UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2016-00125
`Patent 8,290,778
`___________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S RESPONSE TO
`MOTION TO AMEND
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
` 
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` 
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`

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`Case IPR2016-00125
`Patent 8,290,778
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`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1
`I.
`II. The Proposed Claims Are Directed to Patentable Subject Matter ..................... 1
`III. The Proposed Claims do not Enlarge the Scope of the ‘778 Patent .................. 4
`IV. The Proposed Claims are not Indefinite ............................................................. 6
`V. The Proposed Claims are Reasonable ................................................................ 7
`A. Special Circumstances for the Proposed Claims .......................................... 7
`B. Special Circumstances for the Proposed Claim 37 ....................................... 8
`VI. The Proposed Claims are Fully Supported by the Original Disclosure ............. 8
`VII. The Proposed Claims are Patentable over the Prior Art .................................. 10
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`CASES
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`Alice Corp. Pty. v. CLS Bank Int’l,
` 134 S. Ct. 2347 (2014) ................................................................................... 1, 2, 3
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
` 2015-1180, slip op. (Fed. Cir. 2016) ......................................................... 1, 2, 3, 4
`Bascom Global Internet v. AT&T Mobility LLC,
` 827 F.3d 1341 (Fed. Cir. 2016) ..................................................................... 1, 2, 4
`Enfish LLC v. Microsoft Corp.,
` 822 F.3d 1327 (Fed Cir. 2016) ...................................................................... 1, 2, 3
`In re Donaldson Co.,
` 16 F.3d 1189 (Fed. Cir. 1994) ................................................................................ 5
`In re Reynolds,
` 443 F.2d 384, 170 USPQ 94 (CCPA 1971) ............................................................ 9
`In re Smythe,
` 480 F. 2d 1376, 178 USPQ 279 (CCPA 1973) ....................................................... 9
`McRO, Inc. v. Bandai Namco Games Amer., Inc., et al.,
` 837 F.3d 1299 (Fed. Cir. 2016) ..................................................................... 1, 2, 3
`Sonix Tech. Co. v. Publications Int’l, LTD et al.,
` 2016-1449, slip op. (Fed. Cir. Jan. 5, 2017) ............................................................. 6
`Toro Co. v. White Consolidated Industries Inc.,
` 199 F.3d 1295 (Fed. Cir. 1999) .............................................................................. 7
`Toyota Motor Corporation v. American Vehicular Sciences LLC,
` IPR2013-00419, Paper 32 (March 7, 2014) ............................................................ 8
`STATUTES
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`35 U.S.C. § 101 ......................................................................................................1, 3
`35 U.S.C. § 112 ............................................................................................. 2, 5, 6, 7
`OTHER AUTHORITIES
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`MPEP 2163.07 .......................................................................................................8, 9
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`I.
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`Introduction
`In Volkswagen Group of America, Inc. v. West View Research, LLC, IPR
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`2016-00125, Petitioner’s Response
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`to Patent Owner’s Motion
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`to Amend
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`(“Response”), Paper 15, November 14, 2016, Petitioner fails to refute (i) the
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`eligibility of the proposed substitute and new claims (“substitute claims”) under
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`§101; (ii) the patentability of the substitute claims over the art; (iii) that the
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`amendments of the substitute claims are fully supported; (iv) that the amendments
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`are responsive to a basis for patentability; and (v) that the substitute claims do not
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`enlarge claim scope.
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`II. The Proposed Claims Are Directed to Patentable Subject Matter
`Petitioner completely ignores the most recent and relevant precedent (i.e., the
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`Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 2015-1180, slip op. (Fed. Cir. 2016),
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`Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016), Bascom Global
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`Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), or McRO, Inc. v.
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`Bandai Namco Games Amer., Inc., et al., 837 F.3d 1299 (Fed. Cir. 2016) opinions
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`from the CAFC) in its Section 101 analysis of its Response. All such precedent
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`clearly cuts against both of Petitioner’s positions that 1) the claimed subject matter
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`is abstract under Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) Step
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`One, and 2) there is no “inventive concept” under Alice Step Two.
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`Moreover, the District Court’s analyses of the challenged ‘778 claims upon
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`which Petitioner heavily relies had none of the benefit of any of the later guidance
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`of Amdocs, Enfish, Bascom, or McRo, and was flawed in numerous ways, by: (i)
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`adopting the position that any computer that provides information to a user is
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`abstract under Alice Step 1, a clear error under the later guidance of the CAFC;
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`(ii) failing to even consider that combinations of allegedly generic components
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`may represent novel/non-obvious subject matter (in contravention of Amdocs,
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`Bascom and Enfish); and (iii) failing to properly construe Patent Owner’s claims in
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`light of the disclosed data structures, hardware, and algorithmic flowcharts –
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`explicitly dismissing the latter as having no probative value.
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`Moreover, no §112(6) inquiry was performed for ‘778 claim 30, in direct
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`contravention of Amdocs. (see Amdocs slip op. at 8, n.3), nor was the requisite
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`“pre-emption” analysis under Step 1 or Step 2. Patent Owner’s substitute claims
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`are narrowly drawn and pre-empt only specific configurations.
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`To summarize the CAFC holdings supporting patentability of the claims:
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`1) Per Enfish, computer technology is not inherently abstract. Enfish, 822
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`F.3d at 1335. Nor is software, including associated logical structures and
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`processes. Id. Petitioner cannot reconcile these holdings with the District Court’s
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`position that any computer that provides information is abstract under Alice Step 1.
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`Petitioner’s characterizing all the substitute claims as “collecting information,
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`analyzing it, and displaying certain results of the collection and analysis”
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`(Response, at 2) is also inconsistent with Enfish (Id. at 1337).
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`2) Courts must not ignore claim requirements and specific, claimed features
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`in both Step 1 and Step 2 of the Alice test. McRo, 837 F.3d at 1313. The “abstract
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`idea exception” excludes claims on results themselves, rather than on processes
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`that produce the results. Id. at 1314. Characterization of the substitute claims as
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`presenting results only (Response at 2) is also inconsistent with McRo. The
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`substitute claims have particular structures and algorithm steps for performing the
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`functions. Moreover, detailed components and steps are explicitly recited.
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`3) Even if, arguendo, the substitute claims were not limited by the features
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`above, McRo clearly sets forth that a genus may be patented under §101 (“Patent
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`law has evolved to place additional requirements on patentees seeking to claim a
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`genus; however, these limits have not been in relation to the abstract idea
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`exception to §101.” Id. {emphasis added})
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`4) Petitioner’s argument that the claimed inventions involve “all generic”
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`components (Response at 6) flies in the face of most recent CAFC holdings,
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`including Amdocs.1 The “how” of Patent Owner’s substitute claims is even more
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`                                                            
`1 Openet argues that…a “distributed architecture” is “a generic type of architecture.
`…To whatever extent this claimed approach was old, obvious, too broadly
`claimed, or unsupported, these considerations are apart from the eligibility inquiry
`…” Amdocs, 19 {emphasis added} 
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`detailed and specific than that of Amdocs. For instance, computer-based automated
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`contextual advertising (see e.g., substitute claims 37, 39, and 40) was in its infancy
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`in mid-1999, and was far from “generic” or performed by a garden-variety PC.
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`See also Amdocs slip op. at 22-23 (“…these generic components operate in
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`an unconventional manner to achieve an improvement in computer functionality.”)
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`{emphasis added} The claimed inventions operate in such conventional manner,
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`and Petitioner has not demonstrated otherwise.
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`Patent Owner’s position is also consistent with Bascom (“an inventive
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`concept can be found in the non-conventional and non-generic arrangement of
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`known, conventional pieces. Bascom, 827 F.3d at 1349 {emphasis added}). Even
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`if arguendo all of Patent Owner’s substitute claims recite all generic components,
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`it is the ordered combination which must be evaluated. Petitioner provides no such
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`“ordered combination” analysis for the claims. When such analysis is performed, it
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`is clear that each of the claims recites (i) particular components and structure to
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`achieve the desired results; and (ii) particular steps and processes for achieving the
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`desired results, including e.g., in the context of a particular database architecture.
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`III. The Proposed Claims do not Enlarge the Scope of the ‘778 Patent
`Petitioner alleges that claim 31 eliminates the limitation of claim 1 that the
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`program must “based at least in part on the input, cause identification of a location
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`associated with the organization or entity”. Response, 6 – 7. Substitute claim 31
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`merely rearranges the elements contained within original claim 1 for better clarity
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`under §112 (2), and does not enlarge the scope of original claim 1.
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`Petitioner alleges that substitute claim 39 eliminates the limitation of claim
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`28 that “the location having been determined based at least in part on the input.”
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`Response, 7 (emphasis added). However, claim 39 additionally recites selection
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`“based on access of a database comprising organizations or entities… the access
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`using the digitized speech”, thereby wholly refuting Petitioner’s assertion. Similar
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`logic applies to the assertions relating to substitute claim 40.
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`Petitioner alleges that substitute claim 40 eliminates the limitation of claim
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`30 of “a speech recognition apparatus” but requires “a means for speech
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`processing”, and that “speech processing” may entail processing other than
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`“speech recognition”. However, Petitioner does not identify structure disclosed in
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`‘778 that may entail such processing other than “speech recognition”. See In re
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`Donaldson Co., 16 F.3d 1189, 1194 (Fed. Cir. 1994). Components of FIG. 1 were
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`explicitly identified as the “means for speech processing”. Volkswagen Group of
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`America, Inc. v. West View Research, LLC, IPR 2016-00125, Motion to Amend
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`(“Motion to Amend”), Paper 12, Aug. 15, 2016 at 5.
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`Patent Owner further notes that none of substitute claims 32-38 are
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`challenged by Petitioner as enlarging scope.
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`IV. The Proposed Claims are not Indefinite
`Petitioner alleges that the term “user desires” (claim 31), “proximate” (claims
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`31, 35), “user wishes” (claims 38 – 40), and “geographically proximate” (claims 38 –
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`40) are terms of degree and purely subjective limitations that render the claims
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`indefinite per §112. Response, 8. See Sonix Tech. Co. v. Publications Int’l, LTD et
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`al., 2016-1449, slip op. (Fed. Cir. Jan. 5, 2017), stating that “[i]ndefiniteness must
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`be proven by clear and convincing evidence.” Id. at 11 {emphasis added}, and
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`finding that the term “visually negligible” was not indefinite under §112(2).
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`Petitioner provides no such “clear and convincing” evidence, but only bare
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`assertions that the terms at issue are “subjective.” Notably:
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`(i) Substitute claim 40 does not contain the term “user wishes” as alleged.
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`(ii) The term “proximate” (claim 35) was previously in claim 9 and was
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`neither rejected by the USPTO under 35 U.S.C. §112 (2) during prosecution, nor
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`alleged by the Petitioner to be indefinite in its Petition. Claim 31 is similarly not
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`indefinite.
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`(iii) The term “user wishes” (claims 38, 39) was previously in the original
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`claims, and was neither rejected by the USPTO as being indefinite during
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`prosecution, nor alleged by the Petitioner to be indefinite in the Petition.
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`(iv) The term “user desires” is both: (i) consistent with and fully supported by
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`the specification as originally filed on June 10, 1999 as S/N 09/330,101 (e.g., p. 4, ln
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`5; p. 9, ln 11; and p. 12, ln 12), and (ii) wholly definite and not subjective; a user’s
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`desire is readily measured in terms of what they seek (e.g., to find Starbucks) - there
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`is no indefiniteness in the user’s speech. Petitioner takes the phrase out of context;
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`the claim is wholly unequivocal; i.e., a digitized speech input consisting of only a
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`part of a name of an organization which the user wants (“desires”) to find.
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`(v) Regarding “geographically proximate”, “[t]he meaning of words used in a
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`claim is not construed in a “lexicographic vacuum, but in the context of the
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`specification and drawings”. Toro Co. v. White Consolidated Industries Inc., 199
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`F.3d 1295, 1301 (Fed. Cir. 1999). FIGS. 2 and 5 and their supporting discussion of
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`‘778 describe and show one species of entities geographically proximate (i.e., on the
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`same floor within a building or large structure such as a mall or airport (Col. 2, 4-5)),
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`so the substitute claims with such phraseology clearly at very least meet 112 (1) and
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`112 (2) requirements for at least that species.
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`V. The Proposed Claims are Reasonable
`A.
`Special Circumstances for the Proposed Claims
`Petitioner cannot have it both ways; i.e., say the claims are indefinite under
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`§112 (an explicit ground of unpatentability proffered by Petitioner at p. 8 of the
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`Response), and then complain when Patent owner attempts to add definiteness and
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`clarity to them. Moreover, each of the added limitations are pointedly introduced to
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`define the claimed invention(s) over the art cited by Petitioner, and Petitioner’s
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`assertions of genericism of all the components.
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`Special Circumstances for the Proposed Claim 37
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`B.
`Patent Owner also proposes the addition of new claim 37 (no existing
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`counterpart), per previous PTAB guidance: “If the additional substitute claim is
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`patentably distinct from the first substitute claim, given the first substitute claim as
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`prior art, that likely would be sufficient justification.” Toyota Motor Corporation
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`v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 at 3 (March 7,
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`2014).   New claim 37 is patentably distinct (as discussed infra), and is properly
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`included with the other proposed claims.
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`VI. The Proposed Claims are Fully Supported by the Original Disclosure
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`Petitioner cites “a theme of the displayed advertising…” as not supported.
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`Response at 11. The ‘778 specification is replete with specific examples and details
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`of such themes (see e.g., 21: 9-24, and 24: 43-52). Petitioner’s argument is akin to
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`saying that although the specification describes a fizzy drink with small round
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`carbon dioxide gas pockets when opened, it does not use the word “bubbles”
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`explicitly, and hence does not support carbonated soda, and is disingenuous. See
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`MPEP 2163.07(a) discussed infra.
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`Regarding
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`the proposed “local graphical
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`imagery of establishments
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`independently accessible without reference to location” (11:18 – 14:8. Reply, 11.),
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`the exemplary embodiment of the ‘778 [10: 31-44]  comprises independent
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`accessible imagery data; i.e., it can be retrieved via access of the directory file,
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`without first locating or determining a geographic or physical location. The
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`“location” referenced supra is ancillary to the relevant directory file entry; the
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`graphic data file is retrieved based on name match, and not location (accessing of
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`the image data file is wholly independent of location). Contrast the approach of Ito
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`discussed infra. See also MPEP 2163.07(a) (“By disclosing in a patent application
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`a device that inherently performs a function or has a property, operates according
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`to a theory or has an advantage, a patent application necessarily discloses that
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`function, theory or advantage, even though it says nothing explicit concerning it….
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`In re Reynolds, 443 F.2d 384, 170 USPQ 94 (CCPA 1971); In re Smythe, 480 F. 2d
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`1376, 178 USPQ 279 (CCPA 1973).” {emphasis added})
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`Regarding Claim 36 “determining a context of a user’s selection that is
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`independent of the accessed information” (1) determining context for the user’s
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`selection and (2) determination is independent of the information are alleged to be
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`inconsistent with one another (Reply, 11 – 12), see Claims 9-12 as originally filed
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`on June 10, 1999 as S/N 09/330,101; the claimed “first predetermined relationship
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`...”, when properly interpreted in light of specification, means a “match” to the
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`user’s voice input; e.g., “Smith” [9: 26-62], and “image data” of Claim 11 refers to
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`the exemplary image data showing the location of “Smith” (e.g., FIG. 5).
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`The claimed “second predetermined relationship…”, when properly
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`interpreted in light of specification, means a “contextual match” to the user’s voice
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`input (e.g., “litigation” [21:20-45]), and “at least a portion of said image data” of
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`Claim 12 refers to the exemplary advertising image data file. [21: 45-59] This also
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`refutes Petitioner’s position on “secondary content” of claims 36 – 40 (Response,
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`13 – 14); the original filing disclosed primary and secondary content, such as the
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`aforementioned image data file and the advertising content, respectively.
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`Claim 37 “data values associated with respective topical secondary content,
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`the topical secondary content contextually related to the context indicated by the
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`transmitted data”. Reply, 12 – 13. The ‘778 explicitly describes matching
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`recognized spoken “keywords” as the argument for a data search of server-based
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`library (e.g., a virtual database; see FIG. 18b, and 21: 22-24 and 41-50; 22: 32-36).
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`The ‘778 also explicitly says that SFK selections can be used as the “inputs”
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`above (see 24: 19-34, and 43-52), specifically describing (i) a code or tag (one
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`species of genus “data”) associated with the SFKs, and (ii) advertising files each
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`having their own code/tag; and (iii) searching the latter for matches to the former.
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`VII. The Proposed Claims are Patentable over the Prior Art
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`Ito discloses a vehicle navigation apparatus that is mounted in a vehicle that
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`wirelessly connects to a navigation base apparatus. Ex. 1003 at 8:11-16, 10:51-57,
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`FIG. 1. Lind discloses a Network Vehicle that displays navigation information on a
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`touch screen LCD display. Ex. 1004 at I21-2, I21-3. Fujiwara discloses a
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`navigation system that provides a course guidance to a predetermined place by
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`calculating a car's position and displaying the position with a map. Ex 1005 at 1:5-
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`12, 4:14-22, FIG. 1. Walters discloses a navigation device, which mounts on the
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`vehicle dash and displays thoroughfares/names along with an icon indicative of the
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`vehicle location. Ex. 1006 at 4:38-62, FIGS. 1-3, Abstract.
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`Each of the cited references (Ito, Lind, Fujiwara, and/or Walters) is silent
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`with respect to the features of claims 39 and 40 relating to secondary content.
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`Claims 32, 33, 36 and 37 recite yet other features relating to secondary content not
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`remotely taught or suggested by such art (e.g., digitally compressed video data
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`correlated with a coordinate on the touch screen, secondary content which is
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`independent of the information accessed via a generated SFK, etc.). Thus, the
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`alleged combination fails to render obvious substitute claims 32, 33, 36 and 37.
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`Petitioner cites Ito (11: 21 – 30; and 15: 50 – 58) alleging that it describes a
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`similar disambiguation procedure to “receiving digitized speech input consisting of
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`only a name or part of a name of an organization or entity which a user desires to
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`locate. ” Petitioner is misguided; Ito discloses such input as part of a route search
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`request (Step S132 of Ito), including transmission of vehicle location to a network.
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`The substitute claims provide simplified user interface (UI) - requiring the user to
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`merely say a name, as compared to the multi-step, hierarchical approach of Ito.
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`Petitioner asserts that “advertising contextually related to the organization or
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`entity” is shown in US 6,360,167 at 6: 30 – 34. ‘167 only teaches advertising based
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`on the type of point of interest affirmatively selected by the user via an icon (6: 19-
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`22), and not passively based on speech input, such as recited in e.g., claim 39.
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`Petitioner also alleges that substitute claims 31 – 40 are not patentable over
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`the prior art. Response, 14 – 25. For example, with regards to claim 38, Petitioner
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`alleges that it would have been obvious to provide access to multiple images on a
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`small display citing to Gormley at 1: 29 – 34; Fig. 1; and 4: 36 – 43. Gormley
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`merely teaches a monitoring apparatus for a security system having a monitor and
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`twelve video cameras (Abstract), and that the operator may select any one of the
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`small images to be duplicated for detailed examination as the central large image.
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`Gormley, 4: 38 – 43. (emphasis added)
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`In contrast, claim 38 provides for display of … (ii) imagery of a location
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`correlated with a coordinate on the capacitive touch screen input and display
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`device and selectable thereby, the imagery showing the … actual physical
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`relationship to at least one of the other organizations or entities”. Merely enabling
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`a user to select a smaller image for enlargement and duplicating this image does
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`not teach or suggest the aforementioned language of substitute claim 38. See also
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`the ‘778 at 24:1 – 25:16.
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`Dated: January 11, 2017
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`/Peter J. Gutierrez, III/ (Reg. No. 56,732)
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`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
`January 11, 2017, a complete and entire copy of the foregoing
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S
`OPPOSITION TO MOTION TO AMEND
`
`was provided via email to the Petitioner by serving the correspondence email
`address of record as follows:
`Michael J. Lennon, Reg. No. 26,562
`Clifford A. Ulrich, Reg. No. 42,194
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`Emails:
`ptab@kenyon.com
`mlennon@kenyon.com
`culrich@kenyon.com
`
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`The parties have agreed to electronic service in this proceeding.
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`Respectfully submitted,
`
`/Peter J. Gutierrez, III/
`Peter J. Gutierrez, III
`Reg. No. 56,732
`
`
`
`Dated: January 11, 2017
`
`
`
`
`
`
`
`Gazdzinski & Associates, PC
`16644 West Bernardo Drive, Suite 201
`San Diego, CA 92127
`Telephone No.: (858) 675-1670
`Facsimile No.: (858) 675-1674
`
`
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