Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 1 of 36 PageID #: 113
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`GUADA TECHNOLOGIES LLC,
`Plaintiff,
`
`v.
`
`NETFLIX, INC.,
`
`Defendant.
`GUADA TECHNOLOGIES LLC,
`Plaintiff,
`
`v.
`
`PANDORA MEDIA, INC.,
`Defendant.
`GUADA TECHNOLOGIES LLC,
`Plaintiff,
`
`v.
`
`SPOTIFY USA INC.,
`Defendant.
`
`CASE NO. 2:16-cv-1153-RWS-RSP
`
` PATENT CASE
`
`CASE NO. 2:16-cv-1154-RWS-RSP
`
` PATENT CASE
`
`CASE NO. 2:16-cv-1159-RWS-RSP
`
` PATENT CASE
`
`PLAINTIFF GUADA TECHNOLOGIES LLC’S COMBINED
`OPPOSITION TO DEFENDANTS NETFLIX, INC., PANDORA
`MEDIA, INC., AND SPOTIFY USA INC.’S MOTION TO DISMISS
`
`David R. Bennett
`(Illinois Bar No. 6244214)
`DIRECTION IP LAW
`P.O. Box 14184
`Chicago, IL 60614-0184
`Telephone: (312) 291-1667
`e-mail: dbennett@directionip.com
`ATTORNEY FOR PLAINTIFF
`GUADA TECHNOLOGIES LLC
`
`Dated: January 12, 2017
`
`IPR2017-01039
`Unified EX1003 Page 1
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 2 of 36 PageID #: 114
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF CONTENTS ................................................................................................................. i
`
`TABLE OF AUTHORITIES ......................................................................................................... iii
`
`TABLE OF EXHIBITS .................................................................................................................. v
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 3
`
`A.
`
`The Patent-in-Suit Addresses Problems Associated with A User
`Traversing Nodes in a Computerized Hierarchically Arranged Decisional
`Network....................................................................................................................3
`
`1.
`
`2.
`
`The Claims of the ‘379 Patent .................................................................... 5
`
`The Prosecution History Explains that the Claims Address
`Problems Navigating Hierarchically Arranged Decisional
`Networks ..................................................................................................... 7
`
`a.
`
`b.
`
`The Prior Art Raised in the First Office Action Did Not
`Address Hierarchical Networks of Navigable Nodes,
`Associating Keywords with Nodes, or Jumping to Nodes ............. 7
`
`In response to the Final Office Action, Applicant Explained
`“Jumping” to Nodes and Distinguished the Prior Art as Not
`Disclosing a Hierarchical Network or Navigating Networks ......... 8
`
`c.
`
`Appeal Briefing ............................................................................... 9
`
`B.
`
`Claim Construction Issues .....................................................................................10
`
`1.
`
`2.
`
`3.
`
`“A System Having Multiple Navigable Nodes Interconnected in a
`Hierarchical Arrangement” and “An Arrangement of Nodes
`Representable as a Hierarchical Graph Containing Vertices and
`Edges Connecting at Least Two of the Vertices” ..................................... 10
`
`“Jumping” ................................................................................................. 12
`
`“Jumping to the At Least One Node” and “Jumping to the Vertex” ........ 12
`
`III.
`
`STATEMENT OF THE LAW .......................................................................................... 13
`
`A.
`
`Motions for Judgment on the Pleadings Are Viewed with Disfavor .....................13
`
`IPR2017-01039
`Unified EX1003 Page 2
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 3 of 36 PageID #: 115
`
`B.
`
`C.
`
`Patent Eligibility under 35 U.S.C. §101 ................................................................14
`
`Computer Software Applications Are Patent Eligible Under §101 .......................16
`
`IV.
`
`ARGUMENT .................................................................................................................... 17
`
`A.
`
`The Claims in the Patent-in-Suit do not Recite an Abstract Idea ..........................17
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claims 1 and 7 of the ‘379 Patent Are Directed to
`Improved Computer Functionality and Not an Abstract Idea ................... 18
`
`Dependent Claims 2-6 of the ‘379 Patent Add Further Inventive
`Concepts to the Independent Claims......................................................... 20
`
`Defendants’ Alleged Abstract Ideas Ignore the Claim Language ............ 21
`
`The Claims Are Distinguishable from Cases Found by the Courts
`to be Directed to an Abstract Idea............................................................. 23
`
`a.
`
`b.
`
`c.
`
`The Claims Are Not Directed to Information Management ......... 23
`
`The Claims Specify Implementation Details for the Steps
`and are Not Result Oriented .......................................................... 24
`
`The Claimed Invention Does Not Perform a Well-Known
`Concept Such as Looking Up Terms in a Textbook Index ........... 25
`
`d.
`
`The Claims Do Not Require a Reference to Hardware ................. 26
`
`B.
`
`The Claims Have Material, Non-Generic Limitations that Render the
`Claims Patent Eligible Under §101........................................................................27
`
`CONCLUSION ............................................................................................................................. 29
`
`
`
`
`
`
`
`IPR2017-01039
`Unified EX1003 Page 3
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 4 of 36 PageID #: 116
`
`
`
`Cases
`
`TABLE OF CITATIONS
`
`Page(s)
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. ___. 134 S.Ct. 2347 (2014) ......................................................................... passim
`
`Bancorp Services v. Sun Life Assur. Co. of Canada,
`687 F. 3d 1266 (Fed.Cir. 2012)......................................................................................... 14
`
`Bascom Global Internet Serv. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed.Cir. 2016)................................................................................ 3, 16, 29
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) .......................................................................................................... 17
`
`California Inst. of Tech. v. Hughes Comm., Inc.,
`2014 U.S. Dist. WL 5661290 (C.D. Cal. Nov. 3, 2014) ............................................. 13, 14
`
`Campbell v. Wells Fargo Bank,
`781 F.2d 440 (5th Cir. 1986) ............................................................................................ 13
`
`DDR Holdings, LLC v. Hotels.com,
`773 F.3d 1245 (Fed.Cir. 2014)................................................................................... passim
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed.Cir. 2016)................................................................................... passim
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed.Cir. 2015).......................................................................................... 15
`
`Kaiser Aluminum & Chem. Sales v. Avondale Shipyards,
`677 F.2d 1045 (5th Cir. 1982) .......................................................................................... 13
`
`Lowery v. Texas A&M Univ. Sys.,
`117 F.3d 242 (5th Cir. 1997) ............................................................................................ 13
`
`Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
`566 U.S. ___, 132 S.Ct. 1289 (2012) ................................................................................ 15
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed.Cir. 2016)................................................................................... passim
`
`McZeal v. Sprint Nextel Corp.,
`501 F.3d 1354 (Fed.Cir. 2007).......................................................................................... 13
`
`Parker v. Flook,
`437 U.S. 584 (1978) .......................................................................................................... 17
`
`Phonometrics, Inc. v. Hospitality Franchise Systems,
`203 F.3d 790 (Fed.Cir. 2000)............................................................................................ 13
`
`Rockstar Consortium US LP, Inc. v. Samsung Electronics Co., Ltd.,
`2014 WL 1998053 (E.D. Tex. May 15, 2014) .................................................................. 14
`
`IPR2017-01039
`Unified EX1003 Page 4
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 5 of 36 PageID #: 117
`
`Rockstar Consortium US LP, Inc. v. Samsung Electronics Co., Ltd.,
`Case No. 2:13-cv-894, Dkt. No. 75 (E.D. Tex. July 21, 2014) (Gilstrap, J.) ................... 14
`
`Synopsys, Inc. v Mentor Graphics Corp.,
`839 F.3d 1138 (Fed.Cir. 2016).......................................................................................... 27
`
`Statutes
`
`35 U.S.C. §101 ............................................................................................................ 14, 16, 17, 29
`
`Rules
`
`Rule 12(b)(6), Fed.R.Civ.P. .......................................................................................................... 13
`
`
`
`
`
`IPR2017-01039
`Unified EX1003 Page 5
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 6 of 36 PageID #: 118
`
`
`
`TABLE OF EXHIBITS
`
`Exhibit A
`
`United States Patent No. 7,231,379
`
`Exhibit B
`
`Excerpt of Appendix attached to Application No. 10/299,359
`
`Exhibit C
`
`Office Action in Application No. 10/299,359 (‘379 patent) dated June 4,
`2004
`
`Exhibit D
`
`Response to Office Action in Application No. 10/299,359 dated June 4,
`2004 dated September 3, 2004
`
`Exhibit E
`
`Final Office Action in Application No. 10/299,359 dated December 3,
`2004
`
`Exhibit F
`
`Response After Final Office Action in Application No. 10/299,359 dated
`January 27, 2005
`
`Exhibit G
`
`Advisory Action in Application No. 10/299,359 dated March 7, 2005
`
`Exhibit H
`
`Applicant Appeal Brief in Application No. 10/299,359 dated May 31,
`2005
`
`Exhibit I
`
`Appeal Non-Final Rejection in Application No. 10/299,359 dated August
`24, 2005
`
`Exhibit J
`
`Reply Appeal Brief in Application No. 10/299,359 dated October 19, 2005
`
`Exhibit K
`
`Statement of Non-Compliance in Application No. 10/299,359 dated
`October 2, 2006
`
`Exhibit L
`
`Response to Statement of Non-Compliance in Application No. 10/299,359
`dated November 2, 2006
`
`Exhibit M
`
`Notice of Allowance in Application No. 10/299,359 dated January 25,
`2007
`
`Exhibit N
`
`Supplemental Notice of Allowance in Application No. 10/299,359 dated
`March 30, 2007
`
`
`
`IPR2017-01039
`Unified EX1003 Page 6
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 7 of 36 PageID #: 119
`
`Plaintiff Guada Technologies LLC (“Guada Technologies”) hereby files this Combined
`
`Opposition to Defendants Netflix, Inc., Pandora Media, Inc., and Spotify USA Inc.’s Motion to
`
`Dismiss (C.A. 2:16-cv-1153, -1154, -1159 each at Dkt. No. 13) (collectively “§101 Motions”).
`
`Pursuant to LR CV-7(g), Guada Technologies respectfully requests an oral hearing.
`
`I.
`
`INTRODUCTION
`
`The claims of U.S. Patent No. 7,231,379 (“the ‘379 patent”) are directed to a very
`
`particular technology setting: addressing a problem of users navigating network nodes in a
`
`computerized hierarchically arranged decisional network that must be navigated by a user as part
`
`of the processing, and that is also constructed to accept user inputs or data for navigation. (Ex.
`
`A1 at col. 2:25-30; Ex. H at 2). The object of navigating the system is to get the user from one
`
`node (usually starting with the first node) of the system to the goal node as quickly and
`
`efficiently as possible. (Id. at col. 2:9-12). A simple example of the hierarchically arranged
`
`decisional network is the telephone decisional network in which users responded to specific
`
`prompts (press 1 for Hardware, press 2 for Lumber, press 3 for paint, etc.) to proceed to the next
`
`node. Prior art systems required users to navigate the nodes in set pathways that made it difficult
`
`and time consuming for a user to reach goal nodes. (Id. at col. 2:10-18). For example, if a user
`
`was in a such a network and realized that the user had proceeded down the wrong path, the only
`
`options were to go back up the path previously traveled, or start over. (Ex. H at 2-3).
`
`Recognizing the problems in the prior art, the inventors of the ‘379 patent developed a
`
`method in which a user can navigate a computerized hierarchically arranged decisional network
`
`in a way that allows the user to skip from one node to another node that may be many rows down
`
`the network where the nodes are not be connected together adjacently. (Id. at col. 3:29-34). This
`
`1 Ex. A - N refer to the exhibits attached to the supporting Declaration of David R. Bennett.
`
`IPR2017-01039
`Unified EX1003 Page 7
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 8 of 36 PageID #: 120
`
`can be accomplished by associating each node with one or more descriptions (or prompts), and
`
`matching words in users’ requests and responses with those descriptions to enable the selection
`
`of nodes that may not be directly connected to the user’s current location in the hierarchically
`
`arranged decisional network. (Id. at col. 3:35-43).
`
`Defendants’ §101 Motions ignore the problem recognized by the inventors with
`
`navigating prior art user-interactive hierarchically arranged decisional networks, which did not
`
`exist prior to automated responsive computer systems. DDR Holdings, LLC v. Hotels.com, 773
`
`F.3d 1245, 1257 (Fed.Cir. 2014). Specifically, the “claims are directed to a specific
`
`implementation of a solution to a problem in the software arts,” and therefore are “not directed to
`
`an abstract idea.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.Cir. 2016) (citing
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014)); DDR Holdings, 773 F.3d
`
`at 1257. Here, the claims are not directed to an abstract idea because “the plain focus of the
`
`claims is on an improvement to computer functionality itself, not on economic or other task for
`
`which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at 1336.
`
`Furthermore, Defendant’s abstract idea is also inapplicable to the claims because it fails
`
`to address the problem solved by the claims of the patent-in-suit. For example, “using a keyword
`
`to navigate a hierarchy” would simply result in navigating using words to adjacent nodes in the
`
`flawed manner used in the prior art, rather than jumping to unconnected nodes associated with
`
`keywords as required by the claims.
`
`Even if the Court were to find that Defendants’ alleged abstract idea is applicable to the
`
`claims in the patent-in-suit, Defendants’ analysis of this second step likewise fails to follow
`
`Federal Circuit precedent requiring analysis of the claim limitations individually and as an
`
`ordered combination. Bascom Global Internet Serv. v. AT&T Mobility LLC, 827 F.3d 1341,
`
`IPR2017-01039
`Unified EX1003 Page 8
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 9 of 36 PageID #: 121
`
`1349-50 (Fed.Cir. 2016). Merely stating that the limitations are known in the prior art or can be
`
`performed on general purpose computers, as Defendants do, is insufficient to fail the second step
`
`because “an inventive concept can be found in the non-conventional and non-generic
`
`arrangement of known, conventional pieces.” Id. at 1350; Enfish, 822 F.3d at 1338. When the
`
`claims are correctly analyzed, the claims have material, non-generic limitations, including a
`
`particular functionality and arrangement for a computerized hierarchically configured decisional
`
`network that must be navigated as part of the processing and is constructed to accept inputs or
`
`data and process them in a manner that facilitates navigation of the network nodes more
`
`efficiently. The Court should therefore deny Defendants’ §101 Motion.
`
`II.
`
`BACKGROUND
`
`Guada Technologies owns all right, title, and interest in U.S. Patent No. 7,231,379 (“the
`
`patent-in-suit” or “the ‘379 patent”). (Dkt. No. 1 at ¶10; Ex. A). Guada Technologies filed a
`
`patent infringement suit against each Defendant in the E.D. Texas on October 14, 2016, accusing
`
`each Defendant of infringing claims of the ‘379 patent. (Dkt. No. 1).
`
`A. The Patent-in-Suit Addresses Problems Associated with A User Traversing
`Nodes in a Computerized Hierarchically Arranged Decisional Network
`
`The ‘379 patent issued on June 12, 2007 and is based on a patent application filed on
`
`November 19, 2002. (Ex. A at cover). The invention claimed in the ‘379 patent is a method
`
`implemented in a programmed computer with a hierarchically arranged decisional network that
`
`must be navigated as part of the processing and is constructed to accept inputs/data from users
`
`and process them in a manner that facilitates navigation of the network nodes more efficiently.
`
`(Id. at col. 2:25-30; col. 3:5-28). A hierarchically arranged decisional network is an arrangement
`
`of nodes (numbered boxes in figure below) connected by edges (lines connecting boxes) that are
`
`used to traverse from one node to another node through decisions at a particular node:
`
`IPR2017-01039
`Unified EX1003 Page 9
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 10 of 36 PageID #: 122
`
`
`
`The object of navigating the system is to get from the start to the desired node quickly and
`
`efficiently. (Id. at col. 2:9-12). This system is different from a “circuit” or “cycle” in which
`
`edges can loop back on themselves to create a closed path. (Id. at col. 2:67 – col. 3:3).
`
`To navigate a hierarchically arranged decisional network, a user provides responses to
`
`prompts or inputs data to navigate up or down through adjacent nodes in the hierarchical
`
`arrangement to reach a certain node to obtain information, perform a transaction,2 or reach a goal
`
`node. (Id. at col. 2:22-25; col. 3:5-28). For example, an interactive television program guide
`
`can be arranged as a hierarchically arranged decisional network. A user starts at the first node
`
`with a selection between films and shows. (Id. at Fig. 4). Upon the selection of films, the user is
`
`presented with another set of nodes to select such as genres of films (e.g., comedies, horror,
`
`drama). The user could then continue navigating down nodes until the goal node is reached.
`
`This method of navigating through specific pathways between nodes is inefficient. For
`
`example, if the user navigates down several nodes before realizing that the user is in the incorrect
`
`hierarchy, the user must either navigate back up the nodes or start from the beginning. (Ex. H at
`
`2-3). Such limited navigation can cause users to quickly become frustrated and give up. (Id. at
`
`col. 2:9-12). As networks become larger with more node levels, the ability to achieve the goal
`
`2 The term “transaction” as used herein relating to traversal through a hierarchy to a goal, not
`mathematical calculation per se. (Ex. A at col. 5:20-22).
`
`
`IPR2017-01039
`Unified EX1003 Page 10
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 11 of 36 PageID #: 123
`
`node becomes even more difficult because it requires an excessive number of nodes to achieve
`
`the desired goal, and can discourage users before the goal is reached. (Id. at col. 2:15-18).
`
`The invention solves the problems of the prior art by not locking the user into movement
`
`up or down from node to adjacent node, or having to start over at the top node. Instead, the
`
`invention allows users to “jump” laterally from one branch to another if the user navigates to a
`
`wrong branch of the network or if the user changes the intended goal. (Id. at col. 3:35-37). The
`
`problem is solved by supplementing the allowed movement between adjacent nodes with
`
`navigation by matching words in a user’s request/response to keywords associated with non-
`
`adjacent nodes so that the user can jump to nodes within the network that are not directly
`
`connected to the user’s current location. (Id. at col. 3:35-43). In other words, “the user is not
`
`bound by the rigid hierarchical arrangement because an input or response can cause a direct jump
`
`to a different node, thereby bypassing intervening nodes that would otherwise need to be
`
`traversed according to approaches of the prior art.” (Ex. H at 3).
`
`1.
`
`The Claims of the ‘379 Patent
`
`The ‘379 Patent has two independent claims:
`
`1. A method performed in a system having multiple navigable nodes
`interconnected in a hierarchical arrangement comprising:
`
`at a first node, receiving an input from a user of the system, the
`input containing at least one word identifiable with at least one
`keyword from among multiple keywords,
`
`identifying at least one node, other than the first node, that is not
`directly connected to the first node but is associated with the at
`least one keyword, and
`
`jumping to the at least one node.
`
`7. A method performed in connection with an arrangement of nodes
`representable as a hierarchical graph containing vertices and edges
`connecting at least two of the vertices, the method comprising:
`
`IPR2017-01039
`Unified EX1003 Page 11
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 12 of 36 PageID #: 124
`
`receiving an input from a user as a response to a verbal description
`associated with a first vertex;
`
`analyzing the input to identify a meaningful term that can be
`associated with at least one keyword;
`
`selecting a vertex in the graph structure that is not connected by an
`edge to the first vertex, based upon an association between the
`meaningful term and the at least one keyword and a correlation
`between the at least one keyword and the vertex; and jumping to
`the vertex.
`
`(Ex. A at col. 22:47-57, col. 23:11 – col. 24:11). The invention addresses the then-existing
`
`problem of navigating a hierarchically arranged decisional network that accept inputs or data
`
`from users to navigate nodes/vertices in the network. The method starts with a computerized
`
`system of multiple nodes interconnected in a hierarchically arranged decisional network in which
`
`a user provides inputs/responses at each node to navigate through adjacent nodes in the
`
`hierarchical arrangement. (Infra §II.B). The nodes/vertices are also associated with keywords.
`
`A user provides a word input at a first node.3 The system identifies a node associated with the
`
`keyword that is not connected to the first node. The system then jumps to the unconnected node
`
`associated with the keyword. The patentee defined “jumping” as a direct traversal from one
`
`node to another node that is not directly connected to it (i.e., without traversal through any
`
`intervening nodes or vertices or to a node or vertex whose only least common ancestor with that
`
`node or vertex is the root node or vertex). (Infra §II.B.2).
`
`Dependent claims 2, 3, and 5 depend directly from claim 1. (Id. at col. 22:58-62, col.
`
`23:1-6). Claim 2 additionally requires that the user provide a “verbal description” for a node.
`
`This is exemplified through the examples of telephone-based hierarchically arranged decisional
`
`networks. (E.g., id. at col. 3:49-58). Claim 3 requires searching a thesaurus correlating key
`
`3 Claim 7 is narrower than claim 1 because it requires that at the first node the user is responding
`to a verbal description.
`
`IPR2017-01039
`Unified EX1003 Page 12
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 13 of 36 PageID #: 125
`
`words to synonyms. This allows users to more efficiently traverse to the goal node without
`
`having to guess specific keywords associated with the node. (E.g., id. at col. 8:33-56). Claim 4
`
`depends from claim 3 and additionally requires identifying a synonym as a keyword. Claim 5
`
`requires that if an entered word is not a keyword or synonym, the meaning for the word is
`
`learned by the system so that it can be treated as a synonym for at least one keyword. Claim 6,
`
`which depends from claim 5, requires that the new word is added to a thesaurus so that the word
`
`will be treated as a synonym for at least one keyword.
`
`2.
`
`The Prosecution History Explains that the Claims Address
`Problems Navigating Hierarchically Arranged Decisional
`Networks
`
`The application leading to the ‘379 patent was filed on November 19, 2002. (Ex. A at
`
`cover). Claims 1-7 were not amended during prosecution and therefore issued as filed. In
`
`support of the application, the inventions submitted an appendix with over 100 pages of code and
`
`data files as an exemplary implementation of the invention. (e.g., Ex. B). The prosecution
`
`explains that the claimed invention is directed to a particular type of network, the problem in the
`
`prior art systems solved by the invention, and the importance of the construction of “jumping.”
`
`a.
`
`The Prior Art Raised in the First Office Action Did Not
`Address Hierarchical Networks of Navigable Nodes,
`Associating Keywords with Nodes, or Jumping to Nodes
`
`In the first office action, the examiner objected to the language “jumping to at least one
`
`node” (claim 1) and “jumping to the vertex” (claim 7) as unclear. (Ex. C at 3). Claims 1-7 were
`
`also rejected as obvious over Lin (U.S. Patent No. 6,675,159)4 in view of Thiesson (U.S. Patent
`
`No. 6,408,290). For claims 1 and 7, the examiner contended that Lin taught every limitation
`
`except “not directly connected to the first node but is associated with the at least one keyword,
`
`4 The Office Action incorrectly referred to the Lin patent as 6,676,159 in the examiner’s
`rejection section. (Ex. D at 3).
`
`IPR2017-01039
`Unified EX1003 Page 13
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 14 of 36 PageID #: 126
`
`and jumping to the at least one node.” (Id. at 4). The examiner argued that Thiessen taught the
`
`missing limitation and that the motivation to modify Lin using Thiesson was Thiesson provides
`
`an “improved collaborative filtering system.” (Id.).
`
`In response to the first office action, applicant argued that Lin and Thiessen are directed
`
`to Bayesian causal networks,5 rather than a hierarchically arranged decisional network. (Ex. D at
`
`6-7). Furthermore, neither Lin nor Thiessen “provides for anything more than direct traversal
`
`along a path of connected nodes” and did not disclose jumping between nodes. (Id. at 5-7).
`
`b.
`
`In response to the Final Office Action, Applicant Explained
`“Jumping” to Nodes and Distinguished the Prior Art as Not
`Disclosing a Hierarchical Network or Navigating Networks
`
`In the next office action, the examiner continued the objection that “jumping” is not
`
`clearly defined in the specification. (Ex. E at 2). Applicant explained that the term “jumping” is
`
`defined both explicitly and implicitly in the specification by identifying and quoting several
`
`portions of the specification. (Ex. F at 4-6). Applicant also explained the problems with
`
`traversing prior art hierarchical networks, which did not apply to Bayesian networks:
`
`If one looks at the simplified hierarchical network application [patent]
`FIG. 1 (which is generic to the various specific applications described in
`the application where such a network could be used), according to the
`prior art, if one were to navigate through the graph, one would always start
`at the box labeled “1”. To get to the box labeled “5”, one would have to
`navigate from box “1” to box “2” to box “5”. If it turned out that the user's
`intended goal really should have placed them at box “7”, they would have
`to back-navigate from box “5” to box “2” to box “1” then to box “3” and
`finally to box “7”.
`
`(Id. at 6-7). Applicant then explained the improved operation of the claimed invention:
`
`In contrast, with the same example, if the user had navigated to box “5”
`but the intended goal would have placed them at box “7”, through use of
`the invention of claim 1 or claim 7, the “at least one keyword” (claim 1) or
`
`5 A Bayesian network is a graphical model of variables that represents how changes to one
`variable affects other interconnected variables. (See Ex. H at 10-11, 12; Ex. F at 8-9).
`
`IPR2017-01039
`Unified EX1003 Page 14
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 15 of 36 PageID #: 127
`
`the “meaningful term” (claim 7) makes it possible for the system to know,
`in response to the user's input, that the intended goal would place the user
`at box “7” and it would cause a direct jump from box “5” to box “7”
`without traversal through a path containing any of the boxes in between
`even though there is no direct connection between box “5” and box “7”!
`
`(Id. at 7).
`
`c.
`
`Appeal Briefing
`
`After an advisory action in which the examiner affirmed the final rejection, the applicant
`
`filed an appeal brief. (Ex. G, Ex. H). Applicant explained that the invention related to
`
`hierarchically arranged systems such as interactive voice response systems, interactive television
`
`program listing systems, geographic information systems, and automated voice response
`
`systems. (Ex. H at 2). Applicant argued that the claimed invention solved the inadequacies of
`
`prior art navigation of hierarchically arranged decisional networks by “allowing the user to
`
`‘jump’ from one node in the hierarchy to another node that is not directly connected to that node,
`
`without having to traverse through every intervening node in the path.” (Id. at 3 (citing Ex. F at
`
`6-7)). By implementing the claimed invention, “the user is not bound by the rigid hierarchical
`
`arrangement because an input or response can cause a direct jump to a different node, thereby
`
`bypassing intervening nodes that would otherwise need to be traversed according to approaches
`
`of the prior art.” (Id.). Applicant then defined “jumping” (as disclosed explicitly and implicitly
`
`in the specification) as “a direct traversal from one node or vertex to another node or vertex that
`
`is not directly connected to it (i.e., without traversal through any intervening nodes or vertices or
`
`to a node or vertex whose only least common ancestor with that node or vertex is the root node
`
`or vertex).” (Id.). Applicant reiterated the arguments that Thiessen and Lin disclosed the wrong
`
`type of network and did not disclose “jumping.” (Id. at 9-10, 13-14).
`
`In response to the applicant’s appeal brief, the examiner sought to reopen the prosecution
`
`by rejection the claims as obvious over Lin in view of Pooser (U.S. Patent No. 5,812,134). (Ex. I
`
`IPR2017-01039
`Unified EX1003 Page 15
`
`

`

`Case 2:16-cv-01153-RWS-RSP Document 20 Filed 01/12/17 Page 16 of 36 PageID #: 128
`
`at 3-4). The examiner argued that Pooser disclosed jumping by “allow[ing] the user to skip any
`
`part of the thread, return to a previous node (or element), or jump to a related node on another
`
`thread.” (Id. at 4).
`
`Applicant filed an appeal reply brief explaining that Pooser disclosed a user, not a
`
`system, selecting nodes within a hierarchical structure and it does not use keywords. (Ex. J at 9).
`
`In Pooser, the user is aware of all available nodes and, in view of the graphical display of the
`
`entire hierarchical structure, the user navigates by selecting the desired node in the hierarchical
`
`structure from the display of the entire structure. (Id.). The system therefore does not jump to
`
`the node. (Id. at 9-10). In contrast, in the claimed invention a user “presently located at an
`
`individual node gives the system an input, from that input either (i) a keyword association occurs
`
`and, as a result, the system then jumps the user to a node associated with the at least one
`
`keyword of the systems selection (claim 1) or (ii) a ‘meaningful term’ is identified from the input
`
`and then the system jumps the user ‘based upon an association between the meaningful term and
`
`the at least one keyword and a correlation between the at least one keyword and the vertex’
`
`(claim 7.)” (Id. at 10). The examiner allowed all pending claims. (Ex. K, Ex. L; Ex. M; Ex. N).
`
`B. Claim Construction Issues
`
`There are at least three claim terms in the ‘379 patent that require construction prior to
`
`addressing patent-eligible under §101. These terms demonstrate that the claims are not directed
`
`to an abstract idea and also have an inve