Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 1 of 480 PageID #: 2478
`
` 
`
` 
`
` 
`
` 
`
` 
`
` 
`
` 
`
` 
`
`Exhibit 6M
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 2 of 480 PageID #: 2479
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Apple Inc., Google Inc., and Motorola Mobility LLC
`
`Petitioners,
`
`v.
`
`Arendi S.A.R.L.
`
`Patent Owner.
`
`____________
`
`Case No. IPR2014-00206
`
`Patent No. 7,496,854
`____________
`
`PATENT OWNER ARENDI S.A.R.L.’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 3 of 480 PageID #: 2480
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................. v
`
`EXHIBIT LIST ..................................................................................................... vi
`
`I. INTRODUCTION ............................................................................................. 1
`
`II.
`
`OVERVIEW OF THE ‘854 PATENT .......................................................... 2
`
`III. CLAIM CONSTRUCTION ......................................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`“Associated” ........................................................................................... 8
`
`“Second information associated with the first information
`from a second application program” ........................................................ 8
`
`“User Designation” ................................................................................. 9
`
`“Application Program” ............................................................................ 9
`
`IV. OVERVIEW OF THE PRIOR ART .......................................................... 10
`
`A. Overview of LiveDoc ............................................................................ 10
`
`B.
`
`C.
`
`Overview of Drop Zones ....................................................................... 12
`
`Overview of Domini [6,085,206] .......................................................... 13
`
`D. Overview of Miller [5,946,657]............................................................. 14
`
`E.
`
`F.
`
`Overview of Luciw [5,644,735] ............................................................ 19
`
`Overview of Nielsen [5,963,964] .......................................................... 22
`
`V.
`
`SINCE THE PRIOR ART DOES NOT ANTICIPATE OR
`RENDER ANY CLAIM OBVIOUS, NO INTER PARTES
`REVIEW SHOULD BE INITIATED ......................................................... 23
`
`A. Overview of Reasons for Denying Inter Partes Review ............................ 23
`
`
`
`i
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 4 of 480 PageID #: 2481
`
`B. Because Petitioners rely on a combination of two articles,
`LiveDoc and Drop Zones, as a basis for arguing anticipation,
`Petitioners fail to establish anticipation of any of the
`independent claims and the dependent claims under Ground
`1. ........................................................................................................... 27
`
`C. Because LiveDoc requires the user to press and hold a function
`key in order to see identified structures, LiveDoc fails to
`disclose or suggest the limitation of “marking without user
`intervention the first information”, and therefore Ground 1
`fails to establish anticipation, and Ground 2 fails to establish
`a prima facie case for obviousness. ....................................................... 28
`
`D. Because LiveDoc fails to disclose performing an operation
`related to second information, the second information
`associated with the first information from the second
`application program, Ground 2 fails to establish a prima
`facie case for obviousness for claims 23, 29, 35, 61, 77 and
`83. ......................................................................................................... 30
`
`E. Because LiveDoc fails to disclose performing an operation
`(“identifying”) related to second information, the second
`information associated with the first information from the
`second application program, Ground 2 fails to establish a
`prima facie case for obviousness for claims 70 and 71. ......................... 32
`
`F. Because LiveDoc fails to disclose the cause-and effect
`relationship between responding to a user selection and
`initializing the second application program, and also fails to
`disclose the cause-and effect relationship between
`responding to a user selection and displaying the second
`information, Ground 1 fails to establish anticipation for
`claims 85, 96 and 99, and fails to establish a prima facie
`case of obviousness for claim 64. .......................................................... 34
`
`G. Because LiveDoc and Drop Zones in view of Nielsen fails to
`disclose performing, in response to a user selection, an
`action related to second information from the second
`application program, and fails to resolve the shortcomings of
`
`
`
`ii
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 5 of 480 PageID #: 2482
`
`LiveDoc and Drop Zones, Ground 3 fails to establish a
`prima facie case for obviousness. .......................................................... 38
`
`H. Because Domini fails to disclose second information associated
`with the first information from a second application
`program, Ground 4 fails to establish anticipation. ................................. 40
`
`I. Because Domini fails to disclose a second application program,
`Ground 4 fails to establish anticipation.................................................. 42
`
`J. Because Domini fails to disclose marking the first information
`to alert the user that the first information can be utilized in a
`second application program, for this additional reason,
`Ground 4 fails to establish anticipation.................................................. 45
`
`K. Because Domini’s actions subsequent to marking fail to
`correspond to the requirements of the claims, for this
`additional reason, Ground 4 fails to establish anticipation. .................... 46
`
`L. Because Miller fails to disclose second information related to
`the first information from the second application, Ground 5
`fails to establish anticipation by Miller, and Ground 6 fails
`to make a prima facie case for obviousness. .......................................... 48
`
`M. Because Miller fails to disclose marking first information
`“without user intervention”, for this additional reason,
`Ground 5 fails to establish anticipation by Miller, and
`Ground 6 fails to establish a prima facie case for
`obviousness. .......................................................................................... 51
`
`N. Because Luciw fails to disclose a second application program,
`and fails to disclose second information from a second
`application program, Ground 7 fails to establish anticipation. ............... 54
`
`O. Because Luciw fails to disclose marking first information to
`alert the user that the first information can be utilized in a
`second application, for this additional reason, Ground 7 fails
`to establish anticipation. ........................................................................ 56
`
`
`
`iii
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 6 of 480 PageID #: 2483
`
`P. Because Luciw fails to disclose “marking” or “identifying” first
`information without user intervention, for this additional
`reason, Ground 7 fails to establish anticipation. .................................... 58
`
`VI. CONCLUSION .......................................................................................... 59
`
`CERTIFICATE OF SERVICE ............................................................................. 61
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 7 of 480 PageID #: 2484
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................... 7
`
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 2
`USPQ2d 1051 (Fed. Cir. 1987) ....................................................................... 27
`
`Statutes
`
`35 U.S.C. § 314 ...................................................................................................... 1
`
`35 U.S.C. §102(a) ................................................................................................ 27
`
`37 C.F.R. § 1.98 ................................................................................................... 28
`
`37 C.F.R. § 42.100(b) ............................................................................................. 7
`
`
`
`
`
`
`
`v
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 8 of 480 PageID #: 2485
`
`
`
`EXHIBIT LIST
`
`Arendi Exhibit Number Description
`
`2001
`
`2002
`
`
`
`American Heritage College dictionary 3rd edition 1997
`definition of the term “dictionary.”
`
`American Heritage College dictionary 3rd edition 1997
`definition of the term “designate.”
`
`
`
`vi
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 9 of 480 PageID #: 2486
`
`
`
`I. INTRODUCTION
`
`Patent Owner Arendi S.A.R.L. (“Arendi” or “Patent Owner”) respectfully
`
`requests that the Board decline to initiate inter partes review of claims 19-35, 57-
`
`85, 96, and 99 of U.S. Patent No. 7,496,854 (the “‘854 Patent”) because Petitioners
`
`Apple Inc., Google Inc., and Motorola Mobility LLC (“Petitioners”) have failed to
`
`show that they have a reasonable likelihood of prevailing with respect to any of the
`
`challenged claims. 35 U.S.C. § 314.
`
`The Petitioners have submitted proposed grounds for challenge based on
`
`anticipation or obviousness. However, for each proposed ground, Petitioners’
`
`allegations fail to state a ground for invalidation under the referenced section of
`
`U.S. patent law, and/or at least one claim element is missing from the relied-upon
`
`reference or combination of references. Thus, the Petitioners have failed to meet
`
`their initial burden to show that each element was known in the prior art.
`
`This Preliminary Response will assist the Board in identifying elements in
`
`the independent claims which are not shown in the references cited. For each
`
`dependent claim, the Petitioners rely on the presentation relative to its independent
`
`claim. Given that each dependent claim incorporates all of the elements of its
`
`independent claim, these omissions carry through to the dependent claims.
`
`
`
`1
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 10 of 480 PageID #: 2487
`
`Therefore, the dependent claims should likewise not be subjected to an inter partes
`
`review for Petitioners’ lack of a likelihood of prevailing.
`
`II. OVERVIEW OF THE ‘854 PATENT
`
`The ‘854 Patent is directed, among other things, to computer-implemented
`
`processes for automating a user’s interaction between a first application, such as a
`
`word processing application or spreadsheet application, on the one hand, and a
`
`second application, such as contact management application having a database, on
`
`the other hand. In the ‘854 Patent, Exhibit 1001, Figs. 1 and 2 are flow charts
`
`showing for these interactions a number of scenarios, which are described from
`
`col. 4, lines 25-39. Further details of the interactions are provided in discussion
`
`thereafter of the other figures of the ‘854 Patent, and the discussion includes
`
`references back to relevant portions of the flow charts in Figs. 1 and 2. Fig. 1 is
`
`reproduced below.
`
`
`
`2
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 11 of 480 PageID #: 2488
`
`In various scenarios, text in a document in the first application is analyzed
`
`
`
`(in step 4 of Fig. 1) to identify contact information. Exhibit 1001, col. 4, lines 25-
`
`39. The analysis takes place without user designation of a specific part of the
`
`document to be subject to the analyzing. Id.
`
`Once contact information has been identified, a number of different
`
`scenarios can follow, depending on the circumstances. In one scenario, if the
`
`identified contact information includes a name, a search is initiated in the database
`
`associated with the second application for the name. Id., Fig. 1, steps 6, 12, and
`
`14. If the contact information identified in the document included only a name,
`
`and if only a single entry is found in the database for the name and the entry
`
`
`
`3
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 12 of 480 PageID #: 2489
`
`includes a single address, then the address is inserted into the document. Id., Fig.
`
`1, steps 6, 12, 18, and 22; Fig. 4; col. 5, line 61 – col. 6, line 5, which is reproduced
`
`below, shows the document displayed in Microsoft Word after the address has
`
`been inserted.
`
`
`Shown in Fig. 4 is the One Button 42, which, when pressed, launches the
`
`processes just recited, including analyzing the document to identify contact
`
`information, the searching in the database, and inserting of the address. Id., Fig. 2,
`
`step 1; col. 4, lines 19-24; col. 5, line 61- col. 6, line 5.
`
`On the other hand, if multiple addresses are found in searching the database
`
`for the identified name, these found addresses are displayed, and the user is
`
`
`
`4
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 13 of 480 PageID #: 2490
`
`presented with a choice of which of the addresses to insert. Id., Fig. 1, steps 18,
`
`20, and 22; Fig. 10; col. 7, line 27 to col. 8, line 7.
`
`In another scenario, when the user clicks on the “One Button” while viewing
`
`a document that includes a name and an address, the document is analyzed as
`
`before (per Fig. 1, step 4) to identify the name and the address. Next, the database
`
`is searched for the identified name (per Fig. 1, step 14). If the name happens to be
`
`in the contact database but the address in the contact database for that name differs
`
`from the address typed by the user into the document (per Fig. 1, step 26), then the
`
`user is prompted to make a choice (per Fig. 1, step 30). The user is presented with
`
`screen shown in Fig. 9, which is reproduced below.
`
`
`Fig. 9 represents a screen presented to the user in which the user is given a
`
`series choices that can be made in this specific context. Id., col. 6, line 63 – col. 7,
`
`
`
`5
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 14 of 480 PageID #: 2491
`
`line 23. The screen reproduces the name that is both in the document and in the
`
`contact database, and it also displays the address that is in the contact database for
`
`that name. Below this information, the screen offers a total of four choices in two
`
`categories. As shown in Fig. 9 and explained in the ‘854 Patent, the user is
`
`enabled to select one of the four choices. Id. The first category is that “This is
`
`another contact,” and the choice under this category is to “Add a new contact with
`
`the same name”. The second category is that “This is the same contact”, and the
`
`user is given three other choices for the contact: (a) “Change the current address in
`
`the contact register”; (b) “Use the above address [reproduced from the contact
`
`database] in my Word document”; and (c) “Add a new address to the contact”.
`
`These same four choices are also illustrated in connection with item 30 of
`
`Fig. 1 of the ‘854 Patent, which shows logical flow followed in described
`
`embodiments of the invention. Item 30 is labeled “PROMPT USER FOR
`
`DECISION AND REVIEW”, and there are four outcomes shown from this item:
`
`(1) “THIS ANOTHER CONTACT WITH THE SAME NAME”; (2) “THE
`
`CONTACT HAS MOVED, THIS IS THE NEW ADDRESS”; (3) “THIS IS
`
`A ONE-TIME OCCURRENCE: NO ACTION”; and (4) “THIS IS ADDITIONAL
`
`ADDRESS FOR THIS CONTACT”. These choices are described in the ‘854
`
`Patent, col. 4, line 64 – col. 5, line 8.
`
`
`
`6
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 15 of 480 PageID #: 2492
`
`It can be seen that the first of the four choices is to add a new contact, and
`
`two of the remaining choices are specific ways of updating an existing contact.
`
`(Another choice offered is to do neither of these and simply use the address in the
`
`Word document as typed.) Consequently, the screen of Fig. 9 presents to the user
`
`a choice, among other things, between competing alternatives of storing a new
`
`contact or updating an existing contact.
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review, the Patent Trial and Appeal Board gives patent
`
`claims their “broadest reasonable interpretation in light of the specification of the
`
`patent.” 37 C.F.R. § 42.100(b) Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`
`Cir. 2005) (en banc). The prosecution history is also relevant to identify the
`
`correct construction of claim terms. Phillips v. AWH Corp., 415 F.3d at 1317.
`
`Extrinsic evidence may also be relevant to establish the meaning of terms, but such
`
`evidence is only relevant to the extent it is consistent with the specification and file
`
`history. Id., 1319.
`
`Patent Owner Arendi proposes construction of certain claim terms below
`
`pursuant to the specification standard. The proposed claim constructions are
`
`offered for the sole purpose of this proceeding and thus do not necessarily reflect
`
`appropriate claim constructions to be used in litigation and other proceedings
`
`wherein a different claim construction standard applies.
`
`
`
`7
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 16 of 480 PageID #: 2493
`
`A. “Associated”
`
`The term “associated” should be construed in accordance with its ordinary
`
`and customary meaning and the clear usage of the term within the intrinsic
`
`evidence as “a pre-existing connection or relationship”. The ‘854 patent refers to
`
`the searching of a database for additional contact information (e.g. physical and e-
`
`mail addresses, phone numbers) that is “related” to text, identified in a Word
`
`document (e.g. a name), that is in a shared entry in the database. See for example
`
`the Abstract, col. 3 lines 63-66, col. 5 line 66, col. 6 line 2, col.4 lines 43-45, 57-
`
`58.
`
`B. “Second information associated with the first information from a
`second application program”
`
`The phrase “second information associated with the first information from a
`
`second application program” should be construed in accordance with its ordinary
`
`and customary meaning, to indicate that the second application program contains
`
`both the “first information” and the “second information” and associates the
`
`“second information” with the “first information” such that, by virtue of that
`
`association, a “first information” may be used to locate the “second information”
`
`within the second application program. This is consistent with the description of
`
`the term “information management source” as used in the specification of the ‘854
`
`patent.
`
`
`
`8
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 17 of 480 PageID #: 2494
`
`C. “User Designation”
`
`The term “user designation” should be construed in accordance with its
`
`ordinary and customary meaning as meaning an action, by a user, to “indicate or
`
`specify; point out.” See, e.g., the definition of “designate” from the Heritage
`
`College dictionary 3rd edition 1997 in Patentee’s Exhibit 2002.
`
`D. “Application Program”
`
`The term “application program” should be construed in accordance with its
`
`ordinary and customary meaning and the clear usage of the term within the
`
`intrinsic evidence as a “an independently executable computer program designed
`
`to assist in the performance of a specific task, such as word processing or
`
`spreadsheet processing or contact management or e-mail or calendaring.” The
`
`patentee has used the term “application program” to refer to word processors,
`
`spreadsheet applications and contact managers within the specification such as
`
`Microsoft Word, Microsoft EXCEL and Microsoft Outlook. See col. 8 lines 30-33
`
`and 57-67. See also Fig. 1-3 that show Microsoft Word and Example 7 beginning
`
`at Col. 8 line 55 entitled “Spreadsheet Application” that discloses using Microsoft
`
`EXCEL.
`
`
`
`9
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 18 of 480 PageID #: 2495
`
`IV. OVERVIEW OF THE PRIOR ART
`
`A. Overview of LiveDoc
`
`LiveDoc concerns structure detection within a document where a “structure”
`
`represents meaningful bits of syntactically- regular information. LiveDoc allows a
`
`user to perform a function based upon an identified structure. To accomplish this
`
`goal, LiveDoc constructs “a means of passing text from a user’s document for
`
`matching against a collection of recognizers.” Exhibit 1005 at page 53. Thus,
`
`LiveDoc operates outside of any application program and outside of the document
`
`under the control of the application program.
`
`The LiveDoc architecture is shown in Fig. 3 at page 56 where the LiveDoc
`
`manager communicates with an external application (i.e., a text editor) using API
`
`callbacks. See Exhibit
`
`1005 page 57, left
`
`column.
`
`The LiveDoc
`
`application receives only
`
`the text from the text
`
`editor (application in Fig.
`
`3) and analyzes the text
`
`independently of the
`
`
`
`10
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 19 of 480 PageID #: 2496
`
`actual document in the text editor using a set of detectors under the control of an
`
`analyzer server.
`
`In order for the discovered structures to be visible to a user, the user must
`
`enter “LiveDoc mode” by pressing the function key causing the LiveDoc Manager
`
`to update “the display to present the highlight information over the discovered
`
`structures.” Id. at page 56. The user can then use the mouse to move over a
`
`highlighted item and press the mouse button that causes the LiveDoc Manager to
`
`present a menu of functions associated with the highlighted item.
`
`LiveDoc knows where these structures appear in the text passed to it- an e-
`
`mail address might appear in characters 150 through 162 of the window’s contents
`
`–but it has no idea where in the window those characters physically appear, and,
`
`thus, where the highlights should appear: this is information held by the
`
`application, not by LiveDoc. Hence, LiveDoc must ask the application for the
`
`information about the structures it has found via a callback. Once this information
`
`is available, the highlights and their associated mouse-sensitive regions can be
`
`constructed.
`
`The overlaid highlights are independent and separate from the text editor and
`
`the document. Fig. 2, reproduced below, shows some of the actions that LiveDoc
`
`allows for a recognized structure.
`
`
`
`
`
`11
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 20 of 480 PageID #: 2497
`
`Each of the functions shown involves using the recognized text with an
`
`
`
`external application.
`
`“Our initial implementation of LiveDoc as LiveSimpleText assumed that
`
`actions would be handled by external applications, such as a Web
`
`browser presenting the page pointed to by a URL:” Id. at 57.
`
`B. Overview of Drop Zones
`
`Drop Zones expands on LiveDoc wherein a user that has entered LiveDoc
`
`mode may be presented with an interface that interprets the meaning of the
`
`identified and selected structure and presents recommended appropriate actions.
`
`
`
`12
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 21 of 480 PageID #: 2498
`
`For example, a user may select a structure by moving over the highlighted
`
`structure and selecting the structure. Drop Zones recognizes the structure (e.g., as
`
`a name) and highlights any of the assistant function that can operate on the
`
`identified structure (e.g. a name can be used with an e-mail assistant). A set of
`
`possible actions are then presented to the user for using the identified structure.
`
`“Drop Zones goes beyond LiveDoc in allowing the user to select some subset of
`
`those terms and drag them as a group” to be operated on by the assistant. Drop
`
`Zones at 62.
`
`C. Overview of Domini [6,085,206]
`
`Domini is directed to a combined spell checking and grammar checking
`
`module that operates within a word processing application. See, e.g., Ex. 1006
`
`Abstract, col. 3 lines 1-12, col. 5 lines 1-8. Fig. 3 reproduced below shows a
`
`dialog box for the spell checking and grammar checking module after a user has
`
`selected the “spelling
`
`and grammar”
`
`command within the
`
`application program
`
`(e.g. word processing
`
`application).
`
`
`
`
`
`13
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 22 of 480 PageID #: 2499
`
`Upon selection of the spelling and grammar command within the word
`
`processing application, Domini extracts a sentence from the word processing
`
`document and calls the spell checking program module. Id. at col. 16 line 56-66.
`
`The spell checking program module selects a word from the sentence (i.e. a first
`
`word) and verifies whether the word appears in the one or more dictionaries of the
`
`spell checking program module. Col. 17 lines 19-42.
`
`If the word does not appear within any dictionary, an error is generated
`
`indicating that the word is potentially misspelled, and the word processing
`
`application accesses a string buffer that contains one or more suggestions for the
`
`potentially misspelled word. The suggestions are displayed within a combined
`
`spelling and grammar checking dialog box. Id. at col. 18 line 4-20. If the user
`
`agrees that the word is misspelled, the user may then select between the one or
`
`more suggestions to replace the word within the document. Id. at col. 18 lines 21-
`
`26. Of course, the user may determine that the word is not misspelled, or that none
`
`of the presented options is correct (i.e., that the spell checker has guessed
`
`incorrectly about what the user intended to type).
`
`D. Overview of Miller [5,946,657]
`
`U.S. patent 5,946,657 to Miller et al (herein, “Miller”) Petitioners Exhibit
`
`1007) was before the USPTO in the prosecution of the ‘854 patent and is listed on
`
`the face of the ‘854 patent under “References Cited.”
`
`
`
`14
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 23 of 480 PageID #: 2500
`
`Miller issued on August 31, 1999 from an application filed February 1,
`
`1996, and therefore qualifies as a reference under 35 U.S.C. §102(e), at best.
`
`Miller discloses systems and methods for “detecting structures in data and
`
`performing actions on detected structures” (claim 1).
`
`More particularly, Miller teaches a computer program (165; Fig. 2) that
`
`works outside of a document, such as a word processor document (210; Fig. 2).
`
`Miller’s program (165) includes an “analyzer server” (220) that “receives
`
`data having recognizable patterns from a document 210” (Abstract; also col. 3,
`
`lines 57-58).
`
`After receiving “data having recognizable patterns from a document 210,”
`
`Miller uses “pattern analysis units, such as a parser and grammars or a fast string
`
`search function and dictionaries” to find “recognizable structures” (col. 3, lines 57-
`
`64). Then, “Upon detection of a structure, analyzer server 220 links actions
`
`associated with the responsible pattern to the detected structure, using conventional
`
`pointers.”
`
`After structures are detected, an “application program interface” (230)
`
`within Miller’s program (165; Fig. 2) subsequently “communicates with
`
`application 167 to obtain information on the identified structures so that user
`
`interface 240 can successfully present and enable selection of the actions” (col. 4,
`
`lines 2-5).
`
`
`
`15
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 24 of 480 PageID #: 2501
`
`Miller’s user interface (240) also makes “the presentation regions mouse-
`
`sensitive, i.e. aware when a mouse event such as a mouse-down operation is
`
`performed while the cursor is over the region” (col. 5, lines 35-37).
`
`However, Miller’s highlighting of the “detected structures” does not occur
`
`without user intervention. Miller describes this highlighting function in connection
`
`with Fig. 8 and Fig. 9.
`
`Fig. 8, reproduced below, is a block diagram showing the flow of how
`
`Miller recognizes patterns and performs actions. More particularly, after initially
`
`detecting patterns and linking actions to the detected structures (flow chart boxes
`
`810-830), Miller loops to determine whether the content has changed (box 840) or
`
`whether the region has changed (box 850), and if so loops back to earlier points in
`
`the flow.
`
`Otherwise, Miller “continues to block 860” (col. 6, lines 3-4) where it
`
`determines whether the user has requested that the structures be displayed. As
`
`explained by Miller: “As illustrated by block 860, method 800 loops between
`
`blocks 840 and 860 until a request for display of identified structures is received
`
`860” (col. 6, lines 4-6).
`
`
`
`16
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 25 of 480 PageID #: 2502
`
`
`
`
`
`Further, in order to know whether a given item of “recognized structure”
`
`might be somehow useful – e.g., via one or more of the “actions” linked to the
`
`detected structures - the user must take an action (another user intervention) by,
`
`for example, performing a “mouse-down operation over a structure” [col. 5, lines
`
`38-39]. This requirement is also illustrated by box 920 of Miller’s Fig. 9 above
`
`(“Request for Display of Linked Actions Received”), in which a request may be a
`
`“selection mechanism, such as a mouse-down operation over a detected structure,
`
`which causes the candidate actions linked to the structure to be displayed 930”
`
`[col. 6, lines 17-21]. Miller’s Fig. 9 is copied above for ease of reference.
`
`
`
`17
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 26 of 480 PageID #: 2503
`
`As illustrated by Miller’s Fig. 8 and Fig. 9, Miller requires user intervention
`
`(e.g., “request for display of structures – Fig. 8 box 860 and request for display of
`
`linked actions” – Fig. 9, box 920) in order to highlight (i.e., mark) display a
`
`detected “structure,” and indicate to the to the user that an action is available for
`
`the detected “structure.”
`
`If a user selects an available action, the available actions relate to use of the
`
`information in the detected “structure.” As explained by Miller, “Upon selection
`
`of a candidate action, user interface 240 transmits the selected structure and the
`
`selected action to action processor 250. Action processor 250 retrieves the
`
`sequence of operations that constitute the selected action, and performs the
`
`sequence using the selected structure as the object of the selected action.” (col. 4,
`
`lines 52-57).
`
`The available actions disclosed by Miller do not encompass using the
`
`detected structure in association with some other information (e.g., information
`
`that might be called “second” information) in another application.
`
`Rather, available actions disclosed by Miller are limited to using the
`
`information in the detected structure itself. See, for example, Miller’s Fig. 7 and
`
`its related text, in which the only “actions” available for a detected phone number
`
`are to call the number or add the number to a phone book—neither of which
`
`requires second information. As explained by Miller: “In this example, pop-up
`
`
`
`18
`
`

`

`Case 1:13-cv-00920-LPS Document 117-3 Filed 05/29/19 Page 27 of 480 PageID #: 2504
`
`menu 710 displays the candidate actions linked to the selected telephone number
`
`grammar 410, including dialing the number and putting the number into an
`
`electronic telephone book. Upon selection of the action for putting the number in
`
`an electronic telephone book, user interface 240 transmits the corresponding
`
`telephone number and selected action to action processor 250. Action processor
`
`250 locates and opens the electronic telephone book, places the telephone number
`
`in the appropriate field and allows the user to input any additional information into
`
`the file” (Miller at column 5, lines 40-50).
`
`In summary, given data that includes “recognizable structures,” Miller is
`
`capable of detecting those structures. However, highlighting such structures [Fig.
`
`8], and indicating to the user that there are actions available for those structures,
`
`requires additional user intervention [Fig. 9]. Finally, Miller does not disclose any
`
`“second information.”
`
`E. Overview of Luciw [5,644,735]
`
`Luciw describes logical processes, usable by a pen-based computer system
`
`t