IN THE 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
`
`
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`NO. 8,306,993 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
` DC: 5120306-1
`
`

`

`Docket No. 032449.0031-US08
`
`TABLE OF CONTENTS
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ........................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ...................................... 1
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .................................................. 1
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ................................ 2
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ........................................... 2
`
`II. FEES (37 C.F.R. § 42.103) ...................................................................................... 2
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ..................................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) ......................................... 3
`
`Citation of Prior Art ................................................................................... 3
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2)) .......................................................................................................... 4
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ....................................... 5
`
`Person of Ordinary Skill in the Art ............................................................ 9
`
`Unpatentability of the Construed Claims (37 C.F.R. §
`42.104(b)(4)) .............................................................................................. 9
`
`G.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ..................................... 9
`
`IV. SUMMARY OF THE ’993 PATENT .................................................................. 9
`
`A.
`
`B.
`
`C.
`
`Overview of the ’993 Patent ...................................................................... 9
`
`Prosecution History Summary of the ’993 Patent .................................. 11
`
`The Claims of the ’993 Patent Are Entitled to a Filing Date No
`Earlier Than September 3, 1999 .............................................................. 14
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
`OF THE ’993 PATENT .................................................................................... 16
`
`- i -
`
`

`

`Docket No. 032449.0031-US08
`
`A.
`
`Prior Art .................................................................................................... 17
`
`1. From Documents to Objects - An Overview of LiveDoc (Ex.
`1005) and Drop Zones - An Extension to LiveDoc (Ex. 1003) ............. 17
`
`2. Pensoft Perspective Handbook (Ex. 1004) ............................................. 20
`
`3. U.S. Patent No. 6,112,099 (Ex. 1006) ..................................................... 24
`
`4. U.S. Patent No. 6,005,549 (Ex. 1007) ..................................................... 25
`
`B.
`
`C.
`
`D.
`
`Ground I: Combination of LiveDoc, Drop Zones and Pensoft
`(Exs. 1003-1005) Renders Obvious Claims 1-2, 4, 7-10, 12, 15-
`18, 20, 23-24 Under 35 U.S.C. § 103(a) ................................................. 25
`
`Ground II: Combination of LiveDoc, Drop Zones, Pensoft and
`the ’099 Patent (Exs. 1003-1006) Renders Obvious Claims 5, 13
`and 21 Under 35 U.S.C. § 103(a) ............................................................ 51
`
`Ground III: Combination of LiveDoc, Drop Zones, Pensoft and
`the ’549 Patent (Exs. 1003-1005 and 1007) Renders Obvious
`Claims 6, 14 and 22 Under 35 U.S.C. § 103(a) ...................................... 56
`
`VI. CONCLUSION ..................................................................................................... 60
`
`- ii -
`
`

`

`Docket No. 032449.0031-US08
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`LIST OF EXHIBITS
`
`
`Description
`U.S. Patent No. 8,306,993
`File History for U.S. Patent No. 8,306,993
`Bonura, T. and J. Miller, “Drop Zones, An Extension to LiveDoc,”
`SIGCHI Bulletin, Vol. 30, No. 2, April 1998, pp. 59-63
`Pensoft Corp., Perspective Handbook, First Edition, November
`1992
`Bonura, T. and J. Miller, “From Documents to Objects, An
`Overview of LiveDoc,” SIGCHI Bulletin, Vol. 30, No. 2, April
`1998, pp. 53-58
`U.S. Patent No. 6,112,099 to P. Ketola
`U.S. Patent No. 6,005,549 to Forest
`Norwegian patent application NO 984066
`Certified translation of NO 984066
`Declaration of Paul C. Clark, D.Sc.
`Curriculum vitae of Paul C. Clark, D.Sc.
`Order Re Claim Construction (Dkt. No. 255), Arendi U.S.A., Inc.
`v. Microsoft Corp., CA No. 02-343-T, Sept. 27, 2004 (D.R.I.)
`Declaration of Diana Cohen, and Tabs A-F referenced therein,
`prepared for and filed in Ex Parte Reexamination Control No.
`90/011,287
`U.S. Patent No. 5,434,777 to W.W. Luciw (discussed in the
`Declaration of Dr. Clark, Ex. 1010)
`
`- iii -
`
`

`

`Docket No. 032449.0031-US08
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))
`A. REAL PARTIES-IN-INTEREST (37 C.F.R. § 42.8(B)(1))
`The real parties-in-interest for this petition for Inter Partes Review (“IPR”)
`
`are Samsung Electronics Co., Ltd. (“Petitioner”); Samsung Electronics America,
`
`Inc.; and Samsung Telecommunications America, LLC.
`
`B. RELATED MATTERS (37 C.F.R. § 42.8(B)(2))
`U.S. Patent No. 8,306,993 (“the ’993 Patent”) is currently the subject of
`
`
`
`litigation against multiple defendants in the District of Delaware, including the action
`
`captioned Arendi S.A.R.L. v. Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Samsung Telecommunications America, LLC (Civil Action No.
`
`12-1598 (LPS); the “Samsung Litigation”). Other defendants in the Delaware
`
`litigations include LG Electronics, Inc. (C.A. No. 12-1595), Apple Inc. (C.A. No. 12-
`
`1596), Research In Motion Limited (C.A. No. 12-1597), Nokia (C.A. No. 12-1599),
`
`HTC Corp. (C.A. No. 12-1600), Motorola Mobility LLC (C.A. No. 12-1601), and
`
`Sony (C.A. No. 12-1602).
`
`
`
`A petition for inter partes review of the ’993 Patent was filed on December 2,
`
`2013 by petitioners Motorola Mobility LLC, Google, Inc., and Apple Inc. (IPR2014-
`
`00203).
`
`- 1 -
`
`

`

`Docket No. 032449.0031-US08
`
`C. LEAD AND BACKUP COUNSEL (37 C.F.R. § 42.8(B)(3))
`Lead Counsel
`Back-up Counsel
`
`Andrea G. Reister (Reg. No. 36,253)
`
`Gregory S. Discher (Reg. No. 42,488)
`
`areister@cov.com
`
`gdischer@cov.com
`
`Postal and Hand-Delivery Address:
`
`Postal and Hand-Delivery Address:
`
`Covington & Burling LLP
`
`Covington & Burling LLP
`
`1201 Pennsylvania Avenue, NW
`
`1201 Pennsylvania Avenue, NW
`
`Washington, DC 20004
`
`Washington, DC 20004
`
`T: (202) 662-5141; F: (202) 778-5141
`
`T: (202) 662-5485; F: (202) 778-5485
`
`SERVICE INFORMATION (37 C.F.R. § 42.8(B)(4))
`
`D.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`The undersigned authorizes the Office to charge $25,600 ($9,000 request fee;
`
`$14,000 post-institution fee; $200 request fee for one claim in excess of 20; and
`
`$2,400 post-institution fee for six claims in excess of 15) to Deposit Account No. 50-
`
`0740 for the fees set forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes
`
`Review. The undersigned further authorizes payment for any additional fees that
`
`might be due in connection with this Petition to be charged to the above referenced
`
`Deposit Account.
`
`- 2 -
`
`

`

`Docket No. 032449.0031-US08
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’993 Patent is
`
`eligible for inter partes review, and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ’993 Patent claims on the
`
`grounds identified in the present petition.
`
`B. CITATION OF PRIOR ART
`Exhibit
`Reference
`
`Publication
`
`Availability
`
`or Filing
`
`as Prior Art
`
`Date
`
`Ex. 1003
`
`Bonura, T. and J. Miller, “Drop
`
`April 1998
`
`§ 102(a) or
`
`Zones, An Extension to LiveDoc,”
`
`§ 102(b)1
`
`SIGCHI Bulletin, Vol. 30, No. 2,
`
`April 1998, pp. 59-63 (“Drop
`
`Zones”)
`
`
`1 As set forth in Section IV.C. below, Petitioner submits that the claims of the ’993
`
`Patent are entitled to a filing date no earlier than September 3, 1999, and as such,
`
`LiveDoc and Drop Zones would qualify as prior art under § 102(b). If the PTAB
`
`disagrees, then LiveDoc and Drop Zones still qualify as prior art under § 102(a).
`
`- 3 -
`
`

`

`Docket No. 032449.0031-US08
`
`Exhibit
`
`Reference
`
`Publication
`
`Availability
`
`or Filing
`
`as Prior Art
`
`Date
`
`Ex. 1004
`
`Pensoft Perspective Handbook,
`
`January 1993 § 102(b)
`
`November 1992 (“Pensoft”)
`
`Ex. 1005
`
`Bonura, T. and J. Miller, “From
`
`April 1998
`
`§ 102(a) or
`
`Documents to Objects, An Overview
`
`§ 102(b)2
`
`of LiveDoc,” SIGCHI Bulletin, Vol.
`
`30, No. 2, April 1998, pp. 53-58
`
`(“LiveDoc”)
`
`Ex. 1006
`
`U.S. Patent No. 6,112,099 to P.
`
`January 23,
`
`§ 102(e)
`
`Ketola (“the ’099 patent”)
`
`1997
`
`Ex. 1007
`
`U.S. Patent No. 6,005,549 to Forest
`
`July 24,
`
`§ 102(e)
`
`(“the ’549 patent”)
`
`1995
`
`
`C. CLAIMS AND STATUTORY GROUNDS (37 C.F.R. §§ 42.104(B)(1) &
`(B)(2))
`
`
`
`The relief requested by Petitioner is that claims 1-2, 4-10, 12-18 and 20-24
`
`of the ’993 Patent be found unpatentable and cancelled from the ’993 Patent on the
`
`following grounds:
`
`
`2 See footnote 1.
`
`- 4 -
`
`

`

`Docket No. 032449.0031-US08
`
`Ground Claims
`
`Basis
`
`I
`
`1-2, 4, 7-10,
`
`Obvious under 35 U.S.C. § 103(a) in view of LiveDoc,
`
`12, 15-18, 20,
`
`Drop Zones and Pensoft
`
`23-24
`
`II
`
`5, 13, 21
`
`Obvious under 35 U.S.C. § 103(a) in view of LiveDoc,
`
`Drop Zones, Pensoft and the ’099 patent
`
`III
`
`6, 14, 22
`
`Obvious under 35 U.S.C. § 103(a) in view of LiveDoc,
`
`Drop Zones, Pensoft and the ’549 patent
`
`
`
`
`
`D. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3))
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`Should patent owner, in an effort to avoid the prior art, contend that the claims
`
`have a construction different from their broadest reasonable construction, the
`
`appropriate course is for patent owner to seek to amend the claims to expressly
`
`correspond to its contentions in this proceeding. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48764 (August 14, 2012). Of course, any such
`
`amendment would only be permissible if the proposed amended claims comply
`
`with 35 U.S.C. § 112. Petitioner has included below a discussion of the “broadest
`
`reasonable construction consistent with the specification” (referred to herein as
`
`“BRI”) for a number of claim terms of the ’993 Patent.
`
`- 5 -
`
`

`

`Docket No. 032449.0031-US08
`
`
`
`Each of independent claims 1, 9 and 17 recites “analyzing . . . textual
`
`information in a document . . . to identify a portion of the document as first contact
`
`information, . . . , wherein the first contact information is at least one of a name, a
`
`title, an address, a telephone number, and an email address.” Petitioner submits
`
`that the BRI for “first contact information” is “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.”
`
`
`
`In every example in the specification of the ’993 Patent, the user first types
`
`or enters the contact information, which is then analyzed. See, e.g., Ex. 1001, Figs.
`
`1 & 2, Step 4 (“analyze what the user has typed in the document”); 6:24-26 (“Fig.
`
`3 illustrates a starting point in a word processor document, such as a WORD™
`
`document, wherein the user has typed a name 40.”); 6:39-41 (“Fig. 5 illustrates a
`
`starting point in a word processor document, such as a WORD™ document,
`
`wherein the user has typed a name and address of a new contact 46.”); 7:6-8 (“Fig.
`
`3 illustrates a starting point in a word processor document, such as a WORD™
`
`document, wherein the user has typed a name of a contact 40.”); see also id. at
`
`7:27-29; 7:58-61; 8:40-42; and 9:16-18. Declaration of Paul C. Clark, D.Sc.
`
`(hereinafter “Clark Dec.”; Ex. 1010) ¶ 32. There is no suggestion in the
`
`specification or elsewhere in the ’993 Patent or prosecution history that entry of the
`
`contact information into the document can be done other than by the user. Clark
`
`- 6 -
`
`

`

`Docket No. 032449.0031-US08
`
`Dec. ¶ 32. As such a person of ordinary skill in the art would understand the BRI
`
`of “first contact information” as “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.” Clark Dec. ¶ 33.
`
`
`
`Moreover, the proposed BRI that specifies that the text is entered into the
`
`document by the user is consistent with the position taken by the patent owner and
`
`the Rhode Island District Court in construing “first information” in related U.S.
`
`Patent No. 6,323,853 (“the ’853 patent”).3 Ex. 1012, Order Re Claim Construction
`
`(Dkt. No. 255), Arendi U.S.A., Inc. v. Microsoft Corp., CA No. 02-343-T, Sept. 27,
`
`2004 (D.R.I.), aff’d per curiam, Arendi U.S.A., Inc. v. Microsoft Corp., 168 F.
`
`App’x 939 (Fed. Cir. 2006). The court held, in relevant part, that “first
`
`information” “refers to text in the document that is entered by a user.” Id. at 1.
`
`
`
`Each of independent claims 1, 9 and 17 also recites “analyzing . . . textual
`
`information in a document . . . 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, . . .”. The specification of the ’993 Patent does not
`
`contain any description or reference to “without user designation.” Clark Dec. ¶
`
`35. As explained by the applicants in Response D, March 29, 2010 at page 17, the
`
`
`3 The ’853 patent and the ’993 Patent both in their specifications assert a priority
`
`claim to NO 984006 and name Atle Hedloy as the sole inventor.
`
`- 7 -
`
`

`

`Docket No. 032449.0031-US08
`
`“key point” for “without user designation” is that the “analyzing” takes place
`
`“without the user first having to ‘help’ the program specify the ‘contact
`
`information’.” Ex. 1002, p. 854 (emphasis in original). Based on the applicant’s
`
`remarks, one skilled in the art would understand “without user designation” to
`
`mean “without the user having to specify the information.” Clark Dec. ¶ 35. As
`
`such, Petitioner submits that the BRI for “without user designation” is “without the
`
`user having to specify the information.”
`
`
`
`Each of independent claims 1, 9 and 17 also recites “an input device
`
`configured so that a single execute command from the input device is sufficient to
`
`cause the performing.” As explained at 3:59-62 and 4:6-7 of the ’993 Patent,
`
`“single button addressing” is achieved by providing an “input device” or button,
`
`such as a touch screen, touch screen button, keyboard, keyboard button, icon,
`
`menu, menu choice, voice command device, etc. Clark Dec. ¶ 37. Based on this,
`
`one skilled in the art would understand that an “input device” as recited in the
`
`claims of the ’993 Patent is “a device that allows a 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.”
`
`Clark Dec. ¶ 37. As such, Petitioner submits that the BRI for “input device” is “a
`
`device that allows a user to provide input into a computer program, for example, a
`
`- 8 -
`
`

`

`Docket No. 032449.0031-US08
`
`touch screen, touch screen button, keyboard, keyboard button, icon, menu, menu
`
`choice, voice command device, or button.”
`
`
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`E.
`A person of ordinary skill in the art of the ’993 Patent at the time of the
`
`
`
`alleged invention (“POSA”) would typically have had an undergraduate degree in
`
`computer science in addition to two or more years of work experience relating to
`
`the field of computerized information processing or equivalent graduate education
`
`or work experience. Clark Dec. ¶ 4.
`
`F. UNPATENTABILITY OF THE CONSTRUED CLAIMS (37 C.F.R. §
`42.104(B)(4))
`
`
`
`An explanation of how claims 1, 2, 4-10, 12-18 and 20-24 of the ’993 Patent
`
`are unpatentable under the statutory grounds identified above, is provided in
`
`Section V, below.
`
`SUPPORTING EVIDENCE (37 C.F.R. § 42.104(B)(5))
`
`G.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided below in the form of explanatory text and claim charts. An Exhibit List
`
`with the exhibit numbers and a brief description of each exhibit is set forth above.
`
`IV. SUMMARY OF THE ’993 PATENT
`A. OVERVIEW OF THE ’993 PATENT
`
`- 9 -
`
`

`

`Docket No. 032449.0031-US08
`
`
`
`As explained in ¶¶ 26-29 of the Clark Declaration, the ’993 Patent relates to
`
`a method, system, and computer readable medium for name and address handling
`
`and a “button” provided in a computer program or operating system, and coupled
`
`to an information management source, such as a database, for providing address
`
`handling with a document created by the computer program or within the operating
`
`system. Ex. 1001, 1:19-2:49. As shown in FIG. 1, after the user has inserted the
`
`address in the word processor, the user commands the button at step 2 and the
`
`program analyzes what the user has typed in the document at step 4. At step 6, the
`
`program decides what was found in the document and if the program found
`
`nothing in the document or what it found was un-interpretable the program goes to
`
`step 8 and outputs an appropriate message to the user and then quits at step 16. Id.
`
`at 4:55-62.
`
`
`
`As discussed in column 5, lines 38-61 of the ’993 Patent, the flowchart
`
`shown in FIG. 2 is similar to the flowchart in FIG. 1, with some additional steps:
`
`“[a]t step 6, if the program only finds a name or a similar name then the name is
`
`looked up in the database at step 12, then at step 18 if the program found more than
`
`one possible contact/address match, the program displays choices to the user to let
`
`him choose an address at step 20. Then at step 21 the user decides whether to insert
`
`the selected address into the document. If the user does not decide to select the
`
`address into the document the program quits execution at step 16. If the user
`
`- 10 -
`
`

`

`Docket No. 032449.0031-US08
`
`decides to insert the selected address into the document, the program inserts the
`
`address and name into the document at step 22 and then quits at step 16. If the
`
`program finds a name and address in the database at step 6, then at step 14 the
`
`program looks up the name in the database and at step 26 the program determines
`
`what it has found. If the program does not find the name at step 26, at step 27 the
`
`program prompts the user for a decision and review and whether to insert the
`
`contact and address. If the user does not decide to insert the contact address, the
`
`program quits at step 16. If the user decides to insert the contact address, at step 28
`
`the program inserts the address and name which may be possibly corrected by the
`
`user or program in the database and then execution quits at step 16.” ’993 Patent,
`
`5:40-61.
`
`PROSECUTION HISTORY SUMMARY OF THE ’993 PATENT
`
`B.
` A number of responses, amendments, and interview summaries are present
`
`
`
`in the file history of the ’993 Patent. Petitioner summarizes here the ones most
`
`relevant to the grounds of unpatentability set forth in the present Petition.
`
`
`
`In an Office Action dated March 16, 2011, certain pending claims were
`
`rejected under 35 U.S.C. § 102(e) as being anticipated by the Miller ’647 patent,
`
`and the remaining claims were rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over the Miller ’647 patent in view of the Hachamovitch patent (USP
`
`6,377,965), the Giordano patent (USP 6,870,828) or the Spencer patent (USP
`
`- 11 -
`
`

`

`Docket No. 032449.0031-US08
`
`6,349,299). Ex. 1002, pp. 419-31. A personal interview was conducted on April
`
`5, 2011, and Response G was filed on April 22, 2011. A Declaration Under 37
`
`C.F.R. § 1.131 was filed with Response G to antedate the Spencer patent, which
`
`has a § 102(e) date of December 24, 1998. Id. at pp. 360-397.
`
`
`
`In a Final Office Action dated June 3, 2011, the Examiner indicated that the
`
`Declaration Under 37 C.F.R. § 1.131 was sufficient to remove the Spencer patent
`
`as a reference, thereby overcoming the § 103(a) rejection of then-pending claims
`
`137-142 based on the combination of the Hachamovitch and Spencer patents. The
`
`remaining claims were rejected under § 103(a) as being unpatentable over the
`
`Goodwin patent (USP 5,708,804) in view of the Miller ’647 patent. Applicant
`
`subsequently submitted responses dated July 22, August 16, and September 9,
`
`2011, none of which was entered by the Examiner. On November 3, 2011, the
`
`applicant filed a Request for Continued Examination, accompanied by “Third
`
`Supplement to Response H” that amended independent claims 119, 125 and 131
`
`(now issued claims 1, 9 and 17, respectively) to recite, among other things,
`
`“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.” Id. at p. 146.
`
`
`
` In the Third Supplement to Response H, applicant argued that the cited
`
`references “lack any disclosure of a feature allowing the user to make a decision
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`

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`Docket No. 032449.0031-US08
`
`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.”
`
`See id. at pp. 148-49. The applicant also argued that the claims require an
`
`“integrated contact database” that “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 e-mail address.” Id. at p. 149. In addition, the applicant argued that it
`
`was improper to combine the Goodwin and the Miller ’647 patents because the
`
`“hallmark of the Goodwin reference is that the user points out information-of-
`
`interest by entering a search string into a search screen to initiate a search query”
`
`while “the focus of the Miller reference is to provide a user with potential actions
`
`for grammars that are detected within a document.” See id. at pp. 150-155
`
`(emphasis in original).
`
`
`
`In Applicant-Initiated Interview Summaries dated November 29, 2011 and
`
`February 21, 2012, the Examiner indicated that the amendment overcame the
`
`rejection based upon the Goodwin and Miller ’647 patents, but that an updated
`
`search was required. Id. at pp. 116-121. A Notice of Allowance then issued on
`
`August 6, 2012, allowing claims 119, 121-125, 127-131 and 133-151. The Notice
`
`of Allowance did not include a statement of reasons for allowance. The three
`
`- 13 -
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`

`

`Docket No. 032449.0031-US08
`
`“Terminal Disclaimer to Obviate a Double Patenting Rejection Over a ‘Prior’
`
`Patent” documents filed on September 24, 2012 to disclaim over prior U.S. Patent
`
`Nos. 7,917,843; 7,272,604; and 6,323,853, were approved. The ’993 Patent
`
`issued on November 6, 2012.
`
`C. THE CLAIMS OF THE ’993 PATENT ARE ENTITLED TO A FILING DATE
`NO EARLIER THAN SEPTEMBER 3, 1999
`
`
`
`The application giving rise to the ’993 Patent (Appl. No. 11/745,186) was
`
`filed on May 7, 2007, claiming priority to Appl. No. 09/390,303, filed on
`
`September 3, 1999. During prosecution of the ’993 Patent, applicant submitted on
`
`March 30, 2010 a Petition to Accept Unintentionally Delayed Claim for Priority
`
`Under 37 C.F.R. § 1.55(c) in order to claim priority to Norwegian patent
`
`application NO 984066 filed on September 3, 1998. This petition was dismissed in
`
`a decision dated June 1, 2010 for failure to include the Norwegian application data
`
`in a declaration or Application Data Sheet. A Renewed Petition Under 37 C.F.R.
`
`§ 1.55(c) was filed on July 16, 2010, and granted in a decision dated July 29, 2010
`
`(“Decision”). In granting the renewed petition, the Decision made clear that
`
`granting the petition to accept the delayed benefit claim to the Norwegian
`
`application, and issuing a corrected filing receipt that includes the Norwegian
`
`application priority claim, “should not be construed as meaning that this application
`
`is entitled to the benefit of the prior-filed application.” Ex. 1002, p. 625. For at
`
`least the reasons set forth below, the Norwegian application does not provide 35
`
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`

`Docket No. 032449.0031-US08
`
`U.S.C. § 112 support for at least claims 1, 2, 4-10, 12-18 and 20-24 of the ’993
`
`Patent, and, as such, these claims are entitled to a filing date no earlier than
`
`September 3, 1999.
`
`
`
`Independent claims 1, 9 and 17 each recite, among other things, “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.”
`
`Applicant argued during prosecution of the ’993 Patent that “analyzing” to identify
`
`contact information is a process distinct from searching for the identified contact
`
`information in a database. See, e.g., Ex. 1002, pp. 607-609 (Response E filed
`
`August 10, 2010). “Analyzing” is discussed in the ’993 Patent at, for example,
`
`column 4, line 55 to column 5, line 2, with reference to the flow chart in FIG. 1 of
`
`the ’993 Patent. As evident from the certified translation of Norwegian patent
`
`application NO 984066 (Ex. 1009), such an “analyzing” function is nowhere
`
`described, and NO 984066 does not include the subject matter of 4:55-5:2 of the
`
`’993 Patent, or FIG. 1. Clark Dec. ¶ 39.
`
`
`
`NO 984066 is, at most, directed to “searching” in a database. As explained
`
`on page 6 of Ex. 1009, the user enters the addressee’s name or part of a name, and
`
`then taps the function button or clicks on the icon to perform a search in a database
`
`or file in order to find the part of the name or address that was already entered. Ex.
`
`1009 does not describe, much less enable in accordance with 35 U.S.C. § 112, any
`
`- 15 -
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`

`

`Docket No. 032449.0031-US08
`
`functionality to carry out “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.” Clark Dec. ¶ 40. Moreover, NO 984066
`
`does not disclose performing any analysis “without user designation” as required by
`
`the claims of the ‘993 Patent. Clark Dec. ¶ 41.
`
`
`
`For at least this reason, Petitioner respectfully submits that NO 984066 does
`
`not provide § 112 support for independent claims 1, 9 and 17 of the ’993 Patent, or
`
`claims 2, 4-8, 10, 12-16, 18 and 20-24 depending therefrom. Therefore, none of
`
`claims 1, 2, 4-10, 12-18 and 20-24 of the ’993 Patent is entitled to the September 3,
`
`1998 filing date of NO 984066. Accordingly, Petitioner submits that the earliest
`
`filing date to which claims 1, 2, 4-10, 12-18 and 20-24 of the ’993 Patent may be
`
`entitled is September 3, 1999.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONER WILL PREVAIL WITH RESPECT TO AT
`LEAST ONE CLAIM OF THE ’993 PATENT
`
`The subject matter of claims 1, 2, 4-10, 12-18 and 20-24 of the ’993 Patent
`
`is disclosed and taught in the prior art as explained below in §§ V.B to V.D. As set
`
`forth below, the references and combinations utilized in Grounds I-III render
`
`obvious each of claims 1, 2, 4-10, 12-18 and 20-24 pursuant to 35 U.S.C. §103(a),
`
`and provide a reasonable likelihood that the Petitioner will prevail on at least one
`
`claim. 35 U.S.C. § 314(a).
`
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`

`

`Docket No. 032449.0031-US08
`
`PRIOR ART
`
`A.
`Paragraphs 13-25 of the Clark Declaration describe the state of the art
`
`regarding personal computing and user applications in the 1998 time frame. As
`
`that discussion and the prior art below make clear, by September 1998, the
`
`purported innovations of the ’993 Patent were well-known.
`From Documents to Objects - An Overview of
`1.
`LiveDoc (Ex. 1005) and Drop Zones - An Extension to
`LiveDoc (Ex. 1003)
`
`Both LiveDoc and Drop Zones have a publication date of April 1998. As
`
`noted above, Petitioner submits that the claims of the ’993 Patent challenged in this
`
`proceeding are entitled to a filing date no earlier than September 3, 1999, thereby
`
`qualifying both LiveDoc and Drop Zones as prior art under 35 U.S.C. § 102(b).
`
`Should the PTAB accord the challenged claims the earlier claimed priority date of
`
`September 3, 1998, both LiveDoc and Drop Zones qualify as prior art under 35
`
`U.S.C. § 102(a).
`
`Although LiveDoc and Drop Zones are listed among the many items
`
`submitted to the Office in the Information Disclosure Statements filed during
`
`original examination of the ’993 Patent, they were not applied in a rejection, and
`
`there was no discussion of their disclosure. Both articles were authored by
`
`Thomas Bonura and James R. Miller, and appear consecutively in the April 1998
`
`SIGCHI Bulletin.
`
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`

`

`Docket No. 032449.0031-US08
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`
`
`In LiveDoc, a structure detection process runs in the background on the
`
`document’s visible text that has been entered by the user. Ex. 1005, p. 55. The
`
`results of LiveDoc’s analysis are automatically presented to the user by visually
`
`highlighting the discovered structures, which need not be searched for and
`
`highlighted manually. Id. Clark Dec. ¶ 42. LiveDoc discloses, among other
`
`things, that a menu selection may be made by the user directly selecting an item in
`
`a displayed menu (without requiring the user to confirm by clicking, e.g., an “OK”
`
`button to execute the menu item). Ex. 1005, p. 55 and Figure 2.
`
`As its title states, Drop Zones is an extension to LiveDoc, and Drop Zones
`
`expressly cites to LiveDoc in this regard. See Ex. 1003, p. 63, endnote 6. Drop
`
`Zones provides users with an interface for managing LiveDoc objects in the
`
`context of a set of typical user tasks. A Drop Zone assistant can be thought of as
`
`an interpreter that takes features identified by LiveDoc, interprets their meaning
`
`with respect to its context, and recommends appropriate actions. As shown in
`
`Figures 1 and 2, the window labeled “Activities” is a Drop Zone interface to a set
`
`of interpreters or “assistants.” The assistants make their capabilities visible when
`
`the user selects various structures identified by LiveDoc and drags them to the
`
`assistants. Id. at p. 60. Clark Dec. ¶ 45.
`
`Figure 2 of Drop Zones (shown below) illustrates a document in which
`
`LiveDoc has identified the structure “Tom Bonura” with its “personalName”
`
`- 18 -
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`

`

`Docket No. 032449.0031-US08
`
`recognizer. Ex. 1003, p. 60. By selecting the identified “Tom Bonura” structure, it
`
`is sent to the Drop Zone control system for action by the Drop Zones Assistants.
`
`For example, if the user drops the name on the E-mail Assistant, a set of four
`
`possible actions are presented, the first two of which operate on people’s names
`
`and the last two of which operate on people’s e-mail addresses, even though the
`
`object is a personal name. Id. at pp. 60-61. Clark Dec. ¶ 46.
`
`
`
`As explained on page 61, the Drop Zones representation system provides
`
`two ways through which an Assistant can gain access to information. Mappings
`
`can be built between the objects inside the Drop Zones representations system
`
`(e.g., the PERSON object has attributes s