Case 1:13-cv-00919-LPS Document 119-1 Filed 06/19/19 Page 1 of 25 PageID #: 3364
`Case 1:13-cv-00919—LPS Document 119-1 Filed 06/19/19 Page 1 of 25 PageID #: 3364
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`EXHIBIT 5B
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`EXHIBIT 5B
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`Case 1:13-cv-00919-LPS Document 119-1 Filed 06/19/19 Page 2 of 25 PageID #: 3365
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`Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: June 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MOTOROLA MOBILITY LLC, GOOGLE INC., and APPLE INC.
`Petitioners
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`v.
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`ARENDI S.A.R.L.
`Patent Owner
`
`
`Case IPR2014-00203
`Patent 8,306,993 B2
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`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
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`CHEN, Administrative Patent Judge.
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`
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`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2014-00203
`Patent 8,306,993 B2
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`I. INTRODUCTION
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`Motorola Mobility LLC, Google Inc., and Apple Inc. (collectively,
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`“Petitioner”) filed a Corrected Petition requesting inter partes review of
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`claims 1-24 of U.S. Patent No. 8,306,993 B2 (Ex. 1001, “the ’993 patent”).
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`Paper 5 (“Pet.”). Arendi S.A.R.L. (“Patent Owner”) filed a Preliminary
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`Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
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`§ 314.
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`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides:
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`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 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.
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`Upon consideration of the Petition and Preliminary Response, we are
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`not persuaded the information presented by Petitioner has established a
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`reasonable likelihood that Petitioner would prevail in showing the
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`unpatentability of any of the challenged claims of the ’993 patent.
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`Accordingly, we deny institution as to all claims of the ’993 patent.
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`A. Related Proceedings
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`According to the Patent Owner, the ’993 patent and related patents are
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`currently at issue in the following cases pending in the United States District
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`Court for the District of Delaware: Arendi S.A.R.L. v. Yahoo!
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`Inc.(1:2013cv00920); Arendi S.A.R.L. v. Google Inc. (1:2013cv00919);
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`Arendi S.A.R.L. v. HTC Corp. (1:2012cv01600); Arendi S.A.R.L. v. Sony
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`Mobile Communications (USA) Inc. (1:2012cv01602); Arendi S.A.R.L. v.
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`Nokia Corporation (1:2012cv01599); and Arendi S.A.R.L. v. Blackberry
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`Limited (1:2012cv015).
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`The ’993 patent is also the subject of another petition for inter partes
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`review, Samsung Electronics Co. Ltd. v. Arendi S.A.R.L., IPR 2014-00214.
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`B. The ’993 Patent
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`The ’993 patent is titled “Method, System and Computer Readable
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`Medium for Addressing Handling From an Operating System.” The subject
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`matter of the ’993 patent relates to computer-implemented processes for
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`automating a user’s interaction between a first application, such as a word
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`processor or spreadsheet, and a second application, such as a contact
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`manager with a database. Ex. 1001, col 1, l. 60–col. 2, l. 31.
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`Figure 4 of the ’993 patent is reproduced below.
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`Figure 4 illustrates a starting point in a document, such as a word
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`processing document. The user types into the document the name and
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`address of existing contact 44. When the user clicks on OneButton 42, the
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`claimed process is launched, analyzing the document to identify contact
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`information and searching a contact database. Ex. 1001, col. 7, ll. 27-34.
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`Figure 1 of the ’993 patent is reproduced below.
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`Figure 1 depicts a flow chart of the address handling process initiated
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`by the user clicking on OneButton 42 of Figure 4. At step 4, text typed by
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`the user in a document is analyzed for contact information. At step 6, if the
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`identified contact information includes a name and address, a search occurs
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`in the database at step 14. When the database finds a name but not an
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`address, at step 30, the user is prompted “for decision,” which leads to
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`inserting address information into the database at step 36, or updating
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`address information in the database at step 34. Ex. 1001, col. 4, l. 55–col. 5,
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`l. 37.
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`4
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`Figure 9 of the ’993 patent is reproduced below.
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`Figure 9 illustrates a screen displayed to the user, who clicks on
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`OneButton 42 of Figure 4 after typing a name and address into a document,
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`where the name is in the contact database, but the address differs from the
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`address typed by the user. The screen in Figure 9 gives the user a choice of
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`adding a new contact or updating an existing contact. Ex. 1001, col. 7, ll.
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`27-42.
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`5
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`C. Illustrative Claim
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`Claims 1-24 are the subject of the Petition, and claims 1, 9, and 17 are
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`independent claims. Independent claim 1 is reproduced below.
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`1. A computer implemented method for information handling,
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`the method comprising:
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`providing access to a contact database that can also be
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`separately accessed and edited by a user and wherein the
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`contact database includes at least three fields for storing
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`contact information associated with each of one or more
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`contacts, each of the at least three fields within the contact
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`database being specific to a particular type of contact
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`information selected from the group consisting of name, title,
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`address, telephone number, and email address;
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`analyzing in a computer process textual information in a
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`document configured to be stored for later retrieval to identify a
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`portion of the document as first contact information, without
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`user designation of a specific part of the textual information to
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`be subject to the analyzing,
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`wherein the first contact information is at least one of a name, a
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`title, an address, a telephone number, and an email address;
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`after identifying the first contact information, performing at
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`least one action from a set of potential actions, using the first
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`contact information previously identified as a result of the
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`analyzing, wherein the set of potential actions includes:
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`(i) initiating an electronic search in the contact database
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`for the first contact information while it is electronically
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`displayed in order to find whether the first contact
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`information is included in the contact database; and
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`when a contact in the contact database includes the first
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`contact information, if second contact information in the
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`contact database is associated with that contact,
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`electronically displaying at least a portion of the second
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`contact information, wherein the second contact
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`information is at least one of a name, a title, an address, a
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`telephone number, and an email address;
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`(ii) initiating electronic communication using the first
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`contact information; and
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`(iii) allowing the user to make a decision whether to store
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`at least part of the first contact information in the contact
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`database as a new contact or to update an existing contact
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`in the contact database;
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`wherein the computer implemented method is configured
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`to perform each one of action (i), action (ii), and action
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`(iii) using the first contact information previously
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`identified as a result of the analyzing; and
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`providing for the user an input device configured so that a
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`single execute command from the input device is sufficient to
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`cause the performing.
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`D. Prior Art Relied Upon
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`7
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`Case 1:13-cv-00919-LPS Document 119-1 Filed 06/19/19 Page 9 of 25 PageID #: 3372
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`Case IPR2014-00203
`Patent 8,306,993 B2
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`Petitioner relies upon the following five prior art references:
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`Reference
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`Title
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`Bonura
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`Thomas Bonura and James R.
`Miller, Drop Zones, an Extension
`to LiveDoc, SIGCHI Bulletin, Vol.
`30, No. 2, April 1998, at 59-63
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`Magnanelli M. Magnanelli, A. Erni, M.
`Norrie, Academia: An Agent-
`Maintained Database Based on
`Information Extraction from Web
`Documents, 14th European
`Meeting on Cybernetics and
`Systems Research (April 15,
`1998)
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`Luciw
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`US 5,644,735
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`Bates
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`US 6,247,043 B1
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`Giordano
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`US 6,870,828 B1
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`Ex. No.
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`Ex. 1006
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`Ex. 1007
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`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`E. The Asserted Grounds
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`
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`Petitioner contends the challenged claims are unpatentable based on
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`the following four grounds.
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`Reference(s)
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`Basis
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`Claims Challenged
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`Bonura and Magnanelli
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`§ 103
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`1-4, 6-12, 14-20, and
`22-24
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`Bonura, Magnanelli, and
`Giordano
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`Luciw
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`§ 103
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`5, 13, and 21
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`§ 102(b)
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`1-2, 6-7, 9-10, 14-15,
`17-18, and 22-23
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`8
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`Case 1:13-cv-00919-LPS Document 119-1 Filed 06/19/19 Page 10 of 25 PageID #: 3373
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`Case IPR2014-00203
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`Reference(s)
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`Basis
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`Claims Challenged
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`Luciw, Bates, and
`Giordano
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`§ 103
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`1-24
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, the Board interprets claim terms of an
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`unexpired patent according to their broadest reasonable construction in light
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`of the specification of the patent in which they appear. 37 C.F.R.
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`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
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`(Aug. 14, 2012). There is a “heavy presumption” that a claim term carries
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`its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a “claim term will not
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`receive its ordinary meaning if the patentee acted as his own lexicographer
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`and clearly set forth a definition of the disputed claim term in either the
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`specification or prosecution history.” Id.
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`Petitioner submits proposed constructions for five claim terms:
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`“contact database;” “initiating electronic communication;” “allowing the
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`user to make a decision whether to store at least part of the first contact
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`information in the contact database as a new contact or to update an existing
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`contact in the contact database;” “input device,” and “button.” Pet. 9-11.
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`Patent Owner proposed an alternative construction for only one of these five
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`terms, “allowing the user to make a decision whether to store at least part of
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`the first contact information in the contact database as a new contact or to
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`update an existing contact in the contact database.” Prelim. Resp. 8-12.
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`9
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`In particular, Petitioner proposes as follows: (i) “contact database”
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`means “software that allows access to information related to a person”; (ii)
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`“initiating electronic communication” means “starting a process that leads to
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`an electronic communication”; (iii) “input device” includes a GUI element
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`on screen, and thus, is not limited to hardware devices; and (iv) “button” is a
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`“touch screen, keyboard button, icon, menu, voice command device, etc.”
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`Pet. 9-11. All of these proposed constructions are supported by citations, in
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`the Petition or the accompanying declaration of Mr. Allison, to the ’993
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`patent. For purposes of this Decision, we adopt the Petitioner’s proposed
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`constructions as the broadest reasonable constructions consistent with the
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`specification.
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`The parties dispute the meaning of the remaining term, which appears
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`in all of the challenged independent claims: “allowing the user to make a
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`decision whether to store at least part of the first contact information in the
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`contact database as a new contact or to update an existing contact in the
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`contact database.” Patent Owner asserts that this term should be construed
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`as “presenting to the user a choice between competing alternatives of storing
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`a new contact or updating an existing contact.” Prelim. Resp. 8-12. Patent
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`Owner cites Figure 9 and related disclosure of the ’993 patent, described
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`above in Section I. B, in support of its proposed construction.
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`Petitioner asserts that the limitation is ambiguous and that the term
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`could mean either “the user is allowed to make a decision between storing
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`and updating” (which is similar to Patent Owner’s proposed construction), or
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`the term could mean “the user is allowed to make a . . .‘decision whether to
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`store . . . or a decision whether to update.’” Pet. 10. Petitioner cites three
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`portions of the specification as support for the latter interpretation, what
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`Petitioner calls “the second interpretation,” i.e., the decision being whether
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`to store or not to store, or to update or not to update. We determine that this
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`second interpretation in Petitioner’s proposed construction is not within the
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`broadest reasonable construction of the term. The plain language requires a
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`single step of making a single decision to store or update, not two separate,
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`alternating steps for a user either to decide to store or to decide to update, as
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`Petitioner seems to suggest. Thus, we agree with the Patent Owner that the
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`plain language of the claim requires presenting to the user a choice between
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`competing alternatives of storing a new contact or updating an existing
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`contact. That interpretation is consistent with Figure 9 and the related
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`portion of the specification, which describes that “[a]t this point, the user
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`may select one of the four options 74-80, and command the OK button 56 to
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`execute the selected options.” Ex. 1001, col. 7, ll. 42-44. This step
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`corresponds to step 30 of Fig. 1 to prompt the user for decision and review.
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`Id., col. 7, ll. 48-50.
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`In contrast, Petitioner’s three citations to the specification are
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`unrelated to Figure 9 and the related disclosure of the ’993 patent, which, as
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`described above, bear directly on the claim language.
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`Accordingly, for purposes of this Decision, we determine that the
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`broadest reasonable construction of this term consistent with the
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`specification is Patent Owner’s proposed construction, “presenting to the
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`user a choice between competing alternatives of storing a new contact or
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`updating an existing contact.”
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`B. Claims 1-4, 6-12, 14-20, and 22-24 – Obviousness Over Bonura and
`Magnanelli
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`Petitioner contends claims 1-4, 6-12, 14-20, and 22-24 are
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`unpatentable under 35 U.S.C. § 103 as obvious over Bonura and Magnanelli.
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`Pet. 11-33.
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`Bonura (Exhibit 1006)
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`Bonura is titled “Drop Zones – An Extension to LiveDoc” and
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`discloses a user interface for managing LiveDoc objects in the context of a
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`set of typical user tasks. Ex. 1006 at 60. A Drop Zones “assistant” takes
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`features identified by LiveDoc, interprets the feature’s meaning, and
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`recommends appropriate actions, made visible when the user selects
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`structures identified by LiveDoc and drags and drops them to the assistants.
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`Id. Figure 2 of Bonura is reproduced below.
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`Figure 2 depicts a document in which LiveDoc has identified the
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`structure “Tom Bonura” with its personal Name recognizer. Ex. 1006 at 60.
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`The window labeled “test” is a LiveDoc window showing the proper name
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`Tom Bonura, his e-mail address, phone number, and other information. The
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`user may select the identified “Tom Bonura” structure and drag and drop it
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`on the Drop Zone, e.g., to the window labeled “Activities,” where the Email
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`Assistant responds by presenting four actions relating to the person’s name
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`and e-mail address. Id. at 60-61. The Email Assistant can “look inside
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`another address book application for a person with the stated phone
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`number,” id. at 61.
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`Magnanelli (Exhibit 1007)
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`Magnanelli is titled “An Agent-Maintained Database based on
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`Information Extraction from Web Documents,” and discloses a system
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`called “Academia” “to reduce the work of an academic in finding and
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`updating information about other researchers,” by scanning documents such
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`as web pages, where the scanned information can be used to interact with a
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`contact database. Ex. 1007, 2. Figure 1 of Magnanelli is reproduced below.
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`Figure 1 depicts the components of the Academia system. A user interacts
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`with the Academia Database, which contains contact and other information
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`about people whose work the user is following. Ex. 1007, 2. The Academia
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`Agent scans Internet pages and other documents for structures of interest
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`representing contact and other information. Id. The system allows the User
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`to choose whether to update the Database with facts about existing contacts.
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`Id. at 3.
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`Analysis
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`Petitioner contends that claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24
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`are unpatentable under 35 U.S.C. § 103(a) as obvious over Bonura and
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`Magnanelli. In support of this asserted ground of unpatentability, Petitioner
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`provides explanations of how it alleges the subject matter of each claim is
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`disclosed by the combined teachings of Bonura and Magnanelli. Pet. 11-33.
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`Patent Owner contends the combination fails to disclose the limitation
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`“allowing the user to make a decision whether to store at least part of the
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`first contact information in the contact database as a new contact or to
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`update an existing contact in the contact database,” which is recited in all
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`challenged claims. Prelim. Resp. 32-34.
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`The Petition, in its element-by-element mapping, asserts this
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`limitation is taught or suggested by Bonura’s disclosure of “add this person
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`to my address book” and Magnanelli’s disclosure of having “the user who
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`decides whether the [contact information] fact will be stored or not.” Pet. 29
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`(citing Ex. 1006, 60; Ex. 1007, 3).
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`Patent Owner argues that the limitation in question, which appears in
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`all of the independent claims 1, 9, and 17, is not met by the two above-cited
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`passages. Prelim. Resp. 32-34. We agree. Neither Bonura nor Magnanelli,
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`singly or in combination, teaches or suggests the recited limitation in the
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`claimed method for information handling. That limitation, as construed in
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`Section II. A, requires presenting to the user a choice between competing
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`alternatives of storing a new contact or updating an existing contact. Prelim.
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`Resp. 29-39. All of the claims, thus, require the user’s decision, and the
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`system’s ability to store or update contact information, to be made at once,
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`not serially or separately. Bonura discloses only the ability to store “this
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`person to my address book,” and separately, Magnanelli discloses only how
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`the Academia user updates an existing contact when it “decides whether the
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`[contact information] fact will be stored or not.” The combination of Bonura
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`and Magnanelli, however, does not describe allowing the user to make a
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`decision to store or to update, because there is no language or depiction in
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`either reference of such a choice being presented. Nor has Petitioner
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`provided a reason why a person of ordinary skill in the art would modify the
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`combination to arrive at the claimed invention and, in particular, the single
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`step of making a single decision whether to store contact information as a
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`new contact or, alternatively, to update an existing contact.
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`Accordingly, on this record, we determine that the information
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`presented by Petitioner fails to establish a reasonable likelihood of
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`prevailing in showing that claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24
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`would have been obvious over Bonura and Magnanelli.
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`C. Claims 5, 13, and 21: Obviousness over Bonura, Magnanelli, and
`Giordano
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`Petitioner contends that dependent claims 5, 13, and 21 are
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`unpatentable under 35 U.S.C. §103 (a) as obvious over Bonura, Magnanelli,
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`and Giordano (Ex. 1005). Pet. 33-35. Claims 5, 13, and 21 depend from
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`independent claims 1, 9, and 17, respectively, which were the subject of
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`Petitioner’s unsuccessful ground based on Bonura and Magnanelli.
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`Petitioner does not argue that Giordano teaches or suggests the limitation
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`missing in Bonura and Magnanelli. Accordingly, on this record, we
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`determine that Petitioner fails to establish a reasonable likelihood of
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`prevailing on this ground with on dependent claims 5, 13, and 21.
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`Patent 8,306,993 B2
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`D. Claims 1-2, 6-7, 9-10, 14-15, 17-18, and 22-23: Anticipated by Luciw
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`Petitioner contends claims 1-2, 6-7, 9-10, 14-15, 17-18, and 22-23 are
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`unpatentable under 35 U.S.C. §102 (b) as anticipated by Luciw (Ex. 1003).
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`Pet. 35-46.1
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`Luciw (Exhibit 1003)
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`Luciw, titled “Method and Apparatus for Providing Implicit
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`Computer-Implemented Assistance,” generally discloses computer-
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`implemented assistance methods and an apparatus, in particular, relating to
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`pen-based computer systems. Ex. 1003, col. 1, ll. 20-22; col. 4, ll. 13-17. In
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`Luciw, a system with a database of “actions” may be suggested “implicitly”
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`to a user in response to text entries, or explicitly in response to a user
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`request. Id., Abstract; col. 8, ll. 9-43. An embodiment of Luciw manages
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`contact information and provides implicit assistance, such as providing a list
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`of stored last names when the user types a first name. Id. at col. 8, ll. 1-13.
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`Figure 6a of Luciw is reproduced below.
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`1 The Table of Contents refers to Luciw as a §102(b) reference, as do pages
`3 and 35 of the Petition. Page 35, however, also refers to Luciw as a § 103
`reference, and at page 46, the Petition argues that as to claims 10-16 and 18-
`24, “[t]hese claims are thus obvious for the same reasons as claim 28.” For
`purposes of this Decision, we treat Petitioner’s arguments regarding Luciw
`as based on § 102 and not on § 103.
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`Figure 6a depicts the user entering the first name “Isaac” in smart
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`name field 175 of phone slip window 170. Id. at col. 11, ll. 40-45. Luciw
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`defines a smart field as a predefined region on a computer screen, or a
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`predefined region within a window on the computer screen. Id. at col. 8, ll.
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`16-19. Figure 6b of Luciw is reproduced below.
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`Figure 6b depicts the presentation by the system of proposed last
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`names that the user could be referring to when typing the first name “Isaac.”
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`Id. at col. 11, l. 60 – col. 12, l. 6.
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`Analysis
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`In support of this asserted ground of unpatentability, Petitioner
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`provides explanations of how it alleges the subject matter of each claim is
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`disclosed by Luciw. Pet. 35-46.
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`Patent Owner contends Luciw does not anticipate the challenged
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`claims because Luciw fails to disclose the limitation “allowing the user to
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`make a decision whether to store at least part of the first contact information
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`in the contact database as a new contact or to update an existing contact in
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`the contact database,” which is recited in all the challenged claims. Prelim.
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`Resp. 43-45; see Section II. A above for the construction of this limitation.
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`The Petition, in its element-by-element mapping, asserts this
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`limitation is met because “Luciw teaches updating a database with contact
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`information.” Pet. 43. On its face, Petitioner’s assertion is unpersuasive, as
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`it omits an explanation as to storing of first contact information, and the user
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`being allowed to decide between storing and updating the database as
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`required by the claims.
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`Petitioner next cites two portions of the specification of Luciw in its
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`claim chart, but both relate only to updating of contact information, and not
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`to storing of contact information or of allowing the user to decide between
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`storing or updating contact information. Pet. 43 (citing Ex. 1003, col. 9, ll.
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`13-15, col. 12, ll. 54-60). Finally, the claim chart also cites claims 5 and 6
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`of Luciw, but again, those claims recite only “means for updating the
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`database to contain information” (Pet. 43; Ex. 1003, col. 17, ll. 1-10), rather
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`than the user being allowed to decide between storing at least part of the
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`contact information in the contact database, or updating an existing contact
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`in the contact database.
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`Accordingly, on this record, we determine that Petitioner fails to
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`establish a reasonable likelihood of prevailing on this ground.
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`E. Claims 1-24: Obviousness over Luciw, Bates, and Giordano
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`Petitioner contends that claims 1-24 are unpatentable under 35 U.S.C.
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`§ 103 over Luciw, Bates, and Giordano.
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`Bates (Exhibit 1004)
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`Bates, titled “Apparatus, Program Products and Methods Utilizing
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`Intelligent Contact Management,” discloses intelligent contact management,
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`including intelligent name lookup and automatic storage of new contacts.
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`Ex. 1004, Abstract; col. 10, ll. 22-29. Figure 3 of Bates is reproduced
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`below.
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`Figure 3 depicts a block diagram of the primary software components
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`in an e-mail messaging system disclosed by Bates. Ex. 1004, col. 4, ll. 43-
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`44. E-mail messaging system 50 is distributed over servers 51 and 52 and
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`clients such as 54, all clients having mail application 74, local contact
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`database 76, and contact table 78. Ex. 1004, col. 7 ll. 21-23, 55-57.
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`Giordano (Exhibit 1005)
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`Giordano, titled “Method and Apparatus for Iconifying and
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`Automatically Dialing Telephone Numbers Which Appear on a Web Page,”
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`discloses a system for automatic detection of phone numbers in web pages
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`via textual analysis, and for allowing users to take corresponding actions
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`such as dialing a located phone number or saving the number to an address
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`book. Ex. 1005, Abstract; col. 2, ll. 7-35.
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`Analysis
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`Petitioner contends all of the challenged claims 1-24 would have been
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`obvious over Luciw, Bates, and Giordano. In support of this asserted ground
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`of unpatentability, Petitioner provides explanations of how it alleges the
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`subject matter of each claim is disclosed by the combined teachings of
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`Luciw, Bates, and Giordano. Pet. 46-60.
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`Patent Owner contends Luciw, Bates, and Giordano fail to disclose
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`the limitation “allowing the user to make a decision whether to store at least
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`part of the first contact information in the contact database as a new contact
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`or to update an existing contact in the contact database,” which is recited in
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`all the claims challenged in this ground. Prelim. Resp. 43-50. See claim
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`construction in Section II. A, above.
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`The Petition asserts this limitation is met because Giordano and Bates
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`both disclose storing first contact information in the user’s local contact
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`database, and Bates discloses updating an existing contact. Pet. 52-55.
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`Patent Owner disputes this contention, arguing as to the updating feature that
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`“Petitioners try to fill the gap left by Luciw (Exhibit 1003) by resorting to
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`Giordano (Exhibit 1005) and Bates (Exhibit 1004). . . . Giordano fails to
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`disclose, among other things, updating an existing contact in the user’s
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`address book.” Prelim. Resp. 45. The Petition is indeed silent on such
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`disclosure by Giordano.
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`Petitioner then asserts that Bates discloses updating an existing
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`contact. Pet. 54-55; Ex. 1004, col. 13, l. 66–col. 14, l. 8. Petitioner contends
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`the cited portion of Bates shows an alteration of a count field for the entry
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`corresponding to a user name, which supposedly “constitutes an ‘update’ of
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`that existing contact.” Pet. 55. Patent Owner argues the cited portion of
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`Bates does not disclose updating a contact in the local contact database,
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`because the altered count field is not in the local contact database, but
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`instead resides in the internal contact table, which as shown in Figure 3, is
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`separate from the claimed contact database. Prelim. Resp. 48-49; Ex. 1004,
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`Fig. 3; col. 7, ll. 55-57; col. 8, ll. 7-10.
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`
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`Bates further discloses that the local contact database is, in fact, not
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`updated if an entry for a user name already exists. Rather than being
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`updated, the auto-add entry routine instead is terminated: “block 182
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`determine[s] whether or not the user name passed to the routine has an entry
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`in the local contact database for the local user. If such an entry already
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`exists, no further processing is required, and routine 152 terminates.” Ex.
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`1004, col. 15, ll. 27-31. We are persuaded by Patent Owner that neither
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`Giordano nor Bates discloses updating an existing contact in the contact
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`database. Prelim. Resp. 49.
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`Finally, the Petition makes no mention of whether or how the
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`combination of Luciw, Bates, and Giordano teaches or suggests allowing the
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`user to make a decision between storing or updating, as that limitation is
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`construed in Section II. A above. Nor has Petitioner provided a reason why
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`a person of ordinary skill in the art would modify the combination to arrive
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`at the claimed invention and in particular, the single step of making a single
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`decision whether to store contact information as a new contact or,
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`alternatively, to update an existing contact.
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`Accordingly, on the present record, we determine that Petitioner fails
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`to establish a reasonable likelihood of prevailing on this ground.
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`Case 1:13-cv-00919-LPS Document 119-1 Filed 06/19/19 Page 24 of 25 PageID #: 3387
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`III. CONCLUSION
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`For the foregoing reasons, we determine that Petitioner fails to
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`demonstrate a reasonable likelihood of prevailing on its challenge to the
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`patentability of claims 1-24 of the ’993 patent.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that the Petition is denied as to all challenged claims of
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`the ’993 patent.
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`Case 1:13-cv-00919-LPS Document 119-1 Filed 06/19/19 Page 25 of 25 PageID #: 3388
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`PETITIONER:
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`Matthew Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`
`David Fehrman
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`marjomand@mofo.com
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`PATENT OWNER:
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`Robert Asher
`Bruce Sunstein
`Sunstein Kann Murphy & Timbers LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
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