UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`LG ELECTRONICS INC., and
`LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS INC.,
`Patent Owner.
`_____________
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`_____________
`
`REPLY DECLARATION OF STUART J. LIPOFF
`
`Google Exhibit 1057
`Google v Parus
`IPR2020-00846
`
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`LG ELECTRONICS INC., and
`LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS INC.,
`Patent Owner.
`_____________
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`_____________
`
`REPLY DECLARATION OF STUART J. LIPOFF
`
`Google Exhibit 1057
`Google v Parus
`IPR2020-00846
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`GROUNDS 1-4: ARGUMENTS REGARDING THE
`KOVATCH/NEAL COMBINATION .............................................................. 1
`A. Arguments Regarding Neal’s Teachings..................................................... 2
`1. First Argument ...................................................................................... 2
`2. Second Argument.................................................................................. 3
`3. Third Argument..................................................................................... 6
`4. Fourth Argument ................................................................................... 8
`B. Arguments Regarding Motivation to Combine Kovatch with Neal..........11
`1. Arguments Regarding “Speeding Up HeyAnita” ...............................11
`2. Arguments Regarding Fault Tolerance ...............................................13
`II. GROUND 5: ARGUMENTS REGARDING CLAIM 9 ...............................16
`III. GROUND 6: ARGUMENTS REGARDING CLAIM 14 .............................23
`
`i
`
`
`
`I, Stuart J. Lipoff, declare:
`
`1.
`
`I have reviewed the Patent Owner’s Response (Paper 14, “POR”) in
`
`IPR2020-00846, and portions of the Declaration of Benedict Occhiogrosso (Ex.
`
`2059, “Occhiogrosso-Decl.”) cited in the POR. Specifically, I reviewed Sections I-
`
`VII and IX of Mr. Occhiogrosso’s declaration. I have not been asked to review or
`
`opine on Section VIII of Mr. Occhiogrosso’s declaration.
`
`I.
`
`GROUNDS 1-4: ARGUMENTS REGARDING THE
`KOVATCH/NEAL COMBINATION
`
`2.
`
`I understand that Section IV.B of the POR and Section IX.B of Mr.
`
`Occhiogrosso’s declaration argue that the Kovatch/Neal combination (discussed,
`
`e.g., in Section VII.A.2 of my original declaration, Ex. 1002) does not meet
`
`limitation [1.j] of claim 1 of the ’431 patent, reciting “access[ing] said first web
`
`site…and, if said information to be retrieved is not found…,… sequentially
`
`access[ing] said plurality of web sites until said information to be retrieved is
`
`found or until said plurality of web sites has been accessed.” For the reasons
`
`discussed in Section I.A below, I disagree with Parus’s and Mr. Occhiogrosso’s
`
`arguments, and in my opinion a person of ordinary skill in the art (“POSA”) would
`
`have disagreed.
`
`3.
`
`I understand that Section IV.C.1 of the POR and Section IX.C.1 of
`
`Mr. Occhiogrosso’s declaration argue that a POSA would not have been motivated
`
`to make the Kovatch/Neal combination. For the reasons discussed in Section I.B
`
`1
`
`
`
`below, I disagree with Parus’s and Mr. Occhiogrosso’s arguments, and in my
`
`opinion POSA would have disagreed.
`
`A.
`
`4.
`
`Arguments Regarding Neal’s Teachings
`
`I understand that Section IV.B.2 of the POR and Section IX.B.2 of
`
`Mr. Occhiogrosso’s declaration present four arguments related to Neal’s teachings.
`
`POR, pages 35-40; Occhiogrosso-Decl., ¶¶ 119-129. I disagree with each of these
`
`arguments, and in my opinion a POSA would have disagreed, for the reasons
`
`discussed below in Sections I.A.1-4.
`
`1.
`
`First Argument
`
`5.
`
`I understand that Parus’s and Mr. Occhiogrosso’s “[f]irst” argument is
`
`that “Neal does not teach accessing web sites.” POR, page 37; Occhiogrosso-
`
`Decl., ¶ 122. This argument does not address the Kovatch/Neal combination,
`
`which does not rely on Neal to teach accessing web sites. Kovatch teaches
`
`retrieving information from suppliers’ websites, and the Kovatch/Neal combination
`
`applies to Kovatch’s system Neal’s teaching of sequentially searching different
`
`suppliers’ electronically stored data in a hierarchical order until the information to
`
`be retrieved is found or until the available suppliers have been searched. See Ex.
`
`1002 (“Lipoff-Orig-Decl.”), ¶ 102 (discussing “Kovatch’s context of searching for
`
`desired information from various web sites” modified based on Neal’s teaching to
`
`perform “hierarchical ordering and search”).
`
`2
`
`
`
`2.
`
`Second Argument
`
`6.
`
`I understand that Parus’s and Mr. Occhiogrosso’s “[s]econd”
`
`argument is that “Neal teaches away from the very keyword search algorithm that
`
`the [sic] Mr. Lipoff and the Petition identify…for their combination.”
`
`Occhiogrosso-Decl., ¶ 123; POR, pages 37-38. I disagree, and in my opinion a
`
`POSA would have disagreed, for at least two reasons.
`
`7.
`
`First, paragraph 125 of Mr. Occhiogrosso’s declaration is incorrect—
`
`the Kovatch/Neal combination does not use a “keyword search algorithm” from
`
`Neal to search each individual website. The Kovatch/Neal combination uses
`
`Kovatch’s web parsing methodology to search each individual website. See
`
`Lipoff-Orig.-Decl., ¶¶ 139, 157, 161 (discussing how the Kovatch/Neal
`
`combination uses Kovatch’s Anita Query Engine and Anita Web Parser to query
`
`and retrieve information from each individual website). As I explained in my
`
`original declaration, what the Kovatch/Neal combination applies from Neal is
`
`Neal’s teaching to search supplier data sets sequentially in an order, as Neal’s FIG.
`
`2 (reproduced below) illustrates. Lipoff-Orig-Decl., ¶¶ 98-106. Mr.
`
`Occhiogrosso’s declaration (¶ 125) acknowledges this, where he states that my
`
`original declaration “focus[ed] on the search technique where if the match is not
`
`found in the first data set, then the same search technique is applied to the next data
`
`3
`
`
`
`set and so on.” That does not rely on any “keyword search algorithm” to be the
`
`search technique.
`
`8.
`
`In the Kovatch/Neal combination, each data set is a supplier’s website
`
`and is searched using Kovatch’s website search methodology (e.g., using
`
`Kovatch’s Web Parser). This is consistent with Neal’s teachings that each “data
`
`set” can be for a different “supplier” (Neal, 6:39-65) and that “[t]here are many
`
`4
`
`
`
`possible sequences of search algorithms” (Neal, 7:56). Lipoff-Orig-Decl., ¶¶ 99-
`
`100, 103.
`
`9.
`
`Second, I disagree, and in my opinion a POSA would have disagreed,
`
`with Parus’s and Mr. Ochiogrosso’s assertion that Neal teaches away from “using
`
`the same search methodology” on each data set in the sequence, or from moving on
`
`to the next data set after searching the first data set once using that search
`
`methodology. POR, page 39; Occhiogrosso-Decl., ¶ 126 (“Mr. Lipoff is also
`
`employing the use of a single search algorithm instead of a sequence of search
`
`algorithms as taught by Neal.”). Neal explicitly teaches that “in the preferred
`
`embodiment there is no requirement that the second search methodology…be
`
`different from the first search methodology,” and “the same search methodology
`
`could be applied to a second preferred supplier[]” “if the first preferred supplier did
`
`not yield an exact…match to the input search.” Neal, 6:59-65; see also Neal, 6:51-
`
`65; Neal, 3:27-29 (“Each data set is paired with one or more search
`
`strategies….”).1 A POSA would have understood this to teach that if the requested
`
`item is not found at the first preferred supplier in a single search (e.g., search 206
`
`in Neal’s FIG. 2) using a single search methodology (which in the Kovatch/Neal
`
`combination utilizes Kovatch’s web parsing methodology), then moving on to
`
`1 All emphases in this declaration are added, unless otherwise indicated.
`
`5
`
`
`
`apply that same search methodology to the next supplier is a “preferred
`
`embodiment” of Neal’s teachings. Even if Neal also discloses other additional
`
`embodiments that use a sequence of search algorithms on a single supplier, and
`
`even if Neal discloses some relative advantages of those other embodiments, I have
`
`been informed and understand that such disclosure of alternative designs does not
`
`constitute “teaching away” from one of the alternatives. A POSA would not have
`
`understood Neal to discourage the use of the same search methodology on a
`
`sequence of suppliers, particularly given that Neal explicitly says this is a way of
`
`implementing Neal’s “preferred embodiment.” Neal, 6:59-65.
`
`3.
`
`Third Argument
`
`10.
`
`I understand that Parus’s and Mr. Occhiogrosso’s “[t]hird” argument
`
`is that “Neal’s teachings of searching for products in various data sets of a database
`
`are not applicable to retrieving information from a web page.” Occhiogrosso-
`
`Decl., ¶ 127; POR, page 39. This argument again does not address the
`
`Kovatch/Neal combination, which does not rely on using any particular search
`
`methodology from Neal for retrieving information from an individual website. As
`
`I discussed in ¶¶ 7-8 above, the Kovatch/Neal combination uses Kovatch’s search
`
`methodologies (e.g., Kovatch’s web parsing) to retrieve information from each of
`
`Kovatch’s websites. Mr. Occhiogrosso’s declaration notes that “Mr. Lipoff and
`
`the Petition cite to Neal’s example of searching for a Bic pen and explain that this
`
`6
`
`
`
`would be analogous to Kovatch’s system searching for a new CD.” Occhiogrosso-
`
`Decl., ¶ 127. My original declaration explained how the two searches are
`
`analogous: “[i]n both examples the user is requesting information…that could be
`
`available from multiple information sources,” which supports that a POSA would
`
`have found searching those sources sequentially to be beneficial to Kovatch’s
`
`system just as it is to Neal’s. Lipoff-Orig.-Decl., ¶ 103.
`
`11. Mr. Occhiogrosso’s declaration asserts that “Mr. Lipoff and the
`
`Petition fail to reconcile the fact that Kovatch’s system is expecting a single result,
`
`and Neal’s example returned 29 results for a search on the Bic pen.”
`
`Occhiogrosso-Decl., ¶ 127. I disagree, and in my opinion a POSA would have
`
`disagreed, with Mr. Occhiogrosso’s assertion that the number of matching pens in
`
`Neal’s example of a specific search for a Bic pen has any relevance to the
`
`Kovatch/Neal combination. Again, the Kovatch/Neal combination uses Kovatch’s
`
`search methodologies to search each individual one of Kovatch’s websites, not
`
`Neal’s example search methodologies for specific individual examples of data sets
`
`in Neal. When the Kovatch/Neal combination searches for requested information
`
`from a first website (e.g., searching Amazon’s website for the price of a CD), it
`
`retrieves whatever results Kovatch alone would retrieve from that website, which
`
`does not change in the Kovatch/Neal combination. The Kovatch/Neal combination
`
`7
`
`
`
`simply applies Neal’s teaching to next try another supplier if the first supplier does
`
`not have the requested item. See ¶¶ 5-9 above.
`
`12.
`
`The specific example in column 8 of Neal discusses a scenario where
`
`a particular pen supplier has 29 matching items returned from a particular search.
`
`See Neal, 8:6-28 (“If any match is found as a result of a search algorithm, the
`
`successive search algorithms will be skipped and the software 10 will proceed to
`
`display the results…. The display list 302 includes… the manufacturer name”); see
`
`also Neal, FIG. 3 (showing results returned from single search of single supplier
`
`“THOMAS & BETTS CORP”). Kovatch also discloses examples in which a
`
`POSA would have understood that Kovatch’s system returns multiple results from
`
`searching a particular website—for example, extended forecasts (Kovatch, 20:18-
`
`24). Thus I disagree, and in my opinion a POSA would have disagreed, with Mr.
`
`Occhiogrosso’s assertion that Kovatch’s “system…was expecting [only] a single
`
`result and…would not work” if it received multiple results. Occhiogrosso-Decl.,
`
`¶ 127. That assertion is not supported by Kovatch’s disclosure.
`
`4.
`
`Fourth Argument
`
`13.
`
`I understand that Parus’s and Mr. Occhiogrosso’s fourth and
`
`“[f]inal[]” argument is that “neither Mr. Lipoff nor the Petition explain how one
`
`would apply Neal’s search techniques to web sites.” Occhiogrosso-Decl., ¶¶ 128-
`
`129; POR, page 40. Again, I disagree because the Kovatch/Neal combination does
`
`8
`
`
`
`not rely on using any particular search methodology from Neal for retrieving
`
`information from an individual website. As I discussed in ¶¶ 5-11 above, the
`
`Kovatch/Neal combination uses Kovatch’s search methodologies (e.g., Kovatch’s
`
`web parsing) to retrieve information from each of Kovatch’s websites. My original
`
`declaration explained how a POSA would have applied Neal’s sequential-search
`
`teaching to Kovatch’s existing system that searches websites. For example, as I
`
`stated in ¶ 104 of my original declaration:
`
`In the system resulting from modifying Kovatch’s HeyAnita system
`based on Neal’s search techniques, when the user speaks an information
`request, HeyAnita first accesses the web site identified as the user’s
`preferred web site for that category of information; but if the requested
`information is not found at that preferred web site, HeyAnita accesses
`the remaining web sites in the “list of valid destinations” that matched
`the user’s request, sequentially (e.g., in order of preference among
`suppliers as Neal teaches) until either the requested information is
`found in one of the matching web sites or until all the matching web
`sites have been accessed without success, at which point a negative
`result is returned to the user. Kovatch, 4:25-27, 13:33-34, 15:9-34,
`28:17-18; Neal, 4:50-57, 5:58-6:6, 6:34-7:33, FIG. 2.
`
`See also Lipoff-Orig-Decl., ¶¶ 102-106.
`
`14. Mr. Occhiogrosso more specifically asserts that “neither Mr. Lipoff,
`
`nor the Petition, explain how the data from web sites would be pre-segmented to
`
`employ the search strategies disclosed by Neal.” Occhiogrosso-Decl., ¶ 129.
`
`9
`
`
`
`Again, the Kovatch/Neal combination does not rely on using any particular search
`
`methodology from Neal for retrieving information from an individual website.
`
`Furthermore, the Internet data that Kovatch accesses is already “pre-segmented”
`
`into different websites, which are different datasets that are each searched
`
`separately and sequentially in the Kovatch/Neal combination per Neal’s teachings.
`
`As I explained in my original declaration, Kovatch’s destination tree identifies
`
`multiple different websites as distinct destinations with unique URLs. Lipoff-
`
`Orig-Decl., ¶¶ 88-89. As I discussed above in ¶¶ 8-9, Neal teaches that each “data
`
`set” (the unit Neal describes as a “segment” or “subdivision” that is “searched
`
`separately”) can be a different supplier. Neal, 3:25-35, 5:30-35, 6:39-65. In the
`
`Kovatch/Neal combination, each data set is a different supplier’s website. See also
`
`Lipoff-Orig-Decl., ¶¶ 99-100. Neal does not discuss any further subdivision inside
`
`an individual data set, and likewise the Kovatch/Neal combination has no need to
`
`and does not subdivide an individual website into “multiple tiers” (contrary to
`
`Occhiogrosso-Decl., ¶ 129). Mr. Occhiogrosso’s assertion that “[a] POSITA
`
`understands that databases consist of records of structured data, whereas web pages
`
`are typically a collection of unstructured data” (Occhiogrosso-Decl., ¶ 129) also
`
`ignores that Kovatch’s Web Parser in the Kovatch/Neal combination (see Lipoff-
`
`Orig-Decl., ¶¶ 139, 157) “convert[s] unstructured HTML data into meaningful
`
`structured data” (Kovatch, 15:27-29).
`
`10
`
`
`
`B.
`
`Arguments Regarding Motivation to Combine Kovatch
`with Neal
`
`15.
`
`I understand that Section IV.C.1 of the POR and Section IX.C.1 of
`
`Mr. Occhiogrosso’s declaration present two arguments related to motivation to
`
`combine Kovatch with Neal. POR, pages 41-44; Occhiogrosso-Decl., ¶¶ 130-140.
`
`I disagree with each of these arguments, and in my opinion a POSA would have
`
`disagreed, for the reasons discussed below in Sections I.B.1-2.
`
`1.
`
`Arguments Regarding “Speeding Up HeyAnita”
`
`16.
`
`I understand that Section IV.C.1.a of the POR and corresponding
`
`paragraphs of Mr. Occhiogrosso’s declaration argue that a POSA would not have
`
`been motivated “to speed up Kovatch’s HeyAnita system.” Occhiogrosso-Decl.,
`
`¶ 132. This argument does not address the Kovatch/Neal combination, which does
`
`not rely on increasing response speed as a POSA’s motivation to form the
`
`Kovatch/Neal combination. As I explained in my original declaration, a POSA
`
`would have been motivated to apply hierarchical ordering and sequential search (as
`
`taught by Neal) to Kovatch’s system to achieve the benefits of “‘maximiz[ing] the
`
`likelihood of finding the desired [information]’ by searching multiple data sets,
`
`while ‘efficiently us[ing] computing resources’ and ‘increasing the efficiency of
`
`the search process by first searching in the most desirable data sets’ and
`
`terminating the search without continuing to further data sets once the information
`
`is found.” Lipoff-Orig-Decl., ¶ 102 (citing Neal, 4:65-5:2, 3:19-20). The
`
`11
`
`
`
`Kovatch/Neal combination’s sequential website search that “terminates” “[o]nce
`
`the item has been found” “thereby sav[es] the computing resources from needless
`
`searches through the remaining data sets [websites].” Lipoff-Orig-Decl., ¶ 101
`
`(quoting Neal, 3:42-45). A POSA would have understood that these efficiency
`
`gains (e.g., lowering expenditure of network resources and processing resources)
`
`are independent of the system’s speed in responding to a user’s query.
`
`17. Moreover, my original declaration did not assert that the
`
`Kovatch/Neal combination would necessarily respond faster than Kovatch alone.
`
`As I discussed above (§ I.A), the Kovatch/Neal combination does not change
`
`Kovatch’s procedure for retrieving information from each individual website.
`
`Thus, in scenarios where Kovatch alone would search only one website (which the
`
`POR at page 22 and Mr. Occhiogrosso’s declaration at ¶¶ 96, 127 acknowledge),
`
`the Kovatch/Neal combination that tries a second website after trying the first
`
`website would not necessarily respond faster.
`
`18. Mr. Occhiogrosso asserts that “Kovatch filled the potential dead air
`
`time that may occur when the system was accessing web sites” with
`
`advertisements, and that “[a] POSITA would understand that speeding up
`
`Kovatch’s system would create less dead air time and would inhibit its ability to
`
`generate revenue from playing advertisements for the user as it awaited the
`
`information to be retrieved from the web site.” Occhiogrosso-Decl., ¶ 134. I
`
`12
`
`
`
`disagree, and in my opinion a POSA would have disagreed. First, Kovatch does
`
`not teach that advertisements are played while waiting for information to be
`
`retrieved from a website. Kovatch teaches that information is retrieved, and then
`
`“an audio stream based on commercials and web information returned by” the
`
`search can be played, with the commercials and information “[i]ntermix[ed]…in a
`
`seamless manner.” Kovatch, 18:1-15, 14:1-8. A POSA would have understood
`
`that “intermixed” advertisements and information retrieved from a website are
`
`presented together at the same time. Second, advertisements are only optional in
`
`Kovatch, as none of Kovatch’s example “usage scenarios” include advertisements.
`
`See Kovatch, 20:5-22:21. Similarly, Kovatch’s independent claim does not recite
`
`an ad generator; an ad generator is only in a dependent claim in Kovatch. See
`
`Kovatch, 35:3-25.
`
`2.
`
`Arguments Regarding Fault Tolerance
`
`19.
`
`I understand that Section IV.C.1.b of the POR and corresponding
`
`paragraphs of Mr. Occhiogrosso’s declaration (¶¶ 135-140) argue that a POSA
`
`“would understand that Kovatch was already a fault tolerant system that would
`
`maximize the likelihood of finding the requested information,” and therefore
`
`would not have been motivated to make the Kovatch/Neal combination. I
`
`disagree, and in my opinion a POSA would have disagreed.
`
`13
`
`
`
`20. Mr. Occhiogrosso first asserts that “Kovatch’s disclosure
`
`demonstrates that HeyAnita is fault tolerant and maximizes the likelihood of
`
`finding the requested information,” because in one example “scenario where the
`
`user wishes to purchase a CD,” “the HeyAnita system checks all of the available
`
`websites where the CD can be purchased to ensure it finds the cheapest price for
`
`the user.” Occhiogrosso-Decl., ¶¶ 136-137 (citing Kovatch, 20:29-21:3). But the
`
`possibility of that option when the user has no preference among websites does not
`
`negate Kovatch’s other examples where the user has a first-preferred website (e.g.,
`
`Amazon), and Kovatch’s disclosure that “HeyAnita…modifies its search
`
`mechanism based on user’s…preferences.” Lipoff-Orig-Decl., ¶ 104. For those
`
`scenarios, the Kovatch/Neal combination’s sequential search—which starts with
`
`the most preferred website and stops when the information is found—more
`
`“efficiently us[es] computing resources” than searching all websites concurrently.
`
`Lipoff-Orig-Decl., ¶¶ 99, 102-105. A POSA would have been motivated to make
`
`the Kovatch/Neal combination not only to “maximiz[e] the likelihood of finding
`
`the desired information,” but to do so “while…increasing the efficiency of the
`
`search process by first searching in the most desirable data sets” and stopping
`
`when “the information is found.” Lipoff-Orig-Decl., ¶ 102 (citing Neal, 4:65-5:2,
`
`3:19-20).
`
`14
`
`
`
`21. Mr. Occhiogrosso next asserts that “HeyAnita is very interactive, and
`
`if a particular destination does not have the information requested, such as a CD,
`
`then the HeyAnita system would indicate that to the user and the user would have
`
`to decide if it wanted HeyAnita to retrieve the information from another web site.”
`
`Occhiogrosso-Decl., ¶ 139. I find no analysis in Mr. Occhiogrosso’s declaration to
`
`establish that limitation [1.j] of claim 1 of the ’431 patent would not be met if such
`
`user interaction occurred during the sequential access process. But even if such
`
`user interaction were excluded by limitation [1.j], I find no citation in Mr.
`
`Occhiogrosso’s declaration to anything in Kovatch that actually teaches such
`
`“follow-up” questions with the user in the scenario where a first website was
`
`searched and did not have the requested information. Occhiogrosso-Decl., ¶¶ 138-
`
`139. Elsewhere in his declaration, Mr. Occhiogrosso asserts differently, that
`
`Kovatch is “not fault tolerant,” and would have “no way to get the requested
`
`information” if it were not available from the first website searched.
`
`Occhiogrosso-Decl., ¶ 40. The Kovatch/Neal combination improves the likelihood
`
`of finding the requested information in that scenario, by proceeding to search a
`
`second website rather than stopping when the first website fails to provide the
`
`information, as I explained in my original declaration. Lipoff-Orig-Decl., ¶¶ 102-
`
`105, 158.
`
`15
`
`
`
`22. Mr. Occhiogrosso asserts that asking the user a follow-up question
`
`whether to search a second site would have been “logical” if the system was unable
`
`to retrieve the information from the first site. Occhiogrosso-Decl., ¶ 139 (“[I]f a
`
`user told HeyAnita that it wanted to buy the Guns N Roses CD from Amazon, and
`
`HeyAnita was not able to retrieve the information from Amazon, a logical follow-
`
`up would be if I [sic] wanted to try to buy it from CD Now.”). (Mr. Occhiogrosso
`
`does not cite any disclosure from Kovatch teaching this, because it is not disclosed
`
`in Kovatch.) A POSA would have understood that searching a second website
`
`automatically would have been just as “logical” (if not more so) as doing so after a
`
`follow-up question. Automatically providing fallback results from another site, as
`
`the Kovatch/Neal combination does once the first site fails to provide the requested
`
`information, would have avoided unnecessarily wasting time first reporting failure
`
`and going through another question-and-answer round to ask for instructions. A
`
`POSA would have understood this to be beneficial given users’ known preference
`
`for shorter dialogs with voice response systems.
`
`II. GROUND 5: ARGUMENTS REGARDING CLAIM 9
`
`23. As I explained in my original declaration, dependent claim 9 of the
`
`’431 patent (reciting “periodically search[ing] said internet to identify new web
`
`sites and to add said new web sites to said plurality of web sites”) lacks written
`
`description in the specification shared by the ’431 patent and its parent application
`
`16
`
`
`
`to support its priority claim, and therefore the parent application publication
`
`(Kurganov-262) is prior art to claim 9. Lipoff-Orig-Decl., ¶ 207. I understand that
`
`Section IV.D.1 of the POR and Section IX.D.1 of Mr. Occhiogrosso’s declaration
`
`argue that there is written description support for claim 9. I disagree with these
`
`arguments, and in my opinion a POSA would have disagreed, for the reasons
`
`discussed in this Section below.
`
`24.
`
`Parus and Mr. Occhiogrosso assert that “[a] POSITA would
`
`understand that a web search system or engine would include the ability to
`
`‘identify new websites’ or engage in web crawling.” Occhiogrosso-Decl., ¶ 149;
`
`POR, page 47. I find no evidence cited in Mr. Occhiogrosso’s declaration to
`
`support the assertion that all web search systems or engines would identify new
`
`websites or engage in web crawling; and I disagree, and in my opinion a POSA
`
`would have disagreed, with that assertion. Mr. Occhiogrosso’s declaration cites a
`
`“Lipoff Dep. (Rough) 80:9-24,” which does not appear to correspond to any
`
`exhibit filed with the POR. Occhiogrosso-Decl., ¶ 149. To the extent Mr.
`
`Occhiogrosso intended to cite something in my deposition testimony in this
`
`proceeding, I never testified that the ’431 patent’s system would include web
`
`crawling or the ability to identify new web sites. See Ex. 1049, pages 84-87. As I
`
`explained in my original declaration, functionality meeting claim 9’s additional
`
`limitation was “taught by Chakrabarti,” and “a POSA would have understood that
`
`17
`
`
`
`it was well-known in the prior art to include this feature in an information-retrieval
`
`system,” but the specification shared by the ’431 patent and its parent application
`
`does not describe doing so. Lipoff-Orig.-Decl., ¶ 228.
`
`25. As I explained in my original declaration, the specification describes a
`
`“first embodiment” for browsing websites and a “second embodiment” for
`
`controlling household devices. See Lipoff-Orig.-Decl., ¶¶ 49, 208. Mr.
`
`Occhiogrosso asserts that the “disclosure makes it clear these embodiments are not
`
`exclusive, and a POSITA would understand that the description of the second
`
`embodiment concerning a system for browsing devices is equally applicable to
`
`web sites and to the first embodiment system for browsing web sites.”
`
`Occhiogrosso-Decl., ¶ 150. Mr. Occhiogrosso cites the ’431 patent at 17:50-58 as
`
`allegedly “show[ing] that the devices in the second embodiment may in fact be
`
`web sites, and operate similarly to the first embodiment,” and the ’431 patent at
`
`19:10-17 as allegedly “confirm[ing] that the features of the first and second
`
`embodiment apply equally to each other and are the same, including searching for
`
`new devices/web sites.” Occhiogrosso-Decl., ¶¶ 151-152. I disagree, and in my
`
`opinion a POSA would have disagreed, for all the reasons I explained in
`
`paragraphs 214-223 of my original declaration. I note that Mr. Occhiogrosso’s
`
`declaration does not respond to the specific points made in that section of my
`
`original declaration.
`
`18
`
`
`
`26.
`
`The specification at 19:10-17 of the ’431 patent states that the “device
`
`browsing system 514 has the ability to detect whether new devices have been
`
`added to the system or whether current devices are out-of-service…by periodically
`
`polling or ‘pinging’ all devices 500 listed in database 508.” Mr. Occhiogrosso
`
`asserts that “[a] POSITA would understand that disclosure to include polling or
`
`pinging new devices as well as the devices listed in database 508” because
`
`otherwise “it could never detect a new device as expressly described by the patent
`
`specification.” Occhiogrosso-Decl., ¶ 154. I disagree, and in my opinion a POSA
`
`would have disagreed. The specification explicitly explains how polling only the
`
`devices listed in the database allows detection of when, for example, a known
`
`device has been replaced by a new device at its network location in the home or
`
`office network: “if the device browsing server 506 does not receive a response
`
`from the polled device 500 or receives an unexpected response, then the device
`
`500 is marked as being either new or out-of-service.” ’431 patent, 19:22-25. I
`
`disagree, and in my opinion a POSA would have disagreed, with Mr.
`
`Occhiogrosso’s assertion that this “describes a process where by
`
`[sic]…new…websites are discovered.” Occhiogrosso-Decl., ¶ 154. Receiving an
`
`unexpected response after polling the known devices on a home or office network
`
`is not searching the Internet to identify new websites, and I find no explanation or
`
`evidence in Mr. Occhiogrosso’s declaration to the contrary. Also, the disclosure at
`
`19
`
`
`
`19:10-28 of the ’431 patent only discusses generating “[a] warning message or a
`
`report…for the user indicating that a new device has been detected,” and nowhere
`
`describes adding a new network location or any other device identifier to the
`
`database.
`
`27. Mr. Occhiogrosso asserts that “[w]ithout ‘identify[ing] new websites’
`
`it would be impossible for the system to ‘dynamically adapt to changes in the
`
`rapidly evolving web sites that exist on the Internet’” as the ’431 patent describes
`
`at 17:23-28. Occhiogrosso-Decl., ¶ 153. I disagree, and in my opinion a POSA
`
`would have disagreed. The “changes in the rapidly evolving web sites” that the
`
`specification describes “adapt[ing] to” are described not only at 17:23-28, but also
`
`at 2:30-41 and 16:44-55 of the ’431 patent, all of which are describing changes
`
`within each known website already listed in the system’s database. For example,
`
`“web sites change frequently. The design of the web site may change, the
`
`information required by the web site in order to perform searches may change, and
`
`the method of reporting search results may change….Therefore, a need exists for a
`
`system that can detect modifications to web sites and adapt to such changes in
`
`order to quickly and accurately provide the information requested by a user.” ’431
`
`patent, 2:30-41. “The web site ranking method and system of the present
`
`invention…enables it to adapt to changes that may occur as web sites evolve. For
`
`instance, the information required by a web site 114 to perform a search or the
`
`20
`
`
`
`format of the reported response data may change. Without the ability to
`
`adequately monitor and detect these changes, a search requested by a user may
`
`provide an incomplete response, no response, or an error.” ’431 patent, 16:44-55.
`
`“The constant polling and re-ranking of the web sites used within each category
`
`allows the voice browser of the present invention…to dynamically adapt to
`
`changes in the rapidly evolving web sites that exist on the Internet.” ’431 patent,
`
`17:23-28. As the specification explains in the preceding paragraph at 17:8-12 of
`
`the ’431 patent, this feature “generates a warning message or alarm for the system
`
`administrator indicating that the specified web site has been modified or is not
`
`responsive and requires further review.” See Lipoff-Orig-Decl., ¶¶ 211-213. The
`
`specification does not describe searching for new websites; it only describes
`
`polling known websites to detect changes within them.
`
`28. Mr. Occhiogrosso asserts that “[a] POSITA would understand that
`
`‘polling’ includes asking for information from a website, including a listing of the
`
`current links or URLs provided by the website, which is a common web crawling
`
`technique.” Occhiogrosso-Decl., ¶ 155; see also POR, 49-50 (asserting that
`
`“polling” includes “asking…a search engine to provide new website information”).
`
`I disagree, and in my opinion a POSA would have disagreed. I find no basis or
`
`evidence in Mr. Occhiogrosso’s declaration to support his assertion that “polling”
`
`means asking a website for a listing of links or URLs, and no basis or evidence
`
`21
`
`
`
`anywhere for the POR’s assertion that “polling” means asking a search engine to
`
`provide new website information. The specification nowhere describes asking a
`
`website for a listing of links or URLs or asking a search engine to provide new
`
`website information. The specification explicitly describes what “polling” does:
`
`the “polling function…
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
