`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`BLOOMREACH, INC.
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC
`Patent Owner.
`Case No. IPR2019-01304
`
`Patent No. 7,231,379
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,231,379
`
`
`
`
`
`
`
`
`Table of Contents
`INTRODUCTION ...................................................................................... 1
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................... 2
`A.
`Real Party-In-Interest ....................................................................... 2
`B.
`Related Matters ................................................................................. 2
`C.
`Lead and Back-Up Counsel .............................................................. 3
`SUMMARY OF THE ’379 PATENT ........................................................ 4
`A. Description of the alleged invention of the ’379 Patent ................... 4
`B.
`Summary of the prosecution history of the ’379 Patent ................... 7
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ........................................................................................... 8
`A. Grounds for standing under 37 C.F.R. § 42.104(a) .......................... 8
`B.
`Identification of challenge under 37 C.F.R. § 42.104(b) and
`relief requested ................................................................................. 9
`Level of skill of a person having ordinary skill in the art .............. 10
`Claim construction under 37 C.F.R. § 42.104(b)(3) ...................... 10
` “node” ...................................................................................... 11
` “vertex” .................................................................................... 11
` “keyword” ................................................................................ 13
` “jumping” ................................................................................. 14
` “verbal description” ................................................................. 15
`THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’379 PATENT ARE
`UNPATENTABLE ................................................................................... 16
`A. Ground 1: Wesemann renders claims 1, 2, and 7 obvious ............. 16
` Claim 1 ..................................................................................... 17
` Claim 2 ..................................................................................... 30
` Claim 7 ..................................................................................... 33
`Ground 2: Wesemann in view of Rajaraman renders Claims
`3-6 obvious ..................................................................................... 40
`
`C.
`D.
`
`B.
`
`Case No. IPR2019-01304
`U.S. Patent No. 7,231,379
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`
`i
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`I.
`II.
`
`III.
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`IV.
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`V.
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`Case No. IPR2019-01304
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`C.
`
` Claims 3-4 ................................................................................ 43
` Claims 5-6 ................................................................................ 48
`Ground 3: Fratkina renders claims 1, 2, and 7 obvious ................. 54
` Claim 1 ..................................................................................... 56
` Claim 2 ..................................................................................... 64
` Claim 7 ..................................................................................... 65
`D. Ground 4: Fratkina in view of Rajaraman renders Claims 3-6
`obvious ........................................................................................... 70
`CONCLUSION ........................................................................................ 72
`VI.
`CERTIFICATION OF WORD COUNT ................................................................ 73
`CERTIFICATE OF SERVICE ............................................................................... 74
`
`
`
`
`
`ii
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`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
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`Ex. 1015
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`Ex. 1016
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`Ex. 1017
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`Case No. IPR2019-01304
`U.S. Patent No. 7,231,379
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`EXHIBIT LIST
`Description
`U.S. Patent 7,231,379 to Parikh et al. (’379 Patent)
`File History of U.S. Patent 7,231,379 to Parikh et al. (’379
`Patent File History)
`Guada’s Combined Opposition to Defendants’ Motion to
`Dismiss
`U.S. Pat. No. 6,731,724 to Wesemann et al. (“Wesemann”)
`U.S. Pat. No. 6,366,910 to Rajaraman et al. (“Rajaraman”)
`U.S. Pat. No. 7,539,656 to Fratkina et al. (“Fratkina”)
`Declaration of Dr. Padhraic Smyth
`RESERVED
`Dr. Padraic Smyth Curriculum Vitae
`Hoperoft, John E., and Jeffrey D. Ullman. Data Structures
`and Algorithms. Boston, MA, USA, Addison-Wesley, pp.
`75-106, 155-197, 306-346, 1983
`Donald, B. Crouch, Carolyn J. Crouch, and Glenn Andreas,
`The use of cluster hierarchies in hypertext information
`retrieval, Hypertext ’89 Proceedings, ACM Press, pp. 225-
`237, 1989
`Yvan Leclerc, Steven W. Zucker, Denis Leclerc, McGill
`University, A browsing approach to documentation, IEEE
`Computer, IEEE Press, pp 46-49, 1982
`Ricky E. Savage, James K. Habinek, Thomas W. Barnhart,
`The design, simulation, and evaluation of a menu driven user
`interface, Proceedings of the 1982 Conference on Human
`Factors in Computing Systems, ACM Press, pp 36-40, 1982
`Ricardo Baeza-Yates, Berthier Ribiero-Neto, Modern
`Information Retrieval, pp. 24-40, ACM Press, 1999
`Daniel Cunliffe, Carl Taylor, and Douglas Tudhope, Query-
`based navigation in semantically indexed hypermedia,
`Proceedings of the Eighth ACM Conference on Hypertext,
`pp. 87-95, ACM Press, 1997
`Hornstein, Telephone Voice Interfaces on the Cheap at § 2.3,
`Proceedings of the UBLAB ’94 Conference, 1994
`De Bra, Paul, et al., Information Retrieval in Distributed
`Hypertexts, in RIAO, pp. 481-493, 1995
`
`iii
`
`
`
`
`
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
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`U.S. Patent No. 7,231,379
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`U.S. Pat. No. 6,198,939 to Holstrom
`Karen Sparck Jones, A look back and a look forward,
`Proceedings of the 11th ACM SIGIR International
`Conference on Research and Development in Information
`Retrieval, pp. 13-29, ACM Press, 1988
`Gerard Salton, Anita Wong, and Chung-Shu Yang, A vector
`space model for automatic indexing, Communications of the
`ACM, 18(11): 613-620, 1975
`Jinxi Xu, W. Bruce Croft, Query expansion using local and
`global document analysis, Proceedings of the 19th ACM
`SIGIR International Conference on Research and
`Development in Information Retrieval, pp. 4-11, ACM, 1996
`Carolyn J. Crouch, A cluster-based approach to thesaurus
`construction, Proceedings of the 11th ACM SIGIR
`International Conference on Research and Development in
`Information Retrieval pp. 309-320. ACM, 1988
`Hinrich Schütze and Jan O. Pedersen, A cooccurrence-based
`thesaurus and two applications to information retrieval, 1
`Intelligent Multimedia Information Retrieval Systems and
`Management, pp. 266-274, 1994
`Güntzer et al., Automatic Thesaurus Construction by
`Machine Learning from Retrieval Sessions, 25 Information
`Processing & Management No. 3 pp. 265-273, 1998
`Mostafa et al., A Multilevel Approach to Intelligent
`Information Filtering: Model, System, and Evaluation, 15
`ACM Transactions on Information Systems No. 4, pp. 368-
`399, 1997
`U.S. Patent No. 6,006,225 to Bowman et al.
`
`
`
`iv
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`
`
`
`I.
`
`Case No. IPR2019-01304
`U.S. Patent No. 7,231,379
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`INTRODUCTION
`Petitioner BloomReach, Inc. (“Petitioner”) respectfully requests an Inter
`
`Partes Review (“IPR”) of claims 1-7 (collectively, the “Challenged Claims”) of
`
`U.S. Patent 7,231,379 (“the ’379 Patent”). The ’379 Patent broadly claims the use
`
`of keywords for searching a hierarchical network. The keywords are associated
`
`with different points on the hierarchical network, referred to as “nodes” or
`
`“vertices.” Put simply, there are only two concepts related to navigation of
`
`hierarchical systems in the claims, and they are both obvious in view of the prior
`
`art.
`
`First, when a user inputs a given keyword, the claimed method causes the
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`system to “jump” to the node or vertex associated with that keyword, without
`
`requiring the user to traverse through each intervening step in the hierarchical
`
`network. The allowance of the ’379 Patent was largely based on this “jumping”
`
`concept. However, as shown by the Wesemann and Fratkina prior art references,
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`such “jump[ing]” between different nodes was well-known in hierarchically
`
`arranged systems before the filing of the ’379 Patent in 2002. See, e.g. Wesemann
`
`(EX1004), Abstract; see also, e.g., Smyth Decl. (EX1007), ¶¶36-40, 49, 55-56, 84.
`
`Neither Wesemann nor Fratkina was cited during prosecution of the ’379 Patent.
`
`Second, the ’379 Patent includes four claims related to using a thesaurus to
`
`search synonyms of user inputs and updating that thesaurus to understand new
`
`
`
`1
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`
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`synonyms. However, such thesaurus searching and updating had already been
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`significantly developed by the 1990s, and these thesaurus limitations fail to add
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`anything new over the prior art. Smyth Decl. (EX1007), ¶¶41-45, 69-76.
`
`Navigating hierarchical trees was not novel in 2002, and the claims of the
`
`’379 Patent fail to include any limitations that would make it a non-obvious
`
`improvement over what had already been practiced for years before the filing of
`
`the patent. See Section IV, infra, incorporated here; see also Smyth Decl.
`
`(EX1007) generally, ¶¶31-93. Petitioner, therefore, respectfully requests
`
`institution of inter partes review of the Challenged Claims.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest
`Petitioner certifies that BloomReach, Inc., UncommonGoods, LLC, BSN
`
`SPORTS, LLC, and Varsity Brands Holding Co., Inc. are the real parties-in-
`
`interest.
`
`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ’379 Patent is
`
`presently the subject of the following patent infringement lawsuits:
`
`• Guada Technologies LLC v. Pier 1 Imports (US), Inc., 1-19-cv-01016
`
`(D. Del.)
`
`
`
`2
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`• Guada Technologies LLC v. Sally Beauty Supply LLC, 1-19-cv-01017
`
`(D. Del.)
`
`• Guada Technologies LLC v. Staples, Inc., 1-19-cv-01018 (D. Del.)
`
`• Guada Technologies LLC v. Big 5 Corp., 1-19-cv-00755 (D. Del.)
`
`• Guada Technologies LLC v. Floor and Decor Outlets of America,
`
`Inc., 1-19-cv-00756 (D. Del.)
`
`• Guada Technologies LLC v. HSN, Inc., 1-19-cv-00757 (D. Del.)
`
`• Guada Technologies LLC v. Hibbett Sporting Goods, Inc., 1-19-cv-
`
`00185 (D. Del.)
`
`• Guada Technologies LLC v. BSN SPORTS, LLC, 1-19-cv-00186 (D.
`
`Del.)
`
`• Guada Technologies LLC v. UncommonGoods, LLC, 1-19-cv-00187
`
`(D. Del.)
`
`• Guada Technologies LLC v. Williams-Sonoma, Inc., 1-19-cv-00188
`
`(D. Del.)
`
`• Guada Technologies LLC v. Teespring, Inc., 1-18-cv-01867 (D. Del.)
`
`C. Lead and Back-Up Counsel
`Petitioner designates Dion M. Bregman (Reg. No. 45,645) as lead counsel
`
`for this matter, and designates Michael J. Lyons (Reg. No. 37,386) and Ahren C.
`
`Hsu-Hoffman (Reg. No. 50,862) as back-up counsel for this matter.
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`3
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`Postal mailings and hand-deliveries for lead and back-up counsel should be
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`
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`addressed to: Morgan, Lewis & Bockius LLP, 1400 Page Mill Road, Palo Alto,
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`CA, 94304 (Telephone: 650.843.4000; Fax: 650.843.4001).
`
`Pursuant to 37 C.F.R. 42.8(b)(4), Petitioner consents to e-mail service at:
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`BloomReach-IPR@morganlewis.com.
`
`For compliance with 37 C.F.R. 42.10(b), a Power of Attorney is also filed
`
`concurrently herewith.
`
`III. SUMMARY OF THE ’379 PATENT
`A. Description of the alleged invention of the ’379 Patent
`The ’379 Patent relates to methods for searching a hierarchical “menu tree”
`
`of nodes or vertices. ’379 Patent (EX1001), 2:22-30, 3:5-28. The Applicants’
`
`allegedly novel take on this concept is a search system that “jumps” to different
`
`nodes on a hierarchical tree without traversing through intervening nodes on the
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`hierarchical tree. See, e.g., ’379 Patent File History (EX1002), 47 (Response to
`
`Non-Compliant Appeal Brief (Nov. 6, 2006)) (“Appellant’s claimed invention
`
`solves the inadequacies of prior art systems, by allowing the system to cause 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 ….”); see also Patent Owner’s Opposition to Motion to Dismiss
`
`(EX1003), 18-19 (“As discussed extensively during the prosecution history, the
`
`
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`4
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`
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`‘jumping’ term, as defined above, was a point of novelty that distinguished the
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`claimed invention from the prior art.”). In prosecution and litigation, Patent Owner
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`(PO) construed “jumping,” used in both independent claims 1 and 7, to mean “a
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`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
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`vertex is the root node or vertex).”1,2 Opposition to Motion to Dismiss (EX1003),
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`18; ’379 Patent File History (EX1002), 89 (Appeal Brief (May 31, 2005)). The
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`’379 Patent asserts that jumping may occur laterally (i.e., across branches of the
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`hierarchical tree) and/or vertically (i.e., up or down a corresponding hierarchical
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`tree branch). See, e.g., ’379 Patent (EX1001), 12:49-56, 14:54-63. A simple
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`example of jumping explained by the ’379 Patent has been reproduced in reference
`
`to Figure 2:
`
`[W]hen a response to a verbal description is provided by a user,
`possible keywords are identified in the response and used to search
`the index and identify any node to which the response may be
`directed, irrespective of the hierarchy. Thus, a user response of “an
`
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`1 For the purposes of this Petition, Petitioner does not contest this construction of
`
`“jumping.”
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`2 Emphasis added throughout unless otherwise noted.
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`orange” to a verbal description located above the “fruit” node 202 in
`the hierarchy, for example, “What would you like to buy today?”
`would cause the system to identify “orange” as a key word from the
`response, search the index, and directly identify node [](206) as the
`node whose verbal description should be presented next, thereby
`avoiding the need to traverse intervening nodes, for example,
`through the “fruit” node (202)[], at all. This illustrates an example
`of a simple jump according to the invention.
`
`
`Id., 6:7-21, Fig. 2.
`
`
`
`As discussed herein, this concept of navigating between nodes or vertices in
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`a hierarchical system by “jumping” to and from different nodes or vertices on the
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`hierarchical tree without traversing through intervening nodes or vertices was well-
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`known prior to the filing of the ’379 Patent. For example, Wesemann, cited below,
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`discloses both lateral and vertical jumping through a hierarchical network, and
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`Fratkina, also cited below, teaches that users may skip over parts of a hierarchical
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`menu.
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`
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`6
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`
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`Claims 3-6 of the ’379 Patent further recite a method for using a thesaurus
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`function to identify words input by a user as being synonymous with keywords.
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`Additional synonyms for keywords may be added to the thesaurus and associated
`
`with nodes as users input new words into the system and navigate the system. See
`
`id., 9:65-10:2, 10:41-43. As discussed herein, these concepts were also known
`
`prior to the filing of the ’379 Patent. See Smyth Decl. (EX1007), ¶¶41-45, 69-76.
`
`For example, Rajaraman, cited below, teaches each of these limitations in the
`
`context of hierarchical searching. See Sec. IV.B, infra, incorporated here.
`
`Summary of the prosecution history of the ’379 Patent
`B.
`The application that resulted in the ’379 Patent was filed on November 19,
`
`2002. See ’379 Patent (EX1001). For purposes of this proceeding, Petitioner
`
`assumes that the priority date for the Challenged Claims is November 19, 2002.
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`The original application included 26 claims, but was reduced to seven claims due
`
`to a restriction requirement. ’379 Patent File History (EX1002), 180-189. These
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`seven claims were not amended from their original application during prosecution,
`
`even after three rejections. Id., 74, 139, 164, 181.
`
`During prosecution, the Applicants focused on the “jumping” concept of
`
`claims 1 and 7, insisting that “jumping” required a system (as opposed to a user) to
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`traverse from one node to a second, non-adjacent node based on an input from a
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`user, without traversing through intervening nodes in the path. See id., 62-64; see
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`
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`7
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`
`
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`also, e.g., id., 89-90, 127-30, 133, 156. The Applicants took issue with cited prior
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`art that they argued graphically presented the user with the matching node and
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`required the user to select the node to cause the jump. See id., 64 (distinguishing
`
`Pooser). The Applicants made only general and conclusory remarks with respect
`
`to claims 3-6. See, e.g., id., 135, 160.
`
`The claimed “jumping” feature, therefore, appears to have led to allowance
`
`of independent claims 1 and 7. But, as discussed below, this concept was already
`
`well-known in the prior art. For instance, Wesemann—not cited during
`
`prosecution—emphasizes that a feature in its system is that users do not have to go
`
`through “in-between” menu states. Unlike the cited prior art distinguished by the
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`Applicants, Wesemann (as well as Fratkina) uses interactive voice response
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`systems (like those disclosed in the ’379 Patent) that automatically “jump”—no
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`graphical display is present from which a user makes a selection to cause the jump.
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`See, e.g., Wesemann (EX1004), 3:50-56.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’379 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’379 Patent.
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`B.
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`Identification of challenge under 37 C.F.R. § 42.104(b) and relief
`requested
`In view of the prior art and evidence, claims 1-7 of the ’379 Patent are
`
`unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1). Based on the
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`prior art references identified below, IPR of the Challenged Claims should be
`
`granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 1, 2, and 7 are obvious under § 103(a) over U.S.
`Pat. No. 6,731,724 to Wesemann et al. (“Wesemann”).
`Ground 2: Claims 3-6 are obvious under § 103(a) over U.S. Pat.
`No. 6,731,724 to Wesemann et al. (“Wesemann”) in view of U.S.
`Pat. No. 6,366,910 to Rajaraman et al. (“Rajaraman”)
`Ground 3: Claims 1, 2, and 7 are obvious under § 103(a) over U.S.
`Pat No. 7,539,656 to Fratkina et al. (“Fratkina”)
`Ground 4: Claims 3-6 are obvious under § 103(a) over U.S. Pat.
`No. 7,539,656 to Fratkina et al. (“Fratkina”) in view of U.S. Pat.
`No. 6,366,910 to Rajaraman et al. (“Rajaraman”)
`
`Exhibit
`Nos.
`
`EX1004
`
`EX1004,
`EX1005
`
`EX1006
`
`EX1006,
`EX1005
`
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`Section IV identifies where each element of the Challenged Claims is found in the
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`prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the
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`relevance of the evidence to the challenges raised are provided in Section IV. 37
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`C.F.R. § 42.104(b)(5).
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`C. Level of skill of a person having ordinary skill in the art
`As explained by Petitioner’s expert, Dr. Padhraic Smyth, a Professor of
`
`Computer Science at University of California, Irvine, a person having ordinary
`
`skill in the art (“PHOSITA”) at the time of the ’379 Patent would have been a
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`person having the equivalent of a bachelor’s degree in computer science, electrical
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`engineering, or a similar discipline, and at least one year of experience working
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`with technology related to information retrieval and database searching, or an
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`equivalent amount of similar work experience or education, with additional
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`education substituting for experience and vice versa. Smyth Decl. (EX1007), ¶¶28-
`
`30.
`
`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`Pursuant to 37 C.F.R. § 42.200, the claims of the ’379 Patent shall be
`
`construed in this proceeding “using the same claim construction standard that
`
`would be used to construe the claim[s] in a civil action.” As such, the claims
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`should be interpreted according to the principles outlined in Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc). This analysis proceeds from the
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`perspective of “how a person of ordinary skill in the art understands a claim term.”
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`Id. at 1313. Because, however, “patentees frequently use terms idiosyncratically”
`
`the Federal Circuit recognizes that “the specification may reveal a special
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`definition given to a claim term” or “the specification may reveal an intentional
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`disclaimer, or disavowal, of claim scope by the inventor.” Id. at 1314-16.
`
`
`“node”
`All seven claims use the term “node.” Referring to Figure 1, the ’379 Patent
`
`states, “[t]he individual boxes 102-120 are referred to as ‘nodes’ and each
`
`represents a specific choice or option in the hierarchy.” ’379 Patent (EX1001),
`
`4:22-26. Thus, “node” should be construed as “a specific choice or option in a
`
`hierarchy.”
`
`
`“vertex”
`Only claim 7 uses the term “vertex” (and its plural form, “vertices”).
`
`“Node” and “vertex” are used interchangeably throughout both the patent
`
`specification and its prosecution history. See, e.g., ’379 Patent (EX1001), 2:5-9
`
`(“In general, there will also be a combination of vertices or nodes in the graph that
`
`best represent or are closest to the goal the user is trying to accomplish. We call
`
`these vertices the ‘goal vertices.’”); ’379 File History (EX1002), 47-48 (describing
`
`jumping as direct traversal “from one node or vertex to another node or vertex”).
`
`The only apparent distinction in the patent between a “node” and a “vertex” is that
`
`a “vertex” is a node in a hierarchy that can be represented as a graph:
`
`In modern mathematics, graph theory is used to study networks of
`hierarchical choices. The hierarchical networks can be represented as a
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`graph structure. . . . A graph structure is a collection of points, called
`“vertices”, and a collection of lines, called “edges”. Each edge joins a
`pair of vertices or a single point to itself.
`
`’379 Patent (EX1001), 1:27-35. The patent continues:
`
`Our invention is particularly applicable to transactional processing as
`applied to instances where graph theory can be used to represent the
`transactions as a set of options and when the options are structured
`according to a connected graph that contains no circuits. We call such a
`graph a “tree”. . . . Informally, a “menu tree” can be regarded as a
`series of vertices in a hierarchy or ordered pattern, arranged in rows
`of increasing numbers of vertices. More precisely, a “menu tree” can
`be represented as a “tree” in which (i) the vertices are all the options
`provided anywhere in the “menu tree”, plus a first vertex, (ii) every
`vertex except the first vertex, i.e., every “option vertex”, is associated
`with the verbal description (or such other means) by which a “menu”
`presents that option, (iii) an edge connects the first vertex to each vertex
`that the first “menu” presents to the user as an option, and (iv) each
`other vertex is similarly connected by edges to every other vertex that the
`corresponding “menu” presents to the user as an option.
`
`’379 Patent (EX1001), 3:5-27; see also id., 3:59-63 (“It should be understood that
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`the present invention is applicable to a wide range of different networks, which can
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`be mathematically represented by graph structures consisting of vertices and
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`edges”). Therefore, “vertex” should be construed as “a specific choice or option
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`in a hierarchy that can be represented in a graph.”
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`12
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`U.S. Patent No. 7,231,379
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`
`“keyword”
`The ’379 Patent teaches that each node in the hierarchy is associated with a
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`verbal description (whether audible or written) and that “[e]ach such description
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`contains ‘key’ words that are deemed to be of importance and other words that
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`can be disregarded.” Id., 4:32-41, 1:49-52 (audible or written). The patent
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`teaches:
`
`“For example, one node may have the associated verbal description
`‘Would you like to make a reservation?’ In this description, there is only
`one ‘key’ word—‘reservation’ deemed important, so all of the other
`words in the description can be ignored.”
`
`Id., 4:37-41. Other nodes may have verbal descriptions with multiple keywords.
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`For example, the verbal description “Is the reservation for a domestic or
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`international flight?” is described as having two keywords, “domestic” and
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`“international.” Id., 4:44-51. And the word “flight” could be a keyword if the
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`system includes non-air travel options, such as train, but it could also be an ignored
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`term if, for example, the system is only for airline reservations. Id.
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`The ’379 Patent describes an index that associates keywords with nodes. Id.,
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`4:62-5:7. This index allows the menu tree of nodes to be searched by keyword
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`regardless of where in the hierarchy the user is currently located by allowing them
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`to jump to a node matching the keyword. Id., 5:7-12. The patent teaches that the
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`specific format described for the index is only for illustration and “that other
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`techniques for interrelating data, such as hash tables, direct or indirect indexing,
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`etc. can be substituted in a straightforward manner.” Id., 5:23-27.
`
`The ’379 Patent describes embodiments based on an interactive voice
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`response (“IVR”) system in which a user responds vocally to prompts and
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`“keywords” are identified from the user’s speech. Id., 6:63-7:9. Importantly, the
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`’379 Patent explicitly teaches that a keyword can be more than just a single word
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`and can also include other forms of information, such as specific data patterns:
`
`Note, there is no requirement for a [] ‘keyword’ to be a single word,
`in some implementations, keywords could be single words, phrases of
`two or more words, or even some other form of information like a
`specific data pattern.
`
`Id., 7:5-9 (emphasis added).
`
`Accordingly, “keyword” should be construed as “one or more words or
`
`pieces of information, such as a specific data pattern, that is associated with at
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`least one node or vertex.”
`
`
`“jumping”
`As discussed above in the Summary of the ’379 Patent, the Applicants
`
`during prosecution, and PO more recently, construed “jumping” to mean “a direct
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`traversal from one node or vertex to another node or vertex that is not
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`directly connected to it (i.e., without traversal through any intervening nodes
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`or vertices or to a node or vertex whose only least common ancestor with that
`
`
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`14
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`node or vertex is the root node or vertex).” See Sec. II.A, supra, incorporated
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`here (detailing PO’s explicit definition during prosecution and recent motion to
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`dismiss (EX1003)). Petitioner notes that this jumping may occur laterally (i.e.,
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`across branches of the hierarchical tree) or vertically (i.e., up or down a
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`hierarchical tree branch). See, e.g., ’379 Patent (EX1001), 12:49-56, 14:54-63.
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`Given PO’s repeated assertions regarding this term during prosecution and its
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`subsequent allowance, for purpose of this IPR, Petitioner adopts PO’s proposed
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`construction of “jumping.”
`
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`“verbal description”
`The ’379 Patent teaches that each node in the hierarchy is associated with a
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`verbal description that describes the subject matter of the particular node. Id.,
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`3:37-43, 4:32-41. The ’379 Patent expressly defines a “verbal description” as “a
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`set of words relating to the subject matter whether presented audibly or in written
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`form.” Id., 1:50-52. Accordingly, “verbal description” should be construed as “a
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`set of words relating to the subject matter whether presented audibly or in
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`written form.”
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`V. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’379 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Wesemann renders claims 1, 2, and 7 obvious
`U.S. Patent No. 6,731,724 to Wesemann et al. (“Wesemann”) was filed on
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`June 22, 2001 and is prior art to the ’379 Patent under 35 U.S.C. § 102(e) (pre-
`
`AIA). Wesemann (EX1004). Wesemann was not cited during prosecution of the
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`’379 Patent. See ’379 Patent (EX1001).
`
`Wesemann is in the same field of endeavor as, and is pertinent to, the ’379
`
`Patent. As mentioned above, the ’379 Patent relates to methods for navigating a
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`hierarchical system of nodes, exemplified in the context of a “menu-type
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`automated telephone voice response system.” See ’379 Patent (EX1001), 3:49-58,
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`see also id., 3:5-14. The ’379 Patent purports to solve problems related to
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`inefficiencies in navigating through nodes in hierarchical networks by allowing
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`users to “jump” to a node in a hierarchy without traversing intervening nodes. Id.,
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`Abstract, 2:22-30. Like the ’379 Patent, Wesemann relates to improving the
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`efficiency of navigating through menu-type hierarchy systems. See Wesemann
`
`(EX1004), 2:45-65 (identifying the inefficiency of “expend[ing ] time …. to move
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`systematically through a hierarchy of levels or menu states …. even when a user
`
`already knows what the final menu state will be” as a problem in the art). And
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`Wesemann teaches solving this problem in the same manner as the ’379 Patent
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`purports to do, by teaching a system which enables users to “jump from one menu
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`state to another menu state of the telephone service system without having to enter
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`input for each menu state between the first and the second menus states.”
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`Wesemann (EX1004), Abstract (emphasis added); see also id., 3:54-56 (“[T]he
`
`invention enables a user to jump over ‘in between’ menu states, from a first menu
`
`state to a second menu state with only a single user input.” (emphasis added)), 3:6-
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`14 (emphasis added); cf. ’379 Patent (EX1001), Abstract, 2:22-30. Therefore,
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`Wesemann is analogous prior art to the claimed invention of the ’379 Patent. See
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`Smyth Decl. (EX1007), ¶47.
`
`
`Claim 1
`1. A method performed in a system having multiple navigable nodes
`interconnected in a hierarchical arrangement comprising:
`Wesemann teaches navigation methods performed in a system having
`
`multiple navigable nodes, referred to as “menu states” or “levels,” interconnected
`
`in a hierarchical arrangement:
`
`The voice-enabled user interface maps the hierarchy of menu states and
`corresponding prompts of the telephone service system within a template.
`. . . A user can jump from one menu state to another menu state by
`providing input that the voice-enabled user interface associates with a
`corresponding menu state. The voice-enabled user interface generates
`output that causes the telephone service system to transition to the menu
`state that corresponds with the user input. Once the telephone service
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`system is in the appropriate menu state, the voice-enabled user interface
`transmits a DTMF translation of the user input to the telephone service
`system so that it can be processed.
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`Wesemann (EX1004), 3:33-46; see also id., Abstract, 10:40-64, Figs. 5-6. The
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`user may navigate the menu hierarchy by systematically moving between nodes