Paper No. ________
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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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`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC
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`Petitioners
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`v.
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`ARENDI S.A.R.L.
`Patent Owner
`____________
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`Case IPR2014-00208
`Patent 7,917,843 B2
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`____________________________________________________________
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`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(c)
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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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`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC
`
`Petitioners
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`v.
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`ARENDI S.A.R.L.
`Patent Owner
`____________
`
`Case IPR2014-00208
`Patent 7,917,843 B2
`____________
`
`____________________________________________________________
`
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`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(c)
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`TABLE OF CONTENTS
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`SUMMARY ..................................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`I.
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`II.
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`A. The June 11 Decision construed the claim term “analyzing, in a computer
`process…” too narrowly ................................................................................. 1
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`B. The Petition demonstrated that Luciw met the analyzing limitation as
`properly construed .......................................................................................... 4
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`III. Conclusion .....................................................................................................11
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`Petitioners respectfully request partial rehearing of the “Decision Instituting
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`Inter Partes Review,” issued June 11, 2014 (“June 11 Decision”). To limit the
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`length of this request, Petitioners have chosen to request rehearing only of the
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`denial of Ground 3 (obviousness in view of Luciw), and only with respect to
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`claims 1, 13, 18-19, and 23, without conceding the correctness of the denials of
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`other claims under Ground 3 or Grounds 1 and 2. Petitioners do not request
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`rehearing of the remainder of the decision.
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`I.
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`SUMMARY
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`Petitioners respectfully ask the panel to consider whether the panel applied
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`the proper construction of the phrase “analyzing, in a computer process, first
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`information from the document to determine if the first information is at least one
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`of a plurality of types of information that can be searched for in order to find
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`second information related to the first information.”
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`II. ARGUMENT
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`A. The June 11 Decision construed the claim term “analyzing, in a
`computer process…” too narrowly
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`The June 11 Decision declined to adopt Ground 3 based on the limitation in
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`claim 1 that reads:
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`while the document is being displayed, analyzing, in a computer
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`process, first information from the document to determine if the first
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`information is at least one of a plurality of types of information that
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`can be searched for in order to find second information related to the
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`first information[.]
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`This limitation will be referred to in this request as “the analyzing limitation.”
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`The June 11 Decision did not expressly construe the analyzing limitation. In
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`considering the analyzing limitation in connection with Ground 3, however, the
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`June 11 Decision stated:
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`As Patent Owner argues, however, by the act of using a smart field,
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`the user informs the computing device what type of information the
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`user is entering. No analysis to identify the type of information is
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`performed or needed.
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`(June 11 Decision, pp. 13-14) (emphasis added). The June 11 Decision
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`further found:
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`As Patent Owner points out, Luciw does not teach analyzing the
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`information to determine information type in the implicit assist
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`operation. As shown in Luciw’s Figure 3, “Implicit Assist” (step 104)
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`if enacted, results in “Query Database” (step 106), with no intervening
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`step of determining the type of information.
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`(June 11 Decision, p. 14) (emphasis added).
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`Thus, the June 11 Decision appears to have interpreted the analyzing
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`limitation to require an analysis to determine the type of the first information in the
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`document.
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`The Petitioners respectfully submit, however, that the analyzing limitation is
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`not so narrow. Specifically, the analyzing limitation requires the analysis to be
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`performed “to determine if the first information is at least one of a plurality of
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`types of information that can be searched for in order to find second information.”
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`Respectfully, nothing in this language requires an analysis to determine the
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`type of the first information. Such an analysis would yield a “type” as an answer.
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`The actual claim language, however, requires the system to determine “if” the first
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`information falls into the set of types that can be searched. This determination
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`yields a “yes” or “no” answer: “yes” the information is of a type that can be
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`searched, or “no” it is not. In other words, the quoted language requires only a
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`determination of whether the first information (regardless of how its type was
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`determined) is one of the types that can be searched. How the system knows the
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`type of the first information is not limited by the claim. Nor does the claim specify
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`how the analysis is performed.
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`Neither the Patent Owner in its preliminary response nor the June 11
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`Decision cited to a definition in the specification that would limit the language of
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`the claims beyond its broadest reasonable construction. In an inter partes review
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`(unlike in district court proceedings), the panel must not read limitations from the
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`specification into the claims (absent an express definition), where the literal
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`language of the claims could reasonably be read more broadly. See SAP v.
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`Versata, CBM2012-00001, Pat. App. LEXIS 3788, *8 (PTAB June 11, 2013). As
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`the Federal Circuit has held:
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`[T]he PTO must give claims their broadest reasonable construction
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`consistent with the specification.
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` Therefore, we look to the
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`specification to see if it provides a definition for claim terms, but
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`otherwise apply a broad interpretation.
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`In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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`Therefore, Petitioners respectfully submit that the analyzing limitation can
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`reasonably be construed more broadly than it was construed in the June 11
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`Decision.
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`B.
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`The Petition demonstrated that Luciw met the analyzing
`limitation as properly construed
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`Luciw meets the broadest reasonable construction of the analyzing
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`limitation. To summarize the argument in the Petition, Luciw first receives user
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`input into a document (“first information”). Luciw then analyzes the first
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`information to determine whether it can be searched. Luciw determines both
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`whether the user input can trigger implicit assistance and what kind of assistance is
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`available. Implicit assistance includes actions involving searching for second
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`information. Thus, the determination results in an answer that implicit assistance
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`is available and involves a search for second information (the “yes” answer), or
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`that implicit assistance is not available or does not involve a search for second
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`information (the “no” answer). This meets the claim language as properly
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`construed.
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`More specifically, Luciw first discloses taking information entered into a
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`document (either in a smart field or in the note area) and using that information to
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`perform a check whether assistance is possible. The Petition stated in its claim
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`chart (limitation [1c]):
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`While the document is being displayed, the device in Luciw analyzes
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`a user’s entry (first information from the document) to determine if
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`implicit assistance is possible and the kind of implicit assist indicated
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`(determine whether first information can be used to find second
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`information). See, e.g., Figs. 3 and 4a; 10:15-20 (“If the entry in the
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`smart field has been made by the user, the assistance process
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`takes action to identify or recognize the kind of implicit assistance
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`indicated at a step 154.”); 8:7-13 (“At step 104, the process
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`recognizes whether or not an implicit assistance function is to be
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`provided by computer system 10. … If a user does enter information
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`into a ‘smart field,’ the computer database will be queried at step
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`106 to determine whether assistance is possible given the user
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`input.”).
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`(Petition, p. 38) (emphasis added).
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`As noted in the above quote from the Petition, at step 154 in Fig. 4a of
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`Luciw, the Luciw system determines what kind of assistance the user is indicating.
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`In step 106, the system checks whether such assistance is available. We know this
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`operation is an analysis of the first information, because Luciw states that the
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`analysis is performed “given the user input.” See Petition, p. 38 (quoted above)
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`and Luciw, 8:12-13. For reference, Fig. 4a and the relevant part of Fig. 3 of Luciw
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`(cited on p. 38 of the Petition, see quote above), are shown below, with steps 154
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`and 106 highlighted.
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`Portion of Fig. 3
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`Fig. 4a
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`As shown in the figures above, the system starts at numeral 102 in Fig. 3,
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`moving then to step 104. Step 104 is detailed in Fig. 4a, and requires recognizing
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`user input at step 154. The system then proceeds to step 106 in Fig. 3, where it
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`queries the database. As noted in the above quote from the Petition, the result of
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`these steps is that the system determines “whether assistance is possible given the
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`user input.”
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`Checking whether assistance is possible for the entered information meets
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`the broadest reasonable construction of the analyzing limitation. This is because
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`(as the Petition also makes clear) one form of implicit assistance is searching for
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`second information and filling it in the document. This is discussed under
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`limitations [1f] and [1g] (Petition, pp. 39-40) and was not disputed by the Patent
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`Owner, nor found deficient in the June 11 Decision. For example, the Petition
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`states under limitation [1f] that:
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`The system determines the action the user intends to take based on the
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`categories of information entered. See, e.g., 13:52-14:4; 9:46-48
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`(“Next, an attempt is made at step 135 to recognize the possible intent
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`expressed by the objects entered into the assistance process.”). As
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`shown
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`in Fig. 11c, performing actions requires different
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`categories of information. See, e.g., 14:5-17. The system
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`determines if any information required to perform the action is
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`missing and retrieves it from the database. See e.g., 15:8-13 (“The
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`process calls for example for the filling in of a plan template and the
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`identification of any missing preconditions, as set forth at step 292 of
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`FIG. 13. Next, a step 293 resolves missing preconditions to the extent
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`possible.”). Thus, the action taken and the type of information
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`retrieved (second information) depend on the type of information
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`entered by the user (first information).
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`Petition, p. 40 (emphasis added). Figure 11c referenced in the quote above
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`is reproduced here:
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`Figure 11c shows certain templates (one template in each row). These
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`templates specify actions that can be performed using sets of information. The
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`“first information” entered into the document is analyzed against these templates to
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`make a determination whether there is a likely match, and whether any additional
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`information needs to be searched. For example, when the first information is “call
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`Isaac,” the word “call” has been identified as an “action,” and the word “Isaac” as
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`a “person” (see Fig. 11b). As stated in Luciw:
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`In this particular example, the intent is not obscure. The object
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`<CALL> is clearly specified. There is a template match with the
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`calling function expressed in the template. Both the action “call” and
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`the person to be called are present in the template, permitting an
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`effective, though not complete match. The place and the phone
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`number are yet to be determined.
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`Luciw, 14:22-28.
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`As noted in the Petition at page 40, once the Luciw system has identified the
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`user’s possible intent (a phone call to Isaac) and has identified missing information
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`(Isaac’s phone number), the system then actually performs a search to fill in the
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`missing information. As stated in the Petition:
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`The system determines if any information required to perform the
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`action is missing and retrieves it from the database. See e.g., 15:8-
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`13 (“The process calls for example for the filling in of a plan template
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`and the identification of any missing preconditions, as set forth at
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`step 292 of FIG. 13. Next, a step 293 resolves missing preconditions
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`to the extent possible.”). Thus, the action taken and the type of
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`information retrieved (second information) depend on the type of
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`information entered by the user (first information).
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`Petition, p. 40 (emphasis added).
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`Thus, the system of Luciw (a) determines whether the information is of a
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`type where implicit assistance is possible and (b) shows that implicit assistance
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`can—in some examples—be the action of searching for second information.
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`(Petition, pp. 38-41). This means that Luciw determines whether the first
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`information is of a type that can be searched for second information. This is what
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`the broadest reasonable construction of the claim requires. Therefore, Luciw
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`should have been found to meet the analyzing limitation, and Trial on Ground 3
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`should have been instituted.
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`III. CONCLUSION
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`For the foregoing reasons, the Petitioners respectfully request that Ground 3
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`be added to the instituted Trial for claims 1, 13, 18-19, and 23.
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`Respectfully submitted,
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`Dated: June 25, 2014
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`By: /Mehran Arjomand/
`Mehran Arjomand
`Registration No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`(213) 892-5630
`Counsel for Petitioner Apple Inc.
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`By: /Matthew A. Smith/
`Matthew A. Smith
`Registration No.: 49,003
`Turner Boyd LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, California 94040
`(650) 265-6109
`Counsel for Petitioners
`Motorola Mobility LLC and
`Google Inc.
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6
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`I hereby certify that the attached “Request for Rehearing” was served as of
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`the below date on the Patent Owner via e-mail to the following counsel of record
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`for the Patent Owner:
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`Robert Asher (rasher@sunsteinlaw.com)
`Bruce Sunstein (bsunstein@sunsteinlaw.com)
`John J. Stickevers (jstickevers@sunsteinlaw.com)
`Dorothy Wu (dwu@sunsteinlaw.com)
`sunsteinip@sunsteinlaw.com
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`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street, 11th Floor
`Boston, MA 02110
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`Dated: June 25, 2014
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` /Mehran Arjomand/
`Mehran Arjomand
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