IPR2020-00598
`Petition for Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ORACLE CORP.,
`Petitioner
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner
`
`Case IPR2020-00598
`Patent No. 7,231,379
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,231,379
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`

`

`IPR2020-00598
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .................................................................................................................. 5
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................ 6
`
`A. Real Party-In-Interest .......................................................................................................... 6
`
`B. Related Matters ................................................................................................................... 7
`
`C. Lead and Back-Up Counsel ................................................................................................ 8
`
`III. SUMMARY OF THE ’379 PATENT .................................................................................... 9
`
`A. Description of the alleged invention of the ’379 Patent ..................................................... 9
`
`B. Summary of the prosecution history of the ’379 Patent ................................................... 11
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §42.104 ............ 13
`
`A. Grounds for standing under 37 C.F.R. § 42.104(a) .......................................................... 13
`
`B.
`
`Identification of challenge under 37 C.F.R. § 42.104(b) and relief requested ................. 13
`
`C. Level of skill of a person having ordinary skill in the art ................................................. 14
`
`D. Claim construction under 37 C.F.R. § 42.104(b)(3) ......................................................... 15
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF
`THE ’379 PATENT ARE UNPATENTABLE .................................................................... 20
`
`A. Ground 1: Wesemann renders claims 1, 2, and 7 obvious ................................................ 20
`
`B. Ground 2: Wesemann in view of Rajaraman renders Claims 3-6 obvious ...................... 45
`
`C. Ground 3: Fratkina renders claims 1, 2, and 7 obvious.................................................... 59
`
`D. Ground 4: Fratkina in view of Rajaraman renders Claims 3-6 obvious .......................... 76
`
`i
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`

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`VI. CONCLUSION ..................................................................................................................... 78
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`IPR2020-00598
`Petition for Inter Partes Review
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`Exhibit
`
`EXHIBIT LIST
`Description
`
`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
`
`Ex. 1015
`
`Ex. 1016
`
`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
`iii
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`IPR2020-00598
`Petition for Inter Partes Review
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`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`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
`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
`Carolyn J. Crouch, A cluster-based approach to
`thesaurus construction, Proceedings of the 11th ACM
`SIGIR International Conference on Research and
`Hinrich Schütze and Jan O. Pedersen, A cooccurrence-
`based thesaurus and two applications to information
`retrieval, 1 Intelligent Multimedia Information Retrieval
`Güntzer et al., Automatic Thesaurus Construction by
`Machine Learning from Retrieval Sessions, 25
`Information Processing & Management No. 3 pp. 265-
`Mostafa et al., A Multilevel Approach to Intelligent
`Information Filtering: Model, System, and Evaluation,
`15 ACM Transactions on Information Systems No. 4,
`U.S. Patent No. 6,006,225 to Bowman et al.
`(“Bowman”)
`
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`IPR2020-00598
`Petition for Inter Partes Review
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`I.
`
`INTRODUCTION
`Petitioner Oracle Corp. (“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
`
`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,
`
`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.
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`IPR2020-00598
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`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 synonyms. However, such thesaurus searching and updating had already
`
`been significantly developed by the 1990s, and these thesaurus limitations fail
`
`to add 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 Oracle Corp. and Oracle America, Inc. are the real
`
`parties-in-interest.
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`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.)
`
` 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.)
`
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` 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.)
`
` Guada Technologies LLC v. Bellacor.com, Inc., 1-19-cv-02297
`
`(D. Del.)
`
`C. Lead and Back-Up Counsel
`
`Petitioner designates James M. Heintz (Reg. No. 41,828) as lead counsel
`
`for this matter, and designates Alireza Babaei (Reg. No. 75833) as back-up
`
`counsel for this matter.
`
`Postal mailings and hand-deliveries for lead and back-up counsel should be
`
`addressed to: DLA Piper LLP, 11911 Freedom Dr., Suite 300, Reston VA 20190
`
`(Telephone: 703-773-4000; Fax: 703-773-5200).
`
`Pursuant to 37 C.F.R. 42.8(b)(4), Petitioner consents to e-mail service at:
`
`Oracle_Guada_IPR@us.dlapiper.com.
`
`For compliance with 37 C.F.R. 42.10(b), a Power of Attorney is also
`
`filed concurrently herewith.
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`IPR2020-00598
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`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
`
`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
`
`‘jumping’ term, as defined above, was a point of novelty that distinguished the
`
`claimed invention from the prior art.”). In prosecution and litigation, Patent Owner
`
`(PO) construed “jumping,” used in both independent claims 1 and 7, to mean “a
`
`direct traversal from one node or vertex to another node or vertex that is not
`
`directly connected to it (i.e., without traversal through any intervening nodes or
`
`vertices or to a node or vertex whose only least common ancestor with that node or
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`vertex is the root node or vertex).”1,2 Opposition to Motion to Dismiss (EX1003),
`
`18; ’379 Patent File History (EX1002), 89 (Appeal Brief (May 31, 2005)). The
`
`’379 Patent asserts that jumping may occur laterally (i.e., across branches of the
`
`hierarchical tree) and/or vertically (i.e., up or down a corresponding hierarchical
`
`tree branch). See, e.g., ’379 Patent (EX1001), 12:49-56, 14:54-63. A simple
`
`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
`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.
`
`1 For the purposes of this Petition, Petitioner does not contest this construction of
`
`“jumping.”
`
`2 Emphasis added throughout unless otherwise noted.
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`Id., 6:7-21, Fig. 2.
`
`As discussed herein, this concept of navigating between nodes or vertices in
`
`a hierarchical system by “jumping” to and from different nodes or vertices on the
`
`hierarchical tree without traversing through intervening nodes or vertices was
`
`well-known prior to the filing of the ’379 Patent. For example, Wesemann, cited
`
`below, discloses both lateral and vertical jumping through a hierarchical network,
`
`and Fratkina, also cited below, teaches that users may skip over parts of a
`
`hierarchical menu.
`
`Claims 3-6 of the ’379 Patent further recite a method for using a thesaurus
`
`function to identify words input by a user as being synonymous with keywords.
`
`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.
`
`B.
`
`Summary of the prosecution history of the ’379 Patent
`
`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
`
`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 traverse from one node to a second, non-adjacent node based on an input from
`
`a user, without traversing through intervening nodes in the path. See id., 62-64;
`
`see also, e.g., id., 89-90, 127-30, 133, 156. The Applicants took issue with cited
`
`prior art that they argued graphically presented the user with the matching node
`
`and 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 Applicants, Wesemann (as well as Fratkina) uses interactive voice response
`
`systems (like those disclosed in the ’379 Patent) that automatically “jump”—no
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`IPR2020-00598
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`graphical display is present from which a user makes a selection to cause the
`
`jump. 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
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of
`
`the ’379 Patent.
`
`B.
`
`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
`
`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”)
`
`Exhibit
`
`Nos.
`EX1004
`
`EX1004,
`EX1005
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`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”)
`
`EX1006
`
`EX1006,
`EX1005
`
`Section IV identifies where each element of the Challenged Claims is found
`
`in the 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
`
`relevance of the evidence to the challenges raised are provided in Section IV. 37
`
`C.F.R. § 42.104(b)(5).
`
`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
`
`person having the equivalent of a bachelor’s degree in computer science, electrical
`
`engineering, or a similar discipline, and at least one year of experience working
`
`with technology related to information retrieval and database searching, or an
`
`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
`
`should be interpreted according to the principles outlined in Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc). This analysis proceeds from the
`
`perspective of “how a person of ordinary skill in the art understands a claim term.”
`
`Id. at 1313. Because, however, “patentees frequently use terms idiosyncratically”
`
`the Federal Circuit recognizes that “the specification may reveal a special
`
`definition given to a claim term” or “the specification may reveal an
`
`intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. at
`
`1314-16.
`
`1.
`
`“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.”
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`2.
`
`“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
`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
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`IPR2020-00598
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`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
`
`the present invention is applicable to a wide range of different networks, which can
`
`be mathematically represented by graph structures consisting of vertices and
`
`edges”). Therefore, “vertex” should be construed as “a specific choice or option
`
`in a hierarchy that can be represented in a graph.”
`
`3.
`
`“keyword”
`
`The ’379 Patent teaches that each node in the hierarchy is associated with
`
`a verbal description (whether audible or written) and that “[e]ach such
`
`description contains ‘key’ words that are deemed to be of importance and other
`
`words that can be disregarded.” Id., 4:32-41, 1:49-52 (audible or written). The
`
`patent teaches:
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`“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.
`
`For example, the verbal description “Is the reservation for a domestic or
`
`international flight?” is described as having two keywords, “domestic” and
`
`“international.” Id., 4:44-51. And the word “flight” could be a keyword if the
`
`system includes non-air travel options, such as train, but it could also be an ignored
`
`term if, for example, the system is only for airline reservations. Id.
`
`The ’379 Patent describes an index that associates keywords with nodes. Id.,
`
`4:62-5:7. This index allows the menu tree of nodes to be searched by keyword
`
`regardless of where in the hierarchy the user is currently located by allowing them
`
`to jump to a node matching the keyword. Id., 5:7-12. The patent teaches that the
`
`specific format described for the index is only for illustration and “that other
`
`techniques for interrelating data, such as hash tables, direct or indirect indexing,
`
`etc. can be substituted in a straightforward manner.” Id., 5:23-27.
`
`The ’379 Patent describes embodiments based on an interactive voice
`
`response (“IVR”) system in which a user responds vocally to prompts and
`
`“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 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 least one node or vertex.”
`
`4.
`
`“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 traversal from one node or vertex to another node or vertex that is
`
`not directly connected to it (i.e., without traversal through any intervening
`
`nodes or vertices or to a node or vertex whose only least common ancestor
`
`with that node or vertex is the root node or vertex).” See Sec. II.A, supra,
`
`incorporated here (detailing PO’s explicit definition during prosecution and
`
`recent motion to dismiss (EX1003)). Petitioner notes that this jumping may
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`occur laterally (i.e., across branches of the hierarchical tree) or vertically (i.e.,
`
`up or down a hierarchical tree branch). See, e.g., ’379 Patent (EX1001), 12:49-
`
`56, 14:54-63. Given PO’s repeated assertions regarding this term during
`
`prosecution and its subsequent allowance, for purpose of this IPR, Petitioner
`
`adopts PO’s proposed construction of “jumping.”
`
`5.
`
`“verbal description”
`
`The ’379 Patent teaches that each node in the hierarchy is associated with a
`
`verbal description that describes the subject matter of the particular node. Id., 3:37-
`
`43, 4:32-41. The ’379 Patent expressly defines a “verbal description” as “a set of
`
`words relating to the subject matter whether presented audibly or in written form.”
`
`Id., 1:50-52. Accordingly, “verbal description” should be construed as “a set of
`
`words relating to the subject matter whether presented audibly or in written
`
`form.”
`
`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 June 22, 2001 and is prior art to the ’379 Patent under 35 U.S.C. § 102(e)
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`(pre-AIA). Wesemann (EX1004). Wesemann was not cited during prosecution
`
`of the ’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 hierarchical system of nodes, exemplified in the context of a
`
`“menu-type
`
`automated telephone voice response system.” See ’379 Patent (EX1001), 3:49-58,
`
`see also id., 3:5-14. The ’379 Patent purports to solve problems related to
`
`inefficiencies in navigating through nodes in hierarchical networks by allowing
`
`users to “jump” to a node in a hierarchy without traversing intervening nodes. Id.,
`
`Abstract, 2:22-30. Like the ’379 Patent, Wesemann relates to improving the
`
`efficiency of navigating through menu-type hierarchy systems. See Wesemann
`
`(EX1004), 2:45-65 (identifying the inefficiency of “expend[ing ] time ... to move
`
`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
`
`Wesemann teaches solving this problem in the same manner as the ’379 Patent
`
`purports to do, by teaching a system which enables users to “jump from one menu
`
`state to another menu state of the telephone service system without having to enter
`
`input for each menu state between the first and the second menus states.”
`
`Wesemann (EX1004), Abstract (emphasis added); see also id., 3:54-56 (“[T]he
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`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-
`
`14 (emphasis added); cf. ’379 Patent (EX1001), Abstract, 2:22-30. Therefore,
`
`Wesemann is analogous prior art to the claimed invention of the ’379 Patent. See
`
`Smyth Decl. (EX1007), ¶47.
`
`1.
`
`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 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.
`
`Wesemann (EX1004), 3:33-46; see also id., Abstract, 10:40-64, Figs. 5-6. The
`
`user may navigate the menu hierarchy by systematically moving between nodes
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`as prompted by the system, or the user may jump to different nodes without
`
`transitioning through intervening menu states. See id., 9:66-10:20; see also id.,
`
`1:13-19, 11:65-12:12, Fig. 5. A PHOSITA would understand that the menu states
`
`in Wesemann are choices or options in the hierarchy, or “nodes.” Smyth Decl.
`
`(EX1007), ¶48-49.
`
`Wesemann describes its teachings in an exemplary embodiment of a
`
`computer sales organization telephone system. See id., 10:40-64, 11:32-46, 11:65-
`
`12:42, Fig. 6. A caller may navigate through multiple interconnected menus, such
`
`as support, sales, and a personnel directory. Id., 10:40-45. These menus may have
`
`their own submenus. For example, the sales menu has different submenus for
`
`home, business, and refurbished computers, and each of these menus has a
`
`submenu for laptops and desktops. Id., Fig. 6. The menu and submenus constitute
`
`multiple nodes interconnected in a hierarchical arrangement. See id., 10:62-64
`
`(“Main menu 610 and each of the submenus 620-674 comprise discrete menu
`
`states of menu hierarchy 600.”). Wesemann’s computer sales organization menu is
`
`similar in structure to the flight system menu example described in the ’379 Patent:
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`Wesemann:
`
`Id., Fig. 6.
`
`’379 Patent:
`
`’379 Patent (EX1001), Fig. 6.
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`[1(a)] at a first node, receiving an input from a user of the system, the input
`containing at least one word identifiable with at least one keyword from
`among multiple keywords,
`
`Wesemann teaches a system that receives a user input, such as spoken words
`
`from a user, at a first “level” or “menu state” (i.e., node) of a hierarchical
`
`arrangement of levels or menu states (nodes). Wesemann (EX1004), Abstract,
`
`3:28-30, 6:56-64, 11:47-12:6