`
`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
`
`_____________________________________________________________
`
`REQUEST FOR REHEARING OF DECISION DENYING LEAVE TO FILE
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`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
`
`
`
`
`
`PETITIONER’S UPDATED 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
`
`ii
`
`
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`
`
`
`
`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
`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
`
`iii
`
`
`
`
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Ex. 1028
`
`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.
`Patent Owner’s Complaint in Guada Techs. v. Uncommongoods,
`L.L.C., Case No. 1:19-cv-00186 (D. Del. Jan. 30, 2019)
`Patent Owner’s Complaint in Guada Techs. v. BSN Sports LLC,
`Case No. 1:19-cv-00187 (D. Del. Jan. 30, 2019)
`
`
`
`iv
`
`
`
`
`
`I.
`
`INTRODUCTION
`Petitioner appreciates the Board granting this opportunity to request
`
`rehearing of its Order denying Petitioner’s request to file a reply to Patent Owner’s
`
`Preliminary Response (“POPR”). Good cause exists for a reply brief for Petitioner
`
`to address Patent Owner’s new proposed constructions and associated arguments.
`
`II. BACKGROUND
`In the November 25, 2019 Order, the Board denied Petitioner’s email
`
`request seeking leave to file a reply to the POPR because the Board was “not
`
`persuaded that Petitioner has shown good cause[.]” See Paper 7 at 2. This
`
`decision misapprehended or overlooked the compelling justification for a reply,
`
`particularly in light of the fact that Petitioner had not yet been heard. This was due
`
`to an inadvertent and excusable scheduling mistake; counsel for Petitioner
`
`mistakenly, but in good faith, calendared a scheduled call with the Board for 1:30
`
`pm Pacific, rather than Eastern. As soon as the error was discovered, counsel for
`
`Petitioner sent an email to the Board (just over an hour after the scheduled call)
`
`apologizing and requesting to reschedule the call. Petitioner acknowledges,
`
`regrets, and apologizes for any inconvenience to the Board and Patent Owner.
`
`III. ARGUMENT
`Good cause exists for leave to file a reply so that Petitioner can respond to
`
`the new claim construction positions taken in the POPR regarding the phrases
`
`“jumping to the at least one node” in Claim 1 and “jumping to the vertex” in Claim
`
`
`
`1
`
`
`
`
`
`7. See Paper 6 at 2 (citing Ex. 1003 at 18-19). Patent Owner not only proposed
`
`new constructions for these terms, requiring “that the subject doing the jumping is
`
`the ‘system,’” but also falsely represented to the Board that Petitioner had adopted
`
`the same constructions. Id. Petitioner could not have anticipated Patent Owner’s
`
`new constructions and false assertion.
`
`The Trial Practice Guide contemplates that after a petition is filed, a patent
`
`owner may “propose[] additional terms for construction,” and if that occurs, “[t]he
`
`petitioner may respond to any such new claim construction issues raised by the
`
`patent owner[.]” See Trial Practice Guide at § II(B)(6). The interests of justice
`
`would be served by allowing Petitioner to file the response envisioned by the Trial
`
`Practice Guide, giving the Board the benefit of both parties’ views before reaching
`
`a decision on institution. See, e.g., ASM IP Holding B.V. v. Kokusai Elec. Corp.,
`
`IPR2019-00392, Paper 8 at 2 (May 30, 2019) (“A potentially dispositive claim
`
`construction issue may be an important factor in deciding whether to institute inter
`
`partes review, and allowing the parties to brief this issue early promotes
`
`efficiencies for the parties and the Board.”). Absent such a reply, Petitioner will
`
`suffer prejudice from a one-sided record reflecting only Patent Owner’s new claim
`
`construction positions, Patent Owner’s contention that these positions are
`
`dispositive of two of the four grounds for unpatentability (Grounds 1 & 2), and
`
`Patent Owner’s false assertion that Petitioner agrees with Patent Owner’s
`
`
`
`2
`
`
`
`
`
`erroneous constructions. Paper 6 at 1-2, 6. Depriving Petitioner of the opportunity
`
`to respond to these positions – unforeseeable when the Petition was filed – also
`
`raises fundamental due process concerns. See Honeywell Int’l Inc v. Arkema Inc.,
`
`939 F.3d 1345, 1349 (Fed. Cir. 2019) (reversing pursuant to the APA where the
`
`Board “refused to authorize [a party] to file a motion for leave”).
`
`Following the Board’s guidance, Petitioner proposed a construction for
`
`“jumping” because Petitioner believed it “require[d] an express construction” to
`
`evaluate unpatentability. See Trial Practice Guide at § II(B)(6); Paper 2 at 14-15.
`
`Petitioner thus adopted Patent Owner’s explicit definition of “jumping” from
`
`prosecution and prior district court litigation: “a direct traversal from one node or
`
`vertex to another node or vertex that is not directly connected to it[.]” Paper 2 at
`
`14-15. Petitioner did not adopt any other of Patent Owner’s constructions.
`
`Yet in its Preliminary Response, Patent Owner falsely asserted that
`
`Petitioner had adopted its constructions of two other phrases – namely, “jumping to
`
`the at least one node” (claim 1) and “jumping to the vertex” (claim 7) – that Patent
`
`Owner had also advanced in the prior district court case. See Paper 6 at 2, n.1
`
`(citing Ex. 1003 at 18-19). Notably, in that district court case, Patent Owner
`
`proposed constructions for five distinct terms, only one of which Petitioner adopted
`
`here. See Ex. 1003 at 16-19. Patent Owner also attempts to distort “the parties[’]
`
`agreed construction of jumping” to allege it requires that “the system jumps across
`
`
`
`3
`
`
`
`
`
`unconnected nodes.” Paper 6 at 6-7 (emphasis original). Thus, good cause exists
`
`for a reply because Petitioner could not have known when it filed the Petition that
`
`Patent Owner would misrepresent that Petitioner had adopted constructions that it
`
`never mentioned, and would then try to use this so-called “agreement” to
`
`effectively rewrite the agreed construction of “jumping.” Due process requires
`
`affording Petitioner an opportunity to reply to these unforeseeable positions.
`
`Patent Owner uses its new constructions and mischaracterization to argue
`
`that the claims require “that the system jumps across unconnected nodes [or
`
`vertices],” rather than require that the user jumps between nodes or vertices, as
`
`described throughout the intrinsic record and in district court litigation. Paper 6 at
`
`7.1 In other words, Patent Owner baselessly adds “the system” to the beginning of
`
`the phrases “jumping to the at least one node” and “jumping to the vertex.” See
`
`Paper 6 at 2. Good cause exists at least because Patent Owner’s constructions are
`
`(i) nonsensical, (ii) unsupported by the intrinsic record, and (iii) contradicted by
`
`Patent Owner’s district court infringement positions.
`
`First, Patent Owner’s construction nonsensically requires that “the system
`
`having multiple navigable nodes” itself jumps between its own nodes. Patent
`
`Owner even reads this “system jumping” requirement into claim 7, a claim that
`
`
`1 Emphasis added throughout, unless otherwise noted.
`
`
`
`4
`
`
`
`
`
`does not even recite a “system.” Compare claim 1 (“A method performed in a
`
`system…”) with claim 7 (“A method performed in connection with an arrangement
`
`of nodes…”). This “system jumping” requirement is also inconsistent with claim
`
`1’s language, which only requires that the claimed method be “performed in a
`
`system,” not by the system. See claim 1.
`
`Second, the specification makes clear that the object of the invention is to
`
`improve the user navigation experience by allowing a user to jump between
`
`vertices that are not directly connected. See, e.g., Ex. 1001 at 3:29-34 (“In
`
`overview, in accordance with the teachings of our invention, the user can navigate
`
`the graph or tree in a way that allows them [the users] to skip from one vertex to
`
`another vertex[] where the vertices may not be connected together by an edge.
`
`This eliminates the necessity for making many choices.”) During prosecution,
`
`Patent Owner repeatedly argued that it was the user experience of “jumping”
`
`between remote nodes that distinguished the claims over the prior art. Ex. 1002 at
`
`90 (“Appellant’s claimed invention solves the inadequacies of the prior art
`
`systems, by allowing the user to ‘jump’ from one node in the hierarchy to
`
`another node that is not directly connected to that node”). To the extent the
`
`“system” plays a role, Patent Owner made clear it was merely to “jump the user to
`
`a node.” Ex 1002 at 58 (the alleged invention “solves these inadequacies of the
`
`prior art systems, by allowing the system to cause the user to ‘jump’ from one
`
`
`
`5
`
`
`
`
`
`node in the hierarchy to another node”), at 64 (in the alleged invention, “the
`
`system[] jumps the user to a node”). In every case, it is the user that jumps to a
`
`non-adjacent node without traversing the intervening nodes.
`
`Third, Patent Owner’s new constructions contradict its positions taken in
`
`district court. There, Patent Owner stated that “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.” Ex. 1003 at 7. And it argued “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 11.
`
`Patent Owner’s infringement claims in district court rely entirely on a user
`
`allegedly “jumping” between alleged “nodes” on a website, while making no
`
`allegations about “system jumping.” See Ex. 1027 at 5 (accusing a “website” as
`
`the “Accused Instrumentality,” wherein “from the home page node, users can go
`
`to nodes such as ‘Gifts’, ‘Fun’, etc.”), 6 (alleging the “Accused Instrumentality”
`
`“allows jumping to[] items/nodes without traversing preceding generic category
`
`nodes (e.g., ‘Gifts’, ‘Fun’, etc.).”); Ex. 1028 at 5 and 6 (the same allegations but
`
`applied to a different website with different alleged “category nodes”).
`
`Petitioner continues to believe that only the terms identified in its Petition
`
`
`
`6
`
`
`
`
`
`require an explicit construction.2 But if the Board feels obliged to construe Patent
`
`Owner’s newly identified terms, then good cause exists to show Patent Owner’s
`
`proposed constructions should be rejected. If construction is required, the intrinsic
`
`record makes clear that the claims mean that the user jumps to at least one node
`
`[or to the vertex] (“jumping to the at least one node” or “jumping to the vertex”).
`
`IV. CONCLUSION
`Good cause exists for a reply because Patent Owner’s new and unduly
`
`narrow constructions are nonsensical, inconsistent with the intrinsic record, and
`
`contradicted by Patent Owner’s positions in district court. Accordingly, the Board
`
`should grant Petitioner’s request for rehearing, and grant Petitioner leave to file a
`
`Reply to Patent Owner’s Preliminary Response.
`
`Dated: December 16, 2019
`
`
`Respectfully Submitted,
`
` /Michael J. Lyons/
`Michael J. Lyons (Reg. No. 37,386)
`
`
`
`
`2 Even if Patent Owner’s “system jumping” requirement were adopted, the claims
`
`are still disclosed by Wesemann. Indeed, Patent Owner acknowledges that
`
`Wesemann’s user interface (i.e., part of its system) jumps a user between nodes
`
`that are not adjacent without requiring the user to traverse intervening nodes. See
`
`Paper 6 at 3-4 (citing Ex. 1004 at 12:53-65). Petitioner’s expert testimony supports
`
`this finding, while Patent Owner submitted none. See 37 C.F.R. § 42.108(c).
`
`
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), counsel for Petitioner hereby certifies
`
`that on December 16, 2019, copies of this REQUEST FOR REHEARING OF
`
`DECISION DENYING LEAVE TO FILE REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE and associated exhibits 1027 and 1028 were sent via
`
`email to counsel for Patent Owner:
`
`Isaac Rabicoff
`(isaac@rabilaw.com)
`
`Dated: December 16, 2019
`
`
`Respectfully Submitted,
`
` /Michael J. Lyons/
`Michael J. Lyons (Reg. No. 37,386)
`
`
`
`8
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`
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