`Tel: 571-272-7822
`
`Paper 11
`Entered: January 23, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMREACH, INC.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2019-01304
`Patent 7,231,379 B2
`____________
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Petitioner, Bloomreach, Inc., filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1‒7 of U.S. Patent No. 7,231,379
`B2 (Ex. 1001, “the ’379 patent”). Petitioner filed a Declaration of
`Dr. Padhraic Smyth (Ex. 1007) with its Petition. Guada Technologies LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`
`ELASTIC - EXHIBIT 1027
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`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and any preliminary response “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we institute an inter partes review as to claims 1‒7 of the ’379 patent on all
`grounds of unpatentability asserted in the Petition.
`
`I. INTRODUCTION
`A. Related Matters
`Petitioner indicates that Patent Owner asserted the ’379 patent in the
`following related matters:
`(cid:120)
`Guada Technologies LLC v. Pier 1 Imports (US), Inc., 1-19-cv-
`01016 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. Sally Beauty Supply LLC, 1-19-cv-
`01017 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. Staples, Inc., 1-19-cv-01018
`(D. Del.);
`(cid:120)
`Guada Technologies LLC v. Big 5 Corp., 1-19-cv-00755
`(D. Del.);
`(cid:120)
`Guada Technologies LLC v. Floor and Decor Outlets of
`America, Inc., 1-19-cv-00756 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. HSN, Inc., 1-19-cv-00757
`(D. Del.);
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`(cid:120)
`Guada Technologies LLC v. Hibbett Sporting Goods, Inc., 1-
`19-cv-00185 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. BSN SPORTS, LLC, 1-19-cv-
`00186 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. UncommonGoods, LLC, 1-19-cv-
`00187 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. Williams-Sonoma, Inc., 1-19-cv-
`00188 (D. Del.);
`(cid:120)
`Guada Technologies LLC v. Teespring, Inc., 1-18-cv-01867
`(D. Del.).
`Pet. 2‒3.
`B.
`The ’379 Patent
`The ’379 patent relates to a method for searching a hierarchical menu
`tree of nodes or vertices. Ex. 1001, Abstract. One common example of a
`hierarchical menu tree of nodes or vertices is an “automated telephone voice
`response system.” Id. at 1:40‒41. Users of the system typically have some
`goal they seek to accomplish within the system, such as a transaction or
`piece of information they wish to access. Id. at 1:66‒2:3. The user’s goal is
`represented by one or more “nodes” or “vertices” within the menu tree. Id. at
`2:5‒8. The user’s intent in navigating the menu tree is to get from the first,
`initial entry point in the menu to the goal vertices. Id. at 2:9‒18. The ’379
`patent teaches a system that purportedly allows users to navigate a menu tree
`more efficiently. Id. at 2:22‒31.
`The ’379 patent teaches that in graph theory, a “path” leads from one
`vertex in a graph to another, where the path consists of a sequence of
`“edges” that connect the vertices between the first vertex (the initial entry
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`point into the graph) and the goal vertex. Ex. 1001, 2:64‒67. The ’379 patent
`teaches a system that allows a user to navigate a graph or menu tree in a way
`that allows the user to skip from one vertex to another vertex where these
`vertices are not directly connected, eliminating the necessity for making
`choices to navigate the tree to the goal. Id. at 3:29‒34.
`The ’379 patent teaches prompting users for keywords that can be
`used to identify the user’s goal. Id. at 4:22‒41. Keywords are assigned to
`each node in the menu tree, allowing a user to “jump” to another place in the
`tree by providing a keyword associated with the unconnected node. Id. at
`4:42‒5:12.
`To illustrate these concepts, the ’379 patent teaches an example
`associated with Figure 2, shown below.
`
`
`Figure 2 depicts a simplified graph 200 representing a portion of a
`more complex tree involving possible decisions relating to fruit. Ex. 1001,
`5:43‒48. In this example, a user that is prompted at a node above the fruit
`node with the query “What would you like to buy today?” may respond
`“orange.” Id. at 6:7‒15. The system would respond by identifying node 206
`as relating to the keyword orange and would jump directly to node 206,
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`bypassing the need to navigate through node 202, which is associated with
`the keyword “fruit.” Id. at 6:15‒21.
`Of the challenged claims, claims 1 and 7 are independent. Claims 2‒6
`depend from claim 1. Claim 1 is illustrative of the challenged claims and
`recites:
`A method performed in a system having multiple
`1.
`navigable nodes interconnected in a hierarchical arrangement
`comprising:
`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,
`identifying at least one node, other than the first node, that
`is not directly connected to the first node but is associated with
`the at least one keyword, and
`jumping to the at least one node.
`Ex. 1001, 22:47‒24:11.
`
`C.
`Evidence Relied Upon
`Petitioner relies on the following prior art:
`U.S. Patent No. 6,731,724, issued May 4, 2004, filed June
`22, 2001 (Ex. 1004, “Wesemann”);
`U.S. Patent No. No. 6,366,910, issued April 2, 2002
`(Ex. 1005, “Rajaraman”); and
`U.S. Patent No. 7,539,656, issued May 26, 2009, filed
`March 6, 2001 (Ex. 1006, “Fratkina”).
`
`
`
`D.
`The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
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`Claims Challenged
`1, 2, 7
`
`35 U.S.C. §
`§ 103(a)
`
`Wesemann
`
`Basis
`
`3‒6
`
`1, 2, 7
`
`3‒6
`
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Wesemann and Rajaraman
`
`Fratkina
`
`Fratkina and Rajaraman
`
`II. ANALYSIS
`A.
`Level of Ordinary Skill in the Art
`Petitioner states a person of ordinary skill in the art at the time of the
`alleged invention would have “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.” Pet. 10. Petitioner further states that “additional
`education substitut[es] for experience and vice versa.” Id. Dr. Smyth’s
`testimony supports Petitioner’s position. See Ex. 1007 ¶¶ 28‒30. Patent
`Owner does not explicitly refute these assertions. See generally Prelim.
`Resp. At this stage of the proceeding, we are satisfied that Petitioner’s
`proposed definition comports with the qualifications a person would need to
`understand and implement the teachings of the ’379 patent and the prior art
`of record. Accordingly, we apply Petitioner’s definition of the level of
`ordinary skill in the art for purposes of this Decision.
`B.
`Claim Construction
`Because this inter partes review is based on a petition filed after
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`November 13, 2018,1 we construe each claim “in accordance with the
`ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the
`same as that applied by a district court in a civil action under 35 U.S.C.
`§ 282(b). See id. Under this standard, claim terms are generally given their
`plain and ordinary meaning as would be understood by a person of ordinary
`skill in the art at the time of the invention and in the context of the entire
`patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
`2005) (en banc). “There are only two exceptions to this general rule:
`1) when a patentee sets out a definition and acts as his own lexicographer, or
`2) when the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Computer Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`Petitioner proposes construing five claim terms. Pet. 10‒15. First,
`Petitioner proposes construing “node” to mean “a specific choice or option
`in a hierarchy.” Id. at 11. Second, Petitioner proposes construing “vertex” to
`mean “a specific choice or option in a hierarchy that can be represented in a
`graph.” Id. at 11‒12. Third, Petitioner proposes construing “keyword” to
`mean “one or more words or pieces of information, such as a specific data
`
`
`1 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in civil actions under
`35 U.S.C. § 282(b) in federal district courts. Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(now codified at 37 C.F.R. pt. 42 (2019)). This rule change applies to
`petitions filed on or after November 13, 2018.
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`pattern, that is associated with at least one node or vertex.” Id. at 13‒14.
`Fourth, Petitioner proposes construing “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).” Id. at 14‒15. Finally, Petitioner
`proposes construing “verbal description” to mean “a set of words relating to
`the subject matter whether presented audibly or in written form.” Id. at 15.
`Patent Owner proposes construing two claim terms. Prelim. Resp.
`2 n.1. First, Patent Owner notes that Petitioner has adopted Patent Owner’s
`proposed construction of “jumping” from the related district court litigation.
`Id. Second, Patent Owner proposes construing the terms “jumping to the [at
`least one node/vertex]” to mean “the system jumping to the [at least one
`node/vertex].” Id. Patent Owner states that because Petitioner adopts its
`construction of “jumping,” “[p]resumably, [Petitioner] thereby also adopts
`the construction of ‘[j]umping to the [a]t [l]east [o]ne node’ and ‘[j]umping
`to the [v]ertex,’ which makes clear that the subject doing the jumping is the
`‘system.’” Id.
`Based on the current record and for the purposes of this Decision, we
`adopt the parties’ agreed-upon construction of the term “jumping”: “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).”
`Patent Owner proposes a construction of the larger claim phrase
`“jumping to the at least one node” (claim 1) and “jumping to the vertex”
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`(claim 7), inserting “the system” into the phrase. See Prelim. Resp. 2 n. 1.
`Based on the current record and for the purposes of this Decision, we
`determine that “jumping to the [at least one node/vertex]” needs no further
`construction beyond the construction of the term “jumping.”
`We determine that no other terms require explicit construction. See,
`e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`C. Ground 3: Alleged Obviousness of Claims 1‒7 over Fratkina
`We have reviewed the Petition and Preliminary Response and
`determine that, on the present record, Petitioner has shown a reasonable
`likelihood that it would prevail in establishing the unpatentability of each of
`claims 1‒7 as obvious over Fratkina.
`1.
`Fratkina
`Fratkina is a United States patent directed to the use of multi-stage
`interaction with a client to identify particular knowledge associated with a
`content map. Ex. 1006, Abstract. Figure 11 of Fratkina is reproduced below.
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`Figure 11 depicts an example dialog created by dialog engine 232. Id. at
`27:46‒50. In this example, the dialog begins at the “breakfast” node in
`iteration N, where the user is prompted with the question “which of the
`following would you like to get?” Id. at 27:50‒54. The user responds “eggs,”
`and the dialog engine proceeds to iteration N+1 with the dialog at the “eggs”
`node. Id. The user is next prompted with the question “how would you like
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`your eggs prepared?” Id. The user responds “scrambled,” which moves the
`dialog to the “scrambled” node in iteration N+2. Id. In this example, the user
`is choosing multiple choice answers, which each represents a “confirmed”
`node because relevance to the user’s request has been established. Id. at
`27:54‒60.
`Fratkina teaches several variations to this example, including a
`process termed “autocontextualization.” See, e.g., Ex. 1006, 29:1‒15.
`Fratkina teaches that autocontextualization is a process by which
`information is derived from user input and compared to taxonomies in the
`knowledge map to identify relevant nodes. Id. Fratkina teaches that
`autocontextualization may be used to “jump” to a specific place in the
`taxonomy. Id. at 34:40‒42.
`2.
`Independent Claim 1
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, “would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We analyze Petitioner’s obviousness grounds with the principles identified
`above in mind.
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`
`a. Preamble
`The preamble of claim 1 recites: “[a] method performed in a system
`having multiple navigable nodes interconnected in a hierarchical
`arrangement.” Petitioner asserts that Fratkina discloses or suggests this
`feature. Pet. 56‒58. In particular, Petitioner asserts Fratkina discloses the use
`of hierarchical taxonomies containing interconnected nodes that may be
`navigated by a user. Id. (citing Ex. 1006, Figs. 4‒5, 4:42‒5:19, 14:47‒59).
`Dr. Smyth’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 80.
`Patent Owner does not argue that Fratkina fails to teach the preamble
`of claim 1. Based on the present record, we are sufficiently persuaded that
`Fratkina teaches the preamble of claim 1.2
`b. Receiving Limitation
`Claim 1 further recites “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.”
`Petitioner asserts that Fratkina discloses or suggests this feature.
`Pet. 58‒62. In particular, Petitioner asserts Fratkina discloses a system that
`receives input from a user at a first node. Id. at 58 (citing Ex. 1006,
`Figs. 10‒12, 13:15‒39, 22:19-29, 26:36‒57, 34:9‒53). Petitioner asserts the
`input may be “keyword or natural language” queries that a dialog engine
`converts into tags to be processed by the system using autocontextualization.
`Id. at 58‒59 (citing Ex. 1006, 5:13‒28, 5:58‒8:10, 14:27‒31). Petitioner
`asserts the system uses the inputs to traverse the taxonomy. Id. at 59‒60
`
`2 At this stage of the proceeding, we need not decide whether the preamble is
`limiting because Petitioner sufficiently shows that Fratkina discloses the
`preamble.
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`(citing Ex. 1006, 14:27‒31, 26:26‒47:27). Dr. Smyth’s testimony supports
`Petitioner’s assertions. See Ex. 1007 ¶¶ 80‒83.
`Patent Owner does not argue that Fratkina fails to teach this
`limitation. Based on the present record, we are sufficiently persuaded that
`Fratkina teaches this limitation.
`c. Identifying Limitation
`Claim 1 further recites “identifying at least one node, other than the
`first node, that is not directly connected to the first node but is associated
`with the at least one keyword, and jumping to the at least one node.” As
`noted above, for the purposes of this Decision we construe “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
`supra, Section B.
`Petitioner asserts that Fratkina discloses or suggests this feature.
`Pet. 62‒64. In particular, Petitioner asserts Fratkina discloses that
`autocontextualization allows users to navigate directly to nodes that are not
`directly connected to a first node without traversing through intervening
`nodes. Id. at 62‒63 (citing Ex. 1006, 27:25‒43, 34:32‒53, 37:54‒63).
`Petitioner explains autocontextualization by way of example, asserting
`that Fratkina discloses an embodiment wherein a user may navigate a
`hierarchical menu that includes options “breakfast,” “eggs,” and
`“scrambled.” Id. at 63. Petitioner asserts that if a user is at the “breakfast”
`node and desires “scrambled eggs,” the user may simply say “scrambled
`eggs” in response to a question about what the user wants for breakfast. Id.
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`at 63. Petitioner asserts that in this example, Fratkina’s autocontextualization
`allows the dialog to identify “scrambled” as the goal node and the system
`will jump directly to that node, without requiring the user to first traverse
`through the “eggs” node. Id. at 63 (citing Ex. 1006, Fig. 12, 27:25‒43, 34:9‒
`53, 37:54‒63; Ex. 1007 ¶ 84). Dr. Smyth’s testimony supports Petitioner’s
`assertions, explaining that an ordinarily skilled artisan would understand
`autocontextualization to allow this type of jumping. See Ex. 1007 ¶ 80‒84.
`Patent Owner argues that Fratkina fails to teach “jumping to the at
`least one node,” as claimed. Prelim. Resp. 8‒17. In particular, Patent Owner
`argues Fratkina’s menu embodiment illustrated by Figures 10‒12 discloses
`that “dialogs always lead to node-to-node traversal” with the only exception
`being autocontextualization. Id. at 8‒11. Patent Owner argues that Fratkina’s
`node-to-node traversal always leads to directly-connected children nodes. Id.
`at 11.
`
`Patent Owner argues that autocontextualization cannot be used with
`Fratkina’s menu embodiment. Prelim. Resp. 11‒14. In particular, Patent
`Owner argues that in Fratkina’s menu embodiment, a user’s response to a
`dialog prompt returns a confirmed node selection. Id. at 11‒12 (citing
`Ex. 1006, 26:54‒60). Patent Owner argues that autocontextualization never
`returns confirmed nodes, rendering it unusable in a system where confirmed
`nodes with associated keywords are traversed. Id. at 12 (citing Ex. 1006,
`29:5‒11, 33:49‒56).
`Patent Owner’s argument that autocontextualization never returns
`confirmed nodes and, therefore, cannot be used with the menu embodiment,
`is unpersuasive at this stage of the proceeding based on the present record.
`Fratkina teaches that input a user provides to the system is
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`autocontextualized against the taxonomies in the knowledge map. Ex. 1006,
`29:5‒6. This results in “topic spotter nodes” that represent the system’s
`understanding of the user’s input. Id. at 29:6‒8. These nodes are not
`automatically accepted as true (unlike confirmed nodes), but these nodes
`may be verified by asking follow-up questions to confirm the dialog
`engine’s understanding of the user’s input. Id. at 26:8‒14. Thus,
`autocontextualized topic spotter nodes may become confirmed after follow
`up. Id. at 26:8‒14; see also id. at 37:56‒57. Thus, based on the present
`record, Patent Owner’s argument that autocontextualization cannot return
`“confirmed” nodes is unsupported by the teachings of Fratkina. Further,
`Fratkina discloses that dialog designers may use goal parameters to create a
`dialog that advances to an autocontextualized node even without
`confirmation. See id. at 33:49‒34:3.
`Patent Owner also argues that even if autocontextualization were
`combinable with the menu embodiment, autocontextualization is used to
`generate topic spotter nodes, not nodes that would allow the alleged
`“jumping” relied upon by Petitioner. Prelim. Resp. 13‒14. According to
`Patent Owner, autocontextualization never deals with user-provided
`keywords associated with non-adjacent nodes because it creates nodes based
`on user input rather than jumping to nodes that it confirms. Id. at 15‒17
`(citing Ex. 1006, 33:49‒56, 34:32‒42).
`Patent Owner’s argument that autocontextualization is never used to
`jump to non-adjacent nodes is unpersuasive at this stage of the proceeding
`based on the present record. As noted by Petitioner, Fratkina teaches that
`users may advance to goals and subgoals within a knowledge map by path
`traversal (i.e., traversing from parent to child nodes directly). Pet. 62‒63
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`(citing Ex. 1006, 34:32‒53). As asserted by Petitioner, Fratkina also teaches
`that “[a]utocontextualization can be used to jump to a specific place in the
`taxonomy and the dialog designer can explicitly specify a place to jump to.”
`Ex. 1006, 34:40‒42. Fratkina provides other examples of using
`autocontextualization to navigate to nodes within a taxonomy. See, e.g., Ex.
`1006, Fig. 15, 37:31‒63 (explaining that by using a test question, a user is
`prompted to type in a desired menu selection, and the autocontextualized
`response advances the dialog to a particular subgoal). Dr. Smyth also
`testifies autocontextualization may be used to jump to non-adjacent nodes,
`rendering obvious the “jumping” limitations of claim 1. Ex. 1007 ¶ 84
`(citing Ex. 1006, 27:25‒43, 34:32‒53, 37:54‒63).
`Patent Owner also argues that Petitioner’s assertions regarding
`“jumping” and Dr. Smyth’s testimony are unsupported and conclusory.
`Prelim. Resp. 14. On the current record, we disagree because Petitioner and
`Dr. Smyth reasonably support their assertions by citing to teachings of
`Fratkina. See Pet. 62‒63 (citing Ex. 1006, 34:32‒53); Ex. 1007 ¶ 84 (citing
`Ex. 1006, 27:25‒43, 34:32‒53, 37:54‒63).
`For these reasons and based on the present record, we are sufficiently
`persuaded that Fratkina teaches this limitation.
`On this record, we are satisfied at this stage of the proceeding that
`Fratkina discloses every limitation of claim 1. Thus, for the foregoing
`reasons, Petitioner has shown, on the present record, a reasonable likelihood
`that it would establish unpatentability of claim 1 as obvious over Fratkina.
`3.
`Independent claim 7
`Independent claim 7 recites “[a] method performed in a system having
`multiple navigable nodes interconnected in a hierarchical arrangement.”
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`Claim 7 recites similar limitations to claim 1 and Petitioner’s analysis is
`similar. See Pet. 65‒70. Patent Owner does not provide separate argument
`for claim 7. See Prelim. Resp. 8‒17. On this record, we are satisfied at this
`stage that Fratkina discloses every limitation of claim 7 for substantially the
`same reasons as claim 1. Thus, for the foregoing reasons, Petitioner has
`shown, on this record, a reasonable likelihood that it would establish
`unpatentability of claim 7 as obvious over Fratkina.
`4.
`Dependent claim 2
`Claim 2 recites “[t]he method of claim 1 further comprising:
`providing a verbal description associated with the at least one node to the
`user.” Petitioner asserts Fratkina teaches this limitation by teaching a text-to-
`speech system that outputs a vocal response to the user. Pet. 64‒65 (citing
`Ex. 1006, Fig. 11, Fig. 21, 13:15‒24, 26:34‒60, 37:12‒30); Ex. 1007 ¶ 85).
`Patent Owner does not dispute Petitioner’s assertions. We have
`reviewed the Petition and Preliminary Response and determine, on the
`present record, that Petitioner has shown a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claim 2 as
`obvious over Fratkina.
`D. Ground 4: Alleged Obviousness of Claims 3‒6 over Fratkina and
`Rajaraman
`Claims 3‒6 depend from Claim 1. Petitioner relies on Rajaraman as
`disclosing the further recited limitations in these dependent claims and has
`articulated a reasonable rationale why a person skilled in the art would have
`combined the teachings of Fratkina and Rajaraman. See Pet. 40‒53, 70‒71.
`Patent Owner does not argue any of these dependent claims separately on
`the current record. See Prelim. Resp. We have reviewed the Petition and
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`Preliminary Response and determine that, on the present record, Petitioner
`has shown a reasonable likelihood that it would prevail in establishing
`unpatentability of each of claims 3‒6 as obvious over the combined
`teachings of Fratkina and Rajaraman.
`E. Grounds 1 and 2: Alleged Obviousness of Claims 1‒7 over
`Wesemann [Ground 1: Claims 1, 2, and 7] and Wesemann and
`Rajaraman [Ground 2: Claims 3‒6]
`Petitioner asserts Wesemann discloses all of the limitations of claims
`1, 2, and 7, and that Wesemann in combination with Rajaraman renders
`obvious all of the limitations of claims 3‒6. Pet. 16‒30. Patent Owner
`focuses its arguments on the limitations “jumping to the at least one node,”
`as recited in claim, 1 and “jumping to the vertex,” as recited in claim 7. See
`Prelim. Resp. 1‒8. As stated above with respect to claim construction of
`these terms, Patent Owner argues that these terms should be construed to
`mean “the system jumping to the [at least one node/vertex].” Id. at 2 n.1.
`Also, Patent Owner asserts that it presumes Petitioner agrees with this
`construction, but provides no other argument supporting its proposed
`construction. Id.
`Patent Owner argues that Wesemann does not teach “jumping to the
`[at least one node/vertex]” under its proposed construction because
`Wesemann teaches the system navigating through intermediate, connected
`nodes to “jump” to the indirectly connected node. Id. at 2‒5; Ex. 1004,
`3:50(cid:16)56). According to Patent Owner, Wesemann’s “jump” merely spares
`the user from entering input while the user interface transitions between the
`intermediate nodes but does not allow the system to transition between non-
`connected nodes. Prelim. Resp. 6.
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`Petitioner asserts that Wesemann discloses “jumping to the at least
`one node” and “jumping to the vertex” by disclosing lateral and vertical
`jumping within the menu tree. See Pet. 26‒28, 39‒40. Petitioner asserts the
`lateral and vertical “jumping action is done automatically upon receiving the
`appropriate voice commands, or keywords, without requiring the user to
`select different menu items from a display or navigate through the
`hierarchical menu.” Id. at 29 (citing Ex. 1004, 11:65‒12:6, 12:12‒36, 12:65‒
`13:2; Ex. 1007 ¶¶ 47, 55‒56). Thus, Petitioner’s assertions focus on whether
`the user is required to navigate through the intermediate nodes.
`Although we have construed the term “jumping” alone, there appears
`to be a dispute as to the scope of the phrases “jumping to the at least one
`node” and “jumping to the vertex.” In particular, the dispute seems to be
`centered on whether the claim language is satisfied merely because the user
`interface, as opposed to the underlying system, evidences a jump over some
`part of the menu. At this stage of the proceeding the record is insufficiently
`developed on this issue for us to make a preliminary determination regarding
`claim construction of these phrases.
`Nevertheless, the issue raised by Patent Owner may be decided at
`institution without claim construction on this issue at this juncture. In
`particular, we note that, according to Patent Owner, Wesemann’s “jump”
`may refer to a transition across multiple connected nodes. Prelim. Resp. 5(cid:16)6
`(citing Ex. 1004, 12:53(cid:16)65). Such a characterization of Wesemann’s use of
`the word “jump” is inconsistent with the construction of the term that we
`have adopted for purposes of this Decision. Under that construction, the
`“jump” must be between nodes not directly connected. We will make a final
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`determination upon review of further briefing and evidence by the parties
`regarding this issue.
`At this time and on this record, we do not construe further the terms
`“jumping to the at least one node” and “jumping to the vertex.” For purposes
`of this Decision, and subject to further evidence and argument by the parties,
`we determine that Petitioner has not shown a reasonable likelihood of
`prevailing on this ground.
`
`III. CONCLUSION
`Based on the arguments in the Petition and the evidence of record, we
`determine that Petitioner has demonstrated a reasonable likelihood that it
`will prevail on its challenge to at least one claim of the ’379 patent.
`Although we exercise our discretion and institute review, we remind
`the parties that we have not yet made a final determination as to the
`patentability of any of the challenged claims.
`
`IV. ORDER
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`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1‒7 of the ’379 patent with respect to
`the grounds set forth in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this Decision.
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`For PETITIONER:
`Dion Bregman
`Michael Lyons
`Ahren Hsu-Hoffman
`MORGAN LEWIS
`dion.bregman@morganlewis.com
`michael.lyons@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`
`For PATENT OWNER:
`Isaac Rabicoff
`RABICOFF LAW
`isaac@rabilaw.com
`
`
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