Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`Paper 10
`Entered: August 20, 2014
`
`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.,
`Patent Owner.
`____________
`
`Case IPR2014-00452
`Patent 6,323,853 B1
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: August 20, 2014
`
`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.,
`Patent Owner.
`____________
`
`Case IPR2014-00452
`Patent 6,323,853 B1
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-00452
`Patent 6,323,853 B1
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`
`I. INTRODUCTION
`
`Google Inc. and Motorola Mobility LLC (“Petitioners”) filed a
`
`Petition requesting inter partes review of claims 1–79 of U.S. Patent No.
`
`6,323,853 B1 (Ex. 1001, “the ’853 patent”). Paper 1 (“Pet.”). Arendi
`
`S.A.R.L. (“Patent Owner”) timely filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
`
`provides that an inter partes review may not be instituted “unless . . . there is
`
`a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.”
`
`We determine that the information presented in the Petition and
`
`supporting evidence shows that there is a reasonable likelihood that
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`Petitioners would prevail with respect to the challenged claims.
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`Accordingly, we institute an inter partes review of claims 1–79 of the ’853
`
`patent.
`
`A.
`
`Related Proceedings
`
`Petitioners indicate that the ’853 patent has been asserted in several
`
`district court cases, including Arendi S.A.R.L. v. Motorola Mobility LLC,
`
`Case No. 1-12-cv-01601, and Arendi S.A.R.L. v. Google Inc., Case No. 1-13-
`
`cv-00919, both filed November 29, 2012. Pet. 1; see Paper 6, 2.
`
`B. The ’853 Patent (Ex. 1001)
`
`The ’853 patent discloses a method, system, and computer readable
`
`medium that provide a function of searching a database or file for
`
`information corresponding to what a user types or has partially typed in a
`
`program, such as a word processor. Ex. 1001, Abstract. If the database or
`
`file includes the corresponding information searched for, the information is
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`displayed and possibly inserted into the word processor. Id. The ’853 patent
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`discusses an example of this function in connection with Figures 3 and 4.
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`Id. at col. 5, l. 60–col. 6, l. 2. Figure 3 is reproduced below.
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`
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`Figure 3 shows a word processor document in which a user has typed
`
`name 40. Id. at col. 5, ll. 60–62. When the user hits button 42, the program
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`according to the ’853 patent retrieves name 40 from the document and then
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`searches for name 40 in a database. Id. at col. 5, ll. 62–65. As a result of
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`this search, the program retrieves address 44, which is associated with name
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`40, and inserts address 44 in the document, as shown in Figure 4, reproduced
`
`below. See id. at col. 5, ll. 65–67.
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`Figure 4 shows the word processor document of Figure 3 with address
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`44 inserted. See id. The ’853 patent discusses its process in greater detail in
`
`connection with Figure 1a, reproduced below. Id. at col. 4, l. 22–col. 5,
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`
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`l. 57.
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`Figure 1a shows a flow chart illustrating a method according to the
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`’853 patent. Id. at col. 2, ll. 38–40. At step 2, the user initiates the
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`analyzing and searching processes by commanding a button, such as button
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`42 shown in Figures 3 and 4. See id. at col. 4, ll. 23–25; col. 5, ll. 62–65;
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`col. 6, ll. 1–2. At step 4, “the program analyzes what the user has typed in
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`the document.” Id. at col. 4, ll. 24–25.
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`At step 6, the program determines what it found in the document.
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`Id. at col. 4, ll. 25–26. If the program found nothing or uninterpretable
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`information in the document, the program proceeds to step 8, in which the
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`program provides an appropriate message for the user. Id. at col. 4, ll. 26–
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`29. If the program found “an e-mail address mailing list/category name
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`telephone number or other information, at step 10 an appropriate action is
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`performed by the program.” Id. at col. 4, ll. 38–41.
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`If the program found only a name, initials, or the like, “the program
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`looks up the name in the database at step 12” and determines at step 18 what
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`it found. Id. at col. 4, ll. 39–44. If the program found that the name matches
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`only one contact associated with only one address in the database, the
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`program inserts the address and name in the document at step 22. Id. at
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`col. 4, ll. 50–53. If the program found multiple possible addresses
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`associated with the name in the database, the program presents the user with
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`menu choices that allow the user to select the correct name and address for
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`insertion in the document at step 22. Id. at col. 4, ll. 44–49.
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`At the end of the written description, the ’853 patent discusses various
`
`ways in which its disclosure is not limited to the examples discussed in
`
`connection with Figures 1–16. For example, the ’853 patent states:
`
`Although the present invention is defined in terms of a
`program retrieving information from a document before
`searching a database, the user may select the information
`in the document to be searched by the program in the
`database (e.g., by highlighting, selecting, italicizing,
`underlining, etc.), as will be readily apparent to those
`skilled in the art.
`
`Id. at col. 10, ll. 5–9.
`
`C.
`
`Illustrative Claim
`
`Petitioners challenge claims 1–79 of the ’853 patent. Claim 1 is the
`
`only independent claim and reads as follows:
`
`1.
`
`A computerized method for information handling within a
`document created using an application program, the document
`including first information provided therein, the method
`comprising:
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`providing a record retrieval program;
`
`providing an input device configured to enter an execute
`command which initiates a record retrieval from an
`information source using the record retrieval program;
`
`upon a single entry of the execute command by means of the
`input device:
`
`analyzing the document to determine if the first information is
`contained therein, and
`
`if the first information is contained in the document, searching,
`using the record retrieval program, the information source
`for second information associated with the first information;
`and
`
`when the information source includes second information
`associated with the first information, performing at least one
`of,
`
`(a) displaying the second information,
`
`(b) inserting the second information in the document, and
`
`(c) completing the first information in the document based
`on the second information.
`
`Ex. 1001, col. 10, l. 28–col. 11, l. 7.
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`D.
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`The Prior Art
`
`Petitioners rely on the following prior art references:
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`U.S. Patent No. 5,923,848, issued July 13, 1999 (“Goodhand”) (Ex. 1003).
`
`Gordon Padwick et al.,1 USING MICROSOFT OUTLOOK 97 (Que®
`Corporation2 19973) (“Padwick”) (Ex. 1004).
`
`U.S. Patent No. 6,026,410, issued Feb. 15, 2000 (“Allen”) (Ex. 1005).
`
`
`1 Our citations to Padwick refer to the page numbers inserted at the bottom
`center of each page. The Petition cites to the page numbers that appear in
`either the upper left or upper right portion of most pages of Padwick. We do
`not cite to these page numbers because some pages do not include these page
`numbers.
`2 The Petition identifies “Microsoft Press” as the source of Padwick. Pet. iii.
`Padwick, however, identifies “Que® Corporation” as the publisher.
`Ex. 1004, 5. Petitioners do not identify any evidence that Microsoft Press is
`the source of Padwick. Indeed, Mr. Dennis R. Allison, Petitioners’
`declarant, testifies that Padwick was published by Que® Corporation.
`Ex. 1002 ¶ 198.
`3 Padwick identifies 1997 as its copyright date. Ex. 1004, 5. The Petition
`identifies 1996 as the date of Padwick. Pet iii. Mr. Allison testifies that
`“Padwick has a copyright date of 1997,” but that he “can also see from the
`bibliographic information that Padwick has a Library of Congress control
`number having the first two digits ‘96’, which indicates that it was deposited
`with the Library of Congress in 1996” and that “[e]xperts in this field would
`reasonably rely on this data to establish a publication date.” Ex. 1002 ¶ 199.
`For purposes of this decision, we need not decide whether the evidence
`regarding the Library of Congress control number establishes a publication
`date earlier than the 1997 copyright date explicitly listed in Padwick.
`
`
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`E.
`
`The Asserted Grounds of Unpatentability
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`Petitioners challenge the patentability of claims 1–79 of the ’853
`
`patent based on the following grounds:4
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`Reference[s]
`
`Basis
`
`Claims Challenged
`
`Goodhand
`
`§ 103(a)
`
`Goodhand and
`Padwick
`
`§ 103(a)
`
`Allen
`
`§ 102(e)
`
`1–9, 11, 13–29, 38–
`45, 57–64, 66, 68–
`75, 77, and 79
`6, 10, 12, 21, 27,
`30–37, 42, 46–56,
`61, 65, 67, 72, 76,
`and 78
`1, 2, 7–11, 13–17,
`22, 23, 28–30, 35–
`38, 43–46, 57, 62–
`66, 68, 73–77, and
`79
`
`
`
`A.
`
`Claim Interpretation
`
`II. ANALYSIS
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable interpretation 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). Under the broadest reasonable interpretation standard, claim terms
`
`are given their ordinary and customary meaning as would be understood by
`
`one of ordinary skill in the art in the context of the disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, if
`
`an inventor acts as his or her own lexicographer, the definition must be set
`
`
`4 Petitioners support their challenge with a Declaration executed by Dennis
`R. Allison on February 14, 2014 (“Allison Declaration”) (Ex. 1002).
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`forth in the specification with reasonable clarity, deliberateness, and
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`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
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`1249 (Fed. Cir. 1998).
`
`1.
`
`“input device” (Claims 1, 9, 11, 23, 24–29, and 38–46)
`
`Petitioners argue that “[i]n the ’853 patent the term ‘input device’
`
`includes a GUI element on a screen, and is thus not limited to only hardware
`
`devices,” citing Mr. Allison’s testimony in support of this contention. Pet.
`
`13 (citing Ex. 1002 ¶ 78). Mr. Allison testifies that “[a]lthough the term
`
`‘input device’ sounds like a piece of hardware, the ’853 patent makes clear
`
`that the input device can be a graphical element on a screen, such as a button
`
`or menu that the user can interact with via a mouse, touchpad, etc.” Ex.
`
`1002 ¶ 78 (citing Ex. 1001, col. 9, l. 65–col. 10, l. 4). In the Preliminary
`
`Response, Patent Owner does not suggest an alternative construction.
`
`The evidence cited by Petitioners provides support for Petitioners’
`
`claim construction argument. Additionally, upon reviewing the specification
`
`of the ’853 patent, we do not find any disclosure that provides an explicit
`
`definition of “input device” contradicting Petitioners’ proposed claim
`
`construction. For purposes of this decision, we adopt Petitioners’ proposed
`
`claim construction of “input device” as including a GUI element on a screen,
`
`in addition to hardware.
`
`2.
`
`“A computer system configured to perform the steps recited in
`one of claims 1-14” (Claim 15) and “A storage medium storing
`a program for performing the steps recited in one of claims 1–
`14” (Claim 16)
`
`Petitioners argue that the broadest reading for “a computer system
`
`configured to perform the steps recited in one of claims 1–14” and the
`
`broadest reading for “a storage medium storing a program for performing the
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`steps recited in one of claims 1–14” results from selecting claim 1 as the
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`“one of claims 1–14” recited. Pet. 13. Accordingly, Petitioners argue, the
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`broadest reasonable interpretation of claim 15 is a system configured to
`
`perform the steps recited in claim 1. Id. Likewise, Petitioners argue that the
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`broadest reasonable interpretation of claim 16 is a storage medium storing a
`
`program for performing the steps recited in claim 1. Id. In the Preliminary
`
`Response, Patent Owner does not suggest an alternative construction for
`
`either claim 15 or claim 16. Petitioners’ argument is logical because claims
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`2–14 depend from and add limitations to claim 1, making claim 1 broader
`
`than claims 2–14. For purposes of this decision, we adopt Petitioners’
`
`proposed construction of claims 15 and 16.
`
`3.
`
`“first information includes an identification of a list of
`addressees” (Claims 6, 12, and 47–56)
`
`Petitioners note that the written description of the ’853 patent uses the
`
`phrase “mailing list,” but does not include the phrase “list of addressees” or
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`the phrase “identification of a list.” Pet. 13–14 (citing Ex. 1001, col. 4,
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`ll. 14–15, 38–42; Ex. 1002 ¶ 81). In concert with this, Petitioners argue that
`
`the broadest reasonable interpretation of the claim recitation “[the] first
`
`information includes an identification of a list of addressees” is “[the] first
`
`information is sufficient to identify multiple addressees.” Id. at 14 (citing
`
`Ex. 1002 ¶ 83). In the Preliminary Response, Patent Owner does not suggest
`
`an alternative construction.
`
`Upon reviewing the specification of the ’853 patent, we do not find an
`
`explicit definition for the claim phrase “first information includes
`
`identification of a list of addressees.” Therefore, we refer to its ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech. Inc., 504
`
`
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`F.3d at 1257. For purposes of this decision, we adopt Petitioners’ proposed
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`claim construction because it is consistent with its ordinary and customary
`
`meaning as would be understood by one with ordinary skill in the art in light
`
`of the specification of the ’853 patent.
`
`4.
`
`“application program” (Claims 1, 8, 10, 17–22, and 30–37)
`
`Petitioners do not propose a construction for the claim language
`
`“application program.” Patent owner argues that this claim language should
`
`be interpreted as meaning “an independently executable computer program
`
`designed to assist in the performance of a specific task, such as word
`
`processing or spreadsheet processing.” Prelim. Resp. 9. Patent Owner notes
`
`that claim 1 uses the term “application program” when referring to “a
`
`document created using an application program.” Id. at 8. In concert with
`
`this, Patent Owner asserts that the ’853 patent discusses examples of
`
`working with documents created using Microsoft Word and Excel. Id. at 8–
`
`9 (citing Ex. 1001, col. 5, l. 58–col. 8, l. 37; col. 8, l. 39–col. 9, l. 12). Based
`
`on these assertions, Patent Owner argues that its proposed construction of
`
`“application program” is “in accordance with its ordinary and customary
`
`meaning and the clear usage of the term within the intrinsic evidence.”
`
`Id. at 9.
`
`The evidence cited by Patent Owner provides support for Patent
`
`Owner’s claim construction argument. Additionally, upon reviewing the
`
`specification of the ’853 patent, we do not find any disclosure that provides
`
`an explicit definition of “application program” contradicting Patent Owner’s
`
`proposed claim construction. For purposes of this decision, we adopt Patent
`
`Owner’s proposed construction of “application program” as consistent with
`
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`its ordinary and customary meaning as would be understood by one with
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`ordinary skill in the art in light of the specification of the ’853 patent.
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`5.
`
`“analyzing the document to determine if the first information is
`contained therein” (Claim 1)
`
`Petitioners do not propose a construction for the claim language
`
`“analyzing the document to determine if the first information is contained
`
`therein.” Patent Owner argues that this claim language requires an action
`
`separate from the action recited in the claim language “if the first
`
`information is contained in the document, searching, using the record
`
`retrieval program, the information source for second information associated
`
`with the first information.” Prelim. Resp. 9–10. In concert with this, Patent
`
`Owner argues that the analyzing action must determine that “the first
`
`information is contained in the document” as a pre-condition to the recited
`
`searching process. Id. at 10.
`
`On the record before us, we agree. The plain language of the claim
`
`sets out “analyzing” and “searching” as separate actions, conditioning the
`
`execution of the searching action on a determination that the document
`
`contains the first information. The written description discloses a system
`
`consistent with the plain meaning of the claim language (see, e.g., Ex. 1001,
`
`col. 4, l. 22–col. 5, l. 7), and there is no cited evidence that the proper
`
`construction of the claim differs from its plain meaning.
`
`Patent Owner also argues that the claim language “analyzing the
`
`document to determine if the first information is contained therein” “requires
`
`a computer process that identifies the first information in the document,
`
`without recourse to user selection of the text to be analyzed.” Prelim. Resp.
`
`13. Patent Owner points out that the ’853 patent discloses a program that
`
`analyzes document text to identify contact information without requiring a
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`user to first select part of the document for the analysis. Id. at 10.
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`Additionally, Patent Owner cites the ’853 patent’s prosecution history,
`
`during which the following occurred: (1) the claim language in question
`
`was added by amendment; and (2) it was argued that “the present invention
`
`does not require the user to select a text string to be processed since it
`
`functions automatically upon a single click of an input device, such as a
`
`button, menu item, etc.” Ex. 2004, 2–3; Prelim. Resp. 10–13. In concert
`
`with this, Patent Owner points out that its proposed interpretation is
`
`consistent with the way that the U.S. District Court for the District of Rhode
`
`Island, in Arendi U.S.A., Inc. v. Microsoft Corporation, Case No. 02-343-T,
`
`construed the claim in light of the prosecution history of the ’853 patent.
`
`Prelim. Resp. 13. Patent Owner argues that “[i]t is proper to consider
`
`prosecution history in determining the meaning of a claim that is being
`
`evaluated in a contested proceeding in the Patent and Trademark Office.”
`
`Id. at 14 (citing Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir.
`
`2014)).
`
`Patent Owner does not persuade us that the broadest reasonable
`
`interpretation of the claim limitation “analyzing the document to determine
`
`if the first information is contained therein” requires identification of the
`
`first information without recourse to user selection of the text to be analyzed.
`
`The plain meaning of the claim language conveys nothing about whether a
`
`user may or must select text to be subject to the analyzing process.
`
`Regarding Patent Owner’s observation that the ’853 patent discloses a
`
`system that does not require the user to select text, the ’853 patent also
`
`discloses that “[a]lthough the present invention is defined in terms of a
`
`program retrieving information from a document before searching a
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`database, the user may select the information in the document to be searched
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`by the program in the database.” Ex. 1001, col. 10, ll. 5–8. We also are
`
`unpersuaded by Patent Owner’s arguments that its proposed construction is
`
`consistent with that of the District of Rhode Island and that we should
`
`consider prosecution history when construing the claim. Patent Owner does
`
`not explain adequately why consideration of the prosecution history leads to
`
`its proposed construction under the broadest reasonable interpretation
`
`standard, which we apply in this proceeding, as opposed to the claim
`
`construction standard applied in district court. See Ex. 2007, 1.
`
`B.
`
`Obviousness of Claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75, 77,
`and 79 Based on Goodhand
`
`1. Goodhand (Ex. 1003)
`
`Goodhand discloses a system and method that handles e-mail.
`
`Ex. 1003, Abstract. Goodhand discloses that “the preferred application
`
`program is divided into several modules, including a calendar manager, a
`
`task list manager, a contact manager, a message manager (e-mail), and a
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`notes manager.” Id. at col. 8, ll. 46–49. Goodhand notes that either a stand-
`
`alone or a distributed computing environment could be used to implement its
`
`system and method. Id. at col. 8, ll. 55–58. Goodhand further notes that
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`“the primary interaction between the preferred program and the operating
`
`system involves message related tasks,” and that “[t]he preferred operating
`
`system incorporates the Messaging Application Programming Interface
`
`(MAPI).” Id. at col. 12, ll. 38–43. Goodhand discloses that MAPI provides
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`a number of messaging functions, including access to address books. Id. at
`
`col. 12, ll. 40–49.
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`When a user is composing a new e-mail message, Goodhand’s system
`
`helps the user by resolving automatically recipient display names. Id. at
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`col. 4, ll. 49–51. Goodhand explains that “‘resolving’ the names means
`
`attempting to match the display names in the address field to specific user
`
`aliases that are included in a centralized address book or directory, which is
`
`typically stored on a remote server, such as a remote memory storage
`
`device 33.” Id. at col. 17, ll. 25–29. Goodhand discusses an example of this
`
`process in connection with Figures 6a–6c. Id. at col. 17, ll. 6–9. Figure 6a
`
`is reproduced below.
`
`
`
`Figure 6a shows an address field of an e-mail form in use to compose
`
`a message. Id. at col. 17, ll. 12–13. At the point shown in Figure 6a, a user
`
`has entered into address field 600 three display names, each providing
`
`identifying information about an intended recipient. Id. at col. 17, ll. 15–17.
`
`Each display name may include all or part of a first name, last name, and/or
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`e-mail alias of an intended recipient. Id. at col. 17–19. To resolve the
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`display names “billb,” “sm henry,” and “patterson,” the system searches
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`address book fields in an attempt to match each display name with the first
`
`name, last name, or alias of a registered user. Id. at col. 17, ll. 29–36. As
`
`part of this process, the system may call MAPI functions, including a
`
`MAPIResolveName function, to match informal names with actual e-mail
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`aliases. Id. at col. 19, ll. 44–48.
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`Goodhand discusses a subsequent stage of the process in connection
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`with Figure 6b, reproduced below. Id. at col. 17, ll. 38–52.
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`
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`Figure 6b “illustrates the results of the effort to resolve the names.” Id. at
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`col. 17, ll. 38–39. If searching the address books identifies an unambiguous
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`match for the display name of an intended recipient, the system inserts the
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`full name of the intended recipient with a regular underline beneath it in the
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`address field. See id. at col. 17, ll. 45–49; col. 19, ll. 26–52. In Figure 6b,
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`because the system unambiguously matched the display names “sm henry”
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`and “patterson” to “Henry Smith” and “Roger Patterson,” the system
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`displays “Henry Smith” and “Roger Patterson” with a regular underline
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`beneath each. Id. at col. 17, ll. 45–49.
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`Figure 6b further illustrates that squiggly line 605 appears underneath
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`the display name “billb,” indicating that the system could not find a unique
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`match for that display name. Id. at col. 17, ll. 49–52; also col. 19, ll. 52–53.
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`Goodhand discloses that its system includes features that help a user address
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`such an unresolved display name. Id. at col. 17, l. 53–col. 18, l. 13.
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`2. Discussion
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`Petitioners contend that each limitation of claims 1–9, 11, 13–29, 38–
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`45, 57–64, 66, 68–75, 77, and 79 is taught expressly by, is inherent in, or is
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`obvious over Goodhand. Pet. 14–37. Petitioners argue that the claim
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`recitations of “record retrieval program” and “initiates a record retrieval
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`from an information source using the record retrieval program” are disclosed
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`by or obvious over Goodhand. Id. at 16–20.
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`17
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`IPR2014-00452
`Patent 6,323,853 B1
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`Petitioners argue that “to the extent that the Patent Owner argues that
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`Goodhand does not teach a separate ‘record retrieval program’, it would
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`have been obvious to provide one.” Id. at 17. Petitioners cite a number of
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`Goodhand’s disclosures as teaching or rendering obvious a separate record
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`retrieval program. For example, Petitioners cite Goodhand’s disclosure that
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`its system includes a contact manager as a separate module from the
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`message manager, Goodhand’s disclosure of a centralized address book
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`stored on a remote server, and Goodhand’s disclosure of using a MAPI to
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`search the address book. Id. at 17–20.
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`Petitioners also contend that the claim limitation “analyzing the
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`document to determine if the first information is contained therein” is
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`disclosed inherently by or is obvious in view of Goodhand. Id. at 20–21.
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`Petitioners note that Goodhand discloses entry of partial names or e-mail
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`addresses, which Goodhand refers to as “display names,” into an address
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`field in an e-mail document. Id. at 20. Petitioners contend that these display
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`names correspond to the claimed “first information.” Id. Petitioners note
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`that Goodhand discloses checking each display name against a nickname list
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`and using each display name separately to perform searches. Id. at 20–21.
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`Given these cited disclosures in Goodhand, Petitioners argue that
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`Goodhand’s system must analyze the text in the address field to determine if
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`it contains anything to process and, if so, must be identifying correctly each
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`display name to use as a search term. Id. at 21. Accordingly, Petitioners
`
`argue that the claim limitation “analyzing the document to determine if the
`
`first information is contained therein” is “inherent in Goodhand’s
`
`disclosure” or “[a]t a minimum . . . would have been trivially obvious . . .
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`because performing that analysis would allow the system to use the
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`
`
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`18
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`Patent 6,323,853 B1
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`identified display names in the searches expressly taught by Goodhand.” Id.
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`at 21.
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`Patent Owner argues that Petitioners do not demonstrate that
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`Goodhand teaches “analyzing the document to determine if the first
`
`information is contained therein,” as recited in independent claim 1.
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`Prelim. Resp. 23–27. Patent Owner bases this contention on its argument
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`that the claim limitation excludes any system that requires a user to select
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`text in the document as a condition for processing the text. Id. at 23–24. In
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`combination with this claim construction argument, Patent Owner argues
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`that entering text into the address field of an e-mail constitutes selection of
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`the text. Id. at 25–26. Thus, Patent Owner argues that because Goodhand
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`discloses that a user enters text in the address field before the system
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`analyzes the text, Goodhand requires “a user selection of text as a condition
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`to the processing of that text.” Id. at 26.
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`As discussed above in Section II.A.1, Patent Owner’s arguments have
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`not persuaded us that the broadest reasonable interpretation of the claim
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`limitation “analyzing the document to determine if the first information is
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`contained therein” precludes a method that requires user selection of text
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`prior to processing the text. Thus, Patent Owner’s argument that
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`Goodhand’s method requires a user to select text as a condition to
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`processing the text is inapposite.
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`On the record before us, based on our review of the Petition and
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`supporting evidence, we are persuaded by Petitioners’ arguments regarding
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`each of the limitations of claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75,
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`77, and 79 that Petitioners have demonstrated a reasonable likelihood of
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`prevailing on its assertion that these claims are unpatentable over Goodhand.
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`
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`19
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`C. Obviousness of Claims 6, 10, 12, 21, 27, 30–37, 42, 46–56, 61, 65, 67,
`72, 76, and 78 Based on Goodhand and Padwick
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`1. Padwick (Ex. 1004)
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`Padwick discusses Microsoft Outlook 1997 and how to use it. See,
`
`e.g., Ex. 1004, 1, 35. Padwick discloses that Outlook allows a user to,
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`among other things, send and receive information by e-mail. Id. at 36.
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`Padwick discloses that “Microsoft Outlook can be configured to use
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`Microsoft Word as its e-mail editor.” Id. at 199. Additionally, Padwick
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`discloses that Outlook includes a Personal Address Book, which can include
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`“personal distribution lists for use with messages frequently addressed to
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`standard groups of people.” Id. at 146–147. Padwick explains that “[y]ou
`
`may want to create, for example, a distribution list with the names of
`
`everyone in your department or one for preferred vendors.” Id. at 147.
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`2. Discussion
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`Each of the claims challenged in the ground based on Goodhand and
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`Padwick depends from one or more of the claims challenged in the ground
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`based on Goodhand. See Ex. 1001, cols. 11–16. The ground based on
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`Goodhand and Padwick refers to the arguments and evidence presented in
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`the ground based on Goodhand to address the limitations of the claims
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`challenged in the ground based on Goodhand (see Pet. 38, 40, 43), as well as
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`certain limitations of claims 21, 27, 42, 46, 61, 65, 67, 72, 76, and 78 (see id.
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`at 40–41, 43–44). The ground based on Goodhand and Padwick relies on
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`Padwick, in combination with Goodhand, as rendering obvious certain
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`limitations recited in claims 6, 10, 12, 30–37, and 47–56. See id. at 40–44.
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`For example, the ground based on Goodhand and Padwick relies on
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`Padwick to teach “using one of a word processing program and a
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`spreadsheet program to enter first information into a respective one of a
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`20
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`IPR2014-00452
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`word processing document and a spreadsheet document,” as recited in
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`claims 10 and 30–37. Id. at 40–41, 43. Petitioners explain that Goodhand
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`suggests using the Microsoft Outlook program for entering e-mail messages.
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`Id. at 40. In combination with this, Petitioners note that Padwick describes
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`the Microsoft Outlook program and teaches configuring Microsoft Outlook
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`to use a word processing program as its e-mail editor. Id. at 39–40.
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`Petitioners argue that Padwick teaches that doing so provides certain
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`advantages, specifically it provides “more tools and options from which to
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`choose when creating messages.” Id. For these and other reasons,
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`Petitioners contend that it would have been obvious to combine with the
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`teachings of Goodhand and Padwick. Id. at 38–41.
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`The ground based on Goodhand and Padwick also relies on Padwick
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`to teach the recitation in claim 6 that “said first information includes an
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`identification of a list of addressees, further comprising: addressing said
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`document to all of said addressees based on the second information
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`associated with said identification of said list of addressees.” Id. at 41–42.
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`Similarly, the ground based on Goodhand and Padwick relies on Padwick to
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`teach the recitation in claims 12 and 47–56 that “said first information
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`includes an identification of a list of addressees, further comprising: creating
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`copies of said document, each addressed to one of addressees in said list
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`identified by said first information, based on said second information
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`associated with said identification of said list of addressees.” Id. at 41–43.
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`In addressing claim 6, Petitioners note that Padwick discloses creating
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`distribution lists that have nicknames and allow sending e-mail to a number
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`of people at once. Id. at 41. In view of this, Petitioners argue, it would have
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`been obvious to use the method of
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