. This showing is
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`accompanied by the Declaration of Dr. Daniel A. Menascé (“Menascé Decl.,” Ex.
`
`1002.) Accordingly, Petitioners respectfully request a Decision to institute inter
`
`partes review.
`
`III. SUMMARY OF THE '854 PATENT
`
`A. Background Of The '854 Patent
`
`The '854 patent is directed to name and address handling within a document
`
`created by a computer program, such as a word processing program. (1:19-27.)
`
`One aspect relates to inserting information from a database into a document. This
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`is described in connection with the left side of the flow charts of Figs. 1 and 2 and
`
`Examples 1, 5 and 7. Another aspect relates to adding data from a document into a
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`database. This is described in connection with the right side of Figs. 1 and 2 and
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`
`
`4
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`

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`
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`Examples 2-4 and 6. Dr. Menascé’s Declaration (Ex. 1002) includes highlighted
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`copies of Fig. 1 corresponding to various examples.
`
`Example 2 relates to adding a new contact to a database. Fig. 5 (below)
`
`illustrates a document into which a name and address 46 have been entered. (6:10-
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`13.) The user presses a “OneButton” button 42. (6:13-17; Fig. 1 at 2.) A program
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`then analyzes what the user has typed into the document to detect certain types of
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`information. (4:25-39; Fig. 1 at 4.) There is no disclosure as to how this analysis
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`is accomplished.
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`
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`Upon detection, the name and address are searched in a database. (6:13-17; Fig. 1
`
`at 14.) If the name and address in the document are not found, the user is
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`prompted to, for example, enter the name and address into a database as shown in
`
`Fig. 6 and set forth in exemplary claims 22 and 24. (6:17-23.) The user can also
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`edit the name and address, e.g., as discussed in connection with Fig. 7 and
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`exemplary claim 23. (6:28-35.)
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`
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`5
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`

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`
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`B.
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`Prosecution History Of The '854 Patent
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`Throughout the prosecution of the '854 patent, Applicant argued that the
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`distinguishable feature over the applied art was marking information or identifying
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`information, such as a name and address in a document, “without user
`
`intervention.” For example, in an Amendment dated January 24, 2008, at 31 (Ex.
`
`1003), Applicant asserted:
`
`Thus, Pandit teaches a system where the user must select text prior to
`
`the system processing the “a selected text”, e.g. col. 5, line 56).
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`Neither the AddressMate program nor Pandit teach the element of
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`“marking without user intervention” or “identifying without user
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`intervention or designation the first information” either alone or in
`
`combination.
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`As set forth below, such marking or identifying information without user
`
`intervention was well-known in the art.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioners provide constructions of several terms and the means-plus-
`
`function limitations. See 37 C.F.R. § 42.104(b)(3). Petitioners note that a claim is
`
`given the “broadest reasonable construction in light of the specification” in inter
`
`partes review. See 37 C.F.R. § 42.100(b). Furthermore, a number of claims
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`contain means-plus-function limitations under 35 U.S.C. § 112, ¶ 6 (pre-AIA).
`
`
`
`
`6
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`

`
`
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`A.
`
`“Marking … The First Information To Alert The User”
`
`The recitation “marking … the first information to alert the user” appears in
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`numerous independent claims. (See Claims 19, 25, 31.) However, neither the term
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`“marking” nor the full recitation appears in the specification. The '854 patent is a
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`continuation of application No. 09/189,626 filed on November 10, 1998, and the
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`“marking” recitation was not added until the application that matured into the '854
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`patent was filed years later in August 6, 2001. Therefore, the specification gives
`
`no guidance as to the meaning of this recitation. Accordingly, the plain meaning
`
`of the recitation is that the first information is detected without user intervention
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`and has some form of marking or highlighting applied to it to draw the user’s
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`attention to it. (Menascé Decl. ¶¶ 49-50.)
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`During prosecution, Applicant attempted to provide an expansive reading of
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`“marking” in order to demonstrate support for the recitation, and asserted that the
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`program “marks the ‘first information’ in any of a variety of ways” and “may
`
`display the text (the ‘first information’) to the user.” (Amendment dated April 18,
`
`2007 (Ex. 1004), at 30-31.) The portions of the specification identified relate to
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`generating another screen, e.g., Fig. 9, and not to any direct marking of the first
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`information itself (which is already displayed in the document) to provide the
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`recited alerting function. Therefore, because the only possible disclosure of
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`marking to alert in the specification is provision of a separate dialog box, for this
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`7
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`

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`
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`proceeding the marking to alert recitation should be construed to encompass both
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`direct marking (e.g., highlighting or a pop-up at the information being marked) and
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`display of the information in a separate dialog box.
`
`B.
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`“Performing An Operation Related To Second Information”
`
`The term “performing an operation related to second information” appears in
`
`numerous claims. (See Claims 19, 25, 31, 57, 73, 79, 85, 96, 99.) The broadest
`
`reasonable construction of this term encompasses operations relating to either
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`already-existing information or the entry of new information, whether it is second
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`information itself or other information related to second information. Such scope
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`is consistent with other claims and the various examples contained in the
`
`specification. For example, dependent claim 22 recites the operation as entering
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`additional data into a database. In dependent claim 23, this additional data is
`
`entered by a user, which, for example could be done by the user adding second
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`information – that is not currently in the database – into the database as described
`
`in connection with Fig. 7 and 6:28-33 and numerous other examples. In contrast,
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`in dependent claim 24, the additional data is located within the document. This
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`can correspond, for example, to Fig. 6, where the data from the document already
`
`exists and is directly added to the database. Therefore, the operation in claim 19
`
`should be construed to encompass both preexisting data and newly entered data
`
`added to the database.
`
`
`
`
`8
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`
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`C. Means-Plus-Function Limitations
`
`For means-plus-function limitations, 37 C.F.R. § 42.104(b)(3) requires the
`
`petition to identify the structure corresponding to each claimed function. However,
`
`a structure that is not actually disclosed in the specification cannot be
`
`corresponding structure. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946,
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`948, 952 (Fed. Cir. 2007).
`
`In IPR2013-00152, the Patent Trial and Appeal Board denied institution of
`
`an inter partes review because, among other reasons, the means-plus-function
`
`limitations were not amenable to construction. Specifically, the Board analyzed
`
`the specification and concluded that there was no corresponding structure disclosed
`
`in the specification to perform the recited function of various limitations.
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`(Decision (Paper 8 dated August 19, 2013), at 12, 13, 20.) It is submitted that the
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`same situation exists with respect to the claims in this Petition having means-plus-
`
`function limitations, i.e., claims 31-35, 79-84, and 99, which are only a subset of
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`the total claims at issue in this Petition.
`
`1.
`
`Independent Claim 31
`
`Claim 31 includes three limitations, which are all means-plus-function
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`limitations, with the recited functions underlined below.
`
`Corresponding Structure
`Limitation/Recited Function
`means for entering a first information in Keyboard along with its device driver at
`
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`
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`9
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`

`
`
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`the first application program
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`Fig. 16 and 9:37-39. (Menascé Decl. ¶¶
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`54-57.)
`
`means for marking without user
`
`None. Boxes 4, 6 and 4:25-39 simply
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`intervention the first information to alert
`
`show desired results, with no algorithm
`
`the user that the first information can be
`
`disclosing what is done. (Menascé
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`utilized in a second application program
`
`Decl. ¶¶ 58-62.)
`
`means for responding to a user selection
`
`Figs. 1 and 2 (boxes/steps 20, 22, 27,
`
`by performing an operation related to a
`
`28, 30, 33, 34, 36) and accompanying
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`second information, the second
`
`discussion in the specification;
`
`information associated with the first
`
`Examples 4-6 discussed in the
`
`information from the second application
`
`specification. (Menascé Decl. ¶¶ 63-
`
`program
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`71.) Box 22, however, simply shows
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`desired results, with no algorithm
`
`disclosing what is done.
`
`2.
`
`Independent Claim 79
`
`Independent claim 79 includes two means-plus-function limitations, with the
`
`recited functions underlined below.
`
`Limitation/Recited Function
`means for identifying without user
`
`Corresponding Structure
`None. Boxes 4, 6 and 4:25-39 simply
`
`intervention or designation the first
`
`show desired results, with no algorithm
`
`
`
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`10
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`

`
`
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`information
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`disclosing what is done. (Menascé
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`Decl. ¶¶ 72-76.)
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`means for responding to a user selection
`
`Figs. 1 and 2 (boxes/steps 20, 22, 27,
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`by performing an operation related to a
`
`28, 30, 33, 34, 36) and accompanying
`
`second information, the second
`
`discussion in the specification;
`
`information associated with the first
`
`Examples 4-6 discussed in the
`
`information from the second application
`
`specification. (Menascé Decl. ¶¶ 77-
`
`84.) Box 22, however, simply shows
`
`desired results, with no algorithm
`
`disclosing what is done.
`
`3.
`
`Independent Claim 99
`
`Independent claim 99 includes five means-plus-function limitations, with the
`
`recited functions underlined below.
`
`Limitation/Recited Function
`means for identifying without user
`
`Corresponding Structure
`None. Boxes 4, 6 and 4:25-39 simply
`
`intervention or designation the first
`
`show desired results, with no algorithm
`
`information that can be utilized in a
`
`disclosing what is done to identify a
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`second application program, the first
`
`name or address. (Menascé Decl. ¶¶ 85-
`
`information selected from a group
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`89.)
`
`consisting of a name and an address
`
`
`
`
`11
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`

`
`
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`means for responding to a user selection
`
`Figs. 1 and 2 (boxes/steps 20, 22, 27,
`
`by performing an operation related to a
`
`28, 30, 33, 34, 36) and accompanying
`
`second information, the second
`
`discussion in the specification;
`
`information associated with all or part
`
`Examples 4-6 discussed in the
`
`of the first information from the second
`
`specification. (Menascé Decl. ¶¶ 90-
`
`application program
`
`94.) Box 22, however, simply shows
`
`desired results, with no algorithm
`
`disclosing what is done.
`
`means for initializing the second
`
`None. (Menascé Decl. ¶ 95-99.)
`
`application program
`
`means for searching, using the second
`
`Figs. 1 and 2 (step 12 or 14) described
`
`application program, for the second
`
`in column 4, lines 43-46 and 57-58 and
`
`information associated with the first
`
`Fig. 2 (steps 12 or 14) described in
`
`information
`
`column 5, lines 12-16 and 23-26;
`
`Examples 1, 2, 4, 5, and 6 discussed in
`
`the specification. (Menascé Decl. ¶¶
`
`100-104.)
`
`means for retrieving and displaying the
`
`Figs. 1 (steps 18 and 20) 2 (steps 26 and
`
`second information
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`30 or steps 26 and 27 or steps 29, 31,
`
`and 30) described on 4:43-49, 5: 23-53;
`
`
`
`
`12
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`

`
`
`
`Examples 1 and 5 discussed in the
`
`specification. (Menascé Decl. ¶¶ 105-
`
`109.)
`
`D. Remaining Claim Terms
`
`Petitioners submit that the remaining claim terms should be accorded their
`
`ordinary and customary meaning as understood by one of ordinary skill in the art.
`
`V.
`
`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioners respectfully request the
`
`cancellation of claims 19-35, 57-85, 96, and 99 of the '854 patent based on the
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`following references.
`
`Reference
`SIGCHI Bulletin (April 1998) at 51-63
`
`Designated Name/Exhibit No.
`LiveDoc/Drop Zones (Ex. 1005)
`
`U.S. Patent No. 6,085,206 to Domini et al. Domini (Ex. 1006)
`
`U.S. Patent No. 5,946,647 to Miller et al.
`
`Miller (Ex. 1007)
`
`U.S. Patent No. 5,644,735 to Luciw et al.
`
`Luciw (Ex. 1008)
`
`U.S. Patent No. 5,963,964 to Nielsen
`
`Nielsen (Ex. 1009)
`
`The statutory grounds for the challenge of each claim are set forth below.
`
`All the statutory citations are pre-AIA.
`
`Ground 35 USC
`
`Claims
`
`References
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`
`
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`13
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`
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`1
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`102(a) 19-22, 24-28, 30-34, 57-60, 62-69,
`
`LiveDoc/Drop Zones
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`72-76, 78-82, 84, 85, 96, and 99
`
`2
`
`3
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`103(a) 23, 29, 35, 61, 64-71, 77, and 83
`
`LiveDoc/Drop Zones
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`103(a) 22-24, 28-30, 34, 35, 60-62, 76-
`
`LiveDoc/Drop Zones and
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`78, and 82-84
`
`Nielsen
`
`4
`
`102(e) 19, 20, 22-26, 28-32, 34, 35, 57,
`
`Domini
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`58, 60-74, 76-80, 82-85, 96, and
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`99
`
`5
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`102(e) 19, 21-25, 27-31, 33-35, 57, 59-
`
`Miller
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`63, 72, 73, 75-79, and 81-84
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`6
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`103(a) 20, 26, 32, 58, 64-69, 74, 80, 85,
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`Miller
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`96, and 99
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`7
`
`102(e) 19-35, 57-71, 73-85, 96, and 99
`
`Luciw
`
`Below is a discussion of why the challenged claims of the '854 patent are
`
`unpatentable under the statutory grounds raised, including claim charts specifying
`
`where each element of a challenged claim is met by the prior art. 37 C.F.R.
`
`§ 42.104(b)(4). The showing in these sections establishes a reasonable likelihood
`
`of prevailing as to each ground of invalidity with respect to the challenged claims
`
`as to that ground. This showing is accompanied by the Declaration of Dr. Daniel
`
`A. Menascé (Ex. 1002), as noted above.
`
`
`
`
`14
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`

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`
`
`VI. GROUNDS BASED ON LIVEDOC/DROP ZONES
`
`A. Background Of LiveDoc/Drop Zones
`
`The April 1998 issue of SIGCHI Bulletin was dedicated to Apple’s
`
`Advanced Technology Group. The Bulletin included an introduction section and
`
`two articles, by James Miller and Thomas Bonura, describing an Apple technology
`
`that allowed documents to reveal structures for identification and action. The
`
`articles are entitled “From Documents to Object: An Overview of LiveDoc” and
`
`“Drop Zones: An Extension of LiveDoc” and are sequential in the SIGCHI
`
`Bulletin from pages 53-63 (collectively, “LiveDoc/Drop Zones”). LiveDoc/Drop
`
`Zones thus qualifies as prior art under § 102(a) based on the earliest alleged U.S.
`
`filing date of the '854 patent.
`
`LiveDoc/Drop Zones discloses creating a document and entering
`
`information into the document using a text entry application program, such as
`
`shown in Fig. 2 of LiveDoc below.1 (LiveDoc, 53-55.)
`
`
`1 Fig. 2 is from a website posting (Ex. 1010) of LiveDoc and is identical in content
`
`to the LiveDoc publication accompanying this Petition.
`
`
`
`
`15
`
`

`
`
`
`
`
`
`
`Without user intervention, LiveDoc’s “structure detection” process runs in
`
`the background and highlights information in the document that can be used to
`
`perform a related action. (LiveDoc at 54-55.) Selecting a highlighted structure
`
`displays a menu of actions that can be performed. (Id.) For example, in Fig. 2
`
`above, the user can view the webpage of the URL identified in the document in
`
`Netscape Navigator. (LiveDoc at 54, 57-58.) Drop Zones is an interface to
`
`LiveDoc that allows, for example, e-mail actions or adding to an address book
`
`based on an identified name in a document. (Drop Zones at 60-61.)
`
`
`
`
`16
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`

`
`
`
`B. Ground 1: Anticipation Based On LiveDoc/Drop Zones
`
`1. Method Claims
`
`Method claims 19-22, 24, 57-60, 62-69, 72 and 85 are anticipated by
`
`LiveDoc/Drop Zones as set forth below.
`
`Claim
`[19a] 19. A
`method for
`information
`handling within a
`document created
`by a first
`application
`program
`comprising the
`steps of:
`
`[19b] entering a
`first information
`in the first
`application
`program;
`
`[19c] marking
`without user
`intervention the
`first information
`to alert the user
`that the first
`information can be
`utilized in a
`second application
`program; and
`
`LiveDoc/Drop Zones
`LiveDoc discloses a document created using a first
`application program (e.g., a document as shown in Fig. 2
`created using a text entry application program). See also
`LiveDoc at 53 (“There is a real opportunity to advance the
`computing field here, by bringing these two worlds together:
`by enabling an ordinary document, built with any application,
`to automatically offer users access to some of the meaningful
`bits of its content, and by helping users carry out appropriate
`actions on these objects.”); at 55 (“[W]e decided to modify a
`simply text editor application, SimpleText, to be a LiveDoc
`client.”). Drop Zones uses the same program. See, e.g., at 60
`(referring to a “LiveDoc enabled word processor,
`LiveSimpleText”).
`A document including first information, such as a name, an e-
`mail address or a URL, is entered in the first application
`program such as a word processor. See, e.g., document of
`Fig. 2 of LiveDoc (e-mail addresses and URL); document of
`Fig. 2 in Drop Zones (name). Word processor is
`LiveSimpleText.
`In LiveDoc/Drop Zones, the first information is marked
`without user intervention to alert the user that the first
`information can be utilized in a second application program
`Marking and alerting – See, e.g., LiveDoc at 55 (“In
`LiveDoc, the structure detection process is run in the
`background on the visible document’s text, whenever that
`document is presented or updated. The results of LiveDoc’s
`analysis are then presented by visually highlighting the
`discovered structures with a patch of color around the
`structure … Pointing at a highlight and pressing the mouse
`button then displays the menu of actions that can be applied
`to the structure, as shown in Fig 2.”); at 55 (“Experientially,
`
`
`
`
`17
`
`

`
`
`
`[19d] responding
`to a user selection
`by performing an
`operation related
`to a second
`information,
`
`the design of LiveDoc draws on the Web in obvious ways:
`certain meaningful parts of a document are highlighted, and
`clicking on them causes certain actions to occur.”); Fig. 2 of
`LiveDoc (e-mail addresses and URL detected and
`highlighted); Drop Zones at 60 (“Consider Figure 2, in which
`the user has selected the structure Tom Bonura, which
`LiveDoc has identified with its personalName recognizer.”)
`
`Second application program – Numerous applications, e.g.,
`browser, e-mail or address book are disclosed in LiveDoc and
`Drop Zones. See, e.g., LiveDoc at 54 (“This first version of
`structure detection has been applied to the domain of Internet
`information management; finding structures like e-mail
`addresses, URLs, host names, and newsgroup names in user
`documents and automating actions on these structures, like
`creating a new e-mail message addressed to a discovered e-
`mail address or opening a web browser on a discovered
`URL.”); at 57-58 (“Our initial implementation of LiveDoc as
`LiveSimpleText assumed that actions would be handled by
`external applications, such as a Web browser presenting the
`page pointed to by a URL.”); Fig. 2 of LiveDoc. A URL can
`be utilized to retrieve a webpage and can be placed in a
`bookmark database via the web browser.
`See also Drop Zones at 60 (“Add this person to my address
`book.”); at 61 (“Such a mapping…enables the E-mail
`assistant to look inside an address book application for a
`person with the stated phone number.”)
`LiveDoc/Drop Zones responds to a user selection by
`performing an operation related to a second information (e.g.,
`sending an e-mail, bookmarking the URL or displaying the
`webpage pointed to by a URL, or entering a person’s
`information in an address book).
`
`User selection – See, e.g., LiveDoc at 56 (“The LiveDoc
`Manager also receives the notification that the mouse button
`has been pressed over a highlighted item; it then gets the list
`of actions appropriate to the selected item and presents a
`menu of them to the user. If one of these items is selected,
`the action corresponding to the selection is run, producing the
`desired action.”).
`
`
`
`
`18
`
`

`
`
`
`[19e] the second
`information
`associated with
`the first
`information from
`the second
`application
`program.
`
`20. The method of
`claim 19 wherein
`the operation
`comprises
`displaying the
`second
`information.
`
`
`Second information – When the user clicks on a URL, second
`information is the webpage pointed to by the URL. When the
`user selects the option to bookmark the URL (see Fig. 2 of
`LiveDoc (“Bookmark in Netscape Navigator”)), the second
`information is a name associated with the URL. For a
`detected name of a person in Drop Zone, the second
`information is other address book information corresponding
`to the detected name, such as telephone number and e-mail
`address of the person.
`
`Operation related to second information – See, e.g., LiveDoc
`at 57 (“Our initial implementation of LiveDoc as
`LiveSimpleText assumed that actions would be handled by
`external applications, such as a Web browser presenting the
`page pointed to by a URL.”); Fig. 2 of LiveDoc (“Bookmark
`in Netscape Navigator”). Drop Zones at 60 (“Add this person
`to my address book.”)
`See claim 19d.
`
`LiveDoc discloses displaying the second information (e.g.,
`displaying the website pointed to by a URL). See, e.g.,
`LiveDoc at 57 (“Our initial implementation of LiveDoc as
`LiveSimpleText assumed that actions would be handled by
`external applications, such as a Web browser presenting the
`page pointed to by a URL.”); at 54 (“This first version of
`structure detection has been applied to the domain of Internet
`information management; finding structures like e-mail
`addresses, URLs, host names, and newsgroup names in user
`documents and automating actions on these structures, like
`creating a new e-mail message addressed to a discovered e-
`mail address or opening a web browser on a discovered
`URL.”). In Drop Zones, an e-mail based on a detected name
`
`
`
`
`19
`
`

`
`
`
`would display the e-mail address.
`
`Drop Zones allows for entering a name and adding the
`name to an address book or providing e-mail actions
`with respect to the name. See, e.g., Drop Zones at 60
`(“Add this person to my address book”); at 61 (“…
`What is interesting in this example is that the e-mail
`actions are available, even though the object being
`offered to the assistant is a personalName ...”) (“Such a
`mapping ... enables the E-mail Assistant to look inside
`an address book application for a person with the stated
`phone number.”).
`
`
`21. The method of
`claim 19, wherein the
`first information is a
`name, and the operation
`performed is selected
`from a group consisting
`of an electronic mail, a
`telex, a facsimile or a
`letter addressed to the
`name indicated by the
`first information.
`
`22. The method of
`claim 19, wherein
`the operation
`performed is
`entering ad