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`Paper No. ________
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE INC. and MOTOROLA MOBILITY LLC
`Petitioners
`v.
`
`ARENDI S.A.R.L.
`alleged Patent Owner
`
`
`IPR2014-00452
`
`
`Patent 6,323,853
`
`
`____________________________________________________________
`
`
`PETITIONERS' REPLY TO PATENT OWNER'S RESPONSE
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`UPDATED EXHIBIT LIST .................................................................................. II
`
`I. GOODHAND RENDERS THE GROUND 1 CLAIMS OBVIOUS EVEN
`UNDER ARENDI'S NARROWED CONSTRUCTION OF CLAIM 1 ...... 1
`
`A. Goodhand renders obvious the claimed "analyzing" step ..................... 1
`
`B.
`
`The claims do not require distinguishing between contact information
`and other text ......................................................................................... 7
`
`C.
`
`Goodhand does not require "selection" of first information ................. 9
`
`D.
`
`Claim 1 does not contain a negative limitation that excludes the entry
`of characters into a "To:" field. ........................................................... 10
`
`E.
`
`Arendi's alleged disclaimer is not applicable ...................................... 12
`
`II. THE RECORD INDICATES THE OBVIOUSNESS OF CLAIMS 1-79 .....
` .......................................................................................................................14
`
`
`
`
`
`
`
`i
`
`
`
`
`
`Exhibit No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`UPDATED EXHIBIT LIST
`
`Exhibit Description
`
`U.S. Pat. No. 6,323,853 ("the '853 patent")
`
`Declaration of Dennis Allison
`
`U.S. Pat. No. 5,923,848 ("Goodhand")
`
`Padwick, et al., "Using Microsoft Outlook 97" (Microsoft Press)
`
`1996 (Chapters 1, 8-9, 12-13, 19-20, 22, 24 only)
`
`U.S. Pat. No. 6,026,410 ("Allen")
`
`U.S. Pat. No. 5,644,735 ("Luciw")
`
`Bonura and Miller, "Drop Zones An Extension to LiveDocs",
`
`SIGCHI Bulletin Volume 30, Number 2 April 1998.
`
`Curriculum Vitae of Dennis Allison
`
`U.S. Pat. No. 5,754,306 ("Taylor")
`
`U.S. Patent No. 5,790,532 ("Sharma")
`
`U.S. Pat. No. 5,859,636 ("Pandit")
`
`Magnanelli, et al., "ACADEMIA: An Agent-Maintained
`
`Database based on Information Extraction from Web
`
`Documents", 14th European Meeting on Cybernetics and Systems
`
`Research on April 15, 1998.
`
`1013
`
`Structure of the LC Control Number,
`
`http://www.loc.gov/marc/lccn_structure.html
`
`1014
`
`Preliminary Infringement Analysis for Defendant Google, U.S.
`
`Pat. No. 7,496,854 (highlighting added)
`
`1015
`
`Declaration of Robert Kent in support of Motion Pro Hac Vice
`
`
`
`ii
`
`
`
`1016
`
`Deposition Transcript of Dr. John Levy, January 8, 2015 ("Levy
`
`Dep.")
`
`
`
`iii
`
`
`
`Arendi makes several different arguments that center on the same basic critique
`
`of Goodhand: that users are "required" to type "contact information" into the "To:"
`
`line of an email form. (Patent Owner Response ("POR"), p. 22). Arendi calls this
`
`a "selection" of contact information, leading Arendi to the conclusion that
`
`Goodhand must not be performing the "analyzing" step of claim 1. (POR, p. 1).
`
`Arendi further argues that claim 1 excludes any user action prior to the execute
`
`command. (POR, p. 17).
`
`Arendi's contentions are mistaken. The Goodhand prior art renders the claim
`
`language obvious—even under Arendi's proposed claim constructions. Those
`
`constructions, in turn, are based on a misapplication of law. Arendi offers no other
`
`basis for patentability.
`
`I.
`
`GOODHAND RENDERS THE GROUND 1 CLAIMS OBVIOUS
`EVEN UNDER ARENDI'S NARROWED CONSTRUCTION OF
`CLAIM 1
`
`Even under Arendi's claim construction, Goodhand renders the claim language
`
`obvious. Goodhand obviously performs an analysis to determine if "first
`
`information" is present, and therefore does not require "selection". This was
`
`proven by Arendi's own expert.
`
`A. Goodhand renders obvious the claimed "analyzing" step
`
`Arendi's expert witness, Dr. Levy, reports that he conducted an experiment with
`
`Microsoft Outlook (Ex. 2008, ¶¶27-28). According to Dr. Levy, the functionality
`
`
`
`1
`
`
`
`of Outlook 2010 represents the teachings of Goodhand. (Ex. 2008, ¶28). To the
`
`extent this is actually true, Dr. Levy's experiment demonstrates how Goodhand
`
`meets the "analyzing" limitation.
`
`Dr. Levy began his experiment by typing his shopping list into the "To:" line of
`
`Microsoft Outlook. (Ex. 1016, "Levy Dep.", 105:8-106:5). Dr. Levy testifies that
`
`he entered text, as follows: "cheesecake; apple sauce; baloney". Note that this
`
`alone refutes Arendi's contention that the user is "require[d]" to enter "contact
`
`information" into the "To:" line. (POR, p. 22). As Dr. Levy has shown, the user is
`
`free to enter arbitrary text strings into the "To:" line.
`
`Dr. Levy next testifies that "[i]n response to entry of these items, Outlook
`
`attempts to 'resolve' these entries by seeking corresponding entries in the Outlook
`
`contact database." (Ex. 2008, ¶28). Here, Dr. Levy makes an error. He did not
`
`initially type "entries" (plural). Rather, he typed a single string of characters. That
`
`string, with spacing and punctuation written in brackets, reads:
`
`"cheesecake{semicolon}{space}apple{space}sauce{semicolon}{space}baloney".
`
`Dr. Levy, a human being, is able to see that there are four words typed in the
`
`"To:" line ("apple", "baloney", "cheesecake" and "sauce") that represent only three
`
`semantic concepts. His brain instinctively groups "apple" and "sauce" (keeping the
`
`space between them), but discards all other spaces and both semicolons.
`
`While this analysis is second nature to Dr. Levy, it needs to be coded into a
`
`
`
`2
`
`
`
`software system. And it was. As Dr. Levy demonstrates, the system does not use
`
`his entire text string
`
`as a search
`
`parameter, but rather
`
`correctly identifies
`
`only a portion of the
`
`string ("cheesecake") to search. This is shown in Dr. Levy's screen shot (partially
`
`reproduced at right). (Ex. 2008, ¶28). If Arendi were correct that no "analysis" is
`
`being performed, then Outlook would have displayed the message "Microsoft
`
`Outlook does not recognize 'cheesecake; apple sauce; baloney'". Instead, Outlook
`
`correctly identified the substring "cheesecake" as "first information", discarding
`
`the trailing semicolon and space, as well as the remainder of the string. (Id.). This
`
`is directly contrary to Arendi's assertion that "the Goodhand system…assumes that
`
`all text entered into the address field of the e-mail template is contact information".
`
`(POR, p. 22). At least the semicolons and certain spaces are not used for a search.
`
`Likewise, Goodhand's actual disclosure teaches distinguishing between portions of
`
`text entered into the "To:" line (e.g. Ex. 1003, Figs. 6a-6c and 17:12-37)
`
`(identifying "billb", "sm henry" and "Patterson" from the text in the "To:" line).
`
`In his deposition, Dr. Levy testified that Microsoft Outlook knew which
`
`concepts to search "[b]ecause in Outlook a semicolon is a known delimiter
`
`
`
`3
`
`
`
`between addresses in that field." (Levy Dep., 108:11-15)(see also Goodhand at
`
`Ex. 1003, 17:19-20). This, notably, falls within the "analysis" process disclosed by
`
`the '853 patent itself. When asked how the '853 patent analyzed documents, Dr.
`
`Levy pointed to col. 4, line 35, et seq. of sister patent 7,921,356. (Levy Dep.,
`
`45:15-46:2). The equivalent portion of the specification in the '853 patent1 is
`
`found at 4:29-37. There, the '853 patent provides several examples of how a
`
`program might analyze text. The very first example uses "paragraph/line
`
`separations/ formatting, etc". (Ex. 1001, 4:31-32)(Emph. add.). This is exactly
`
`what Goodhand does when it uses the semicolon "delimiter". (Ex. 1003, 17:19-
`
`20)(Ex. 1002, ¶¶43-44). Furthermore, Dr. Levy testified that the analysis methods
`
`listed in column four were not exclusive, and could include the use of punctuation:
`
`"Q And can that analysis be performed for instance by looking at
`
`paragraph or line separations and formatting?
`
` A For example, that would be one way.
`
`….
`
` Q Could it be performed in part by looking at punctuation?
`
` A Yes."
`
`(Levy Dep., 96:19-97:7). Dr. Levy further admitted that if the system
`
`
`1 Dr. Levy testified that the specifications of the '853 and '356 patents were
`
`substantially identical except for the cross references to other applications. (Levy
`
`Dep. 33:10-34:16).
`
`
`
`4
`
`
`
`determines that no text was entered into the "To:" field, no searching
`
`of the database would be performed. Instead, an error message should
`
`be displayed:
`
`"Q· ·When -- what happens in Outlook when you click in the "To"
`
`field, but don't enter anything, leave it blank, and then click on send?
`
` A· ·I would expect an error message that says ·there's no valid
`
`addressees.
`
` Q· ·But the -- Outlook doesn't search the database for null text; does
`
`it?
`
` A· ·I don't think it would be meaningful to search for null text.
`
` Q· ·So instead, it determines that the field is empty and doesn't
`
`execute that search process?
`
` A· ·If it was going to do a search process, it certainly doesn't do it
`
`based on a null input field."
`
`(Levy Dep. 109:22-110:5). Mr. Allison agreed: "[Goodhand] must first check
`
`to determine whether there is any text at all in the relevant address field." (Ex.
`
`1002, ¶122). This is exactly like Fig. 1 of the '853 patent. Figure 1 shows
`
`(between steps 6 and 8) that when the '853 patent system analyzes the text and
`
`finds "nothing or not interpretable", the system provides an error message. Thus,
`
`Goodhand's check to determine whether any text is present also meets the
`
`"analyzing" step of claim 1.
`
`Dr. Levy further admitted that when a user enters a fully-qualified email
`
`address (e.g. john@levy.com), the system treats it differently than other text:
`
`
`
`5
`
`
`
`"Q· ·And what happens in Outlook when you enter a proper e-
`
`mail address?
`
` A· ·Pretty much nothing until you send it.· It would point -- it
`
`sends.
`
` Q· ·If you type in the 'To' box a proper e-mail address, will it search
`
`the contact information database before sending it?
`
` A· ·That's a good question.· I actually haven't considered that.· I
`
`think it's likely that Outlook checks its local database of contacts to
`
`see if it knows this user, but it's not necessary."
`
`(Levy Dep. 109:4-14)(Emph. add.). This is startling testimony, given Dr.
`
`Levy's prior declaration testimony that that:
`
`"the Goodhand system subjects any and all text that is typed into
`
`the address field of the e-mail template to the same process,
`
`namely 'attempting to match the display names in the address field to
`
`specific user aliases that are included in a centralized address book or
`
`directory'." (Ex. 2008, ¶27)(Emph. add.)(see also Arendi's identical
`
`argument at POR, p. 22).
`
`In fact, Goodhand does recognize proper email addresses as such. (Ex. 1003,
`
`20:12-15). Goodhand states:
`
`"When a user enters an Internet e-mail address in the form of
`
`xxxxx@yyyyy.zzz, the user need not create a new name in his or her
`
`directory before the name can be resolved. The preferred e-mail
`
`system simply identifies such an address as an Internet address and
`
`resolves it without further user intervention."
`
`
`
`6
`
`
`
`(Ex. 1003, 20:12-17)(Emph. added). This disclosure (as well as Dr. Levy's
`
`more recent deposition testimony) shows that Goodhand treats email addresses in
`
`the "To:" line differently than other text. While names are searched in the database
`
`to find display names, email addresses would have received no further processing,
`
`or would have undergone a simple (but "not necessary") check to determine
`
`whether the email address was known. In either case, an email address is
`
`recognized as text of a certain type, and treated differently than other kinds of text.
`
`(Ex. 1003, 20:12-15). This meets even Arendi's interpretation of claim 1.
`
`B.
`
`The claims do not require distinguishing between contact
`information and other text
`
`Arendi's interpretation of the "analyzing" limitation is, moreover, incorrect.
`
`Arendi attempts to muddle the "analyzing" issue by arguing that "the Goodhand
`
`system cannot distinguish between contact information and other text". (POR, p.
`
`22). This is a red herring. Claim 1 does not require "distinguishing between contact
`
`information and other text", but rather "analyzing the document to determine if the
`
`first information is contained therein". And in patent law, "the name of the game is
`
`the claim." In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).
`
`To begin with, inserting the word "contact" would limit "information" to a
`
`particular type. In contrast, the words "first" and "second" only distinguish
`
`different instances of information. See 3M Innovative Props. Co. v. Avery
`
`Dennison Corp., 350 F.3d 1365, 1371 (2003). Even Arendi acknowledges that:
`
`
`
`7
`
`
`
`"contact information is an example of 'first information' required by claim
`
`1." (POR, p. 6)(Emph. add.)(see also Levy Dep. 99:20-22).
`
`Because the word "first" does not limit the word "information" by type, the
`
`"analyzing" step—which Arendi drafted—requires only a determination that some
`
`piece of information is present in the document. Goodhand renders this obvious.
`
`(Ex. 1002, ¶¶43-44, 122).
`
`Arendi argues that "first information" can be isolated from a larger text, which
`
`supposedly requires a determination of the type of first information. (POR, pp. 6-
`
`7). Arendi's argument is incorrect. First, the very examples on which Arendi relies
`
`in the '853 patent show only documents with a single piece of information
`
`(according to Arendi's understanding of that concept). (e.g. Ex. 1001, Fig. 3). This
`
`single piece of information is the entire document, and the single piece of
`
`information is identified, in its entirety, as first information. This leaves the
`
`system no opportunity to distinguish the first information from other information.
`
`For example, Fig. 3 (cited at POR, p. 8) shows a document containing only "Alte
`
`Hedley". (Ex. 1001, 6:35-38). Figure 14 is similar. The '853 patent teaches
`
`identifying the only text in the document as first information. (e.g. Ex. 1001, 6:40-
`
`43 and 8:40-45). If Arendi were correct that claim 1 requires distinguishing
`
`between "first information" and other text in the document, claim 1 would exclude
`
`the embodiments of Figs. 3 and 14.
`
`
`
`8
`
`
`
`Second, even if claim 1 requires separating "first information" from other
`
`information, there are many ways to accomplish this. Identifying the "type" of
`
`information is not required. For example, first information could be distinguished
`
`by its location, by its formatting, by its punctuation, etc. This is in fact what
`
`occurs in both the '853 patent (see 4:29-31) and Goodhand. The '853 patent uses
`
`things like "paragraph / line separations / formatting" to identify first information.
`
`(Id.). As explained in §A, above, Goodhand analyzes the text in the "To:" field
`
`and subdivides it based on punctuation and the identification of email addresses.
`
`Thus, Goodhand meets Arendi's claim construction concerning the "analyzing"
`
`limitation, which itself is incorrect.
`
`C. Goodhand does not require "selection" of first information
`
`Arendi argues that "[t]he Goodhand system depends on the user to select
`
`contact information by placing it into the 'To:' field of an e-mail template". (POR,
`
`p. 1). This is sufficient to remove Goodhand from the scope of the claims, argues
`
`Arendi, because the claims have a negative limitation prohibiting any pre-selection
`
`of information. The negative limitation supposedly arises from (1) the phrase
`
`"single entry of an execute command" (as well as its surrounding context) (see §D,
`
`below), and (2) an alleged disclaimer made during the prosecution history of the
`
`application leading to the '853 patent (see §E, below).
`
`Arendi's arguments are both irrelevant and incorrect. They are irrelevant
`
`
`
`9
`
`
`
`because Goodhand does not require selection of contact information. Arendi
`
`argues that Goodhand takes "any and all text" in the "To:" field and performs a
`
`search on that text. (POR, p. 22). This, however, would not qualify as "selection"
`
`to a person of ordinary skill in the art, any more than placing a name after "Mr."
`
`(as suggested in the '853 patent at 4:34) selects the name.
`
`Second, as discussed in §A, above, Goodhand does not rely on the user to
`
`choose search terms. Instead, Goodhand analyzes the text in the "To:" field before
`
`searching, in order to find portions of the text on which a search can be conducted.
`
`These portions are not identified by anything that could be called user "selection".
`
`In fact, Goodhand requires even less user "selection" than embodiments of Figs. 3
`
`and 14 the '853 patent, each of which shows a document with only one term in it.
`
`Furthermore, Dr. Levy admits that Goodhand would identify an empty "To:" field,
`
`and would separately identify fully-qualified email addresses. (see § A, above).
`
`Arendi does not allege that the user signals to the system that "To:" field is empty,
`
`or that a fully-qualified email address is present. The system must determine these
`
`things for itself. Thus, Arendi's argument that Goodhand requires selection is
`
`inconsistent with the evidence.
`
`D. Claim 1 does not contain a negative limitation that excludes the
`entry of characters into a "To:" field.
`
`Arendi's argument is also incorrect as a matter of claim construction. Claim 1
`
`does not contain a negative limitation excluding the entry of characters into a "To:"
`
`
`
`10
`
`
`
`field (what Arendi calls "selection"). Arendi points to the claim language "upon a
`
`single entry of the execute command by means of the input device" (POR, p.
`
`1)(Emph. in original), arguing that:
`
`"the limitation 'upon a single entry' therefore makes a single entry of
`
`the execute command sufficient to trigger the analyzing…Since the
`
`single entry of the execute command is sufficient to trigger the
`
`analyzing, these limitations rule out action by the user….such as
`
`selection of text in the document to be analyzed, as a condition for the
`
`analyzing to take place." (POR, p. 17).
`
`Note that Arendi's argument is not just an attempt to create a negative limitation
`
`excluding "selection", but rather an attempt to exclude any "action by the user".
`
`(Id.). According to Arendi, because entry of the execute command is "sufficient"
`
`for analysis, no other actions can be necessary ("condition[s]"). (Id.).
`
`Arendi overreaches. First, the claim does not say "upon entry of a single
`
`execute command", but rather "upon a single entry of an execute command".
`
`"Single" modifies "entry", not "execute command". The claim thus excludes the
`
`"analyzing" happening only after two (or more) entries of the execute command.
`
`The claim—which uses a "comprising" transition—does not place restrictions on
`
`actions before entry of the execute command. And indeed, such a restriction
`
`would be contrary to the '853 patent itself. As Dr. Levy has admitted (Levy Dep.
`
`75:21-79:18), even in the '853 patent there are a large number of user actions that
`
`
`
`11
`
`
`
`must occur prior to the "execute command" if one wants to trigger the "analyzing"
`
`step. Such actions include (in reverse-chronological order) typing something in a
`
`document, opening a document, loading the Arendi extension to an application,
`
`launching the application, launching the operating system, turning on the
`
`computer, etc. (Id.). Without any of these actions the "execute command" of the
`
`'853 patent would not trigger the analysis. Thus, "limitations [that] rule out action
`
`by the user…as a condition for the analyzing to take place" (POR, p. 17) would be
`
`inconsistent with the specification.
`
`E. Arendi's alleged disclaimer is not applicable
`
`Arendi also alleges that the Board must apply a disclaimer of claim scope.
`
`Arendi allegedly made this disclaimer during the examination of the application
`
`leading to the '853 patent. (POR, p. 43). Arendi's argument is not relevant,
`
`because disclaimer should not be applied in inter partes review.
`
`The proper claim construction standard is the "broadest reasonable construction
`
`in light of the specification of the patent in which it appears". 37 C.F.R.
`
`§42.100(b). This standard has been reaffirmed by the PTAB. See SAP America,
`
`Inc. v. Versata Dev. Corp., Case CBM2012-00001 (PTAB June 11, 2013). By the
`
`literal terms of this standard, the specification (including the claims) takes primary
`
`importance in claim construction, not the prosecution history.
`
`In particular, the doctrine of prosecution history disclaimer should not play a
`
`
`
`12
`
`
`
`role in inter partes review for two additional reasons. First, a disclaimer represents
`
`a mistake, where claims are literally broader than the actual scope of the patent.
`
`Where the patent owner has the ability to amend claims, as here, this mistake can
`
`be corrected. Patent owners should not be encouraged to avoid amendment (and
`
`the consequences of 35 U.S.C. § 252) by making arguments without amendment.
`
`See Marine Polymer Tech., Inc. v. HemCon, Inc., 672 F.3d 1350, 1364 (Fed. Cir.
`
`2012)(en banc)("If, in reexamination, an examiner determines that particular
`
`claims are invalid and need amendment to be allowable, one would expect an
`
`examiner to require amendment rather than accept argument alone.")
`
` Second, "disclaimer" is an equitable doctrine invokable only against the patent
`
`owner, not by the patent owner. This was a basic premise of the Tempo Lighting
`
`case cited by Arendi. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978
`
`(Fed. Cir. 2014). Arendi cited Temp Lighting for the proposition that the PTAB
`
`can apply "disclaimer" where the claim language is required by the Office. (POR,
`
`p. 43). But Tempo Lighting does not actually support Arendi's position. In Tempo
`
`Lighting, the Examiner objected to an existing claim term as a "negative limitation"
`
`and required the applicant to rewrite it in positive terms. See id. In that
`
`circumstance, the court found that the Board could properly interpret the re-written
`
`limitation to have its original scope. See id. In this case, however, the Examiner
`
`rejected the claims over prior art because the claims lacked any distinguishing
`
`
`
`13
`
`
`
`limitation. (Ex. 2001, pp. 2-6). Arendi suggested a possible distinction, and the
`
`Examiner, without agreeing, said only "Applicant's representative may submit an
`
`After-Final Amendment that amends the independent claim to include this
`
`difference." (Ex. 2002). The Applicants then added the "analyzing" limitation.
`
`(Ex. 2004). In contrast to Tempo Lighting, the Examiner did not object to an
`
`existing limitation as improper. Moreover, the Applicants were free to choose the
`
`form of the amendment or to continue without amendment. There was no element
`
`of coercion by the Office, and the amendment eventually chosen (the "analyzing"
`
`limitation) was found to distinguish over Tso "since it functions automatically
`
`upon a single click of an input device", not because pre-selection was excluded.
`
`(Ex. 2005, p. 2). It is thus appropriate to focus on the actual language of the claims
`
`in this proceeding. In sum, Arendi's claim constructions are improper for this
`
`proceeding. Even if it applied, they would not distinguish over Goodhand.
`
`II. THE RECORD INDICATES THE OBVIOUSNESS OF CLAIMS 1-79
`
`Arendi makes no arguments others than the ones addressed herein. In
`
`particular, Arendi does not address any of the dependent claims. Arendi presents
`
`no secondary indicia of non-obviousness. Dr. Levy even admitted that nothing in
`
`the '853 patent would have surprised a person of ordinary skill in the art in 1998:
`
`"Q. Do you recall seeing anything in the patents that would have been
`
`surprising to a person of ordinary skill in the art in late 1998?
`
`A No, I don't.
`
`
`
`14
`
`
`
`Q There wasn't anything or you don't recall either way?
`
`A I don't recall seeing anything that I thought what surprise a
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`person of ordinary skill in the art in 1998."
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`(Levy Dep., 140:9-17)(Emph add.). This is in full accord with Mr. Allison's
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`testimony. (Ex. 1002, ¶50). Furthermore, Arendi appears to agree with Mr.
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`Allison (Ex. 1002, ¶31) that the '853 patent is—in Arendi's words—a "computer-
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`implemented processes for automating a user’s interaction between an
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`application program…and a record retrieval application.")(POR, p. 2)(Emph. add.).
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`Arendi's expert, Dr. Levy, also agreed with Mr. Allison (Ex. 1002, ¶¶48-60) that
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`the steps in the claims were within ordinary skill in the relevant timeframe. (Levy
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`Dep. 48:7-54:3; 94:24-99:10). In fact, Dr. Levy could not recall any particular
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`disagreement with Mr. Allison's discussion of the state of the art in 1998. (Levy
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`Dep. 62:20-63:8).
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`The claims are thus obvious, and should be canceled. See KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 417 (2007); In re Venner, 262 F.2d 91, 95, (CCPA
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`1958); MPEP § 2144.04 and 2114.IV ("automation of the known function on a
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`general purpose computer is [obvious if ] it is nothing more than the predictable
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`use of prior art elements according to their established functions.").
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`Date: 2015-02-03
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`/Matthew A. Smith/
`Reg. No. 49,003
`Counsel for Petitioners
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`15
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioners' Reply
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`to Patent Owner Response together with Exhibit 1016 (Levy Depo Transcript), was
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`served on February 3, 2015 by electronic mail (by prior agreement with the
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`Patent Owner) to the attorneys of record at:
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`SUNSTEIN KANN MURPHY & TIMBERS LLP
`125 SUMMER STREET
`BOSTON MA 02110-1618
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`by transmitting the documents to the attorneys' email addresses at:
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`RAsher@sunsteinlaw.com, BSunstein@sunsteinlaw.com,
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`Jstickevers@sunsteinlaw.com, and Dwu@sunsteinlaw.com.
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`16
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