`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Samsung Electronics Co., Ltd.,
`
`Petitioner,
`
`v.
`
`Arendi S.A.R.L.,
`
`Patent Owner.
`
`____________
`
`Case No. IPR2014-00214
`
`Patent No. 8,306,993
`
`____________
`
`PATENT OWNER ARENDI S.A.R.L.’S PRELIMINARY RESPONSE
`
`UNDER 35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................. iii
`
`EXHIBIT LIST ..................................................................................................... iv
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................... 1
`
`OVERVIEW OF THE ‘993 PATENT .......................................................... 1
`
`III. CLAIM CONSTRUCTION ......................................................................... 7
`
`A.
`
`“allowing the user to make a decision whether to store at
`least part of the first contact information in the contact
`database as a new contact or to update an existing contact
`in the contact database” means presenting to the user a
`choice between competing alternatives of storing a new
`contact or updating an existing contact. .............................................. 7
`
`IV. OVERVIEW OF THE PRIOR ART .......................................................... 11
`
`A. Overview Drop Zones ...................................................................... 11
`
`B.
`
`C.
`
`Overview of LiveDoc ....................................................................... 14
`
`Overview of Pensoft ......................................................................... 16
`
`V.
`
`SINCE THE PRIOR ART DOES NOT ANTICIPATE OR
`RENDER ANY CLAIM OBVIOUS, NO INTER PARTES
`REVIEW SHOULD BE INITIATED ......................................................... 22
`
`A. Overview of Reasons for Denying Inter Parties Review ................... 22
`
`B.
`
`Because an action can be triggered in the Drop Zones
`system only after entering two execute commands, Drop
`Zones fails to disclose “providing for the user an input
`device configured so that a single execute command from
`the input device is sufficient to cause the performing”,
`prima facie
`and therefore Ground 1 fails to establish a
`case for obviousness ......................................................................... 24
`
`i
`
`
`
`
`
`C.
`
`Because none of LiveDoc, Drop Zones or Pensoft
`discloses or suggests “allowing the user to make a
`decision whether to store at least part of the first contact
`information in the contact database as a new contact or to
`update an existing contact in the contact database”,
`Ground 1 for this additional reason fails to establish a
`prima facie case for obviousness. ..................................................... 29
`
`VI. CONCLUSION .......................................................................................... 39
`
`CERTIFICATE OF SERVICE ............................................................................. 41
`
`
`
`
`
`
`
`
`
`ii
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`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................... 7
`
`Statutes
`
`35 U.S.C. § 314 ...................................................................................................... 1
`
`37 C.F.R. § 42.100(b) ............................................................................................. 7
`
`
`
`
`
`
`
`iii
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`
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`
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`EXHIBIT LIST
`
`
`Arendi Exhibit Number Description
`
`2001
`
`
`
`Arendi Exhibit 2001, Third Supplement to Response
`H, filed November 3, 2011, for Serial No. 11/745,186,
`the application for the ‘993 Patent
`
`iv
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Arendi S.A.R.L. (“Arendi” or “Patent Owner”) respectfully
`
`requests that the Board decline to initiate inter partes review of claims 1-24 of U.S.
`
`Patent No. 8,306,993 (the “‘993 Patent”) because Petitioner Samsung
`
`(“Petitioner”)] has failed to show that it has a reasonable likelihood of prevailing
`
`with respect to any of the challenged claims. 35 U.S.C. § 314.
`
`Petitioner has submitted proposed grounds for challenge based on
`
`anticipation or obviousness. However, for each proposed ground, at least one
`
`claim element is missing from the relied-upon reference or combination of
`
`references. Thus, Petitioner has failed to meet its initial burden to show that each
`
`element was known in the prior art.
`
`II. OVERVIEW OF THE ‘993 PATENT
`
`The ‘993 Patent is directed, among other things, to computer-implemented
`
`processes for automating a user’s interaction between a first application, such as a
`
`word processing application or spreadsheet application, on the one hand, and a
`
`second application, such as contact management application having a database, on
`
`the other hand. In the ‘993 Patent, Exhibit 1001, Figs. 1 and 2 are flow charts
`
`showing for these interactions a number of scenarios, which are described from
`
`col. 4, line 55 to col. 6, line 12. Further details of the interactions are provided in
`
`discussion thereafter of the other figures of the ‘993 Patent, and the discussion
`
`1
`
`
`
`
`
`includes references back to relevant portions of the flow charts in Figs. 1 and 2.
`
`Fig. 1 is reproduced below.
`
`
`
`In various scenarios, text in a document in the first application is analyzed
`
`(in step 2 of Fig. 1) to identify contact information. Exhibit 1001, col. 4, line 55 to
`
`col. 5, line 2. The analysis takes place without user designation of a specific part
`
`of the document to be subject to the analyzing. Id.
`
`Once contact information has been identified, a number of different
`
`scenarios can follow, depending on the circumstances. In one scenario, if the
`
`identified contact information includes a name, a search is initiated in the database
`
`associated with the second application for the name. Id., Fig. 1, steps 6, 12, and
`2
`
`
`
`
`
`14. If the contact information identified in the document included only a name,
`
`and if only a single entry is found in the database for the name and the entry
`
`includes a single address, then the address is inserted into the document. Id. Fig. 1,
`
`steps 6, 12, 18, and 22; Fig. 4; col. 6, lines 21-32. Fig. 4, which is reproduced
`
`below, shows the document displayed in Microsoft Word after the address has
`
`been inserted.
`
`Shown in Fig. 4 is the One Button 42, which, when pressed, launches the
`
`processes just recited, including analyzing the document to identify contact
`
`information, the searching in the database, and inserting of the address. Id., Fig. 2,
`
`
`
`step 1; col. 4, lines 55-58; col. 6, lines 21-32.
`3
`
`
`
`
`
`On the other hand, if multiple addresses are found in searching the database
`
`for the identified name, these found addresses are displayed, and the user is
`
`presented with a choice of which of the addresses to insert. Id., Fig. 1, steps 18,
`
`20, and 22; Fig. 10; col. 7, line 55 to col. 8, line 33.
`
`In another scenario, when the user clicks on the “One Button” while viewing
`
`a document that includes a name and an address, the document is analyzed as
`
`before (per Fig. 1, step 4) to identify the name and the address. Next, the database
`
`is searched for the identified name (per Fig. 1, step 14). If the name happens to be
`
`in the contact database but the address in the contact database for that name differs
`
`from the address typed by the user into the document (per Fig. 1, step 26), then the
`
`user is prompted to make a choice (per Fig. 1, step 30). The user is presented with
`
`a screen shown in Fig. 9, which is reproduced below.
`
`4
`
`
`
`
`
`
`
`Fig. 9 represents a screen presented to the user in which the user is given a
`
`series of choices that can be made in this specific context. Id., Col. 7, lines 27-51.
`
`The screen reproduces the name that is both in the document and in the contact
`
`database, and it also displays the address that is in the contact database for that
`
`name. Below this information, the screen offers a total of four choices in two
`
`categories. As shown in Fig. 9 and explained in the ‘993 Patent, the user is
`
`enabled to select one of the four choices. Id. The first category is that “This is
`5
`
`
`
`
`
`another contact”, and the choice under this category is to “Add a new contact with
`
`the same name”. The second category is that “This is the same contact”, and the
`
`user is given three other choices for the contact: (a) “Change the current address in
`
`the contact register”; (b) “Use the above address [reproduced from the contact
`
`database] in my Word document”; and (c) “Add a new address to the contact”.
`
`These same four choices are also illustrated in connection with item 30 of
`
`Fig. 1 of the ‘993 Patent, which shows logical flow followed in described
`
`embodiments of the invention. Item 30 is labeled “PROMPT USER FOR
`
`DECISION AND REVIEW”, and there are four outcomes shown from this item:
`
`(1) “THIS ANOTHER CONTACT WITH THE SAME NAME”; (2) “THE
`
`CONTACT HAS MOVED, THIS IS THE NEW ADDRESS”; (3) “THIS IS
`
`A ONE-TIME OCCURRENCE: NO ACTION”; and (4) “THIS IS ADDITIONAL
`
`ADDRESS FOR THIS CONTACT”. These choices are described in the ‘993
`
`Patent, col. 5, lines 26-37.
`
`It can be seen that the first of the four choices is to add a new contact, and
`
`two of the remaining choices are specific ways of updating an existing contact.
`
`(Another choice offered is to do neither of these and simply use the address in the
`
`Word document as typed.) Consequently, the screen of Fig. 9 presents to the user
`
`a choice, among other things, between competing alternatives of storing a new
`
`contact or updating an existing contact.
`
`6
`
`
`
`
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review, the Patent Trial and Appeal Board gives patent
`
`claims their “broadest reasonable interpretation in light of the specification of the
`
`patent.” 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`
`Cir. 2005) (en banc). The prosecution history is also relevant to identify the
`
`correct construction of claim terms. Phillips v. AWH Corp., 415 F.3d at 1317.
`
`Extrinsic evidence may also be relevant to establish the meaning of terms, but such
`
`evidence is only relevant to the extent it is consistent with the specification and file
`
`history. Id., 1319.
`
`Patent Owner Arendi proposes construction of certain claim terms below
`
`pursuant to the broadest reasonable interpretation consistent with the specification
`
`standard. The proposed claim constructions are offered for the sole purpose of this
`
`proceeding and thus do not necessarily reflect appropriate claim constructions to be
`
`used in litigation and other proceedings wherein a different claim construction
`
`standard applies.
`
`A. “allowing the user to make a decision whether to store at least
`part of the first contact information in the contact database as a
`new contact or to update an existing contact in the contact
`database” means presenting to the user a choice between
`competing alternatives of storing a new contact or updating an
`existing contact.
`
`This phrase appears as one of three potential actions, in independent claims
`
`1, 9, and 17, referenced in the limitation:
`
`7
`
`
`
`
`
`after identifying the first contact information, performing at
`least one action from a set of potential actions, using the first contact
`information previously identified as a result of the analyzing, wherein
`the set of potential actions includes:
`In other words, these claims require (among other things), after textual
`
`information in the document has been analyzed to identify first contact
`
`information, “(iii) allowing the user to make a decision whether to store at least
`
`part of the first contact information in the contact database as a new contact or to
`
`update an existing contact in the contact database”.
`
`A linguistic analysis of the phrase shows that the phrase requires allowing
`
`the user to make “a decision”. The decision is “whether [1] to store at least part of
`
`the first contact information ... as a new contact or [2] to update an existing
`
`contact”. The phrase therefore requires allowing the user to make a decision
`
`between competing alternatives of storing a new contact or updating an existing
`
`contact.
`
`This limitation is supported in the ‘993 Patent by Fig. 9 and the discussion in
`
`the patent’s description relating to Fig. 9. See ‘993 Patent, Exhibit 1001, Col. 7,
`
`lines 27-42, and the discussion of the ‘993 Patent in section II above. In particular,
`
`Fig. 9, shows a screen displayed to the user when the user clicks on the “One
`
`Button” after having typed into the document a name and an address, and the name
`
`happens to be in the contact database but the address in the contact database for
`
`8
`
`
`
`
`
`that name differs from the address typed by the user into the document. Figure 9 is
`
`reproduced below again for convenience.
`
`
`
`As discussed in detail in section II, this screen gives the user a choice,
`
`among other things, between (1) adding a new contact or (2) updating an existing
`
`contact. Thus Fig. 9 is consistent with the linguistic analysis above that the phrase
`
`therefore requires allowing the user to make a decision between competing
`
`alternatives, storing a new contact or updating an existing contact. (See also the
`
`9
`
`
`
`
`
`choices at item 30 of Fig. 1, discussed in section II, and described in the ‘993
`
`Patent at col. 5, lines 26-37.) Specifically, since the ‘993 Patent is for a computer-
`
`implemented invention, the method, computer-readable medium, and apparatus of
`
`independent claims 1, 9, and 17 must have a computer process that includes
`
`presenting to the user a choice at least between competing alternatives of storing a
`
`new contact or updating an existing contact.
`
`Moreover, when, in prosecution of the application for the ‘993 Patent, this
`
`phrase was inserted into the claim, Both Fig. 1 and Fig. 9, discussed above, were
`
`cited as support for the claim:
`
`Claims 119, 125, and 131 have been amended to require
`“allowing the user to make a decision whether to store at least part of
`the first contact information in the contact database as a new contact
`or to update an existing contact in the contact database.” This
`amendment was previously offered in Response H, filed July 22,
`2011. Support for this amendment can be found in Figure 1, numerals
`28, 30, 34, and 36; Fig. 9; and page 9, lines 4-12 [corresponding to
`col. 5, lines 26-37 of the ‘993 Patent.]
`Arendi Exhibit 2001, Third Supplement to Response H, filed November 3, 2011,
`
`for Serial No. 11/745,186, page 22.
`
`For these reasons, “allowing the user to make a decision whether to store at
`
`least part of the first contact information in the contact database as a new contact or
`
`to update an existing contact in the contact database” means presenting to the user
`
`10
`
`
`
`
`
`a choice between competing alternatives of storing a new contact or updating an
`
`existing contact.
`
`IV. OVERVIEW OF THE PRIOR ART
`
`A. Overview Drop Zones
`
`Drop Zones, Exhibit 1003, is entitled “Drop Zones / An Extension of
`
`LiveDoc”. Specifically, “Drop Zone provides users with an interface for managing
`
`LiveDoc objects in the context of a set of typical user tasks.” Exhibit 1003, 30
`
`SIGCHI Bulletin No. 2 at 60. Drop Zones is thus an implementation that uses the
`
`functionality of LiveDoc. The authors of the Drop Zones article, Miller and
`
`Bonura, are the authors of the related article entitled “From documents to objects:
`
`An overview of LiveDoc” (hereinafter the “LiveDoc article”, Exhibit 1005),
`
`appearing in the same issue of SIGCHI Bulletin as their Drop Zone article, 30
`
`SIGCHI Bulletin No. 2, 53-58; LiveDoc is discussed in section IV(B) below.)
`
`Operation of the Drop Zone system uses Live Doc windows, as shown in
`
`Figures 1 and 2 of Drop Zones. The caption for Figure 1 states that “Drop zone is
`
`shown in the window labeled ‘Activities’. The window at the top called ‘Test’ is a
`
`LiveDoc window showing proper names, e-mail addresses phone number, URL,
`
`date and stock market ticker codes.” Exhibit 1003, 30 SIGCHI Bulletin No. 2 at
`
`60. These identified “structures” are shown in the LiveDoc window as
`
`highlighted. Id. Similarly in Figure 2 (reproduced below), which illustrates “A
`
`11
`
`
`
`
`
`user interaction with Drop Zones”, the same LiveDoc window is displayed. Id. To
`
`use Drop Zones, as discussed in connection with Figure 2, the user must select a
`
`structure in a LiveDoc window. Id.
`
`Figure 2: A user interaction with Drop Zones.
`
`
`Specifically, to use the Drop Zone system, as described further below, the
`
`
`
`user must first enter “LiveDoc mode” by pressing and holding a function key in
`
`order to cause highlighting to be displayed over the document. Once “LiveDoc
`
`mode” has been entered, as shown in Fig. 2, the user uses the mouse to select an
`
`item of information that has been highlighted (here the name Tom Bonura) and
`
`12
`
`
`
`
`
`(while still holding down the mouse button), then drags the selected item to the
`
`window labeled “Activities” over a desired category (here “Email Assistant”) and
`
`then drops the selected name on the category (by releasing the mouse button).
`
`Dropping the item causes a menu of actions to appear in the Assistant window
`
`(shown to the left of the Activities window in Figure 2), and from that menu, the
`
`mouse is used to select a desired action. Id., Exhibit 1003, 30 SIGCHI Bulletin
`
`No. 2 at 60-61.
`
`Although the Drop Zones article does not explain how the LiveDoc window
`
`is invoked to show the information highlighted in it, the Drop Zones article points
`
`to the LiveDoc article. Citing the LiveDoc article (which is reference [6] therein),
`
`the Drop Zones article begins with a description of LiveDoc, explaining that
`
`LiveDoc reveals structural information in a document, such as a phone number or
`
`company names or a meeting, and then allows the user to invoke an action with
`
`respect to a recognized structure. Exhibit 1003, 30 SIGCHI Bulletin No. 2 at 59.
`
`The Drop Zones article explains that Drop Zones “is a framework centered on
`
`representing the meaning of LiveDoc objects, composing those objects might into
`
`other higher-level objects, and enabling users to take action on those
`
`compositions.” Exhibit 1003, 30 SIGCHI Bulletin No. 2 at 60.
`
`As explained in Section IV(B) immediately below, because Drop Zones
`
`depends on the functionality of LiveDoc, when using Drop Zones, the structures
`
`13
`
`
`
`
`
`identified by LiveDoc are not made visible to the user unless and until the user has
`
`entered an execute command by pressing and holding the function key. Only at
`
`that point can the Drop Zones interface be used to select an identified structure and
`
`to select an action for use with that structure.
`
`B. Overview of LiveDoc
`
`As mentioned in the Drop Zones article discussed above in section IV(A), to
`
`see highlighted structures in a LiveDoc window, the user needs to invoke
`
`“LiveDoc mode”. The LiveDoc article explains that LiveDoc mode is invoked by
`
`pressing and holding the function key. Exhibit 1003, LiveDoc article, 30 SIGCHI
`
`Bulletin No. 2 at 56. By way of background, as shown by Figure 3 (reproduced
`
`below) in the LiveDoc article, the LiveDoc system operates outside of any
`
`application, such as a word processor. Exhibit 1005, LiveDoc article, 30 SIGCHI
`
`Bulletin No. 2 at 55-56.
`
`14
`
`
`
`
`
` Figure 3: The high-level LiveDoc architecture.
`
`As can be seen from the labels in the right-hand column in Fig. 3, the
`
`
`
`Applications (such as word processing) are shown separately from the LiveDoc
`
`Manager and from the Analyzer server. The article explains that the LiveDoc
`
`Manager “acts as an intermediary between the application making use of LiveDoc
`
`and the various internals of LiveDoc itself.” Id. Exhibit 1005, LiveDoc article, 30
`
`SIGCHI Bulletin No. 2 at 55. Furthermore, “the Analyzer System is made up of a
`
`set of detectors that analyze the content of the document passed to LiveDoc, a set
`
`15
`
`
`
`
`
`of actions (typically, but not necessarily, implemented as AppleScripts) that carry
`
`out the various operations on the discovered structures, a table that specifies the
`
`mapping between detectors and actions, and an Analyzer Server that coordinates
`
`all these functions.” Id. Since LiveDoc operates outside of the application,
`
`“LiveDoc must ask the application for the information about the structures it has
`
`found via a callback. Once this information is available, the highlights and their
`
`associated mouse-sensitive regions can be constructed.” Id. Exhibit 1005,
`
`LiveDoc article, 30 SIGCHI Bulletin No. 2 at 56.
`
`If one is viewing a document in a word processing program on a computer
`
`that is running LiveDoc, the structures identified by LiveDoc are not visible in the
`
`word processing program itself; instead one must first enter “LiveDoc mode” by
`
`pushing and holding the function key in order to see the structures: “The LiveDoc
`
`Manager also controls the events that occur when the user presses the function key
`
`to enter LiveDoc mode, and when the mouse button is pressed while over a
`
`LiveDoc item. The LiveDoc Manager updates the display to present the highlight
`
`information over the discovered structures when the function key is pressed, and to
`
`remove the highlights when the function key is released.” Id.
`
`C. Overview of Pensoft
`
`The Pensoft reference is a user manual for software, for personal
`
`information management, called “Perspective”: “Perspective can help you manage
`
`16
`
`
`
`
`
`your schedule, tasks, contacts, notes, and other important information. This
`
`chapter explains how to use the Handbook, the basic reference source for using
`
`Perspective.” Pensoft, 1.
`
`The Perspective software described in the Pensoft reference is designed for
`
`computers that run the PenPoint operating system. Id. (According to Diana
`
`Cohen, whose declaration is an exhibit of the Petitioner, “Perspective was meant to
`
`be used with pen-based computers that run PenPoint, an operating system created
`
`specifically by GO Corporation for pen-based computers such as ones based on
`
`AT&T's Hobbit microprocessor. One such computer was later marketed by AT&T
`
`under the name of the EO Personal Communicator.” Cohen Declaration, Exhibit
`
`1013, at 1.)
`
`The Perspective software described in the Pensoft reference causes storage
`
`of contact information for individuals and companies so that the information can
`
`be seen as an Address Book. Pensoft, 9. Similarly the Perspective software causes
`
`storage of calendar information that can be seen as a Day Planner and as a Month
`
`Planner. Pensoft, 15-16. The Perspective software also supports To Do List and
`
`Notes views. Pensoft, 6, 14.
`
`The term “document” has a unique meaning in the Pensoft reference, and
`
`that term is used to describe the template by which information is entered into the
`
`17
`
`
`
`
`
`Perspective system and by which it can be viewed; moreover, information about
`
`any “item” in the Perspective system can also be viewed using a “profile”:
`
`Each item has a profile. Profiles are forms which display all the
`details for an item. You can open the profile for any item displayed in
`any Perspective document.
`
`
`
`
`
`Every item entered into a Perspective document is stored in a
`ProfileBook. Each document is connected to a specific ProfileBook
`which serves as a central storage place for your information. This
`allows several documents to display the same items. For example, the
`Day Planner and the Month Planner can both show your
`appointments. The Address Book and the Company List both show
`companies.
`Because documents share a single ProfileBook, details changed
`in one document are changed in all documents, so your information is
`
`18
`
`
`
`
`
`always consistent. For example, rescheduling an appointment in the
`Day Planner reschedules it in the Month Planner. Updating a
`company's address updates it in all Perspective documents.
`Most people use a single ProfileBook, which contains all of
`their personal information. You may create additional ProfileBooks,
`each of which is a separate storage place for information. Pensoft
`recommends that you keep all of your information in one ProfileBook.
`
`Pensoft, 9-10.
`
`This passage confirms the point made at the beginning of this discussion of
`
`the Pensoft reference, that the Perspective software described in Pensoft is personal
`
`information management software that provides a database for that purpose. As a
`
`result, it is a property of the Perspective software that when a detail, stored in the
`
`database, that appears in one form is changed, then the detail is changed when
`
`viewed using any other form as well: “Because documents share a single
`
`ProfileBook, details changed in one document are changed in all documents, so
`
`your information is always consistent.” Id.
`
`This passage points out another characteristic of the Perspective software,
`
`namely, that the term “document” used in the Pensoft reference has a particular
`
`meaning. Specifically the term “document”, as used in the Pensoft reference, is
`
`described on page 8:
`
`Within Perspective[,] information is displayed in documents. A
`document is like a predesigned piece of paper with areas to hold a
`
`19
`
`
`
`
`
`particular kind of information. Each document gives you a different
`view of your information.
`Documents are collected in a notebook. Perspective comes in
`its own notebook, the Perspective Notebook, with documents which
`have been set up for you. For more information on notebooks, see
`Using PenPoint.
`The Perspective Notebook contains six standard documents:
`• Day Planner,
`• Month Planner,
`• Address Book,
`• To Do List,
`• Topic Index, and
`• Note Index
`You can also choose documents from the Additional
`Documents section of the Perspective Notebook. You can use any of
`the documents as they are, change them, create additional documents,
`or remove unneeded documents. For more information on the
`documents provided in the Perspective Notebook, see Chapter 2,
`“Your Perspective Notebook” on page 13.
`
`Pensoft, 8.
`
`The passages on pages 8 and on 9-10 quoted above show that the
`
`Perspective software has six standard “documents”, including Day Planner, Month
`
`Planner, Address Book, To Do List, Topic Index, and Note Index. Information
`
`stored by Perspective is displayed in “documents”. A document “is like a
`
`predesigned piece of paper with areas to hold a particular kind of information.”
`20
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`
`
`
`
`Each document provides “a different view of your information”. Moreover,
`
`changing a detail in one of the documents causes a similar change in all of the
`
`other documents.
`
`Because (i) the Perspective software causes “your information” to be stored
`
`and retrieved, (ii) Perspective’s “documents” provide different views of such
`
`information, and (iii) Perspective’s “document is like a predesigned piece of paper
`
`with areas to hold a particular kind of information”, the Perspective software
`
`implements storage of personal information in a database, and each “document” is
`
`a template that provides a defined view of selected fields of the database. The
`
`content of a field of the database will change in a first “document” (i.e., view)
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`whenever the content is modified in any other “document” (i.e., view).
`
`Consequently, the word “document” has a meaning different from a conventional
`
`document in which textual information can be stored for later retrieval. In
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`Perspective, the textual information is not in the “document” but rather in fields of
`
`the database. A “document” of the Perspective software provides a view into the
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`database, and any information placed into the “document” by a user is stored in the
`
`database and is subject to change whenever it is changed even via another
`
`“document”. With the Perspective software, one cannot therefore save textual
`
`information in a “document” and expect that on retrieval of the same “document”,
`
`21
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`
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`
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`the same information will appear, because that information may have been
`
`changed via another “document”.
`
`When contact information is entered into the Perspective system, the user is
`
`required to tell the system precisely what type of information is being entered, in
`
`that there are specific fields by which name, business phone, address, must be
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`entered: “When you enter information in different columns along the row, you are
`
`entering details for the item. For example, when you write in the Address Book,
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`you enter each detail about the person, such as name, address, city, state, and
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`business phone number in a different column.” Pensoft, 27.
`
`V.
`
`SINCE THE PRIOR ART DOES NOT ANTICIPATE OR RENDER
`ANY CLAIM OBVIOUS, NO INTER PARTES REVIEW SHOULD
`BE INITIATED
`
`A. Overview of Reasons for Denying Inter Parties Review
`
`Petitioner has failed to show that any prior art alone or in combination
`
`addresses all of the limitations of any of the independent claims. Each of the
`
`independent claims 1, 9, and 17 of the ‘993 Patent requires a computer-
`
`implemented method that is configured to perform each one of three potential
`
`actions involving a contact database. Each of the claims additionally requires
`
`performing at least one of these actions (and the ability to perform all three of
`
`them) after identifying first contact information in a document, furthermore
`
`22
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`
`
`
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`“providing for the user an input device configured so that a single execute
`
`command from the input device is sufficient to cause the performing”.
`
`Drop Zones, relied upon by the Petitioner for this purpose, fails to meet the
`
`requirement “that a single execute command from the input device is sufficient to
`
`cause the performing”. Drop Zones instead requires two execute commands, a first
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`execute command (pressing and holding the function key) to enter LiveDoc mode
`
`to show highlighting of identified contact information and a second execute
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`command (a series of mouse manipulations terminating in the user’s selection of
`
`an action) to select an item of contact information and an action to be performed.
`
`Each of the independent claims 1, 9, and 17 of the ‘993 Patent additionally
`
`requires “allowing the user to make a decision whether to store at least part of the
`
`first contact information in the contact database as a new contact or to update an
`
`existing contact in the contact database”. Pensoft, relied up by Petitioner for this
`
`limitation, fails to meet the claim limitation, because it fails to disclose or suggest
`
`presenting to the user a choice between competing alternatives of storing a new
`
`contact or updating an existing contact.
`
`23
`
`
`
`
`
`B. Because an action can be triggered in the Drop Zones system only
`after entering two execute commands, Drop Zones fails to disclose
`“providing for the user an input device configured so that a single
`execute command from the input device is sufficient to cause the
`performing”, and therefore Ground 1 fails to establish a prima
`facie case for obviousness
`
`Independent claims 1, 9, 17 include the limitation of “providing for the user
`
`an input device configured so that a single execute command from the input device
`
`is sufficient to cause the performing”. When the claims dependent on these
`
`independent claims are considered, then all of claims 1-24 include this limitation.
`
`The Drop Zones, Live Doc, and Pensoft references relied upon by the Petitioner in
`
`Ground 1fail to disclose or suggest this claim limitation.
`
`The “performing” in the claim limitation is from this context: “after
`
`identifying the first contact information, performing at least one action from a set
`
`of potential actions, using the first contact information previously identified as a
`
`result of the analyzing.” Each of the independent claims enumerates three
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`potential actions, and requires that “the computer implemented method is
`
`configured to perform each one of action (i), action (ii), and action (iii)”. The three
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`actions are enumerated as follows:
`
`(i) initiating an electronic search in the contact database for the
`first contact information while it is electronically displayed in order to
`find whether the first contact information is included in the contact
`database; and
`
`24
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`
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`
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`when a contact in the contact database includes the first contact
`information, if second contact information in the contact database is
`associated with that contact, electronically displaying at least a
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