Patent No. 7,496,854
`Petition For Inter Partes Review
`
`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
`
`Patent No. 7,496,854
`Issue Date: February 24, 2009
`Title: METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A COMPUTER PROGRAM
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 3
`
`III.
`
`SUMMARY OF THE '854 PATENT............................................................. 4
`
`A.
`
`B.
`
`Background Of The '854 Patent ........................................................... 4
`
`Prosecution History Of The '854 Patent ............................................... 6
`
`IV. CLAIM CONSTRUCTION ........................................................................... 6
`
`A.
`
`“Marking … The First Information To Alert The User” ..................... 7
`
`B. Means-Plus-Function Limitations ........................................................ 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 13 And Dependent Claims 14-17 ............... 9
`
`Independent Claim 50 And Dependent Claims 51-55 ............. 12
`
`Independent Claim 100 ............................................................ 13
`
`Independent Claim 101 ............................................................ 14
`
`C.
`
`Remaining Claim Terms .................................................................... 15
`
`V.
`
`IDENTIFICATION OF CHALLENGE ....................................................... 15
`
`VI. GROUNDS BASED ON LIVEDOC/DROP ZONES .................................. 17
`
`A.
`
`B.
`
`Background Of LiveDoc/Drop Zones ................................................ 17
`
`Ground 1: Anticipation By LiveDoc/Drop Zones ............................. 19
`
`1. Method Claims ......................................................................... 19
`
`2.
`
`Computer Readable Medium And System Claims .................. 25
`
`C.
`
`Ground 2: Obviousness based on LiveDoc/Drop Zones .................... 26
`
`D. Ground 3: Obviousness In View Of LiveDoc/Drop Zones And
`Moore ................................................................................................. 27
`
`VII. GROUND BASED ON DOMINI ................................................................ 28
`
`A.
`
`B.
`
`Background Of Domini ...................................................................... 28
`
`Ground 4: Anticipation Based On Domini ........................................ 29
`
`1. Method Claims ......................................................................... 29
`
`2.
`
`Computer Readable Medium And System Claims .................. 35
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`
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`i
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`VIII. GROUNDS BASED ON HACHAMOVITCH ............................................ 36
`
`A.
`
`B.
`
`Background Of Hachamovitch ........................................................... 36
`
`Ground 5: Anticipation Based On Hachamovitch ............................ 37
`
`1. Method Claims ......................................................................... 37
`
`2.
`
`Computer Readable Medium And System Claims .................. 44
`
`C.
`
`Ground 6: Obviousness In View Of Hachamovitch ......................... 44
`
`IX. GROUNDS BASED ON LUCIW ................................................................ 46
`
`A.
`
`B.
`
`Background Of Luciw ........................................................................ 46
`
`Ground 7: Anticipation Based On Luciw .......................................... 47
`
`1. Method Claims ......................................................................... 47
`
`2.
`
`Computer Readable Medium And System Claims .................. 55
`
`C.
`
`Ground 8: Obviousness In View Of Luciw ....................................... 55
`
`X.
`
`CONCLUSION ............................................................................................. 57
`
`
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`la-1231369
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`ii
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`
`
`Exhibit List for Inter Partes Review of U.S. Patent No. 7,496,854
`
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 7,496,854 to Hedloy
`
`Declaration of Dr. Daniel A. Menascé
`
`Amendment dated January 24, 2008
`
`Amendment dated April 18, 2007
`
`SIGCHI Bulletin (April 1998) at 51-63
`
`U.S. Patent No. 5,577,239 to Moore et al.
`
`U.S. Patent No. 6,085,206 to Domini et al.
`
`U.S. Patent No. 6,377,965 to Hachamovitch et al.
`
`U.S. Patent No. 5,644,735 to Luciw et al.
`
`SIGCHI Bulletin (April 1998) at 53-63 (web version)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`
`iii
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`

`

`
`
`Petitioners Apple Inc., Google Inc., and Motorola Mobility LLC
`
`(collectively, “Petitioners”) respectfully petition for inter partes review of claims
`
`1-18, 36-56, 86-95, 97, 98, 100, and 101 of U.S. Patent No. 7,496,854 (“the '854
`
`patent” (Ex. 1001)) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R.
`
`§ 42.100 et seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Apple Inc. (“Apple”) is the real party-in-
`
`interest for Petitioner Apple. Google Inc. (“Google”) is the real party-in-interest
`
`for Petitioner Google. Motorola Mobility LLC (“Motorola Mobility”) is the real
`
`party-in-interest for Petitioner Motorola Mobility.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners identify the following related
`
`matters. On November 29, 2012, the Patent Owner filed suit against Apple and
`
`Motorola Mobility, among others, in the U.S. District Court for the District of
`
`Delaware alleging infringement of several patents, including the '854 patent. See
`
`Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.); Arendi S.A.R.L. v.
`
`Motorola Mobility LLC, Case No. 1:12-cv-01601-LPS (D. Del.). The Complaint
`
`was served on Motorola Mobility on November 30, 2012 and on Apple on
`
`December 3, 2012. Thus, this Petition has been filed within one year of Apple and
`
`Google (which owns Motorola Mobility) being served a complaint alleging
`
`infringement of the '854 patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`
`
`
`
`1
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`

`

`
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Apple identifies the following counsel
`
`(and a power of attorney accompanies this Petition).
`
`Lead Counsel for Petitioner Apple
`
`Backup Counsel for Petitioner Apple
`
`David L. Fehrman
`dfehrman@mofo.com
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
`
`Mehran Arjomand
`marjomand@mofo.com
`Registration No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`Google and Motorola Mobility identify the following counsel (and a power
`
`of attorney accompanies this Petition).
`
`Lead Counsel for Petitioners Google
`and Motorola Mobility
`Matthew A. Smith
`smith@turnerboyd.com
`Registration No.: 49,003
`Turner Boyd LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
`Backup Counsel for Petitioners
`Google and Motorola Mobility
`Zhuanjia Gu
`gu@turnerboyd.com
`Registration No.: 51,758
`Turner Boyd LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the '854 patent is
`
`available for inter partes review and that Petitioners are not barred or estopped
`
`
`
`
`2
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`

`

`
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`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`II.
`
`INTRODUCTION
`
`The '854 patent is directed to a method, system, and computer readable
`
`medium for name and address handling from a computer program. For example, a
`
`user can type a name and address in a document being created with a word
`
`processing program. Through the use of a button, the document is searched and
`
`the name and address are detected. The detected information is then used with
`
`respect to a second application program, such as a database. For example, the user
`
`can add the name and address to an address book as a new entry, or edit or add
`
`additional address information associated with the name if the name is already in
`
`the address book. If the user types only a name into the document and the database
`
`has the name and a corresponding address, the user can insert the address for the
`
`name into the document being created by the word processing program.
`
`The claims of the '854 patent may be divided into two groups: (1) claims
`
`directed to performing an operation, such as updating a database with an address;
`
`and (2) claims directed to inserting information into the document, such as an
`
`address. This Petition addresses the second set of claims (i.e., claims 1-18, 36-56,
`
`86-95, 97, 98, 100, and 101). A related petition, filed concurrently, addresses the
`
`
`
`
`3
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`

`

`
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`first set of claims (i.e., claims 19-35, 57-85, 96, and 99). Two other petitions, also
`
`filed concurrently, address related U.S. Patents Nos. 7,917,843 and 8,306,993.
`
`Petitioners present herein references (including several originating from
`
`Apple) that anticipate or render obvious the challenged claims of this Petition. The
`
`references make clear that the purported invention of the challenged claims was
`
`well known before the '854 patent. Section III of this Petition summarizes the '854
`
`patent and relevant aspects of its prosecution history. Sections V-IX set forth the
`
`detailed grounds for invalidity of the challenged claims. This showing is
`
`accompanied by the Declaration of Dr. Daniel A. Menascé (“Menascé Decl.,” Ex.
`
`1002.) Accordingly, Petitioners respectfully request a Decision to institute inter
`
`partes review.
`
`III. SUMMARY OF THE '854 PATENT
`
`A. Background Of The '854 Patent
`
`The '854 patent is directed to name and address handling within a document
`
`created by a computer program, such as a word processing program. (1:19-27.)
`
`One aspect relates to inserting information from a database into a document. This
`
`is described in connection with the left side of the flow charts of Figs. 1 and 2 and
`
`Examples 1, 5 and 7. Another aspect relates to adding data from a document into a
`
`database. This is described in connection with the right side of Figs. 1 and 2 and
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`4
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`

`
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`Examples 2-4 and 6. Dr. Menascé’s Declaration (Ex. 1002) includes highlighted
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`copies of Fig. 1 corresponding to various examples.
`
`Example 1 relates to inserting an address into the document. Fig. 3 (below)
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`illustrates a document into which a name 40 has been entered. (5:63-65.) The user
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`presses a “OneButton” button 42. (6:13-17; Fig. 1 at 2.) A program then analyzes
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`what the user has typed into the document to detect certain types of information.
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`(4:25-39; Fig. 1 at 4.) There is no disclosure as to how this analysis is
`
`accomplished.
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`Upon detection, the name is searched in a database. (5:65-6:3; Fig. 1 at 12.) If the
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`search returns one matching contact with only one address, the address is inserted
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`into the document, as shown in Fig. 4. (5:65-6:3; Fig. 1 at 22.) If multiple
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`5
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`

`
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`matching contacts are found, the user is prompted to select an address for insertion
`
`into the document. (7:33-49; Fig. 10; Fig. 1 at 20 and 22.)
`
`B.
`
`Prosecution History Of The '854 Patent
`
`Throughout the prosecution of the '854 patent, Applicant argued that the
`
`distinguishable feature over the applied art was marking information or identifying
`
`information, such as a name and address in a document, “without user
`
`intervention.” For example, in an Amendment dated January 24, 2008, at 31 (Ex.
`
`1003), Applicant asserted:
`
`Thus, Pandit teaches a system where the user must select text prior to
`
`the system processing the “a selected text”, e.g. col. 5, line 56).
`
`Neither the AddressMate program nor Pandit teach the element of
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`“marking without user intervention” or “identifying without user
`
`intervention or designation the first information” either alone or in
`
`combination.
`
`As set forth below, such marking or identifying information without user
`
`intervention was well-known in the art.
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`IV. CLAIM CONSTRUCTION
`
`Petitioners provide constructions of a term and the means-plus-function
`
`limitations. See 37 C.F.R. § 42.104(b)(3). Petitioners note that a claim is given the
`
`“broadest reasonable construction in light of the specification” in inter partes
`
`review. See 37 C.F.R. § 42.100(b). Furthermore, a number of claims contain
`
`means-plus-function limitations under 35 U.S.C. § 112, ¶ 6 (pre-AIA).
`
`
`
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`6
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`
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`A.
`
`“Marking … The First Information To Alert The User”
`
`The recitation “marking … the first information to alert the user” appears in
`
`numerous independent claims. (See Claims 1, 7, 13.) However, neither the term
`
`“marking” nor the full recitation appears in the specification. The '854 patent is a
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`continuation of application No. 09/189,626 filed on November 10, 1998, and the
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`“marking” recitation was not added until the application that matured into the '854
`
`patent was filed years later in August 6, 2001. Therefore, the specification gives
`
`no guidance as to the meaning of this recitation. Accordingly, the plain meaning
`
`of the recitation is that the first information is detected without user intervention
`
`and has some form of marking or highlighting applied to it to draw the user’s
`
`attention to it. (Menascé Decl. ¶ 49.)
`
`During prosecution, Applicant attempted to provide an expansive reading of
`
`“marking” in order to demonstrate support for the recitation, and asserted that the
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`program “marks the ‘first information’ in any of a variety of ways” and “may
`
`display the text (the ‘first information’) to the user.” (Amendment dated April 18,
`
`2007 (Ex. 1004), at 30-31.) The portions of the specification identified relate to
`
`generating another screen, e.g., Fig. 9, and not to any direct marking of the first
`
`information itself (which is already displayed in the document) to provide the
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`recited alerting function. Therefore, because the only possible disclosure of
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`marking to alert in the specification is provision of a separate dialog box, for this
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`7
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`proceeding the marking to alert recitation should be construed to encompass both
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`direct marking (e.g., highlighting or a pop-up at the information being marked) and
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`display of the information in a separate dialog box.
`
`B. Means-Plus-Function Limitations
`
`For means-plus-function limitations, 37 C.F.R. § 42.104(b)(3) requires the
`
`petition to identify the structure corresponding to each claimed function. However,
`
`a structure that is not actually disclosed in the specification cannot be
`
`corresponding structure. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946,
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`948, 952 (Fed. Cir. 2007).
`
`In IPR2013-00152, the Patent Trial and Appeal Board denied institution of
`
`an inter partes review because, among other reasons, the means-plus-function
`
`limitations were not amenable to construction. Specifically, the Board analyzed
`
`the specification and concluded that there was no corresponding structure disclosed
`
`in the specification to perform the recited function of various limitations.
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`(Decision (Paper 8 dated August 19, 2013), at 12, 13, 20.) It is submitted that the
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`same situation exists with respect to the claims in this Petition having means-plus-
`
`function limitations, i.e., claims 13-18, 50-56, 100, and 101, which are only a
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`subset of the total claims at issue in this Petition.
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`8
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`
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`1.
`
`Independent Claim 13 And Dependent Claims 14-17
`
`Claim 13 includes three limitations, which are all means-plus-function
`
`elements, with the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`means for entering a first information in
`
`Keyboard along with its device driver at
`
`the first application program
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`Fig. 16 and 9:37-39. (Menascé Decl. ¶¶
`
`
`
`51-54.)
`
`means for marking without user
`
`None. Boxes 4, 6 and 4:25-39 simply
`
`intervention the first information to alert
`
`show desired results, with no algorithm
`
`the user that the first information can be
`
`disclosing what is done. (Menascé
`
`utilized in a second application program
`
`Decl. ¶¶ 55-59.)
`
`means for responding to a user selection
`
`No structure disclosed in the
`
`by inserting a second information into
`
`specification that corresponds to the
`
`the document, the second information
`
`claimed function. (Menascé Decl. ¶¶
`
`associated with the first information
`
`60-65.)
`
`from a second application program
`
`Dependent claim 14 includes an additional means plus function limitation,
`
`with the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
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`
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`9
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`

`
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`means for an activation of a device
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`No structure disclosed in the
`
`selected from a group consisting of a
`
`specification that corresponds to the
`
`touch screen, a keyboard button, a
`
`claimed function. (Menascé Decl. ¶¶
`
`screen button, an icon, a menu, and a
`
`66-70.)
`
`voice command device [The recited
`
`function is “activating a device …”]
`
`Dependent claim 15 includes three additional means plus function
`
`limitations, with the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`means for initializing the second
`
`None. (Menascé Decl. ¶¶ 71-75.)
`
`application program
`
`means for searching, using the second
`
`Figs. 1 and 2 (steps 12 or 14) described
`
`application program, for the second
`
`on 4:43-46 and 5:12-16; Examples 1, 2,
`
`information associated with the first
`
`4, 5, and 6 discussed in the
`
`information
`
`specification. (Menascé Decl. ¶¶ 76-
`
`80.)
`
`means for retrieving the second
`
`Figs. 1 (steps 18 and 20) 2 (steps 26 and
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`information.
`
`30 or steps 26 and 27 or steps 29, 31,
`
`and 30) described on 4: 43-49, 5: 23-53;
`
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`
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`10
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`

`

`
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`Examples 1 and 5 discussed in the
`
`specification. (Menascé Decl. ¶¶ 81-
`
`85.)
`
`Dependent claim 16 includes an additional means plus function limitation,
`
`with the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`means for performing the further step of
`
`Figs. 1 and 2 (step 20) described on
`
`displaying the second information
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`4:46-49 and 5:12-16; Example 5
`
`discussed in the specification. (Menascé
`
`Decl. ¶¶ 86-88.)
`
`Dependent claim 17 includes an additional means plus function limitation,
`
`with the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`means for completing at least one of the
`
`No structure disclosed in the
`
`first and second information in the
`
`specification that corresponds to the
`
`document
`
`claimed function. (Menascé Decl. ¶¶
`
`89-92.)
`
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`11
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`
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`2.
`
`Independent Claim 50 And Dependent Claims 51-55
`
`Claim 50 includes two means-plus-function limitations, with the recited
`
`functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`means for identifying without user
`
`None. Boxes 4, 6 and 4:25-39 simply
`
`intervention or designation the first
`
`show desired results, with no algorithm
`
`information
`
`disclosing what is done. (Menascé
`
`Decl. ¶¶ 93-97.)
`
`means for responding to a user selection
`
`No structure disclosed in the
`
`by inserting a second information into
`
`specification that corresponds to the
`
`the document, the second information
`
`claimed function. (Menascé Decl. ¶
`
`associated with the first information
`
`98.)
`
`from a second application program
`
`The analysis for claim 51 is the same as dependent claim 14. The analysis
`
`for claim 52 is the same as dependent claim 15.
`
`Claim 53 includes an additional means-plus-function limitation, with the
`
`recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`means for adding the second
`
`No structure disclosed in the
`
`
`
`
`12
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`

`
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`information to the first information in
`
`specification that corresponds to the
`
`the document
`
`claimed function. (Menascé Decl. ¶¶
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`103-108.)
`
`The analysis for claim 54 is the same as dependent claim 16. (Menascé
`
`Decl. ¶ 110.) The analysis for claim 55 is the same as dependent claim 17.
`
`(Menascé Decl. ¶ 112.)
`
`3.
`
`Independent Claim 100
`
`Independent claim 100 includes three means-plus-function limitations, with
`
`the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`(1) means for using a first computer
`
`No structure disclosed in the
`
`program to analyze the document,
`
`specification that corresponds to the
`
`without direction from the operator, to
`
`claimed function. (Menascé Decl. ¶¶
`
`identify the name
`
`113-117.)
`
`(2) means for using the identified name
`
`Figs. 1 and 2 (step 12) described on
`
`and a second computer program to
`
`4:43-46 and 5:12-16; Examples 1 and 5
`
`search the database and to locate contact
`
`discussed in the specification. (Menascé
`
`related information associated with the
`
`Decl. ¶¶ 118-122.)
`
`name
`
`
`
`
`
`
`13
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`

`
`
`(3) means for inserting the contact
`
`No structure disclosed in the
`
`related information into the document
`
`specification that corresponds to the
`
`claimed function. (Menascé Decl. ¶¶
`
`123-128.)
`
`4.
`
`Independent Claim 101
`
`Independent claim 101 includes five means-plus-function limitations, with
`
`the recited functions underlined below.
`
`Limitation/Recited Function
`
`Corresponding Structure
`
`(1) means for using a first computer
`
`No structure disclosed in the
`
`program to analyze the document,
`
`specification that corresponds to the
`
`without direction from the operator, to
`
`claimed function. (Menascé Decl. ¶¶
`
`identify text in the document that can be
`
`129-133.)
`
`used to search for related information
`
`(2) means for using a second computer
`
`Figs. 1 and 2 (step 12) described on
`
`program and the text identified in (1) to
`
`4:43-46 and 5:12-16; Examples 1 and 5
`
`search the database and to locate related
`
`discussed in the specification. (Menascé
`
`information
`
`Decl. ¶¶ 134-138.)
`
`
`
`
`14
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`
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`(3) means for inserting the information
`
`No structure disclosed in the
`
`located in (2) into the document
`
`specification that corresponds to the
`
`claimed function. (Menascé Decl. ¶¶
`
`139-144.)
`
`C. Remaining Claim Terms
`
`Petitioners submit that the remaining claim terms should be accorded their
`
`ordinary and customary meaning as understood by one of ordinary skill in the art.
`
`V.
`
`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioners respectfully request the
`
`cancellation of claims 1-18, 36-56, 86-95, 97, 98, 100, and 101 of the '854 patent
`
`based on the following references.
`
`Reference
`SIGCHI Bulletin (April 1998) at 51-63
`
`Designated Name/Exhibit No.
`LiveDoc/Drop Zones (Ex. 1005)
`
`U.S. Patent No. 5,577,239 to Moore et al.
`
`Moore (Ex. 1006)
`
`U.S. Patent No. 6,085,206 to Domini et al. Domini (Ex. 1007)
`
`U.S. Patent No. 6,377,965 to Hachamovitch
`
`Hachamovitch (Ex. 1008)
`
`et al.
`
`U.S. Patent No. 5,644,735 to Luciw et al.
`
`Luciw (Ex. 1009)
`
`The statutory grounds for the challenge of each claim are set forth below.
`
`All the statutory citations are pre-AIA.
`
`
`
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`15
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`

`

`
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`Ground 35 USC
`
`Claims
`
`References
`
`1
`
`2
`
`3
`
`102(a) 1-18, 36-56, 93-95, 98, and 101
`
`LiveDoc/Drop Zones
`
`103(a) 1-18, 36-56, 93-95, 98, and 101
`
`LiveDoc/Drop Zones
`
`103(a) 1-18, 36-56, 93-95, 98, and 101
`
`LiveDoc/Drop Zones and
`
`Moore
`
`4
`
`102(e) 1-18, 36-38, 40-45, 49-52, 54-56,
`
`Domini
`
`93, 98, and 101
`
`5
`
`102(e) 1-18, 36-56, 86, 87, 89, 93, 97, 98,
`
`Hachamovitch
`
`100, and 101
`
`6
`
`103(a) 3-5, 9-11, 15-17, 38-41, 45-48, 53,
`
`Hachamovitch
`
`88, 90, and 91
`
`7
`
`102(e) 1-18, 36-56, 86-88, 90, 92-94, 97,
`
`Luciw
`
`98, 100, and 101
`
`8
`
`103(a) 3-5, 9-11, 15-17, 38-41, 45-48, 53,
`
`Luciw
`
`87, 89, 91, and 95
`
`Below is a discussion of why the challenged claims of the '854 patent are
`
`unpatentable under the statutory grounds raised, including claim charts specifying
`
`where each element of a challenged claim is met by the prior art. 37 C.F.R.
`
`§ 42.104(b)(4). The showing in these sections establishes a reasonable likelihood
`
`of prevailing as to each ground of invalidity with respect to the challenged claims
`
`
`
`
`16
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`

`
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`as to that ground. This showing is accompanied by the Declaration of Dr. Daniel
`
`A. Menascé (Ex. 1002), as noted above.
`
`VI. GROUNDS BASED ON LIVEDOC/DROP ZONES
`
`A. Background Of LiveDoc/Drop Zones
`
`The April 1998 issue of SIGCHI Bulletin was dedicated to Apple’s
`
`Advanced Technology Group. The Bulletin included an introduction section and
`
`two articles, by James Miller and Thomas Bonura, describing an Apple technology
`
`that allowed documents to reveal structures for identification and action. The
`
`articles are entitled “From Documents to Object: An Overview of LiveDoc” and
`
`“Drop Zones: An Extension of LiveDoc” and are sequential in the SIGCHI
`
`Bulletin from pages 53-63 (collectively, “LiveDoc/Drop Zones”). LiveDoc/Drop
`
`Zones thus qualifies as prior art under § 102(a) based on the earliest alleged U.S.
`
`filing date of the '854 patent.
`
`LiveDoc/Drop Zones discloses creating a document and entering
`
`information into the document using a text entry application program, such as
`
`shown in Fig. 2 of LiveDoc below.1 (LiveDoc at 53-55.)
`
`
`1 Fig. 2 is from a website posting (Ex. 1010) of LiveDoc and is identical in content
`
`to the LiveDoc publication accompanying this Petition.
`
`
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`17
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`

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`
`
`Without user intervention, LiveDoc’s “structure detection” process runs in
`
`the background and highlights information in the document that can be used to
`
`perform a related action. (LiveDoc at 54-55.) Selecting a highlighted structure
`
`displays a menu of actions that can be performed. (Id.) As just one example,
`
`LiveDoc can identify a molecular formula in a document and provide an action that
`
`presents a three-dimensional rendering of the molecule in the document itself.
`
`(LiveDoc at 57-58.) This would be achieved through searching a database
`
`containing the three-dimensional rendering based on the molecular formula
`
`identified in the document.
`
`
`
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`18
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`

`
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`B. Ground 1: Anticipation By LiveDoc/Drop Zones
`
`1. Method Claims
`
`Method claims 1-6, 36-42, and 93-95 are anticipated by LiveDoc/Drop
`
`Zones as set forth below.
`
`Claim
`[1a] 1. A method for
`information handling within a
`document created using a first
`application program
`comprising the steps of:
`
`[1b] entering a first
`information in the first
`application program;
`
`[1c] marking without user
`intervention the first
`information to alert the user
`that the first information can
`
`LiveDoc/Drop Zones
`LiveDoc discloses a document created using a
`first application program (e.g., a document as
`shown in Fig. 2 created using a text entry
`application program). See also LiveDoc at 53
`(“There is a real opportunity to advance the
`computing field here, by bringing these two
`worlds together: by enabling an ordinary
`document, built with any application, to
`automatically offer users access to some of the
`meaningful bits of its content, and by helping
`users carry out appropriate actions on these
`objects.”); at 55 (“[W]e decided to modify a
`simply text editor application, SimpleText, to be a
`LiveDoc client.”). Drop Zones uses the same
`program. See, e.g., at 60 (referring to a “LiveDoc
`enabled word processor, LiveSimpleText”).
`A document including first information, such as a
`molecular formula, is entered in the first
`application program such as a word processor.
`LiveDoc at 58 (“Imagine a detector that finds the
`formula of an organic molecule in a document,
`and an action that presents a three-dimensional
`rendering of that molecule within the context of
`the document itself, rather than in a separate
`application.”) (emphasis added). See also Fig. 2
`of LiveDoc and Fig. 2 in Drop Zones. Word
`processor is LiveSimpleText.
`In LiveDoc, the first information, such as a
`molecular formula, is marked without user
`intervention to alert the user that the first
`information can be utilized in a second
`
`
`
`
`19
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`

`
`
`be utilized in a second
`application program; and
`
`[1d] responding to a user
`selection by inserting a second
`
`application program, such as a database
`application to retrieve a rendering of the
`molecule.
`
`Marking and alerting – LiveDoc at 58 (“Imagine
`a detector that finds the formula of an organic
`molecule in a document, and an action that
`presents a three-dimensional rendering of that
`molecule within the context of the document
`itself, rather than in a separate application.”); see
`also LiveDoc at 55 (“In LiveDoc, the structure
`detection process is run in the background on the
`visible document’s text, whenever that document
`is presented or updated. The results of LiveDoc’s
`analysis are then presented by visually
`highlighting the discovered structures with a
`patch of color around the structure. … Pointing at
`a highlight and pressing the mouse button then
`displays the menu of actions that can be applied
`to the structure, as shown in Fig 2.”); at 55
`(“Experientially, the design of LiveDoc draws on
`the Web in obvious ways: certain meaningful
`parts of a document are highlighted, and clicking
`on them causes certain actions to occur.”).
`
`Second application program – LiveDoc discloses
`obtaining a rendering of a molecule for a formula
`identified in a document. See, e.g., LiveDoc at 58
`(“Imagine a detector that finds the formula of an
`organic molecule in a document, and an action
`that presents a three-dimensional rendering of that
`molecule within the context of the document
`itself, rather than in a separate application.”).
`LiveDoc’s discussion of a rendering of the
`molecule discloses a database program
`application containing the rendering. This
`database program application is a second
`application.
`The rendering of the molecule associated with the
`identified molecular formula is “presented within
`
`
`
`
`20
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`

`

`
`
`information into the
`document,
`
`[1e] the second information
`associated with the first
`information from a second
`application program.
`
`2. The method of claim 1
`wherein the user selection
`further comprises an activation
`of a device selected from a
`group consisting of a touch
`screen, a keyboard button, a
`screen button, an icon, a
`menu, and a voice command
`device.
`
`
`[3a] 3. The method of claim 1,
`wherein the step of inserting
`the second information into
`the document further
`comprises the steps of:
`[3b] initializing the second
`application program;
`[3c] searching, using the
`second application program,
`for the second information
`associated with the first
`information; and
`[3d] retrieving the second
`information.
`
`the context of the document” (i.e., inserted into
`the document) based on user “action.” See, e.g.,
`LiveDoc at 58 (“Imagine a detector that finds the
`formula of an organic molecule in a document,
`and an action that presents a three-dimensional
`rendering of that molecule within the context of
`the document itself, rather than in a separate
`application.”) (emphasis added).
`The rendering of the molecule (second
`information) is associated with the identified
`molecular formula (first information). See claim
`1d.
`
`LiveDoc discloses user selection via activation of
`a menu. See, e.g., LiveDoc at 55 (“Pointing at a
`highlight and pressing the mouse button then
`displays the menu of actions that can be applied
`to the structure, as shown in Fig 2.”); at 58
`(“Imagine a detector that finds the formula of an
`organic molecule in a document, and an action
`that presents a three-dimensional rendering of that
`molecule within the context of the document
`itself, rather than in a separate application.”)
`(emphasis added).
`
`See claim 1.
`
`The second application program must necessarily
`be initialized in order to function.
`Searching must necessarily be done in the
`database application program containing the
`rendering linked to the molecular formula
`identifie