UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 8,290,778
`Issue Date: October 16, 2012
`Title: COMPUTERIZED INFORMATION PRESENTATION APPARATUS
`__________________________________________________________________
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`Case No. IPR2016-00125
`__________________________________________________________________
`
`
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`
`
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`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 8,290,778
`Issue Date: October 16, 2012
`Title: COMPUTERIZED INFORMATION PRESENTATION APPARATUS
`__________________________________________________________________
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`Case No. IPR2016-00125
`__________________________________________________________________
`
`
`
`
`
`
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`
`TABLE OF CONTENTS
`
`I.
`Introduction ..................................................................................................... 1
`The Proposed Claims are not Directed to Patentable Subject Matter ............ 1
`II.
`III. The Proposed Claims Enlarge the Scope of the Claims of the ’778
`Patent .............................................................................................................. 6
`IV. The Proposed Claims are Indefinite ............................................................... 8
`V.
`The Proposed Claims are not Reasonable ...................................................... 8
`A. WVR Does not Show Special Circumstances for the Proposed
`Claims ................................................................................................... 8
`B. WVR Shows No Special Circumstances for Proposed Claim 37 ........ 9
`VI. The Original Disclosure Does not Support the Proposed Claims ................ 10
`VII. The Proposed Substitute Claims are not Patentable Over the Prior Art....... 14
`VIII. Conclusion .................................................................................................... 25
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`Exhibit 1010
`
`
`Exhibit 1011
`
`
`Exhibit 1012
`
`
`Exhibit 1013
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 8,290,778 to Gazdzinski
`
`Declaration of Scott Andrews
`
`U.S. Patent No. 6,249,740 to Ito et al.
`
`The Network Vehicle - A Glimpse into the Future of
`Mobile Multi-Media, by R. Lind et al.
`
`European Patent Application Publication No. 0 829 704
`to Fujiwara et al.
`
`U.S. Patent No. 6,188,956 to Walters
`
`Redline Comparison of Challenged Independent Claims
`
`U.S. Patent No. 5,274,560 to LaRue
`
`U.S. Patent No. 6,211,777 to Greenwood et al.
`
`“Plaintiff and Counter-Defendant West View Research,
`LLC Revised Disclosure of Asserted Claims and
`Infringement Contentions, Pursuant to Patent L.R. 3.1
`and the June 10, 2015 Court Order,” dated June 26, 2015
`
`U.S. Copyright Registration No. TX 4-900-822, “1998
`IEEE/AIAA 17th Digital Avionics Systems Conference -
`Oct 31, 1998 - Bellevue, WA - (98CH36267), dated
`December 8, 1998
`
`Library of Congress Public Catalog Information, 17th
`DASC: The AIAA/IEEE/SAE Digital Avionics Systems
`Conference: Proceedings:
`[Electronics
`in motion]:
`Bellevue, WA, Oct. 31-Nov. 7, 1998
`
`MARC Tags corresponding to Library of Congress
`Public Catalog
`Information, 17th DASC: The
`ii
`
`
`
`
`
`
`Exhibit 1014
`
`
`Exhibit 1015
`
`
`Exhibit 1016
`
`
`Exhibit 1017
`
`
`Exhibit 1018
`
`
`Exhibit 1019
`
`
`Exhibit 1020
`
`
`Exhibit 1021
`
`
`Exhibit 1022
`
`AIAA/IEEE/SAE Digital Avionics Systems Conference:
`Proceedings: [Electronics in motion]: Bellevue, WA, Oct.
`31-Nov. 7, 1998
`
`The Network Vehicle - A Glimpse into the Future of
`Mobile Multi-Media, by R. Lind et al., SAE Technical
`Paper Series 982901
`
`U.S. Copyright Registration No. TX 5-149-812,
`“November 1998 Quarterly Technical Papers on
`Microfiche (MICQ-N98),” dated June 2, 2000
`
`U.S. Copyright Office Public Catalog Information,
`“Quarterly technical papers on microfiche,” ISSN 0148-
`7191
`
`Society of Automotive Engineers (SAE), Abstract, “The
`Network Vehicle - A Glimpse into the Future of Mobile
`Multimedia,” Paper No. 982901, http://papers.sae.org/
`982901/
`
`“Order Granting Motions for Judgment on the Pleadings”
`in West View Research, LLC v. Tesla Motors, Inc., Case
`No. 3:14-cv-02679, dated December 11, 2015
`
`“Order Granting Motions for Judgment on the Pleadings”
`in West View Research, LLC v. Audi AG, et al., Case No.
`3:14-cv-02668 (S.D. Cal.), The March 31, 2016
`
`“Judgment” in West View Research, LLC v. Audi AG, et
`al., Case No. 3:14-cv-02668 (S.D. Cal.), dated March 31,
`2016
`
`“Notice of Appeal” in West View Research, LLC v. Audi
`AG, et al., Case No. 3:14-cv-02668 (S.D. Cal.), dated
`The April 29, 2016
`
`“Notice of Docketing” in West View Research, LLC v.
`Audi AG et al., Case No. 16-1947 (Fed. Cir.), dated May
`iii
`
`
`
`
`
`
`Exhibit 1023
`
`
`Exhibit 1024
`
`
`Exhibit 1025
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`Exhibit 1026
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`Exhibit 1027
`
`Exhibit 1028
`
`Exhibit 1029
`
`Exhibit 1030
`
`
`
`
`2, 2016
`
`“Order Consolidating Appeals” in West View Research,
`LLC v. Audi AG, et al., Case No. 16-1947 (Fed. Cir.),
`date May 9, 2016
`
`House, “Spoken-language access to multimedia (SLAM):
`a multimodal interface to the World-Wide Web,” Scholar
`Archive, Paper 3416, Oregon Health & Science
`University Digital Commons (1995)
`
`U.S. Patent No. 6,173,279 to Levin
`
`U.S. Patent No. 3,358,270 to Crew
`
`U.S. Patent No. 4,451,901 to Wolfe
`
`U.S. Patent No. 6,360,167 to Millington
`
`U.S. Patent No. 5,258,837 to Gormley
`
`Appendix to Patent Owner’s Motion to Amend Under 37
`C.F.R. §42.121
`
`
`
`iv
`
`
`
`
`
`Introduction
`
`I.
` West View Research, LLC (“WVR”) filed a Motion to Amend (“Motion”)
`
`
`
`canceling all challenged claims, proposing to substitute claims 31-36 and 38-40,
`
`and proposing to add new claim 37. The original claims were found invalid under
`
`35 U.S.C. § 101 by the U.S. District Court for the Southern District of California
`
`(the “District Court”). Ex. 1018-1020. WVR has not shown that the proposed
`
`claims are patent-eligible (35 U.S.C. § 101). Further, the Motion does not meet the
`
`requirements of 35 U.S.C. § 316 or 37 C.F.R. § 42.121. The proposed claims
`
`improperly enlarge the scope of the claims, and WVR has not shown that the
`
`proposed claims are
`
`reasonable
`
`in number,
`
`responsive
`
`to grounds of
`
`unpatentability in this proceeding, supported by the application as filed or definite
`
`(35 U.S.C. § 112), or patentable over the prior art (35 U.S.C. §§ 102 and 103). It is
`
`WVR’s burden to show that its Motion should be granted, including a showing of
`
`patentable distinction over the prior art. Nike v. Adidas, 812 F.3d 1326, 1334 (Fed.
`
`Cir. 2016); Microsoft v. Proxyconn, 789 F.3d 1292, 1306 (Fed. Cir. 2015); Idle
`
`Free Systems v. Bergstrom, IPR2012-00027, Paper 26, 7; 37 C.F.R. § 42.20(c).
`
`II. The Proposed Claims are not Directed to Patentable Subject Matter
` The Motion should be denied because the proposed claims, like the original
`
`claims, are not patent-eligible under 35 U.S.C. § 101 and Alice Corp v. CLS Bank,
`
`134 S. Ct. 2347 (2014). As stated above, all of the challenged claims have been
`
`1
`
`
`
`
`
`found invalid under 35 U.S.C. § 101. That conclusion is equally applicable here,
`
`and the Motion does not explain how the proposed claims are patent-eligible.
`
`Alice Step One
`
` Claims describing “collecting information, analyzing it, and displaying certain
`
`results of the collection and analysis” are “a familiar class of claims ‘directed to’ a
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`patent-ineligible [abstract idea]”:
`
`Information as such is an intangible. Accordingly, we have treated collecting
`information, including when limited to particular content (which does not
`change its character as information), as within the realm of abstract ideas. In
`a similar vein, we have treated analyzing information by steps people go
`through in their minds, or by mathematical algorithms, without more, as
`essentially mental processes within the abstract-idea category. And we have
`recognized that merely presenting the results of abstract processes of
`collecting and analyzing information, without more (such as identifying a
`particular tool for presentation), is abstract as an ancillary part of such
`collection and analysis.
`Elec. Power Group v. Alstom, No. 2015-1778, 2016 WL 4073318, *3-4 (Fed. Cir.
`
`Aug. 1, 2016). The District Court ruled that the challenged claims are abstract
`
`because they describe the use of conventional combinations of known computer
`
`components “to receive an information request from a user, access the information
`
`from a remote server, display the information to the user and/or transfer it to a
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`portable device associated with the user.” See, Ex. 1019, 2-3; Ex. 1018, 11-13.
`
` Like the original invalid patent claims, claims 31-40 describe different
`2
`
`
`
`
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`combinations of computer components, including input devices, e.g., speech
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`digitization and recognition devices, touch screen displays with soft keys; video
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`cameras; standard wireless networking interfaces; and output devices, e.g.,
`
`touchscreen and video displays. Computers and processors receive an inquiry from
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`the input devices, process the inquiry, and provide a response to the inquiry via
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`display devices. The response includes a graphical or visual representation. Cf.
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`Motion, 26-38, with Ex. 1018, 1-7, Ex. 1019, 3-4.
`
` The additional limitations do not render the proposed claims any less abstract
`
`than the original claims. The new limitations merely describe specific examples of
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`receiving inquiries and organizing related information: receiving and processing
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`speech inputs for search (claims 31, 39, 40); identifying relationships between
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`searched information and “secondary content” (claims 32-34, 36, 37, 39, 40); and
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`coordinating touch screen inputs with video data (claims 33, 38). Or they describe
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`vague relationships between searched information and “secondary content”: e.g.,
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`“contextual relationship” (claim 32), “theme” (claim 32), “independent[ly]
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`accessible” (claim 34), “context associated with the user’s selection” and “logical
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`relationship with the determined context” (claims 36, 37), “independent of the
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`information accessed” (claim 36), “topical” and “contextually related to the
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`context” (claim 37), “topical groupings based on respective ones of shared topical
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`contexts” and “contextually relevant to the respective shared topical context”
`
`3
`
`
`
`
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`(claim 39), “topical relationship to the at least one identified business type” and
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`“not specific to the at least one organization or entity” (claim 40). The substitute
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`claims are no different than the original claims and other computer-implemented
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`claims already found to be directed to an unpatentable abstract idea. See, e.g., Elec.
`
`Power Group, *3-4; In re TLI Comms. LLC Patent Litigation, 823 F.3d 607, 611–
`
`13 (Fed. Cir. 2016); Content Extraction & Transmission v. Wells Fargo Bank, 776
`
`F.3d 1343, 1347 (Fed. Cir. 2014); Intellectual Ventures I LLC v. Capital One Bank
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`(USA), 792 F.3d 1363, 1367–68 (Fed. Cir. 2015).
`
`Alice Step Two
`
` The non-abstract claim elements do not provide an inventive concept, because
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`“limiting the claims to [a] particular technological environment” that is not
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`otherwise inventive, or “merely selecting information, by content or source, for
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`collection, analysis, and display,” is insufficient to transform the claims into a
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`patentable application of ab abstract idea. Elec. Power Group, *4.
`
` As the District Court recognized (Ex. 1018, 11-13; Ex. 1019, 3-4), the
`
`specification describes systems consisting of combinations of conventional
`
`components, without asserting that any component or configuration provides a
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`specific technical advance. The ’778 patent confirms that the particular
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`combinations recited in the substitute claims are not inventive, stating that “many
`
`different arrangements for the disposition of various components within the
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`4
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`
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`
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`system, including…the processor/motherboard, storage devices, server, and
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`memory (and the transfer of data and signals there between) are possible, all of
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`which are encompassed within the scope of the present invention.” See ’778 patent,
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`8:48-53, 25:16-22.
`
` The categories of common and familiar information that can be requested by a
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`user of the claimed systems, including graphical or visual representations of an
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`entity, do not describe an inventive concept because the programming required to
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`receive, select, process, and display any form of known information is
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`conventional. See, Elec. Power Group, *4 (“The claims in this case do not even
`
`require a new source or type of information, or new techniques for analyzing it. As
`
`a result, they do not require an arguably inventive set of components or methods,
`
`such as measurement devices or techniques, that would generate new data. They do
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`not invoke any assertedly inventive programming.”).
`
` The individual computer systems and components for receiving, retrieving,
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`processing, and displaying information (e.g., speech recognition and compression
`
`(6:45-7:19), touch screens (6:36-39, 7:54-58, 7:62-8:6), video cameras (16:10-16),
`
`display (11:16-24, 21:53-55), general-purpose computers and microprocessors
`
`(7:20-30)) do not provide an inventive concept because the specification states they
`
`were known and conventional before the filing date. “[I]invocations of computers
`
`and networks that are not even arguably inventive are ‘insufficient to pass the test
`
`5
`
`
`
`
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`of an inventive concept in the application’ of an abstract idea.” See Elec. Power
`
`Group, *5 (quoting buySAFE v. Google, 765 F.3d 1350 (Fed. Cir. 2014)) (“Though
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`lengthy and numerous, the claims do not go beyond requiring the collection,
`
`analysis, and display of available information in a particular field, stating those
`
`functions in general terms, without limiting them to technical means for
`
`performing the functions that are arguably an advance over conventional computer
`
`and network technology…. The claims…do not include any requirement for
`
`performing the claimed functions of gathering, analyzing, and displaying in real
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`time by use of anything but entirely conventional, generic technology.”); Mtg.
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`Grader v. First Choice Loan, 811 F.3d 1314, 1324 (Fed. Cir. 2016) (“[T]he claims
`
`‘add’ only generic computer components such as an ‘interface,’ ‘network,’ and
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`‘database.’ These generic computer components do not satisfy the inventive
`
`concept requirement.”); buySAFE, at 1355 (“That a computer receives and sends
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`the information over a network--with no further specification--is not even arguably
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`inventive.”); Content Extraction & Transmission, at 1348 (“There is no ‘inventive
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`concept’ in CET’s use of a generic scanner and computer to perform well-
`
`understood, routine, and conventional activities commonly used in industry.”).
`
`III. The Proposed Claims Enlarge the Scope of the Claims of the ’778 Patent
` The proposed claims improperly enlarge the scope of the claims (37 C.F.R. §
`
`42.121(a)(2)(i)). For example, claim 31 eliminates the limitation of claim 1 that the
`
`6
`
`
`
`
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`program must “based at least in part on the input, cause identification of a location
`
`associated with the organization or entity.” Claim 31 includes the limitation that
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`the program merely “receive[s] identification of a location associated with the
`
`desired organization or entity” without necessarily “causing” the identification.
`
` Claim 39 eliminates the limitation of claim 28 that “the location having been
`
`determined based at least in part on the input” but requires “the location having
`
`been determined based at least in part from data within the database associated
`
`with the selected possible matching organization or entity.” A location that is not
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`determined based at least in part on the input but is determined based at least in
`
`part from data within a database associated with the selected possible matching
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`organization or entity would be encompassed by the new limitation of claim 39 but
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`would not be encompassed by the original limitation of claim 28, such that claim
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`39 is broader than claim 28.
`
` Proposed claim 40 eliminates the limitation of claim 30 of “a speech
`
`recognition apparatus” but requires “a means for speech processing.” While
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`“speech processing” may include “speech recognition,” “speech processing” may
`
`entail processing other than “speech recognition,” such that claim 40 is broader
`
`than claim 30. Claim 40 also eliminates the requirement of claim 30 that “the
`
`location having been determined based at least in part on the input” but requires
`
`“the location having been determined from a data structure accessible by the
`
`7
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`
`
`
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`network server apparatus and associated with the selected organization or entity.”
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`Thus the location having not been determined based at least in part on the input
`
`may be encompassed by the new limitation of claim 40 but would be excluded
`
`from claim 30, such that claim 40 is broader than claim 30 in this regard.
`
`IV. The Proposed Claims are Indefinite
` The proposed claims include terms of degree and purely subjective limitations
`
`that render the claims indefinite (35 U.S.C. § 112). See, Interval Licensing v. AOL,
`
`766 F.3d 1364 (Fed. Cir. 2014). The indefinite terms of degree and purely
`
`subjective terms include “user desires” (claim 31), “proximate” (claims 31, 35),
`
`“user wishes” (claim 38), “geographically proximate” (claims 38-40), and “user
`
`wishes” (claims 39, 40).
`
`V. The Proposed Claims are not Reasonable
` WVR’s proposed claims are not reasonable, because they are not responsive to
`
`an alleged ground of unpatentability, and because WVR proposes too many
`
`substitute claims. 35 U.S.C. § 316(d)(1)(B); 37 C.F.R. § 42.121(a)(2), (3).
`
`A. WVR Does not Show Special Circumstances for the Proposed Claims
` Many of
`the proposed amendments are not
`tied
`to any ground of
`
`unpatentability, and are not provided with any supporting rationale. Where a patent
`
`owner asserts that a certain claim amendment renders a proposed claim patentable,
`
`the patent owner should provide “meaningful reasons” establishing a “special
`
`circumstance” for adding further features. Idle Free, at 9 (“Adding features for no
`8
`
`
`
`
`
`meaningful reason is generally inconsistent with proposing a reasonable number of
`
`substitute claims, and also
`
`is not responsive
`
`to an alleged ground of
`
`unpatentability.”). Exhibit 1030 highlights the claim amendments lacking any
`
`explanation Because WVR has not presented any reason for these amendments, the
`
`proposed substitute claims are improper.
`
`Further, WVR makes no showing of a “special circumstance” to justify the
`
`amendments of proposed dependent claims 32, 33, 34, 36, and 37. See, Idle Free,
`
`9-10; Riverbed Tech. v. Silver Peak Sys., IPR2013-00402, Paper 35, 27-30 (“[T]he
`
`issue is whether Patent Owner has shown a special circumstance for making the
`
`additional changes in proposed substitute [dependent] claims 14 and 16, such as a
`
`patentable distinction over the parent proposed substitute claims.”). The Motion
`
`does not provide any analysis comparing any of the dependent substitute claims to
`
`any other proposed substitute claims, including the parent claims.
`
`B. WVR Shows No Special Circumstances for Proposed Claim 37
` WVR proposes ten claims to substitute for only nine canceled claims. Absent a
`
`“demonstration of need,” only one substitute claim is reasonable in replacing a
`
`challenged claim. 37 C.F.R. § 42.121(a)(3). The Motion does not demonstrate such
`
`need, at least because WVR does not identify any claim that claim 37 is intended
`
`to replace. Without an associated challenged claim, “the Board does not have
`
`adequate basis to determine the reasonableness of the number of substitute claims
`
`9
`
`
`
`
`
`for each original claim.” Idle Free, 5 (also noting that an evaluation under 37
`
`C.F.R. §42.121(a)(2) “is premised on the patent owner’s having identified, for each
`
`proposed substitute claim, the challenged claim which it is intended to replace.”).
`
` WVR states that claim 37 is “patentably distinct … and is properly included.”
`
`Motion, 1. However, the Motion does not address whether claim 37 is patentably
`
`distinct from any other proposed claim. See Toyota v. Am. Vehicular Sciences,
`
`IPR2013-00419, Paper 32, 3 (“If the additional proposed substitute claim is
`
`patentably distinct from the first substitute claim, given the first substitute claim as
`
`prior art, that likely would be sufficient justification.”). Further, WVR does not
`
`provide a separate basis for the patentability of claim 37, instead only discussing
`
`the patentability of claim 37 in its discussion of the patentability of claims 32, 33,
`
`and 36 (Motion, 13-14, 24-25).
`
`VI. The Original Disclosure Does not Support the Proposed Claims
` The Motion alleges, at 3-5, that the additional features of claims 31-40 are
`
`supported by the original application (“’853 application,” Ex. 2001). However,
`
`WVR provides only citations, without explanation as to why it should be
`
`understood that the inventor possessed the claimed subject matter. Nichia v.
`
`Emcore, IPR2012-00005, Paper 27, 4 (“should the claim language … not appear in
`
`ipsis verbis in the original disclosure, a mere citation to the original disclosure
`
`without any explanation as to why a person of ordinary skill in the art would have
`
`10
`
`
`
`
`
`recognized that the inventor possessed the claimed subject matter as a while may
`
`be similarly inadequate.”). In addition, as discussed below, the ’853 application
`
`does not describe the claims.
`
` At pp. 3-4 of the Motion, WVR cites to Figs. 1 and 18a-d and supporting
`
`discussion as describing “a theme of the displayed advertising, the theme indicated
`
`by data associated with a library of advertising in a network database accessible to
`
`the server apparatus.” The specification does not describe any “theme” of
`
`displayed advertising, or any “theme” indicated by data associated with a library.
`
`Instead, the specification describes a building directory for identifying a tenant’s
`
`“business area,” and displaying advertising “relating to the field” of that business.
`
`Ex. 2001, 31:3-11.
`
` At p. 4 of the Motion, WVR cites to 11:18-14:8 of the ’853 application as
`
`describing “local graphical imagery of establishments independently accessible
`
`without reference to location.” The cited portion of the specification, however,
`
`specifically describes imagery referenced by location, including “location graphic
`
`data files” which are displayed “as a floor map graphic 502 illustrating the location
`
`of the selected person or firm 504 on that floor in relation to the elevator cars 180.”
`
` Proposed claim 36 requires determining a context of a user’s selection that is
`
`independent of the accessed information, which is indefinite, because it requires
`
`two conditions which cannot both be achieved: (1) determining “context” for the
`
`11
`
`
`
`
`
`user’s selection (requiring that the user’s selection is considered), and (2) that the
`
`determination is independent of the information accessed via the function key
`
`(requiring that the user’s selection is not considered).
`
` Further, the specification does not describe determining context associated with
`
`user selection, independent of the information accessed via the generated soft
`
`function key. WVR cites to Fig. 18d and supporting discussion as describing this
`
`limitation (Motion, 4), but Fig. 18d and its related description does not describe
`
`selecting generated soft function keys, instead relying only on historical speech
`
`patterns. Separately, WVR refers to 34:4-10 of the ’853 application as “pertinent to
`
`understanding Claim 36.” Motion, 24. But the cited paragraph only describes
`
`retrieving and displaying advertising that relates to the user’s selection: selecting
`
`the “weather” function key draws the display of weather-related advertising; if the
`
`user accesses weather information, weather advertising is displayed. Moreover, the
`
`cited paragraph refers to advertising “for a local television station’s weather
`
`reports.” WVR does not explain how such an advertisement is “independent of”
`
`the weather information being accessed.
`
` At p. 4, the Motion purports to identify support for proposed new claim 37, but
`
`does not identify any portion of the specification that describes “data values
`
`associated with respective topical secondary content, the topical secondary content
`
`contextually related to the context indicated by the transmitted data.” The
`
`12
`
`
`
`
`
`specification does not describe “topical secondary content,” or explain whether it
`
`differs from the claimed “selection of secondary content having a logical
`
`relationship with the determined content.” Nor does the specification describe a
`
`“logical relationship,” or explain whether it differs from the “contextual related”
`
`limitation.
`
` At pp. 6-7, the Motion purports to identify support for the “secondary content”
`
`of claims 36-40, but the Motion only refers to “adaptive advertising or
`
`information” of 28:29-29:2 of the ’853 application. The specification does not
`
`describe “secondary content,” or explain its meaning or scope. Absent context or
`
`understanding of the scope of the term “secondary content,” it is indefinite because
`
`the claim does not particularly point out and distinctly claim the purported
`
`invention, and a person of ordinary skill in the art would not understand what is
`
`claimed. Power-One v. Artesyn Techs., 599 F.3d 1343, 1350 (Fed. Cir. 2010).
`
` For the same reason, the term also lacks written description support, because
`
`the original application does not show that the inventor was in possession of the
`
`claimed subject matter as of its filing date. Moba v. Diamond Automation, 325
`
`F.3d 1306, 1319 (Fed. Cir. 2003). The Motion does not identify any description of
`
`“secondary content”
`
`in
`
`the application beyond “adaptive advertising or
`
`information,” but asserts, without any evidence, that “reading the proposed claim
`
`in light of the specification and file histories, clearly indicates that the claims and
`
`13
`
`
`
`
`
`specification are not limited to advertising.” Motion, 6 (emphasis in original). The
`
`Motion makes no factual showing that the “secondary content” describes more
`
`than advertising. Further, if the claimed “secondary content” includes more than
`
`advertising, then the Motion has made no factual showing that the application
`
`supports the claimed subject matter as a whole.
`
` The Motion, at p. 6, states that “secondary content” is enabled because the
`
`specification describes a species (“adaptive advertising or information”) of the
`
`claimed genus (“secondary content”), citing the “Working Example” of MPEP
`
`2164.02. But the Motion does not explain how “adaptive advertising or
`
`information” is a species of a “secondary content” genus, so that there is no way to
`
`determine whether the claimed genus could be used in the same manner as the
`
`described species. MPEP 2164.02. Without explaining what constitutes “secondary
`
`content,” proposed claims 36-40 are not enabled.
`
`VII. The Proposed Substitute Claims are not Patentable Over the Prior Art
` The Motion does not present any limitations that would render the substitute
`
`claims non-obvious over the prior art, including the prior art cited in the Petition,
`
`e.g., Ito, Lind, Fujiwara, and Walters.
`
` WVR asserts that the prior art does not describe receiving digitized speech
`
`input consisting of only a name or a part of a name of an organization or entity
`
`which a user desires to locate. Motion, 9, 16. The application describes, at 12:3-
`
`14
`
`
`
`
`
`13:19, a disambiguation procedure for multiple entries matching the search term
`
`“Smith.” Either the matching entries are presented to the user until the user selects
`
`the correct entry, or the user appends additional information for a Boolean search.
`
`
`
`Ito describes a similar disambiguation procedure. A user can select from a
`
`plurality of facilities matched to a searched telephone number or address. Ito,
`
`11:21-30. Ito also describes a search based on partial telephone numbers, and
`
`sending all of the matching facilities to the vehicle for the user’s selection. Ito,
`
`16:5-19. Ito also described search by “facility name” (15:50-58), so that it would
`
`be obvious to apply the disambiguation procedure to a plurality of name matches.
`
` WVR asserts that the prior art does not describe compressing first digitized
`
`speech input using a digital data compression algorithm, and compressing the
`
`subsequent digitized speech input. Motion, 10, 18. WVR argues that Ito and
`
`Obradovich ’261 only describe compressing route data, digital video, or sound, and
`
`not speech. Motion, 10-11, 18. However, the ’853 application admits that
`
`compressing digitized speech using, e.g., CELP algorithms, was “well known in
`
`the signal processing art.” Ex. 2001, 8:25-30. Transmitting digitized speech to a
`
`remote server for recognition was also well known. See, Ex. 1024 (“House”), 30,
`
`Fig. 5.1 (describing a local computer that “digitizes the user’s utterance and ...
`
`sends the digitized signal to the SLAM server…. [T]he remote server provides
`
`both speech-capable documents and the speech recognition necessary for their full
`
`15
`
`
`
`
`
`use.”); see also, U.S. Patent No. 6,173,279 (“Levin,” Ex. 1025), 3:19-21, 4:20-22
`
`(“Spoken requests either from a PC microphone 105 or from a telephone 103 can
`
`be handled by a speech recognition system residing at the information server.”). In
`
`other words, compressing data for transmission was known (e.g., Ito); compressing
`
`sound data for transmission was known (e.g., Obradovich ’261); compression
`
`algorithms specific
`
`to speech data were known (e.g., ’853 application);
`
`transmitting digitized speech to remote servers for recognition was known (e.g.,
`
`House, Levin). Compressing speech input for transmitting to a remote server for
`
`recognition would have been obvious, at least because compressed data is easier to
`
`transmit, and a remote server for recognizing speech allows for inexpensive speech
`
`capture machines. See, e.g., Ito, 39:12-16; House, 24.
`
` WVR asserts that the prior art does not describe subsequent digitized speech
`
`comprising additional information, transmission of the subsequent digitized speech
`
`to the networked server apparatus to form a compound search term, and
`
`identification of a location based at least in part on the compound term. Motion,
`
`11, 17. WVR cites 12:3-13:39 of the ’853 application as describing this limitation,
`
`which describes searching for “Smith,” and then appending an additional term to
`
`search all “Smith” entries for the additional term. Ex. 2001, 13:7-14. Compound
`
`search terms, including Boolean searches, have long been known, so that any
`
`difference between transmitting a digitized speech input and a compound digitized
`
`16
`
`
`
`
`
`speech input would have been obvious. See, U.S. Patent No. 3,358,270 (“Crew,”
`
`Ex. 1026), 3:5-8, 6:44-51, 41:70-74; U.S. Patent No. 4,451,901 (“Wolfe,” Ex.
`
`1027), 1:24-32, 8:22-27; Levin, 6:40-7:4 (describing disambiguation and parallel
`
`search queries). Also, as discussed above, compressing digitized speech input for
`
`transmission to remote servers was well known (e.g., Ex. 2001, 8:25-30; House,
`
`30; Levin, 4:20-22). It would have been obvious to modify the system of Ito, which
`
`uses user inputs to search a remote navigation database (see Petition, 16), to
`
`compress a compound search term speech input for transmitting to a remote server
`
`for recognition, at least because compressed data is easier to transmit, a remote
`
`speech recognition server allows for inexpensive speech capture machines, and
`
`compound search terms reduce the number of responses to the search. See, Ito,
`
`39:12-16; House, 24; Wolfe, 1:24-32.
`
` WVR asserts that the prior art does not describe the “secondary content” of
`
`claim 32. Motion, 13-14. However, claim 32 does not recite “secondary content,”
`
`and the Motion does not identify any “secondary content” of claim 32 that is
`
`allegedly undisclosed by the prior art. The Motion does not provide any showing
`
`that proposed claim 32 is patentable over the prior art of record, including the prior
`
`art relied upon in the Petition and the Institution Decision.
`
` WVR asserts that the prior art does not describe advertising contextually related
`
`to the organization or entity, between an industry or business type of the desired
`
`17
`
`
`
`
`
`organization or entity, and a theme of the displayed advertising, the theme
`
`indicated by data associated with a library of advertising in a network database
`
`accessible to the server apparatus, of claim 32. Motion, 22. WVR argues that
`
`Newswire
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