Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 11
` Entered: August 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., MOTOROLA MOBILITY LLC, and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-004521
`Patent 6,323,853 B1
`____________
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2014-01518 has been joined with this proceeding.
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`IPR2014-00452
`Patent 6,323,853 B1
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`I. INTRODUCTION
`Petitioners Google Inc. (“Google”) and Motorola Mobility LLC
`(“Motorola”) filed a Petition requesting inter partes review of claims 1–79
`of U.S. Patent No. 6,323,853 B1 (“the ’853 patent”). IPR2014-00452,
`Paper 1 (“Pet.”). On August 20, 2014, we instituted an inter partes review
`of claims 1–79 based on certain grounds presented in the Petition. IPR2014-
`00452, Paper 10 (“Dec. to Inst.”). On November 3, 2014, Patent Owner,
`Arendi S.A.R.L., filed its Patent Owner Response. IPR2014-00452,
`Paper 17 (“PO Resp.”). On February 3, 2015, Google and Motorola filed a
`Reply. IPR2014-00452, Paper 23 (“Pet. Reply”).
`Samsung Electronics Co., Ltd. (“Samsung”) filed a second Petition for
`inter partes review of claims 1–79 of the ’853 patent. IPR2014-01518,
`Paper 1. The second Petition challenged claims 1–79 on the same grounds
`as those for which we instituted trial in IPR2014-00452. Concurrent with
`the second Petition, Samsung filed a motion to join IPR2014-01518 with
`IPR2014-00452. IPR2014-01518, Paper 3. On March 18, 2015, we
`instituted an inter partes review with respect to all challenges raised in the
`second Petition, joined IPR2014-01518 with IPR2014-00452, and
`terminated IPR2014-01518. IPR2014-01518, Paper 10; IPR2014-00452,
`Paper 26.2
`An oral hearing was held on April 21, 2015. A transcript of the oral
`hearing is included in the record. Paper 30 (“Tr.”).
`
`
`2 From this point forward, all references to “Petitioners” refer to Google,
`Motorola, and Samsung. Additionally, from this point forward, all
`references to papers and exhibits refer to the documents filed in IPR2014-
`00452.
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`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioners have shown, by a
`preponderance of the evidence, that claims 1–79 of the ’853 patent are
`unpatentable.
`A.
`Related Proceedings
`The ’853 patent has been asserted in several district court cases in the
`U.S. District Court for the District of Delaware, including Arendi S.A.R.L. v.
`Motorola Mobility LLC, Case No. 1-12-cv-01601; Arendi S.A.R.L. v. Google
`Inc., Case No. 1-13-cv-00919; and Arendi S.A.R.L. v. Samsung Electronics
`Co. Ltd., Case No. 1-12-cv-01598. Pet. 1; see Paper 6, 2–3. Additionally,
`other patents related to the ’853 patent have been the subject of petitions for
`inter partes review in other cases, including IPR2014-00203, IPR2014-
`00206, IPR2014-00207, IPR2014-00208, IPR2014-00214, and IPR2014-
`00450. Paper 6, 3.
`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 text 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 displayed and possibly inserted
`into the word processor. Id. The ’853 patent discusses an example of this
`function in connection with Figures 3 and 4. Id. at col. 5, l. 60–col. 6, l. 2.
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`Figure 3 is reproduced below.
`
`
`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
`according to the ’853 patent retrieves name 40 from the document and then
`searches for name 40 in a database. Id. at col. 5, ll. 62–65. As a result of
`this search, the program retrieves address 44, which is associated with name
`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
`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,
`l. 57.
`
`
`Figure 1a shows a flow chart illustrating a method according to the
`’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
`42 shown in Figures 3 and 4. See id. at col. 4, ll. 23–25; col. 5, ll. 62–65;
`col. 6, ll. 1–2. At step 4, “the program analyzes what the user has typed in
`the document.” Id. at col. 4, ll. 24–25.
`At step 6, the program determines what it found in the document.
`Id. at col. 4, ll. 25–26. If the program found nothing or uninterpretable
`information in the document, the program proceeds to step 8, in which the
`program provides an appropriate message for the user. Id. at col. 4, ll. 26–
`29. If the program found “an e-mail address mailing list/category name
`telephone number or other information, at step 10 an appropriate action is
`performed by the program.” Id. at col. 4, ll. 38–41.
`If the program found only a name, initials, or the like, “the program
`looks up the name in the database at step 12,” and determines at step 18
`what it found. Id. at col. 4, ll. 39–44. If the program found that the name
`matches only one contact associated with only one address in the database,
`the program inserts the address and name in the document at step 22. Id. at
`col. 4, ll. 50–53. If the program found multiple possible addresses
`associated with the name in the database, the program presents the user with
`menu choices that allow the user to select the correct name and address for
`insertion in the document at step 22. Id. at col. 4, ll. 44–49.
`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,
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`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:
`
`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
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`(c) completing the first information in the document based
`on the second information.
`
`Ex. 1001, col. 10, ll. 28–52.
`
`D.
`
`The Prior Art
`The pending grounds of unpatentability in this inter partes review are
`based on the following prior art:
`U.S. Patent No. 5,923,848, issued July 13, 1999 (“Goodhand”) (Ex. 1003).
`Gordon Padwick et al.,3 USING MICROSOFT OUTLOOK 97 (Que®
`Corporation4 19975) (“Padwick”) (Ex. 1004).
`
`
`3 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.
`4 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.
`5 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, as Patent Owner does not
`dispute, 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.
`
`Instituted Grounds of Unpatentability
`We instituted an inter partes review involving the following grounds
`of unpatentability:
`Reference[s]
`Goodhand
`
`Basis
`§ 103(a)
`
`Claims Challenged
`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
`Petitioners support their challenges with a Declaration executed by
`Dennis R. Allison, on February 20, 2014 (“Allison Declaration”) (Ex. 1002).
`Patent Owner relies on a Declaration executed by John V. Levy, Ph.D., on
`October 21, 2014 (“Levy Declaration”) (Ex. 2008).
`II. ANALYSIS
`
`Goodhand and
`Padwick
`
`§ 103(a)
`
`A. Claim Interpretation
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, No. 2014-
`1301, 2015 WL 4097949, *7–*8 (Fed. Cir. July 8, 2015) (In considering the
`broadest reasonable interpretation standard for inter partes review
`proceedings, the United States Court of Appeals for the Federal Circuit
`determined that “Congress implicitly approved the broadest reasonable
`interpretation standard in enacting the AIA,” and “the standard was properly
`adopted by PTO regulation.”),6 reh’g en banc denied, _F.3d_, 2015 WL
`
`
`6 Patent Owner objects in its Response to our application of the broadest
`reasonable construction standard in inter partes review proceedings. PO
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`4100060 (Fed. Cir. July 8, 2015). Under that standard, the claim language
`should be read in light of the specification as it would be interpreted by one
`of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
`(Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
`the term would have to a person of ordinary skill in the art in question.”)
`(citation and internal quotation marks omitted).
`Petitioners and Patent Owner proffer constructions for a number of
`terms. Pet. 11–14; PO Resp. 9–19, 36–45; Pet. Reply 7–14. In this
`decision, we construe only those claim terms in controversy, and we do so
`only to the extent necessary to resolve the controversy. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`1.
`“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” (claim 1)
`Patent Owner argues that this claim language requires a number of
`things. Patent Owner argues that in claim 1 the recited “analyzing” is a
`separate process from and a pre-condition to the “searching” process
`subsequently recited in the claim language—namely, “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.” PO Resp. 12–13. Patent Owner also contends that claim 1
`“require[s] distinguishing the presence of first information, from other text
`
`Resp. 45–53. Cuozzo, which was decided after Patent Owner filed its
`Response, resolves this argument by affirming our use of the broadest
`reasonable construction standard in inter partes review proceedings
`involving unexpired patents.
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`in the document, and this process is triggered by a single entry of the execute
`command.” Id. at 11. Patent Owner further argues that, “[b]ecause the
`broadest reasonable construction cannot be inconsistent with the explicit
`basis for allowance of the application leading to issuance of the ‘853 Patent,
`claim 1 rules out user selection of contact information.” Id. at 35.
`Petitioners contest Patent Owner’s claim construction arguments.
`Petitioners argue that the disputed claim language does not require
`distinguishing contact information from other text in the document.7
`Pet. Reply 7–9. Additionally, Petitioners argue that Patent Owner
`misconstrues the claim language related to the recited “single entry of the
`execute command.” Id. at 10–12. Furthermore, Petitioners dispute Patent
`Owner’s claim construction arguments based on the prosecution history of
`the ’853 patent. Id. at 12–14.
`a. Patent Owner’s argument that the recited “analyzing” is
`separate from and a precondition to the “searching” recited
`in claim 1
`Patent Owner argues that claim 1 requires “(first) ‘analyzing the
`document to determine if the first information is contained therein” and
`(second) ‘if the first information is contained in the document,’ then
`
`
`7 Some statements in Patent Owner’s Response tend to imply that Patent
`Owner believes claim 1 requires distinguishing “contact information” from
`other information. See, e.g., PO Resp. 6 (“The logical flow diagram of Fig.
`1 therefore shows that a computer process corresponding to ‘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’ in claim
`1 of the ‘853 Patent distinguishes contact information from other text in the
`document.”). At the oral hearing, Patent Owner confirmed that its argument
`in this regard is that the claims require distinguishing “first information”
`from other information, not that the claims require distinguishing “contact
`information” from other information. Tr. 37, l. 6–38, l. 1.
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`‘searching, using the record retrieval program, the information source for
`second information associated with the first information.’” PO Resp. 12–13.
`Patent Owner further argues that:
`The analyzing process precedes the searching process,
`which is a separate process. A determination by the
`analyzing process that “the first information is contained
`in the document” is a pre-condition for the searching
`process. The Board adopted this construction in its
`Institution Decision (p. 13).
`
`Id. at 13.
`Consistent with Patent Owner’s arguments, our Institution Decision
`expressed agreement with Patent Owner regarding this aspect of the
`meaning of claim 1, stating that:
`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).
`Dec. to Inst. 13. The record developed at trial provides no reason to modify
`this interpretation.
`b. Patent Owner’s argument that the claim language requires
`distinguishing first information from other text in the
`document
`In support of its assertion that claim 1 requires distinguishing first
`information from other text in the document, Patent Owner argues the
`following: 1) the “analyzing” step determines if the document contains the
`“first information”; and 2) the claims do not preclude the document from
`having other text from which the first information would have to be
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`distinguished. PO Resp. 13–14. Patent Owner also argues that this
`interpretation is “consistent with the logical flow shown in Fig. 1 and as the
`logical flow is described in the ‘853 Patent.” Id. at 14; see id.at 14–16.
`Petitioners disagree. Pet. Reply 7–8. Petitioners argue that,
`“[b]ecause the word ‘first’ does not limit the word ‘information’ by type, the
`‘analyzing’ step—which [Patent Owner] drafted—requires only a
`determination that some piece of information is present in the document.”
`Id. at 8. Petitioners argue that the Specification of the ’853 patent
`contradicts Patent Owner’s argument that the claim requires distinguishing
`the first information from other information. Id. Specifically, Petitioners
`note that Figures 3 and 14 and the corresponding disclosure in the ’853
`patent provide examples where the only information in a document is one
`instance of first information, specifically the name “Atle Hedley.” Id.
`We disagree with Patent Owner’s argument that the claims require
`distinguishing first information from other text in the document. We first
`consider the plain language of the claim, which says nothing about any other
`text in the document, much less distinguishing the “first information” from
`any other text in the document. Turning to the other disclosures in the ’853
`patent, the example discussed in connection with Figure 3 discloses
`analyzing a document that does not contain any text other than the “first
`information,” which, in that instance, is the name “Atle Hedley.” See
`Ex. 1001, col. 5, ll. 60–67; Fig. 3. This example contradicts Patent Owner’s
`argument that the disclosures in the Specification indicate the claims require
`distinguishing first information from other text in the document.
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`c. Patent Owner’s argument that the analyzing process is
`triggered by a single entry of the execute command
`Because the claim language specifies that the “analyzing” process
`occurs “upon a single entry of the execute command,” Patent Owner argues
`that claim 1 “rule[s] 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.”
`PO Resp. 17 (citing Ex. 2008 ¶ 25). Citing a dictionary, Patent Owner
`argues that “[t]he word ‘upon’ means ‘on’, and is ‘used to say that someone
`or something is very close or has arrived.’” Id. (citing FREE MERRIAM-
`WEBSTER DICTIONARY, accessed on October 6, 2014 at http://www.merriam-
`webster.com/dictionary/upon). Patent Owner then argues that “[i]n this
`context, the meaning of ‘upon’ is clearly that the analyzing process occurs as
`a result of and proximate in time to entry of the execute command.” Id.
`(citing Ex. 2008 ¶ 24). Emphasizing that the claim recites “upon a single
`entry” and arguing that “the execute command triggers the ‘analyzing of the
`document to determine if the first information is contained therein,’” Patent
`Owner argues that the claims preclude any action other than the single entry
`of the execute command as a condition to execution of the “analyzing”
`process. Id. at 17–18 (citing Ex. 2008 ¶ 25).
`Petitioners counter that the word “single” in the disputed claim
`language modifies “entry,” arguing that “[t]he claim thus excludes the
`‘analyzing’ happening only after two (or more) entries of the execute
`command.” Pet. Reply 11. Noting that claim 1 uses the “comprising”
`transitional term, Petitioners argue that the claim does not restrict actions
`prior to entry of the execute command. Id. Petitioners further argue that
`“Dr. Levy has admitted [that]. . . even in the ’853 patent there are a large
`number of user actions that must occur prior to the ‘execute command’ if
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`one wants to trigger the ‘analyzing’ step.” Id. at 11–12 (citing Ex. 1016, 75,
`l. 21–79, l. 18).
`At the oral hearing, Patent Owner sought to rebut Petitioners’
`assertions and clarify its initial argument. Patent Owner asserted that
`Petitioners’ assertion that “single” only excludes multiple entries of the
`execute command “challenges the imagination.” Tr. 30, ll. 3–10. Patent
`Owner further asserted that Petitioners’ argument is illogical in the context
`of other claim language. Id. at 30, ll. 3–23. Patent Owner referred to the
`recitation in claim 1 of “an execute command which initiates a record
`retrieval.” Id. at 30, ll. 12–17. Given this claim language, Patent Owner
`argued that “[t]herefore, by definition, the first execute command has
`already initiated the record retrieval because that’s what the claim says it
`does.” Id. at 30, ll. 18–20. Based on this assertion, Patent Owner suggested
`that the claim term “single” would be redundant if it only excluded multiple
`entries of the execute command. Id. at 30, ll. 20–23.
`In response, Petitioners asserted that Patent Owner’s argument does
`not make sense in the context of “a specification that expressly includes user
`selection in a family of patents that otherwise expressly claims user
`selection.” Id. at 46, ll. 18–23.
`We agree with Patent Owner insofar as the disputed claim language
`requires that the recited “analyzing” ensues when “a single entry of the
`execute command” occurs. This follows from the plain meaning of the
`claim language, and no evidence to the contrary has been cited.
`We do not agree, however, with Patent Owner’s argument that claim 1
`“rule[s] 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.” PO Resp. 17
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`(citing Ex. 2008 ¶ 25). According to the plain meaning of “upon a single
`entry of the execute command . . . analyzing the document,” the word
`“single” does modify entry, thereby excluding multiple entries of the execute
`command. Additionally, claim 1’s use of the transitional term “comprising”
`indicates that the method may include other actions prior to the recited
`“single entry of the execute command.” Furthermore, contrary to Patent
`Owner’s assertion, the claim language “an execute command which initiates
`a record retrieval from an information source,” by itself, does not convey
`clearly that the record retrieval necessarily occurs because of one entry of
`the execute command. Moreover, the portion of Dr. Levy’s deposition
`testimony cited by Petitioners persuades us that the system disclosed by the
`’853 patent would require user actions prior to entering the execute
`command to trigger the analyzing process. See Ex. 1016, 75, l. 21–79, l. 18;
`Pet. Reply 11–12. Additionally, as noted by Petitioners, Patent Owner’s
`argument is contradicted by the Specification’s disclosure that:
`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.
`Ex. 1001, col. 10, ll. 5–10; Tr. 46, ll. 18–23.
`d. Patent Owner’s prosecution history argument
`Patent Owner argues that “[t]he public record of the [United States
`Patent and Trademark Office (“PTO”)] . . . shows that the limitations of
`‘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’ . . . rule out user selection of the first information.” PO Resp. 39.
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`Patent Owner contends that “the present case involves a clear disavowal of
`claim scope supported by reliance upon the PTO’s amendment request and
`acceptance, and recognized by the courts.” Id. at 44. Patent Owner notes
`that the U.S. District Court for the District of Rhode Island, in Arendi
`U.S.A., Inc. v. Microsoft Corp., Case No. 02-343-T, found a clear disavowal
`of claim scope consistent with the claim construction arguments advanced
`by Patent Owner in this case. Id. at 39–40. In concert with this, Patent
`Owner argues that the Federal Circuit summarily affirmed the District Court
`in Arendi U.S.A., Inc. v. Microsoft Corp., 168 F. App’x 939 (Fed. Cir. 2005).
`Id. at 40. Patent Owner argues that, in an inter partes proceeding at the
`PTO, it is proper to consider prosecution history when construing a claim.
`Id. at 43 (citing Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir.
`2014)).
`In response, Petitioners argue that we should not consider prosecution
`history when construing claims in an inter partes review. Pet. Reply 12–13
`(citing Marine Polymer Tech., Inc. v. HemCon, Inc., 672 F.3d 1350, 1364
`(Fed. Cir. 2012) (en banc); Tempo Lighting, 742 F.3d at 978). Petitioners
`also dispute Patent Owner’s assertion that the PTO requested amendment of
`the claims. Id. at 13–14.
`Since Patent Owner filed its Response and Petitioners filed their
`Reply, the Federal Circuit has admonished that “[t]he PTO should also
`consult the patent’s prosecution history in proceedings in which the patent
`has been brought back to the agency for a second review.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Accordingly, we
`consider the cited portions of the prosecution history and the parties’
`arguments about them.
`
`17
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`

`
`IPR2014-00452
`Patent 6,323,853 B1
`
`
`Patent Owner cites a number of documents from the prosecution
`history of U.S. Patent Application No. 09/189,626 (“the ’626 application”),
`which issued as the ’853 patent. Patent Owner cites an Office Action
`(Ex. 2001) in which the pending claims of the ’626 application were rejected
`based on U.S. Patent No. 6,085,201 to Tso (Ex. 2003, “Tso”). PO Resp. 36.
`Patent Owner also cites a subsequent Interview Summary (Ex. 2002),
`Amendment (Ex. 2004), and Notice of Allowance (Ex. 2005). Id. at 37–39.
`We have considered all of these documents, as well as Patent Owner’s
`arguments regarding them.
`We find that the cited prosecution history does not demonstrate a clear
`disavowal of text selection. The Remarks section of the Amendment
`addresses a number of different subjects. See Ex. 2004, 2–4. The first four
`paragraphs of the Remarks section present background information,
`including a request for reconsideration, a summary of the status of the
`claims, a summary of the Office Action, and a summary of an interview
`between the applicant and examiner (“the examiner interview”). Id. at 2–3.
`The paragraph summarizing the examiner interview bridges pages 2 and 3.
`Id. This paragraph describes an exploratory discussion between the
`applicant and the examiner about distinguishing Tso, a discussion in which
`“[n]o agreement was reached.” Id. at 3. In the following paragraph, the
`Amendment addresses the scope of the claims, explaining that:
`Claim 8 has been amended to clarify that according to
`Applicants’ invention, upon a single entry of an execute
`command by means of an input device, a document is
`analyzed to determine if first information is contained
`therein, and if the first information is contained in the
`document, an information source is searched for second
`information associated with the first information using a
`record retrieval program.
`
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`IPR2014-00452
`Patent 6,323,853 B1
`
`Id. (emphasis added). We find that this latter paragraph contains the only
`clear statement from the applicant regarding the scope of the claims, and, in
`our view, it says nothing about whether the claims preclude or encompass
`text selection. See id.
`Additionally, we find unpersuasive Patent Owner’s citation of the
`examiner’s statements in the Notice of Allowance. See PO Resp. 38–39.
`“[I]t is the applicant, not the examiner, who must give up or disclaim subject
`matter that would otherwise fall within the scope of the claims.” Sorensen v.
`Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005) (citations
`omitted).
`Furthermore, we find unpersuasive Patent Owner’s observation that
`the Federal Circuit affirmed the decision of the District of Rhode Island.
`Although we recognize that the Federal Circuit’s decision summarily
`affirmed the decision of the District Court of Rhode Island, the Federal
`Circuit’s decision does not provide guidance as to whether there had been a
`clear disavowal of subject matter during the prosecution of the ’626
`application. See Arendi, 168 F. App’x 939; see also Fed. Cir. R. 36 (noting
`five possible circumstances for summary affirmance).
`Because we find that the prosecution history does not contain a clear
`disavowal of text selection by a user, we do not adopt Patent Owner’s
`suggestion that we construe the claims as precluding text selection by a user.
`See Seachange Int’l., Inc. v. C-COR, Inc. 413 F.3d 1361, 1373 (Fed. Cir.
`2005) (“A disclaimer must be clear and unambiguous.”). As the Federal
`Circuit notes, the prosecution history “often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.”
`Phillips v. AWH Corp., 415 F.3d 1302,1317 (Fed. Cir. 2005) (en banc)
`
`19
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`IPR2014-00452
`Patent 6,323,853 B1
`
`(citations omitted). As noted above, the Specification of the ’853 patent
`states that “the user may select the information in the document to be
`searched by the program in the database.” Ex. 1001, col. 10, ll. 5–10.
`B. Obviousness of Claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75, 77,
`and 79 Based on Goodhand
`Petitioners assert that claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–
`75, 77, and 79 are unpatentable under 35 U.S.C. § 103(a) over Goodhand.
`Pet. 14–37; Pet. Reply 1–15. Petitioners explain how Goodhand teaches or
`renders obvious each of the limitations of the challenged claims. Petitioners
`also rely on the Declaration of Mr. Allison. Ex. 1002. Patent Owner
`disagrees with Petitioners’ assertions and relies on the Declaration of Dr.
`Levy. See PO Resp. 1–54; Ex. 2008.
`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
`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
`“the primary interaction between the preferred pr