Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: May 28, 2014
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`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 IPR2014-00214
`Patent 8,306,993 B2
`
`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 12
`
`
`
` Entered: May 28, 2014
`
`
`
`
`
`
`
`
`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 IPR2014-00214
`Patent 8,306,993 B2
`
`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Case IPR2014-00214
`Patent 8,306,993 B2
`
`
`I. INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Corrected Petition
`
`requesting an inter partes review of claims 1, 2, 4-10, 12-18, and 20-24 of
`
`U.S. Patent No. 8,306,993 (Ex. 1001, “the ’993 patent”). Paper 4 (“Pet.”).
`
`Arendi S.A.R.L. (“Patent Owner”) filed a Preliminary Response. Paper 10
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Petition and Preliminary Response, we are
`
`not persuaded the information presented by Petitioner has established a
`
`reasonable likelihood that Petitioner would prevail in showing the
`
`unpatentability of any of the challenged claims of the ’993 patent.
`
`Accordingly, we deny institution as to all claims of the ’993 patent.
`
`A. Related Proceedings
`
`
`
`According to the Patent Owner, the ’993 patent and related patents are
`
`currently at issue in the following cases pending in the United States District
`
`Court for the District of Delaware: Arendi S.A.R.L. v. Yahoo! Inc.
`
`(1:2013cv00920); Arendi S.A.R.L. v. Google Inc. (1:2013cv00919); Arendi
`
`S.A.R.L. v. HTC Corp. (1:2012cv01600); Arendi S.A.R.L. v. Sony Mobile
`
`Communications (USA) Inc. (1:2012cv01602); Arendi S.A.R.L. v. Nokia
`
`Corporation (1:2012cv01599); Arendi S.A.R.L. v. Blackberry Limited,
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`2
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`Patent 8,306,993 B2
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`(1:2012cv01597); Arendi S.A.R.L. v. LG Electronics Inc. (1:2012cv01595);
`
`Arendi S.A.R.L. v. Motorola Mobility LLC (1:2012cv1601); Arendi S.A.R.L.
`
`v. Samsung Electronics Co. Ltd., (1:2012cv01598); and Arendi S.A.R.L. v.
`
`Apple Inc. (1:2012cv01596). Paper 7, 2-3.
`
`
`
`The ’993 patent is also the subject of another petition for inter partes
`
`review, Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi
`
`S.A.R.L., IPR2014-00203.
`
`B. The ’993 Patent
`
`
`
`The ’993 patent is titled “Method, System and Computer Readable
`
`Medium for Addressing Handling From an Operating System.” The subject
`
`matter of the ’993 patent relates to computer implemented processes for
`
`automating a user’s interaction between a first application, such as a word
`
`processor or spreadsheet, and a second application, such as a contact
`
`manager with a database. Ex. 1001, col. 1, l. 60–col. 2, l. 31.
`
`Figure 4 of the ’993 patent is reproduced below.
`
`Figure 4 illustrates a starting point in a document, such as a word
`
`processing document. The user types into the document the name and
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`address of existing contact 44. When the user clicks on OneButton 42, the
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`claimed process is launched, analyzing the document to identify contact
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`information and searching a contact database. Ex. 1001, col. 7, ll. 27-34.
`
`Figure 1 of the ’993 patent is reproduced below.
`
`
`
`
`
`Figure 1 depicts a flow chart of the address handling process initiated
`
`by the user clicking on OneButton 42 of Figure 4. At step 4, text typed by
`
`the user in a document is analyzed for contact information. At step 6, if the
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`identified contact information includes a name and address, a search occurs
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`in the database at step 14. When the database finds a name but not an
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`address, at step 30, the user is prompted “for decision,” which leads to
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`inserting address information into the database at step 36, or updating
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`address information in the database at step 34. Ex. 1001, col. 4, l. 55–col. 5,
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`l. 37.
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`Patent 8,306,993 B2
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`Figure 9 of the ’993 patent is reproduced below.
`
`Figure 9 illustrates a screen displayed to the user who clicks on the
`
`OneButton 42 of Figure 4 after typing a name and address into a document,
`
`where the name is in the contact database but the address differs from the
`
`address typed by the user. The screen in Figure 9 gives the user a choice of
`
`adding a new contact or updating an existing contact. Ex. 1001, col. 7, ll.
`
`
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`27-42.
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`5
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`C. Illustrative Claim
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`Claims 1, 2, 4-10, 12-18, and 20-24 are the subject of the Petition, and
`
`claims 1, 9, and 17 are independent claims. Independent claim 1 is
`
`reproduced below.
`
`1. A computer implemented method for information handling,
`the method comprising:
`
`providing access to a contact database that can also be
`separately accessed and edited by a user and wherein the
`contact database includes at least three fields for storing contact
`information associated with each of one or more contacts, each
`of the at least three fields within the contact database being
`specific to a particular type of contact information selected
`from the group consisting of name, title, address, telephone
`number, and email address;
`
`analyzing in a computer process textual information in a
`document configured to be stored for later retrieval to identify a
`portion of the document as first contact information, without
`user designation of a specific part of the textual information to
`be subject to the analyzing, wherein the first contact
`information is at least one of a name, a title, an address, a
`telephone number, and an email address;
`
`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:
`(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 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 portion of the second contact
`information, wherein the second contact
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`information is at least one of a name, a title, an
`address, a telephone number, and an email address;
`(ii) initiating electronic communication using the
`contact information; and
`(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;
`wherein the computer implemented method is
`configured to perform each one of action (i), action
`(ii), and action (iii) using the first contact
`information previously identified as a result of the
`analyzing; and providing for the user an input
`device configured so that a single execute
`command from the input device is sufficient to
`cause the performing.
`
`
`
`
`
`Prior Art Relied Upon
`
`Petitioner relies upon the following five prior art references:
`
`
`
`Reference
`Abbreviation
`Drop Zones
`
`Pensoft
`
`LiveDoc
`
`Title
`
`Thomas Bonura & James R.
`Miller, Drop Zones, An Extension
`to LiveDoc, SIGCHI Bulletin,
`Vol. 30, No. 2, April 1998, at 59-
`63
`
`Pensoft Corp., Perspective
`Handbook (1st ed. Nov. 1992)
`
`James R. Miller & Thomas
`Bonura, From Documents to
`Objects, An Overview of LiveDoc,
`SIGCHI Bulletin, Vol. 30, No. 2,
`April 1998, at 53-58
`
`Ketola
`
`Forest
`
`US 6,112,099
`
`US 6,005,549
`
`Ex. No.
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
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`7
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`Petitioner contends the challenged claims are unpatentable based on
`
`D. The Asserted Grounds
`
`the following three grounds.
`
`Reference(s)
`
`Basis
`
`LiveDoc, Drop Zones, and
`Pensoft
`
`§ 103(a)
`
`Claims
`Challenged
`1-2, 4, 7-10,
`12, 15-18,
`20, 23, and
`24
`
`LiveDoc, Drop Zones, Pensoft,
`and Ketola
`LiveDoc, Drop Zones, Pensoft,
`and Forest
`
`§ 103(a)
`
`5, 13, and 21
`
`§ 103(a)
`
`6, 14, and 22
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board interprets claim terms of an
`
`unexpired patent according to their broadest reasonable construction in light
`
`of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012). There is a “heavy presumption” that a claim term carries
`
`its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`
`288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a “claim term will not
`
`receive its ordinary meaning if the patentee acted as his own lexicographer
`
`and clearly set forth a definition of the disputed claim term in either the
`
`specification or prosecution history.” Id.
`
`Petitioner submits proposed constructions, supported by citations to
`
`the specification, for three claim terms: “first contact information;” “without
`
`user designation;” and “input device.” Pet. 5-9. In particular, Petitioner
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`proposes as follows: (i) “first contact information” means “text that is
`
`entered into the document by the user, including, but not limited to, a name,
`
`a title, an address, a telephone number, or an email address” (Pet. 6-7);
`
`(ii) “without user designation” means “without the user having to specify the
`
`information” (Pet. 7-8); and (iii) “input device” means “a device that allows
`
`the user to provide input into a computer program, for example, a touch
`
`screen, touch screen button, keyboard, keyboard button, icon, menu, menu
`
`choice, voice command device, or button” (Pet. 8-9). Patent Owner did not
`
`submit any proposed constructions for these terms. For purposes of this
`
`Decision, we adopt Petitioner’s proposed constructions, as we agree that
`
`they are the broadest reasonable constructions of these terms consistent with
`
`the specification.
`
`In the Preliminary Response, Patent Owner proposes a construction
`
`for one term from the independent claims, “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.” Patent Owner proposes the construction of this term to
`
`be: “presenting to the user a choice between competing alternatives of
`
`storing a new contact or updating an existing contact.” Prelim. Resp. 7
`
`(emphasis omitted); see also id. at 8-11. Petitioner did not propose a
`
`construction for this claim term. In support of its proposed construction,
`
`Patent Owner cites Figures 1 and 9 and related disclosure of the ’993 patent,
`
`which as described above in Section I. B, disclose that the user is presented
`
`with a choice between two alternative actions: either storing information as
`
`a new contact, or updating an existing contact.
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`For purposes of this Decision, we agree that Petitioner’s proposed
`
`construction is the broadest reasonable construction of this term consistent
`
`with the specification.
`
`B. Claims 1, 2, 4, 7-10, 12, 15-18, 20, 23, and 24 – Obviousness Over
`LiveDoc, Drop Zones, and Pensoft
`
`Petitioner contends claims 1, 2, 4, 7-10, 12, 15-18, 20, 23, and 24 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over LiveDoc, Drop
`
`Zones, and Pensoft. Pet. 35-47.
`
`LiveDoc (Exhibit 1005)
`
`LiveDoc discloses a structure detection process running in the
`
`background on the visible text of a document entered by a user. LiveDoc’s
`
`analyses are presented to the user through automatic visual highlighting of
`
`discovered structures. Ex. 1005, 55. Certain meaningful portions of a
`
`document are highlighted automatically, and clicking on them causes certain
`
`actions to occur. Id. Figure 2 of LiveDoc is reproduced below.
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`Figure 2 depicts the highlighted discovered structure (in this case, a
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`url for a website) and the menu of possible actions for the structure. The
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`menu selection can be made by the user in directly selecting an item from
`
`
`
`the menu. Id. at 55.
`
`Drop Zones (Exhibit 1003)
`
`Drop Zones is titled “Drop Zones – An Extension to LiveDoc” and
`
`discloses a user interface for managing LiveDoc objects in the context of a
`
`set of typical user tasks. Pet. 18. A Drop Zones “assistant” takes features
`
`identified by LiveDoc, interprets the feature’s meaning, and recommends
`
`appropriate actions, made visible when the user selects structures identified
`
`by LiveDoc and drags and drops them to the assistants. Ex. 1003, 60.
`
`Figure 2 of Drop Zones is reproduced below.
`
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`Figure 2 depicts a document in which LiveDoc has identified the
`
`structure “Tom Bonura” with its personalName recognizer. Id. The window
`
`labeled “test” is a LiveDoc window showing the proper name Tom Bonura,
`
`his e-mail address, phone number, and other information. The user may
`
`select the identified “Tom Bonura” structure and drag and drop it on the
`
`Drop Zone, e.g., the window labeled “Activities,” where the Email Assistant
`
`responds by presenting four actions relating to the person’s name and e-mail
`
`address. Id. at 60-61. The Email Assistant can “look inside an address book
`
`application for a person with the stated phone number.” Id. at 61.
`
`
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`Pensoft (Exhibit 1004)
`
`
`
`Pensoft is a manual for users of Perspective, personal information
`
`management software that enables applications in a pen-based computing
`
`system. Pet. 20; Ex. 1004. As noted in the Preliminary Response, the
`
`Perspective software provides for storage of contact information that can be
`
`viewed as an address book. Ex. 1004, 8. A user can access relevant
`
`information in any Perspective document, including address book, day
`
`planner, month planner, to do list, topic index, and note index. Id.
`
`Information about any item in the Perspective system can be viewed using a
`
`profile, which is a form displaying all the details for an item, such as in one
`
`of the figures on page 9 of Pensoft, reproduced below:
`
`
`
`
`
`The figure depicts a profile displaying the name of a person, along
`
`with phone and fax numbers, company, and position. Id. at 9.
`
`The figure on page 178 of Pensoft is reproduced below.
`
`
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`The figure on page 178 of Pensoft depicts the process of adding
`
`information (an “instance detail”) to profiles opened in any Perspective
`
`document. Entry 11 for a person named Dan Costa is highlighted, which
`
`opens a window titled, “Person: Dan Costa,” where “edit” is an option for
`
`name, phone number, address, and other information. Id. at 178.
`
`Analysis
`
`Petitioner contends that claims 1, 2, 4, 7-10, 12, 15-18, 20, 23, and 24
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over LiveDoc, Drop
`
`Zones, and Pensoft. In support of this asserted ground of unpatentability,
`
`Petitioner provides explanations of how it alleges that the subject matter of
`
`each claim is disclosed by the combined teachings of LiveDoc, Drop Zones,
`
`and Pensoft. Pet. 25-51.
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`Patent Owner contends the combination fails to disclose the limitation
`
`“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,” which is recited in all
`
`challenged claims. Prelim. Resp. 29-39.
`
`The Petition asserts this limitation is taught or suggested by four
`
`excerpts from Pensoft. Specifically, the Petition states, “Pensoft discloses
`
`that the user of an information handling system may be given the option,
`
`when the user invokes a name, to (i) update information associated with that
`
`name if information associated with the name is already present in the
`
`database, or (ii) enter in contact information for that name as a new contact
`
`if the name is not present in the database.” Pet. 32-33. In support of this
`
`assertion. the Petition’s claim chart first cites a sentence on page 38 of
`
`Pensoft, which reads, “[i]f you have not previously entered a Dan, the
`
`Associate asks if you want to create a new profile for Dan.” Id. at 33.
`
`Second, the Petition cites two sentences on page 9 of Pensoft, which
`
`reads, “[e]ach item has a profile. Profiles are forms which display all the
`
`details for an item.” Id.
`
`Third, the Petition cites page 178 of Pensoft, in particular, the figure
`
`at page 178 described above, with instance detail for a Dan Costa, and the
`
`sentence, “[y]ou can add an instance detail in a profile you open in any
`
`Perspective document.” Id.
`
`Fourth, the Petition cites page 17 of Pensoft, which reads, “[u]se the
`
`Address Book to: write and track names, phone numbers, and addresses for
`
`everyone in one place; update information when it changes.” Id.
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`Patent Owner argues that the limitation in question, which appears in
`
`all of the independent claims, claims 1, 9, and 17, is not taught or suggested
`
`by the above-cited passages. Prelim. Resp. 29-39. We agree. Page 38 of
`
`Pensoft discloses the user being asked to create a new profile, which at page
`
`9 is described to include “all the details for an item,” and page 178 of
`
`Pensoft discloses using the Address Book to “update information when it
`
`changes.” Neither excerpt, however, nor any of the other cited excerpts
`
`from Pensoft, singly or in combination, discloses the recited limitation in the
`
`claimed method for information handling. That limitation, construed as in
`
`Section II. A, requires the user being presented with a decision between one
`
`of two actions, namely, either storing at least part of the contact information
`
`in the contact database, or instead updating an existing contact in the contact
`
`database. Prelim. Resp. 29-39. The limitation thus requires the user’s
`
`decision, and the system’s ability to store or update contact information, to
`
`be made at once, not serially or separately. Taken together, pages 9 and 38
`
`of Pensoft appear at most to disclose the ability to store part of the contact
`
`information as a “new profile” and separately, pages 17 and 178 of Pensoft
`
`may disclose the ability to “add an instance detail” or “update address book
`
`information when it changes.” These portions of Pensoft do not teach or
`
`suggest allowing the user to make a decision to store or to update, because
`
`there is no language or depiction in Pensoft of such a choice being
`
`presented.
`
`Finally, the Petition’s claim chart also cites page 61 of Drop Zones,
`
`stating Drop Zones “can derive e-mail addresses based on a person’s name
`
`or his/her phone number. This would require a search through the contact
`
`database, and a determination of whether the information sought is present
`
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`in the database.” Pet. 33 (citing Ex. 1003, 61, col. 1 ¶ 1, col. 2 ¶ 1). The
`
`Petition cites the accompanying Declaration of Dr. Clark, who concludes
`
`that
`
`one skilled in the art would have reason to implement the
`Pensoft-disclosed functionalities of (i) adding the name or
`phone number as a new entry in the database when Drop Zones
`determined that the information sought was not present in the
`database, and (ii) allowing the user to update existing
`information associated with the name or phone number when
`Drop Zones determined that the information sought was present
`in the database.
`
`Pet. 27 (citing Ex. 1010 ¶ 60).
`
`We agree with Patent Owner that “[t]hese sections of Drop Zones (or
`
`any other part of the Drop Zones reference) fail to teach” the recited
`
`limitation. Prelim. Resp. 39. The cited portions of Drop Zones do not
`
`disclose determining the presence or absence of information in a database or
`
`the ability of a user to decide whether to store or update information.
`
`Therefore, we give little weight to Dr. Clark’s testimony that the disputed
`
`limitations are taught by Drop Zones, because his testimony is conclusory
`
`and unsupported by the record evidence. See 37 C.F.R. § 42.65(a).
`
`Accordingly, on this record, we determine that the information
`
`presented by Petitioner fails to establish a reasonable likelihood of
`
`prevailing in establishing that claims 1, 2, 4, 7-10, 12, 15-18, 20, 23, and 24
`
`would have been obvious over LiveDoc, Drop Zones, and Pensoft.
`
`C. Claims 5, 13, and 21: Obviousness over LiveDoc, Drop Zones,
`Pensoft, and Ketola
`
`
`
`Petitioner also contends dependent claims 5, 13, and 21 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over LiveDoc, Drop
`
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`Zones, Pensoft, and Ketola (Ex. 1006). Pet. 51-56. Claims 5, 13, and 21
`
`depend from independent claims 1, 9, and 17, respectively, which were the
`
`subject of Petitioner’s unsuccessful ground relying on LiveDoc, Drop Zones,
`
`and Pensoft, addressed above. Petitioner does not argue that Ketola
`
`discloses the limitation missing in this ground. Accordingly, on this record,
`
`we determine that Petitioner fails to establish a reasonable likelihood of
`
`prevailing in establishing that dependent claims 5, 13, and 21 would have
`
`been obvious over LiveDoc, Drop Zones, Pensoft, and Ketola.
`
`D. Claims 6, 14, and 22: Obviousness over LiveDoc, Drop Zones,
`Pensoft, and Forest
`
`Petitioner further contends dependent claims 6, 14, and 22 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over LiveDoc, Drop
`
`Zones, Pensoft, and Forest (Ex. 1007). Pet. 56-60. Claims 6, 14, and 22
`
`depend from independent claims 1, 9, and 17, respectively, which were the
`
`subject of Petitioner’s unsuccessful ground relying on LiveDoc, Drop Zones,
`
`and Pensoft, addressed above. Petitioner does not argue that Forest discloses
`
`the limitation missing in this ground. Accordingly, on this record, we
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`determine that Petitioner fails to establish a reasonable likelihood of
`
`prevailing in establishing that dependent claims 6, 14, and 22 would have
`
`been obvious over LiveDoc, Drop Zones, Pensoft, and Forest.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner fails to
`
`demonstrate a reasonable likelihood of prevailing on its challenge to the
`
`patentability of claims 1, 2, 4-10, 12-18, and 20-24 of the ’993 patent.
`
`18
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`
`
`
`
`Case IPR2014-00214
`Patent 8,306,993 B2
`
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’993 patent.
`
`
`
`
`
`
`
`19
`
`
`
`
`
`Case IPR2014-00214
`Patent 8,306,993 B2
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`
`
`
`PETITIONER:
`
`Andrea Reister
`Gregory Discher
`Covington & Burling LLP
`areister@cov.com
`gdischer@cov.com
`
`PATENT OWNER:
`
`Robert Asher
`Bruce Sunstein
`Sunstein Kann Murphy & Timbers LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`
`
`20
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`
`
`
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