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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————————
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`EVERNOTE CORPORATION,
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`Petitioner
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`v.
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`TALSK RESEARCH, INC.,
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`Patent Owner
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`———————————
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`Case IPR2017-01154
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`U.S. Patent No. 7,178,097
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`———————————
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`PATENT OWNER PRELIMINARY RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Patent Owner, TALSK RESEARCH, INC. (“Talsk”), respectfully submits
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`this Preliminary Response to Petitioner’s petition seeking inter partes review of
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`claims 1-24 of U.S. Patent No. 7,178,097 (“the ‘097 patent”). This filing is timely
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`under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it is within three months of
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`the April 6, 2017 date of the Notice granting the Petition a filing date. (Paper No.
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`3.)
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`TABLE OF CONTENTS
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`LIST OF EXHIBITS ................................................................................................ iii
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`I.
`
`II.
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`INTRODUCTION ........................................................................................... 1
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`THE ‘097 PATENT ......................................................................................... 3
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`III. CLAIM CONSTRUCTION ............................................................................ 6
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`IV. THE PETITION FAILS TO ADEQUATELY ARTICULATE THE
`ASSERTED GROUNDS OF REJECTION .................................................... 7
`
`A.
`
`THE PETITION FAILS TO PRESENT COHERENT
`OBVIOUSNESS GROUNDS, LEAVING IT TO THE
`PATENT OWNER TO GUESS AS TO THE INTENDED
`COMBINATION AND/OR RATIONALES ........................................ 7
`
`V.
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`PETITIONER’S MOTIVATIONS TO COMBINE ARE
`INCORRECT OR INAPPLICABLE TO THE ASSERTED
`COMBINATIONS OF ART ......................................................................... 12
`
`A.
`
`B.
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`C.
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`D.
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`E.
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`“SIMILAR FUNCTIONALITY” IS NOT A PROPER
`MOTIVATION TO COMBINE CAPLAN AND KAHN
`(GROUND 1) ...................................................................................... 12
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`“ANALOGOUS-ART” IS NOT A PROPER MOTIVATION
`TO COMBINE CAPLAN AND KAHN (GROUND 1) ..................... 13
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`“SAME FIELD OF ENDEAVOR” IS NOT A PROPER
`MOTIVATION TO COMBINE CAPLAN AND KAHN
`(GROUND 1) ...................................................................................... 15
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`“REASONABLE EXPECTATION OF SUCCESS” IS NOT A
`PROPER MOTIVATION TO COMBINE CAPLAN AND
`KAHN (GROUND 1) .......................................................................... 15
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`“SAME FIELD OF ENDEAVOR” IS NOT A PROPER
`MOTIVATION TO COMBINE THE APA, GEMTEQ, AND
`KAHN (GROUND 2) .......................................................................... 16
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`F.
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`PETITIONER TAKES MOTIVATION FROM THE ‘097
`PATENT USING IMPERMISSIBLE HINDSIGHT (GROUND
`2) .......................................................................................................... 18
`
`G.
`
`THERE IS NO MOTIVATION TO COMBINE KAHN WITH
`THE APA AND GEMTEQ (GROUND 2) ......................................... 19
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`VI. PETITIONER HAS FAILED TO SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS FOR ANY OF ITS GROUNDS .................. 21
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`A.
`
`B.
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`PETITIONER FAILED TO SHOW THAT CAPLAN’S AND
`KAHN’S DATABASES USE IDENTIFIERS TO RETRIEVE
`STORED WEB SITES (GROUND 1, CLAIM 8) .............................. 21
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`APA, IN VIEW OF GEMTEQ AND KAHN, DOES NOT
`DISCLOSE OR SUGGEST “LISTING IDENTIFICATION OF
`THE WEB SITE ALONG WITH THE DISTINCTIVE KEY IN
`THE BIBLIOGRAPHY OF THE MANUSCRIPT” (GROUND
`2, CLAIM 8) ........................................................................................ 28
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`C.
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`CLAIMS 1-7 AND 9-28 ..................................................................... 31
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`VII. CONCLUSION .............................................................................................. 32
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`LIST OF EXHIBITS
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`2001
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`Declaration of Jon Scarbrough
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`iii
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`I.
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`INTRODUCTION
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` Petitioner’s proposed obviousness grounds are incomprehensible. Not only
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`are the proposed grounds internally conflicting as to which of the primary or
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`secondary reference is being modified, but no articulable rationale is provided
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`anywhere as to how or why one reference would be modified in view of another.
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`Rather than addressing the Graham Factors, as is its burden, petitioner shrugs off
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`its obligation in the form of a “feature list” concluding that any combination of
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`such features is obvious. (Graham v. John Deere Co., 383 U.S. 1, 17 (U.S. Feb. 21,
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`1966).)
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`Stated simply, Petitioner hopes to convince the Board that if individual
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`patent claim elements can be demonstrated as old, any claimed combinations of
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`those elements must be considered obvious. But, a proper obviousness showing
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`requires far more than the litigation inspired short-cuts that comprise the petition.
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`The Federal Circuit has famously denounced such piecemeal obviousness analyses
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`since its inception:
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`That all elements of an invention may have been old (the normal
`situation), or some old and some new, or all new, is however, simply
`irrelevant. Virtually all inventions are combinations and virtually all
`are combinations of old elements. A court must consider what the
`prior art as a whole would have suggested to one skilled in the art.
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`Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 698 (Fed. Cir. 1983).
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`The petition follows the same crude, short-cut formula: asserting that the
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`prior art references are in the same field of endeavor as the ‘097 patent, that each
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`of the references describe many of the same “features” as the ‘097 patent, and thus,
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`in conclusion, the claims of the ‘097 patent are obvious. Noticeably missing is any
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`semblance of a coherent ground under § 103 that provides an articulable rationale
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`for why or how the primary reference is to be modified under Petitioner’s theory.
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`Further prejudicing Patentee, Petitioner’s confusing presentation renders the
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`proposed grounds unintelligible where, for each element of each of the claims,
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`Petitioner explains how every one of the references allegedly describes such
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`elements. Without any coherent grounds to address, presumably the Petitioner
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`seeks to frustrate Patentee’s ability to address the petition, or to goad it into
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`addressing the universe of art cited in the petition. But, Inter Partes Review
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`simply does not work that way. (In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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`1364, 1375 (Fed. Cir. July 25, 2016).)
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`Petitioner’s identification of various features spread across the prior art,
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`without any articulable rationale as to a coherent ground of unpatentability, fails.
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`For these reasons as discussed in detail below, the Board should deny
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`institution.
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`II. THE ‘097 PATENT
`Authors and researchers increasingly cite to Internet publications as the
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`world of publishing has become almost exclusively electronic. Electronic
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`publication has quickly supplanted traditional printing practices as a way to ensure
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`the most immediate and up-to-date information. (Ex. 1001, 1:17-49.) However, due
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`to the fluid nature of the Internet, and the temporal nature of the on-line world, the
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`ability to rely on the continued existence of an electronic publication cannot be
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`guaranteed in the same manner as a traditional, hard-copy publication. (Ex. 1001,
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`2:16-19.) For example, websites may undergo frequent, invisible
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`updates/modifications, may move or be removed from their original locations, or
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`may change from being publicly available to being private, all without notice. (Ex.
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`1001, 1:58-63.)
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`The ‘097 patent solves this problem of electronic publishing by using
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`distinctive keys to identify specific archived reference materials on an Internet-
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`accessible database, through which authors can be assured that their audiences are
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`able to review the very same reference materials that they reviewed as a sort of
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`“snapshot” in time:
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`The database acts as the bibliography of the manuscript by including a
`listing of information for each website cited in the manuscript.
`However, the database is more than a bibliography in that a copy in
`verbatim of each website used by the author is also stored on the
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`database. In effect, the database archives the reference material for
`subsequent retrieval. Accordingly, if the website is modified or
`removed from the Internet after the date of access by the author or
`after the manuscript is distributed to an audience, the audience may
`access the database to retrieve the actual website.
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`(Ex. 1001, 5:46-56, see also 5:34-45.)
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`Fig. 1 of the ‘097 patent, below, shows a block diagram of an exemplary
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`relationship between an author 14 of a manuscript, an audience 16 of the
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`manuscript, and database 18 connected to Internet 12, while Figs. 3 and 4 show
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`how reference materials can be archived and retrieved using the distinctive keys by
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`authors and audiences, respectively to ensure the reliability of electronically
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`published sources.
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`When author 14 cites to a website as reference material in a manuscript,
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`author 14 transfers, to the Internet 12, information identifying the website. In
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`response, database 18 receives the website identification information and obtains a
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`copy of the website, which is verbatim to the website at the time author 14
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`transferred the website identification information to the Internet 12. Database 18
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`then stores the website identification information with the copy of the website. (Ex.
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`1001, 6:15-33.)
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`A distinctive key is then assigned to the website identification information
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`and the copy of the website on database 18. When audience 16 requests a copy of
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`the website in the manuscript’s bibliography, audience 16 transfers the distinctive
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`key to database 18, which in turn uses the distinctive key to provide the copy of the
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`website to audience 16. (Ex. 1001, 6:34-50.)
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`In this way, “[t]he copy of the website provided by database 18 to audience
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`16 is an exact copy of the website when author 14 cited the website in the
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`manuscript and submitted to database 18.” (Ex. 1001, 6:51-53.) Therefore, those
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`that desire access to a manuscript’s reference material to lookup or otherwise
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`verify its contents are provided “access to an exact copy of the reference material
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`cited by the author of the manuscript,” which had been protected from removal or
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`continuous modification on the Internet. (Ex. 1001, 4:45-62.)
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`III. CLAIM CONSTRUCTION
`For purposes of this inter partes review, the claims of the ‘097 patent are
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`accorded a “broadest reasonable construction in light of the specification of the
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`patent in which [they] appear[].” See 37 C.F.R. § 42.100(b).
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`In view of the above, claim interpretations submitted herein for the purpose
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`of demonstrating why inter partes review should be denied are not binding upon
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`litigants in any litigation, nor do such claim interpretations correspond to the
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`construction of claims under the legal standards that are mandated to be used by
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`the courts in litigation. The interpretation of the claims presented either implicitly
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`or explicitly herein should not be viewed as constituting, in whole or in part, Patent
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`Owner’s own interpretation and/or construction of such claims for the purposes of
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`any current or future litigation. Instead, such constructions in this proceeding
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`should be viewed only as constituting an interpretation of the claims under the
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`broadest reasonable interpretation (“BRI”) standard.
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`IV. THE PETITION FAILS TO ADEQUATELY ARTICULATE THE
`ASSERTED GROUNDS OF REJECTION
`A. The Petition fails to present coherent obviousness grounds,
`leaving it to the Patent Owner to guess as to the intended
`combination and/or rationales
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`The explanation of Petitioner’s Ground 1 is based upon a framing of the
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`claims into “features” allegedly described by Patent Owner during prosecution.
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`(Petition, p. 17.) The Petition then proceeds to explain how Caplan discloses three
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`of the features, as well as how Kahn discloses the same three features. (Petition,
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`pp. 17-19.) This confusion is then carried throughout the explanation for the
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`Grounds 1 and 2, leaving Patent Owner guessing as to which references are being
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`combined with which and how this presentation in any way comports with the
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`Graham factors (e.g., resolving the scope and content of the prior art, the
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`differences between the claimed invention and the prior art, and the level of
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`ordinary skill in the art; see Graham v. John Deere Co., 383 U.S. 1, 17 (U.S. Feb.
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`21, 1966)).
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`For example, claim 8(a) recites “an author of a manuscript using a web site
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`on the Internet as a reference for the manuscript.” (Petition, p. 21.) In Ground 1,
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`the Petition first asserts that Caplan authors including citations to URLs for
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`websites. (Petition, p. 21.) The Petition then goes into detail about Kahn’s use of
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`digital objects, explaining that a POSA “would understand that the digital objects
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`in Kahn would include and be suitable to be the websites referenced by Caplan.”
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`(Petition, p. 22.)
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`Petitioner’s use of Caplan and Kahn as somehow interchangeable, yet,
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`insisting one somehow modifies the other, is incoherent. It is unclear whether
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`Petitioner chose to use Caplan’s websites in Kahn’s system of digital objects, or
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`whether Petitioner chose to expand Caplan’s websites to include other digital
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`objects, or whether some other combination is being made. Petitioner simply
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`makes no effort in explaining what its theory is with respect to these claim
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`elements/references.
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`As another example, claim 8(d) recites “associating a distinctive key to the
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`copy of the web site.” (Petition, p. 24.) In Ground 1, the Petition first asserts that
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`both Caplan and Kahn disclose affixing a unique identifier to an archived webpage.
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`(Petition, p. 24.) The Petition then explains the alleged benefits of Caplan’s
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`identifiers (including giving permanence to a reference) and also explaining the
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`alleged benefits of Kahn’s identifiers (useful with objects located at multiple
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`locations and changing locations).
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`Petitioner’s manner of using Caplan and Kahn here is also not explained.
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`Patentee is left guessing whether Petitioner chose to use Caplan’s identifiers with
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`some aspect of Kahn’s handles, or vice versa, or whether Caplan’s identifiers and
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`Kahn’s handles are supposed to exist side-by-side in some combined system.
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`Again, Petitioner simply makes no effort in explaining what its theory is with
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`respect to these claim elements/references.
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`As another example, claim 8(c) recites “the database obtaining a copy of the
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`website from the Internet upon receiving the web site address from the author such
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`that the copy of the web site obtained by the database is verbatim to the web site as
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`on the Internet at the time the author transmitted the web site address to the
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`database.” (Petition, p. 42.) In Ground 2, the Petition first asserts that Gemteq
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`discloses this claim, then states that “Kahn also discloses this limitation.” (Petition,
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`p. 42.)
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`Petitioner’s manner of using Gemteq and Kahn here is the same circular
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`logic. It is unclear why Petitioner cites to both Gemteq and Kahn, and it appears
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`Petitioner believes each of them adequately disclose claim 8(c) individually. It is
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`unclear which alleged database is being used in Petitioner’s combination,
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`Gemteq’s or Kahn’s, or whether some aspect of Kahn’s alleged database is being
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`combined with Gemteq’s alleged database, or vice versa. Petitioner simply makes
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`no effort in explaining what its theory is with respect to these claim
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`elements/references.
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`Petitioner’s intentions in applying the teachings of Caplan to Kahn, or Kahn
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`to Caplan, or Gemteq to Kahn, or Kahn to Gemteq, to each of the claimed elements
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`cannot be readily discerned because of Petitioner’s decision to address the claimed
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`elements multiple times over multiple theories without any articulable rationale of
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`narrative explanation. As such, the Petition fails to shape its grounds in anything
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`remotely satisfying the Graham factors. Which references are being relied upon to
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`disclose the claimed subject matter, what are the differences between the prior art
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`and the claimed subject matter, in what manner are the references being combined
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`to resolve such differences? Such questions cannot be answered because Petitioner
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`decided to cite inconsistent positions in each section of its grounds of rejection,
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`hoping that the PTAB will somehow formulate proper rejections for it.
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`It is Petitioner’s responsibility “to explain specific evidence that support its
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`arguments, not the Board’s responsibility to search the record and piece together
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`what may support Petitioner’s arguments.” (Dominion Dealer Solutions, LLC v.
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`Autoalert, Inc., Case IPR2013-00225, Paper 15 at 4 (PTAB Oct. 10, 2013).)
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`Simply pointing to claimed functionality in secondary references, without
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`explaining how their systems or structures can be combined with the systems or
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`structures of the primary references, is not near enough to meet the requirements of
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`35 U.S.C. § 103. Obviousness is not established by the mere fact that prior art
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`systems perform the same functions as the claimed system. Cf. In re Ruskin, 347
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`F.2d 843, 846, 146 USPQ 211 (CCPA 1965) (even where a prior art device is the
`
`“functional equivalent” of a patented product, it does not anticipate unless it
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`discloses the structure required by the asserted claims) (cited in Old Reliable
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`Wholesale Inc. v. Cornell Corp., 635 F.3d 539, 97 USPQ2d 1993 (Fed. Cir. 2011));
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`Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468, 15 USPQ
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`1525, 1528 (Fed. Cir. 1990) (“Claim 1 of [B&L patent] is an apparatus claim, and
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`apparatus claims cover what a device is, not what a device does. An invention need
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`not operate differently than the prior art to be patentable, but need only be [un
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`obviously] different.”). Thus, Petitioner’s identification of various distinct
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`structures in the prior art that, allegedly, collectively perform the functions claimed
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`in the ‘097 patent is not sufficient to demonstrate the claims would have been
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`obvious.
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`As to the few instances where the Petitioner’s explanations and rationales in
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`its grounds of unpatentability are slightly more coherent, these positions are
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`likewise deficient.
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`V.
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`PETITIONER’S MOTIVATIONS TO COMBINE ARE INCORRECT
`OR INAPPLICABLE TO THE ASSERTED COMBINATIONS OF
`ART
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`A.
`
` “Similar functionality” is not a proper motivation to
`combine Caplan and Kahn (Ground 1)
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`Petitioner asserts that the “combination of Caplan and Kahn would have
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`involved no more than the predictable use of prior art techniques according to the
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`functions established in the respective prior art disclosures.” (Petition, p. 20.)
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`Petitioner further asserts that Caplan “identifies several existing systems that
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`satisfy three basic functional requirements” and that “Kahn addresses and meets
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`these same three functional requirements.” (Petition, p. 20.)
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`These statements amount to nothing more than assertions that Caplan and
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`Kahn are analogous art or in the same field of endeavor, which does not establish a
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`motivation to combine Caplan and Kahn. (See, e.g., Ex parte Borgwardt, Appeal
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`2012-009099, Decision on Appeal at 3-4 (PTAB Oct. 14, 2014), stating that
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`statements about “the results of the proposed combination” do not “articulat[e] a
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`reason for making it” and that “the fact that references relate to the same technical
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`field … does not, without more, demonstrate the obviousness of their
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`combination.”)
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`For example, Petitioner failed to explain how Caplan’s system satisfies the
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`alleged “three basic functional requirements,” how Caplan’s systems are deficient
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`with respect to the claims of the ‘097 patent, how Kahn’s system of satisfying the
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`“three functional requirements” could have resolved any deficiencies in Caplan’s
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`systems, and why a POSA would have implemented features of Kahn’s system into
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`Caplan’s systems to resolve those deficiencies.
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`Simply pointing to claimed functionality in the references, without
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`explaining how their systems or structures can be combined is not near enough to
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`meet the requirements of 35 U.S.C. § 103. Obviousness is not established by the
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`mere fact that prior art systems perform the same functions as the claimed system.
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`Cf. In re Ruskin, 347 F.2d 843, 846, 146 USPQ 211 (CCPA 1965) (even where a
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`prior art device is the “functional equivalent” of a patented product, it does not
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`anticipate unless it discloses the structure required by the asserted claims) (cited in
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`Old Reliable Wholesale Inc. v. Cornell Corp., 635 F.3d 539, 97 USPQ2d 1993
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`(Fed. Cir. 2011)); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
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`1468, 15 USPQ 1525, 1528 (Fed. Cir. 1990)). Thus, Petitioner’s identification of
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`common functions or goals of the prior art is not sufficient to demonstrate the
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`claims would have been obvious.
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`B.
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`“Analogous-art” is not a proper motivation to combine
`Caplan and Kahn (Ground 1)
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`Petitioner asserts that there is a motivation to combine Caplan and Kahn
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`because they both address alleged problems with website citations in manuscripts
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`through the use of identifiers. (Petitioner, p. 19.) However, this statement does not
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`explain how or why a POSA would have combined Caplan and Kahn. The fact that
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`Caplan and Kahn may be analogous art does not, by itself, establish that it would
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`have been obvious to combine their features. (See Front Row Technologies, LLC v.
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`MLB Advanced Media, L.P., Case IPR2015-01932, Paper 7 at 20-21 (PTAB March
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`25, 2016); Ex parte Borgwardt, Appeal 2012-009099, Decision on Appeal at 3-4
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`(PTAB Oct. 14, 2014).)
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`Additionally, Petitioner cites to several Federal Circuit and PTAB decisions
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`in support of its arguments. (Petition, pp. 19-20.) But, unlike the courts’ opinions
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`in those cases, Petitioner has not provided any detailed analysis into why Kahn
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`would be combined with Caplan or even what such a combination would look like.
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`In contrast, one of the cases cited by Petitioner, In re Inland Steel Co., includes a
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`proper obviousness analysis by the court, including specific descriptions of the
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`content of the primary reference, the content of the secondary reference, why the
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`benefits of the secondary reference directly applied to the primary reference, and
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`how the primary reference would have ultimately benefitted from a combination
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`with the secondary reference. (In re Inland Steel Co., 265 F.3d 1354, 1362 (Fed.
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`Cir. 2001).) No comparable analyses can be found in the instant Petition.
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`C.
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`“Same field of endeavor” is not a proper motivation to
`combine Caplan and Kahn (Ground 1)
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`Petitioner asserts that both Caplan and Kahn “relate to the same field of
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`archiving content cited in reference materials.” (Petition, p. 20.) While this may be
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`true, the fact that Caplan and Kahn may be in the same field of endeavor does not,
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`by itself, establish that it would have been obvious to combine their features. (See
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`Front Row Technologies, LLC v. MLB Advanced Media, L.P., Case IPR2015-
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`01932, Paper 7 at 20-21 (PTAB March 25, 2016); Ex parte Borgwardt, Appeal
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`2012-009099, Decision on Appeal at 3-4 (PTAB Oct. 14, 2014).)
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`In the case cited by Petitioner in support of its position, In re Johnston, the
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`Federal Circuit explained that a motivation to combine two references was found
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`because the primary reference disclosed large cylindrical/shaped structures, and the
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`secondary reference taught that spirally-formed pipes were suitable in those same
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`large cylindrical/shaped structures. (In re Johnston, 435 F.3d 1381, 1386 (Fed. Cir.
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`2006).) The fact that the references were in the same field of endeavor was merely
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`an afterthought and not dispositive of finding motivation. No substantive technical
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`analyses, like those in In re Johnston, can be found in the instant Petition.
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`D.
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`“Reasonable expectation of success” is not a proper
`motivation to combine Caplan and Kahn (Ground 1)
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`Petitioner asserts there would have been a reasonable expectation of success
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`in implementing Kahn’s system with Caplan’s system “because both systems call
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`for the use of conventional database and networking technology to operate in
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`accordance with functions established in the respective prior art disclosures.”
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`(Petition, p. 20.)
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`Assuming arguendo that a POSA would have had an expectation of success
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`in combining the teachings of Kahn with Caplan, Petitioner still failed to explicitly
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`establish what is being combined, how those things are being combined, and why
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`those things are being combined. Petitioner’s final statement that “[a]s Kahn
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`explains, an advantage of its system is that ‘[a]ny kind of digital object may be
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`dealt with” is equally cryptic. It is possible to find an “advantage” in practically
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`every disclosure in any body of prior art – but, the question for obviousness is
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`whether those advantages would have motivated a POSA to make the asserted
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`combinations in the Petition. Are there digital objects the Caplan is unable to deal
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`with? How can Caplan be modified to take advantage of Kahn’s ability to deal
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`with these other digital objects? Why would a POSA be motivated to deal with
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`these other digital objects specifically in Caplan? Petitioner neither asks nor
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`answers these questions.
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`E.
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`“Same field of endeavor” is not a proper motivation to
`combine the APA, Gemteq, and Kahn (Ground 2)
`
`Petitioner asserts that there is a motivation to combine because the APA,
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`Gemteq, and Kahn “are in the same field of endeavor and intended to accomplish
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`the same or similar functions and goals,” citing to Software Rights Archive, LLC v.
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`Facebook, Inc., 659 Fed. Appx. 627, 637 (Fed. Cir. Sept. 9, 2016), for support.
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`(Petition, p. 38.) This is incorrect. The fact that the APA, Gemteq, and Kahn may
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`be in the same field of endeavor does not, by itself, establish that it would have
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`been obvious to combine their features. (See Front Row Technologies, LLC v. MLB
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`Advanced Media, L.P., Case IPR2015-01932, Paper 7 at 20-21 (PTAB March 25,
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`2016); Ex parte Borgwardt, Appeal 2012-009099, Decision on Appeal at 3-4
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`(PTAB Oct. 14, 2014).)
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`Moreover, Petitioner’s reliance on Software Rights Archive, LLC v.
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`Facebook, Inc. is also incorrect. In Software, a “nonprecedential” opinion, the prior
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`art in question were “Fox Envision,” “Fox Thesis,” and “Fox SMART,” all being
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`publications of one person, Edward A. Fox. (Software, 659 Fed. Appx. at 633.)
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`The Court determined that “a skilled artisan would readily have combined the
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`teachings of Fox Envision with those of Fox Thesis and Fox SMART given that
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`Fox Envision is a follow-on work to Fox’s earlier publications” and therefore
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`Fox Envision was built upon and extended the teachings of Fox Thesis and Fox
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`SMART. (Id. at 637, emphasis added.)
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`Contrary to Petitioner’s assertion, Software did not find a motivation to
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`combine two references “where both [teach] forms of ‘citation analysis in
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`databases.’” (Petition, p. 38.) The field of endeavor of the Fox references was
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`mentioned, but it was not a determinative factor in the Court’s analysis. Instead, a
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`motivation to combine the references was found because it was shown that the
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`secondary reference directly built upon concepts in the primary reference(s), and,
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`moreover, they were all continued works of a single individual.
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`“Legal precedent can provide the rationale supporting obviousness only if
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`the facts in the case are sufficiently similar to those in [the patent] under
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`examination.” (MPEP § 2144(III).) Here, the APA, Gemteq, and Kahn may be in
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`the same field of endeavor, but they are each the products of different
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`authors/inventors and are not disclosed or described as building upon one another.
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`Accordingly, any rationale that may be properly gleaned from Software should not
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`apply to this Petition because the facts are sufficiently different.
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`F.
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`Petitioner takes motivation from the ‘097 patent using
`impermissible hindsight (Ground 2)
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`Petition also asserts that the APA identifies two problems with citing
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`websites in bibliographies: (1) that “websites are subject to frequent, invisible
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`modifications,” and (2) that websites “may be moved to a new address or removed
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`from the Internet without notice.” (Petition, p. 38.) However, these alleged
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`problems were problems identified by the inventor of the ‘097 patent at the
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`time of the ‘097 patent and do not represent others’ knowledge prior to the
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`‘097 patent. Petitioner has not shown that these alleged problems were known by
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`others prior to the ‘097 patent. Even though the quoted statements are in the
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`“Background Art” section of the ‘097 patent, they must not be read out of context
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`– clearly, they are statements by the inventor of the ‘097 patent that describe the
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`problems that the ‘097 patent addresses. Thus, Petitioner’s rationale is based on the
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`‘097 patent’s own disclosure, is not based in the prior art, and should be ignored
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`and dismissed for using impermissible hindsight.
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`G. There is no motivation to combine Kahn with the APA and
`Gemteq (Ground 2)
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`Petitioner’s statements with respect to combining Kahn with the APA and
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`Gemteq are nowhere close to resembling a proper analysis.
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`First, Petitioner asserts that “[s]imilarly, Kahn is directed toward the need
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`for a persistent storage mechanism for researchers that rely on and cite webpages
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`(and other electronic data sources) as reference material for journal articles and
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`other works of art.” (Petition, pp. 38-39.) This statement follows the description of
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`an alleged motivation to apply Gemteq’s teachings to the APA. (Petition, p. 38.)
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`However, Petitioner has not provided any analysis into why Kahn would be
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`combined with the APA and Gemteq, or even what such a combination would look
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`like. The Petition’s bare, isolated statement of Kahn’s field of endeavor falls far
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`short of a clear articulable rationale for including Kahn in the combination.
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`Second, the Petition includes the conclusory statement that “adding Kahn’s
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`feature of the database obtaining the copy of the website upon receipt of the
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`website address would also yield predictable results.” (Petition, p. 39.)
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`However, Petitioner’s solitary statement describing Kahn’s functionality
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`also fails to be an articulable rationale for including Kahn in the combination with
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`the APA and Gemteq. Petitioner hints at “predictable results,” but what are those
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`predictable results? The Petition is silent.
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`It should also be noted that Petitioner cites to “Exhibit-1002 ¶ 138” to
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`support its conclusory “predictable results” statement. Exhibit 1002 is the
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`Declaration of Stephen Gray and contains additional citations and arguments not
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`found in the Petition. Regardless of the merit of those additional citations and
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`arguments in the Declaration, they should not be considered because arguments
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`must not be incorporated from the Declaration into the Petition. (See 37
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