UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC,
`
`Petitioners,
`
`v.
`
`Arendi S.A.R.L.,
`
`Patent Owner.
`
`____________
`
`Case No. IPR2014-00208
`
`Patent No. 7,917,843
`____________
`
`PATENT OWNER ARENDI S.A.R.L.’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`
`i
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................. 1
`
`OVERVIEW OF THE ‘843 PATENT .......................................................... 2
`
`OVERVIEW OF THE PRIOR ART ............................................................ 6
`A. Overview of Pandit ............................................................................ 6
`
`I.
`
`II.
`
`III.
`
`B.
`
`SINCE THE PRIOR ART FAILS TO RENDER ANY CLAIM OBVIOUS,
`THE CLAIMS ARE PATENTABLE OVER THE PRIOR ART .................. 9
`A. Overview of reasons why the independent claims are patentable over
`the prior art......................................................................................... 9
`Because (i) Pandit fails to disclose “performing a search using at least
`part of the first information as a search term in order to find the
`second information…wherein the specific type or types of second
`information is dependent at least in part on the type or types of the
`first information” and “in consequence of receipt by the first computer
`program of the user command… causing a search…using a second
`computer program, in order to find second information” and (ii)
`“common sense” cannot be used to supply the missing limitation, the
`independent claims are patentable over Pandit. ................................ 10
`Because one of ordinary skill in the art would not view it as a matter
`of “common sense” to perform the hypothesized search for duplicate
`entries, Pandit fails to suggest “performing a search using at least part
`of the first information as a search term in order to find the second
`information” and therefore the independent claims are patentable over
`Pandit. .............................................................................................. 22
`Even assuming that “common sense” could supply the missing search,
`the hypothesized search for duplicates is not a search “using at least
`part of the first information as a search term”, so the independent
`claims are patentable over Pandit. .................................................... 24
`
`C.
`
`D.
`
`CONCLUSION .................................................................................................... 28
`
`
`
`
`
`ii
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`

`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340 (Fed.
`Cir. 2009) ................................................................................................... 19
`
`Eizo Corp. v. Barco N.V., 2014 WL 3704253 (PTAB July 23,
`2014) (IPR 2014-00358, Paper No. 11). ..................................................... 16
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) at 36 ............................................ 19
`
`K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362
`(Fed. Cir. 2014) ...............................................................................14, 15, 16
`
`KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) ...................................... 19
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., 2013
`WL 6665068, 12 (PTAB March 15, 2013) (CBM2013-
`00003, Paper No. 11, p. 23) ........................................................................ 17
`
`Medtronic, Inc. v. Nuvasive, Inc., 2013 WL 1151849, 12
`(B.P.A.I. March 15, 2013) (Reexam Control No.
`95/001,247, Decision on Appeal, dated March 18, 2013,
`page 21) ..................................................................................................... 18
`
`Whitserve, LLC v. Computer Packages, Inc. 694 F.3d 10 (Fed.
`Cir. 2012) ................................................................................................... 17
`
`Statutes
`
`35 U.S.C. §103(a) .................................................................................................. 1
`
`Regulations
`
`37 C.F.R. § 42.108(c) ........................................................................................... 21
`
`37 C.F.R. § 42.65(a) ............................................................................................. 17
`
`iii
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`

`
`EXHIBIT LIST
`
`
`Arendi Exhibit Number Description
`
`2001
`
`2002
`
`American Heritage College dictionary 3rd edition 1997
`definition of the term “configure” (previously filed
`with Patent Owner’s response on March 12, 2014).
`
`Declaration of John V. Levy, Ph.D.
`
`iv
`
`
`
`
`
`

`
`INTRODUCTION
`
`Apple Inc., Google Inc., and Motorola Mobility LLC (“Petitioners”) filed a
`
`Petition for inter partes review of U.S. Patent No. 7,917,843 (the “’843 Patent”)
`
`alleging that the claims are unpatentable under 35 U.S.C. §103(a). On June 11,
`
`2014, the Board instituted review of only claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30,
`
`36-39, 42 and 43 on the grounds of obviousness over Pandit.
`
`Petitioners have failed to establish by a preponderance of the evidence that
`
`any of the challenged claims are unpatentable. As recognized by the Petition and
`
`the Decision to Institute, Pandit fails to disclose the claim element requiring
`
`performing a search using first information in consequence of receipt by the first
`
`computer program of a user command, wherein the search uses a second computer
`
`program to find second information. Despite the missing claim element, this inter
`
`partes review was instituted on the basis of the Declaration of Dr. Menascé which
`
`proposes, without evidence, that it would have been a matter of “common sense” to
`
`conduct a search in response to an Add to Contacts command. Subsequent to the
`
`filing of Patent Owner’s Preliminary Response, the Federal Circuit Court of
`
`Appeals set forth a clear statement of the law with respect to proper use of
`
`“common sense” in a proceeding before the U.S. Patent and Trademark Office.
`
`Consequently, “common sense” may not be used to substitute for the limitation
`
`that is missing from the prior art. Moreover, as shown in the accompanying
`
`
`
`1
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`

`
`declaration of Dr. John Levy (Exhibit 2002) and explained below, one of ordinary
`
`skill in the art would not view it as a matter of “common sense” to perform the
`
`hypothesized search for duplicate entries, and even assuming that “common sense”
`
`could supply the missing search, the hypothesized search for duplicates is not a
`
`search “using at least part of the first information as a search term”. Thus,
`
`Petitioners have failed to show that the claims are unpatentable in view of Pandit.
`
`I. OVERVIEW OF THE ‘843 PATENT
`The ‘843 Patent is directed, among other things, to computer-implemented
`
`processes for automating a user’s interaction between a first application, such as a
`
`word processing application or spreadsheet application, on the one hand, and a
`
`second application, such as contact management application having a database, on
`
`the other hand. In the ‘843 Patent, Exhibit 1001, Figs. 1 and 2 are flow charts
`
`showing for these interactions a number of scenarios, which are described from
`
`col. 4, line 25-col. 5, line 53. Further details of the interactions are provided in
`
`discussion thereafter of the other figures of the ‘843 Patent, and the discussion
`
`includes references back to relevant portions of the flow charts in Figs. 1 and 2.
`
`Fig. 1 is reproduced below.
`
`
`
`2
`
`

`
`
`
`
`
`The user interface of the first application includes a One Button 42 that the
`
`user can select to initiate the Patent’s functions. See ‘843 Patent, Exhibit 1001,
`
`Fig. 1, step 2; Fig. 3. In various scenarios, after the user has clicked on the One
`
`Button 42, text in a document in the first application is analyzed (in step 2 of Fig.
`
`1) to identify information, such as names, persons, companies, and addresses. Id.,
`
`col. 4, lines 32-39. The second application receives this information as a search
`
`term, which it uses to look up and retrieve related information from its database.
`
`Id., Fig. 3, steps 12 and 14. The type of the latter information depends on the type
`
`
`
`3
`
`

`
`of the former. For example, if the search term is a name, the second application
`
`may retrieve an address, related to the name, from the database. Id., col. 5, line 61-
`
`col. 6, line 3. Likewise, if the search term is a name of a mailing list, the second
`
`application may retrieve mailing or e-mail addresses for members of the group.
`
`Id., col. 4, lines 16-18.
`
`Once the related
`
`information has been
`
`obtained from the
`
`database, a number of
`
`different scenarios can
`
`follow. In particular, the
`
`word processing
`
`application can either insert
`
`the related information into
`
`the document, or display the
`
`related information. Which
`
`action the application
`
`performs depends on the
`
`type of information (e.g.,
`
`name, name and address)
`
`
`
`4
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`

`
`identified in the document.
`
`For example, if the identified information includes only a name, a search is
`
`initiated in the database associated with the second application for the name. Id.,
`
`Fig. 1, steps 6 and 12. If only a single entry is found in the database for the name
`
`and the entry includes a single address, then the address is inserted into the
`
`document. Id., Fig. 1, steps 6, 12, 18, and 22; Fig. 4; col. 3, lines 63-67; col. 4,
`
`lines 43-54; col. 5, line 61-col. 6, line 5. Figs. 3 and 4 are reproduced above. Fig.
`
`3 shows a document displayed in Microsoft Word when the document includes
`
`solely a name, “Atle Hedloy” 40. Fig. 4 shows the document after the address has
`
`been inserted.
`
`In another example, if the identified information includes a name and an
`
`address, a search is initiated in the database associated with the second application
`
`for the name. Id., Fig. 1, steps 6 and 14. If an entry matching the name and
`
`address is found, both may be displayed for the user to edit. Id., Fig. 1, step 32;
`
`col. 4, lines 57-64. If the name happens to be in the contact database but the
`
`address in the contact database for that name differs from the address typed by the
`
`user into the document (per Fig. 1, step 26), then the user is prompted to make a
`
`choice (per Fig. 1, step 30). The user is presented with a screen shown in Fig. 9,
`
`which is reproduced below.
`
`
`
`5
`
`

`
`Fig. 9 represents a screen
`
`presented to the user in which the
`
`user is given a series of choices
`
`that can be made in this specific
`
`context. Id., col. 6, line 66-col. 7,
`
`line 14. The screen reproduces the
`
`name that is both in the document
`
`and in the contact database, and it
`
`also displays the address that is in the contact database for that name. Thus, the
`
`screen displays the name and address retrieved from the database that is related to
`
`the name and address from the document.
`
`II. OVERVIEW OF THE PRIOR ART
`A. Overview of Pandit
`
`Pandit describes a program (“the Pandit program”) that enables operation on
`
`
`
`text, displayed on a computer video monitor, that has been selected (Pandit calls
`
`this “accented” text). The program identifies a category (Pandit calls this a “class”)
`
`pertinent to the selected text and enables a user to select an operation or program,
`
`based on the identified class, applicable to the accented text. Exhibit 1009, col. 2,
`
`lines 1-12. When a document is open in the program, the program provides a menu
`
`bar 13 that displays classes of text, such as “Date”, “EMail”, and “Phone #”.
`
`
`
`6
`
`

`
`Exhibit 1009, Figs. 1a-1f. Displayed text is accented by shading, underlining, or
`
`pointing and clicking on the text. Id., col. 2, lines 4-8. The Pandit program
`
`identifies the class of the accented text and indicates that class in the menu bar 13
`
`using highlighting or boldface type. Id., col. 2, lines 8-16, 51-53, 64-66 and Figs.
`
`1a, 1c, and 1e. The boldface type indicates that a menu of operations and/or
`
`programs for that class has been enabled. Id., col. 2, lines 11-12.
`
`The program allows the user to use a keyboard or mouse to select the bolded
`
`class so as to cause display of a pertinent menu of “operations and/or programs”
`
`applicable to the class of the user-accented text. Id., col. 2, lines 15-18, 20-21, 33-
`
`35. For example, if a user selects the highlighted option “Date” from the menu bar
`
`13, the Pandit program is said to cause display of a menu of “operations and/or
`
`programs” including “the calendar program and appointment programs shown as
`
`well as a To-Do list program, an anniversary database, a scheduling program etc.”
`
`Id., col. 2, lines 32-41. A user is to be “able to run one or more of the programs
`
`relevant to dates” by making a selection with a mouse or key strokes. Id., col. 2,
`
`lines 41-50. Similarly, if a user selects the highlighted option “Email” from the
`
`menu bar 13, the program displays a menu of “such programs as a writable Email
`
`or general address book database and an EMail template and transmitting program,
`
`preferably automatically addressed with the accented address recognized in the
`
`
`
`7
`
`

`
`text, etc. that create an email message addressed to the selected email address or
`
`add the address to an address book.” Id., col. 2, lines 51-62, and Fig. 1d.
`
`If a user selects the highlighted option 17 corresponding to “Phone #”, from
`
`the menu bar 13, the program is said to display a menu of “possible programs” that
`
`“include a writable computer database of telephone and telefax numbers, a
`
`program which instructs a properly equipped computer to dial the number
`
`accented, a program which generates a template for the preparation of a fax
`
`message and which subsequently causes a properly equipped computer to transmit
`
`the message to the accented number, etc.” Id., col. 2, line 64 to col. 3, line 11,
`
`referencing Fig. 1f.
`
`In Fig. 1f itself, the menu 20 for “Phone #” 17 identifies three options for
`
`“Phone #”, including “Dial …”, “Add to address book…”, and “Send fax…” One
`
`of ordinary skill in the art would understand that the option “Add to address book
`
`…” corresponds to what is described in the text as “a writable computer database
`
`of telephone and telefax numbers”. The user selects a program to be performed by
`
`clicking on the operation or executing one or more keyboard strokes. Id., col. 2,
`
`lines 41-46.
`
`Pandit does not describe how the “writable computer database of telephone
`
`and telefax numbers” performs the operation of “Add to address book”. However,
`
`for the reasons discussed below, one of ordinary skill in the art would reasonably
`
`
`
`8
`
`

`
`expect that the first step that Pandit takes in response to user selection of the “Add
`
`to address book” option is to cause display of a template with one or more fields
`
`for providing contact information to complete the new entry.
`
`
`
`III. SINCE THE PRIOR ART FAILS TO RENDER ANY CLAIM
`OBVIOUS, THE CLAIMS ARE PATENTABLE OVER THE PRIOR
`ART
`A. Overview of reasons why the independent claims are patentable over
`the prior art.
`
`Petitioners have failed to show that Pandit addresses all of the limitations of
`
`any of the independent claims.
`
`Pandit fails to disclose or suggest “performing a search using at least part of
`
`the first information as a search term in order to find the second
`
`information…wherein the specific type or types of second information is
`
`dependent at least in part on the type or types of the first information” and “in
`
`consequence of receipt by the first computer program of the user command…
`
`causing a search…using a second computer program, in order to find second
`
`information”. This failure creates a gap in Petitioners’ case for unpatentability
`
`based on Pandit, which Petitioners have attempted to fill with an unsupported
`
`statement by Dr. Menascé that conducting such a search would be a matter of
`
`“common sense”. In accordance with longstanding and recent cases before the
`
`
`
`9
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`

`
`Federal Circuit and the Patent Trial and Appeal Board, “common sense” cannot be
`
`used to supply the missing limitation.
`
`Moreover, as shown by the evidence contained in the declaration of Dr.
`
`Levy, one of ordinary skill in the art would not view it as a matter of “common
`
`sense” to perform the hypothesized search for duplicate entries. Finally, the search
`
`for duplicates that is hypothesized by Petitioners is not a search “using at least part
`
`of the first information as a search term in order to find the second information” as
`
`required by the claims. For these reasons, the Petitioners have failed to establish
`
`unpatentability of the claims in view of Pandit.
`
`B. Because (i) Pandit fails to disclose “performing a search using at least
`part of the first information as a search term in order to find the second
`information…wherein the specific type or types of second information is
`dependent at least in part on the type or types of the first information”
`and “in consequence of receipt by the first computer program of the
`user command… causing a search…using a second computer program,
`in order to find second information” and (ii) “common sense” cannot be
`used to supply the missing limitation, the independent claims are
`patentable over Pandit.
`
`Independent claims 1, 20, 23, and 42 require “performing a search using at
`
`least part of the first information as a search term in order to find the second
`
`information…wherein the specific type or types of second information is
`
`dependent at least in part on the type or types of the first information”. These
`
`claims further specify that the search by the second computer is a consequence of a
`
`user command received by the first computer program (“in consequence of receipt
`
`
`
`10
`
`

`
`by the first computer program of the user command… causing a search…using a
`
`second computer program, in order to find second information”). These limitations
`
`are found in all the independent claims and hence are required by all of the claims
`
`challenged in Ground 4.
`
`The limitation poses at least two requirements: (1) a search must be
`
`performed by the second computer program in response to a user command
`
`received in the first computer program (also referred to herein as the “Search
`
`Limitation”) and (2) the type or types of second information must be dependent at
`
`least in part on the type or types of the first information (also referred to herein as
`
`the “Second Information Type Limitation”). Although Petitioners attempt to apply
`
`examples for two types of first information from Pandit, neither example fulfills
`
`both requirements of the limitations.
`
`The first example from Pandit is searching a dictionary for a meaning of a
`
`word. See Petition, pages 50-51. Although the Petition argues that the dictionary
`
`search fulfills the Search Limitation, the Petition fails to explain how the dictionary
`
`search fulfills the Second Information Type Limitation. In fact, when discussing
`
`the latter in section [1f] of the claim chart, the Petition merely states that “The type
`
`of second information depends on the type of first information. For example, if the
`
`first information is a phone number, the second information is contact information
`
`associated with the phone number.” See Petition, page 51. Thus, nowhere does
`
`
`
`11
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`

`
`the Petition discuss the dictionary search with respect to the Second Information
`
`Type Limitation.
`
`Perhaps for that reason, the Board found that “Petitioner does not seem to
`
`allege that the disclosed dictionary search relates to the first and second types of
`
`information dependency in the claim.” Institution Decision (June 11, 2014), paper
`
`no. 8, p. 15. Moreover, the dictionary search of Pandit simply cannot be applied to
`
`the Second Information Type Limitation. The dictionary search arises in an
`
`embodiment in which the classes of information distinguished by the Pandit
`
`program are nouns and verbs. Ex. 1009, Pandit, col. 3, lines 11-12. In particular,
`
`the “first information” must be a word, such as a noun or verb, and the “second
`
`information” must be a definition for the word. Regardless whether the “first
`
`information” is a noun or a verb, the “second information” would be a definition.
`
`As a result, the “type” of information retrieved is a definition and does not depend
`
`on the “type” or class of information searched. When Petitioners use the
`
`dictionary search of Pandit, they fail to establish a prima facie case of obviousness
`
`for “performing a search using at least part of the first information as a search term
`
`in order to find the second information…wherein the specific type or types of
`
`second information is dependent at least in part on the type or types of the first
`
`information”. Furthermore, claims 2 and 24 require “the first information [to]
`
`comprise[s] at least one of name-, person-, company- and address-related
`
`
`
`12
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`

`
`information”. Because the dictionary search of Pandit is not directed to names,
`
`persons, companies, or addresses, the dictionary search would fail to meet the
`
`limitations of claims 2 and 24.
`
`We now turn to the second example from the Petition – adding an identified
`
`telephone number to an address book. See Petition, page 51. As discussed above,
`
`Petitioners apply the addition of a telephone number to an address book to the
`
`Second Information Type Limitation: “The type of second information depends on
`
`the type of first information. For example, if the first information is a phone
`
`number, the second information is contact information associated with the phone
`
`number.” See Petition, page 51. However, since neither Pandit nor Menascé
`
`specifies what “second information,” if any, would be retrieved when adding a new
`
`contact to the address book, the Petition fails to demonstrate how the second
`
`example fulfills the Second Information Type Limitation.
`
`Moreover, the second example fails to fulfill the Search Limitation. In fact,
`
`the Petitioners admit that Pandit fails to disclose searching the address book.
`
`Instead of identifying where Pandit describes a search, Petitioners argue that “[i]t
`
`would have been obvious to a person of ordinary skill in the art that the first step in
`
`adding to an address book is searching the address book to determine if an entry
`
`already exists with this information and displaying any associated information
`
`which is located. (Menascé Decl. ¶ 99.)”. See Petition, page 51. In particular,
`
`
`
`13
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`

`
`Petitioners argue that “[t]his would have been a matter of common sense to one of
`
`ordinary skill, in order to avoid multiple entries of the same address.” Id. (We
`
`show in the next section, III(C), that even if it were deemed to be “common sense”
`
`for a search for duplicates to take place, the search would not be a search for first
`
`information in any event.)
`
`As a matter of law, neither “common sense” nor “basic knowledge” can be
`
`used to supply a missing claim limitation. On May 27, 2014, the Federal Circuit
`
`reinforced this long-standing principle by affirming a decision by the Board of
`
`Patent Appeals and Interferences (the “Board”) to require evidence in the record
`
`for supporting an assertion that a claimed feature was known in the art. K/S
`
`HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014).
`
`In Hear-Wear, during an inter partes reexamination, HIMPP failed to
`
`provide documentary evidence that the recited detachable connections were known
`
`in the art, but HIMPP still alleged that the connections were known and the claims
`
`were therefore obvious. The Examiner rejected HIMPP’s conclusory, unsupported
`
`remarks to maintain the claims’ patentability, and on appeal, the Board affirmed
`
`the Examiner’s conclusion. Hear-Wear, 751 F.3d at 1364.
`
`The Federal Circuit rejected HIMPP’s contention that the Board
`
`overemphasized the importance of published articles and issued patents and by
`
`requiring documentary evidence, failed to consider the knowledge of a person
`
`
`
`14
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`

`
`having ordinary skill in the art. Although HIMPP argued that this practice was
`
`contrary to KSR, the Federal Circuit distinguished KSR from the case at hand: KSR
`
`stated that the person of ordinary skill could use “common sense” to combine
`
`references that collectively taught all of the claimed limitations, but since Hear-
`
`Wear was missing evidence for a limitation, the case fell outside the scope of KSR:
`
`[T]he present case does not present a question whether the Board
`declined to consider the common sense that an ordinarily skilled
`artisan would have brought to bear when combining or modifying
`references. Instead, it is about whether the Board declined to accept a
`conclusory assertion from a third party about general knowledge in
`the art without evidence on the record, particularly where it is an
`important structural limitation that is not evidently and indisputably
`within the common knowledge of those skilled in the art.
`
`Hear-Wear, 751 F.3d at 1365-1366 (see also, “In contradistinction to KSR, this
`
`case involves the lack of evidence of a specific claim limitation, whereas KSR
`
`related to the combinability of references where the claim limitations were in
`
`evidence.” Id.)
`
`Additionally, Hear-Wear prohibits the use of “common sense” to
`
`compensate for a claim limitation that is missing from the prior art: “We recognize
`
`that the Board has subject matter expertise, but the Board cannot accept general
`
`conclusions about what is `basic knowledge’ or `common sense’ as a replacement
`
`for documentary evidence for core factual findings in a determination of
`
`
`
`15
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`

`
`patentability.” Id. at 1366. While the Federal Circuit recognizes that “common
`
`knowledge” may support a rejection, such “common knowledge” must still be
`
`bolstered by documentary evidence, especially for limitations that are not
`
`indisputably known in the art. Id. at 1365-1366.
`
`Moreover, on July 23, 2014, this Board followed the Hear-Wear decision for
`
`these very points of law. Eizo Corp. v. Barco N.V., 2014 WL 3704253 (PTAB July
`
`23, 2014) (IPR 2014-00358, Paper No. 11). In Eizo, the Petitioner admitted that
`
`the prior art failed to “explicitly disclose the specific spatial periods of one and
`
`fifty millimeters”, yet still argued that the periods would be obvious to one of
`
`ordinary skill in the art. Id. at 9. Since the Petitioner did not support its contention
`
`with evidence, the Board rejected its argument based on Hear-Wear. Id. (citing
`
`Hear-Wear, “Although basic knowledge available to a person with ordinary skill in
`
`the art may provide a reason to combine elements in prior art, it does not establish
`
`the presence of the element itself”; see also, “General conclusions about what is
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`‘basic knowledge’ are not a substitute for documentary evidence for describing
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`core fact finding”.)
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`As in Hear-Wear and Eizo, Petitioners admit that Pandit fails to disclose a
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`user command to initiate “performing a search” in the address book. See Petition,
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`p. 51. Instead, Petitioners merely allege that even though the disclosed operation is
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`“Add to address book”, it would have been obvious to a person of ordinary skill in
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`the art to respond by searching an address book. Id. Instead of providing
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`documentary evidence that searching, in the context contemplated by the claims,
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`was suggested by Pandit, Petitioners merely provide conclusory remarks that this
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`step would have been obvious. Id. In fact, all of the statements in the Petition and
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`in Dr. Daniel A. Menascé’s declaration are conclusory. Absent factual evidence to
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`support Dr. Menascé’s conclusions, the declaration of Dr. Menascé is entitled to no
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`weight.
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`The Federal Circuit recently confirmed that unsupported, conclusory dictates
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`of paid experts cannot support invalidity assertions. The Federal Circuit stated that
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`the expert must “explain in detail how each element is disclosed in the prior art
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`reference” and that “general and conclusory testimony is not enough to be even
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`substantial evidence in support of a verdict.” Whitserve, LLC v. Computer
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`Packages, Inc. 694 F.3d 10, 24 (Fed. Cir. 2012). Also, 37 C.F.R. § 42.65(a) states
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`that “[e]xpert testimony that does not disclose the underlying facts or data on
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`which the opinion is based is entitled to little or no weight.”
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`Also, the Board has confirmed that unsupported, conclusory expert
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`testimonial evidence does not provide adequate factual evidence to support
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`Petitioners’ assertions of obviousness. See Liberty Mutual Ins. Co. v. Progressive
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`Casualty Ins. Co., 2013 WL 6665068, 12 (PTAB March 15, 2013) (CBM2013-
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`00003, Paper No. 11, p. 23) (“Liberty’s expert testimonial evidence also does not
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`provide adequate factual evidence to support Liberty’s assertion of obviousness…
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`We determine that the testimony of Mr. Andrews (Ex. 1015, ¶ 29) relied upon by
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`Liberty also contains no such factual evidence, other than an unsupported
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`allegation of obviousness, which is entitled to no weight.”); see also Medtronic,
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`Inc. v. Nuvasive, Inc., 2013 WL 1151849, 12 (B.P.A.I. March 15, 2013) (Reexam
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`Control No. 95/001,247, Decision on Appeal, dated March 18, 2013, page 21)
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`(“[T]he opinion of expert witness as to the legal conclusion of obviousness is of
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`limited value, particularly, where, as here, it rests on an inadequately established
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`factual assertion.”).
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`Moreover, although Petitioners allege that searching the address book would
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`have been “common sense” to one of ordinary skill in the art, Hear-Wear and Eizo
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`explicitly state that “common sense” cannot compensate for a deficiency in the
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`evidence. Since “common sense” may only be applied when combining references
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`that include all the required limitations, the principle cannot supply the missing
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`limitation in Pandit.
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`Petitioners’ arguments for using “common sense” to compensate for
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`Petitioners’ failure to provide prior art teachings for the ‘843 patent claim
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`limitations, “Search Limitation” and “Second Information Type Limitation”,
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`amount to nothing more than using the ‘843 patent claims as a road map, thereby
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`using post grant reasoning to obtain the ‘843 patent invention. A determination of
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`obviousness must be based on evidence available at the time of invention – not on
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`hindsight. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A fact finder
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`should be aware, of course, of the distortion caused by hindsight bias and must be
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`cautious of arguments reliant upon ex post reasoning.”) (citing Graham v. John
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`Deere Co., 383 U.S. 1 (1966) at 36); see also Amgen Inc. v. F. Hoffmann-La Roche
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`Ltd., 580 F.3d 1340, 1363 (Fed. Cir. 2009) (affirming determination of non-
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`obviousness where the supporting testimony was based on “hindsight, not of
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`reasonable expectation of success at the time of the invention”).
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`The ‘843 patent claims recite meaningful inventive features that are directed
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`to an improved technological process. For instance, all of the ‘843 patent claims
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`require a “computer-implemented method” or “non-transitory computer readable
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`medium”…“for finding data related to the contents of a document using a first
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`computer program”. The claims also require “performing a search using at least
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`part of the first information as a search term in order to find the second
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`information…wherein the specific type or types of second information is
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`dependent at least in part on the type or types of the first information” and “in
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`consequence of receipt by the first computer program of the user command …
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`causing a search…using a second computer program, in order to find second
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`information.” The ‘843 patent discloses that routinely, a user using a prior art word
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`processor, such as WORDTM, must retrieve second information by exiting the word
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`processor and entering another prior art, external information management source
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`(ORACLETM, DBASETM, etc.). See Ex. 1001, col. 1, lines 28-42. The ‘843 patent
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`invention is to provide a computer implemented method, system and computer
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`readable medium for retrieval of second information in consequence of a user
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`command while within the word processor. See Ex. 1001, col. 1, lines 56-59. The
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`‘843 patent discloses the computer flow chart of this invention in Figures 1 and 2.
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`See Ex. 1001, col. 2, lines 45-50.
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`Petitioners admit that Pandit does not disclose a first computer program as
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`required by ‘843 patent independent claims: “Pandit does not explicit