Patent No. 7,917,843
`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. 7,917,843
`Issue Date: March 29, 2011
`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.
`
`
`
`la-1231764
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`

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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 3
`
`III.
`
`SUMMARY OF THE '843 PATENT............................................................. 4
`
`A.
`
`B.
`
`Background Of The '843 Patent ........................................................... 4
`
`Prosecution History Of The '843 Patent ............................................... 5
`
`IV. CLAIM CONSTRUCTION ........................................................................... 6
`
`A.
`
`“An Input Device, Configured By The First Computer
`Program” .............................................................................................. 7
`
`B.
`
`Remaining Claim Terms ...................................................................... 7
`
`V.
`
`IDENTIFICATION OF CHALLENGE ......................................................... 7
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`VI. GROUND 1: OBVIOUSNESS OF CLAIMS 1-44 IN VIEW OF
`LIVEDOC/DROP ZONES ............................................................................. 9
`
`A.
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`Background Of LiveDoc/Drop Zones .................................................. 9
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`B. Method Claims ................................................................................... 11
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`C.
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`Computer Readable Medium Claims ................................................. 22
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`VII. GROUND 2: OBVIOUSNESS OF CLAIMS 1-44 IN VIEW OF
`MILLER........................................................................................................ 23
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`A.
`
`Background Of Miller ........................................................................ 23
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`B. Method Claims ................................................................................... 25
`
`C.
`
`Computer Readable Medium Claims ................................................. 35
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`VIII. GROUND 3: OBVIOUSNESS OF CLAIMS 1-7, 10-29, AND 32-44
`IN VIEW OF LUCIW .................................................................................. 35
`
`A.
`
`Background Of Luciw ........................................................................ 35
`
`B. Method Claims ................................................................................... 37
`
`C.
`
`Computer Readable Medium Claims ................................................. 47
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`IX. GROUND 4: OBVIOUSNESS OF CLAIMS 1, 2, 8, 14-17, 20, 21,
`23, 24, 30, 36-39, 42, AND 43 IN VIEW OF PANDIT ............................... 48
`
`A. Method Claims ................................................................................... 49
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`TABLE OF CONTENTS
`(continued)
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`Page
`
`B.
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`Computer Readable Medium Claims ................................................. 55
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`X.
`
`CONCLUSION ............................................................................................. 55
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`Exhibit List for Inter Partes Review of U.S. Patent No. 7,917,843
`
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 7,917,843 to Hedloy
`
`Declaration of Dr. Daniel A. Menascé
`
`1001
`
`1002
`
`Amendment in prosecution of ’854 patent dated January 24, 2008
`
`1003
`
`Office Action in prosecution of ’843 patent dated October 28, 2010
`
`1004
`
`Applicant’s response in prosecution of ’843 patent dated December
`8, 2010
`SIGCHI Bulletin (April 1998) at 51-63
`
`U.S. Patent No. 5,946,647 to Miller et al.
`
`U.S. Patent No. 5,644,735 to Luciw et al.
`
`U.S. Patent No. 5,859,636 to Pandit
`
`SIGCHI Bulletin (April 1998) at 51-63 (web version)
`
`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
`
`1-44 of U.S. Patent No. 7,917,843 (“the '843 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
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`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 '843 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 '843 patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
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`
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`1
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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 '843 patent is
`
`available for inter partes review and that Petitioners are not barred or estopped
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`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
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`II.
`
`INTRODUCTION
`
`The '843 patent is directed to a method, system, and computer readable
`
`medium for name and address handling from a computer program. For example, a
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`user can type a name into a document being created with a word processing
`
`program. Through the use of a button, the document is analyzed and the name is
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`detected. The detected name is then used to search for information related to the
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`name, such as an address associated with the name. If the search finds related
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`information an action is performed using at least part of the related information.
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`For example, the address located may be inserted into the document.
`
`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 '843 patent. (Three other petitions, also filed concurrently,
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`address related U.S. Patent Nos. 7,496,854 and 8,306,993.) Section III of this
`
`Petition summarizes the '843 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
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`(“Menascé Decl.,” Ex. 1002.) Accordingly, Petitioners respectfully request a
`
`Decision to institute inter partes review.
`
`III. SUMMARY OF THE '843 PATENT
`
`A. Background Of The '843 Patent
`
`The '843 patent is directed to name and address handling within a document
`
`created by a computer program, such as a word processing program. (1:18-26.)
`
`One aspect relates to inserting information from a database into a document. This
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`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
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`database. This is described in connection with the right side of Figs. 1 and 2 and
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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.
`
`The claims of the '843 patent are specifically focused on finding information
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`related to the contents of a document and performing an action using that
`
`information. (3:42-66.) Displaying an address and inserting an address into the
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`document are the only actions disclosed in the '843 patent that use information
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`located by a search.
`
`Example 1 relates to searching for and inserting an address into the
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`document. Fig. 3 (below) illustrates a document into which a name 40 has been
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`entered. (5:63-65.) The user presses a “OneButton” button 42. (5:65-6:3; Fig. 1 at
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`4
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`2.) A program then analyzes what the user has typed into the document to detect
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`certain types of information. (4:25-39; Fig. 1 at 4.) There is no disclosure as to
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`how this analysis is accomplished.
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`
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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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`matching contacts are found, the user is prompted to select an address for insertion
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`into the document. (7:33-49; Fig. 10; Fig. 1 at 20 and 22.)
`
`B.
`
`Prosecution History Of The '843 Patent
`
`The '843 patent is a continuation of U.S. Patent No. 7,496,854 (“the '854
`
`patent”). Throughout the prosecution of the '854 patent, Applicant argued that the
`
`distinguishable feature over the applied art, including U.S. Patent No. 5,859,636 to
`
`Pandit, was marking information or identifying information, such as a name and
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`address in a document, “without user intervention.” (See, e.g., Amendment dated
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`January 24, 2008, at 31 (Ex. 1003).)
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`However, during the prosecution of the '843 patent, the recitation of marking
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`or identifying without user intervention was dropped. In an Office Action dated
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`October 28, 2010, at 32 (Ex. 1004), the Examiner cited Pandit as pertinent to
`
`Applicant’s disclosure. Applicant responded on December 8, 2010 (Ex. 1005) by
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`broadening the claims from analyzing a “document to identify any first
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`information that can be searched for” to analyzing “first information from the
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`document.” Applicant explained at page 15 of the Amendment:
`
`Applicant believes that the original claims were patentable over the
`
`cited prior art at least because none of the cited references discloses
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`“analyzing a document to identify any first information”, as required
`
`by the claims. [¶] Accordingly, Applicant now amends the claims,
`
`not to overcome the cited prior art, but instead to provide more
`
`context and clarity to the claims. In fact, the limitation described in
`
`the previous paragraph has been amended out of the claims, which, in
`
`that respect, broadens the claims. (Emphasis added)
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`As set forth below, by broadening the claims Applicant read them onto prior
`
`art, such as Pandit.
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`IV. CLAIM CONSTRUCTION
`
`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).
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`A.
`
`“An Input Device, Configured By The First Computer Program”
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`The recitation “an input device, configured by the first computer program”
`
`appears in numerous independent claims. (See claims 1, 20, 23, 42.) However, the
`
`specification gives no guidance regarding how the input device is configured by
`
`the first computer program. The specification at 3:35-41 only explains that “single
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`button addressing is achieved by providing an input device, such as a touch screen,
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`keyboard, icon, menu, voice command device, etc. (hereinafter called ‘button’), in
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`a computer program, such as a word processing program, spreadsheet program, etc.
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`(hereinafter called ‘word processor’), for executing address handling therein.”
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`Then, in every embodiment, the specification presents “One Button” 42 as the
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`input device. (See, e.g., Figs. 3-5; 1:60-64; 2:51-54; 3:35-48; 5:63-6:3; 10:8-
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`14.) Therefore, according to the broadest reasonable construction consistent with
`
`the specification, the first computer program provides an interface to receive the
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`user command. (Menascé Decl. ¶¶ 49-51.)
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`B. Remaining Claim Terms
`
`Petitioners submit that the remaining claim terms should be accorded their
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`ordinary and customary meaning as understood by one of ordinary skill in the art.
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`V.
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`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioners respectfully request the
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`cancellation of claims 1-44 of the '843 patent based on the following references.
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`Reference
`SIGCHI Bulletin (April 1998) at 51-63
`
`Designated Name/Exhibit No.
`LiveDoc/Drop Zones (Ex. 1006)
`
`U.S. Patent No. 5,946,647 to Miller et al.
`
`Miller (Ex. 1007)
`
`U.S. Patent No. 5,644,735 to Luciw et al.
`
`Luciw (Ex. 1008)
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`U.S. Patent No. 5,859,636 to Pandit
`
`Pandit (Ex. 1009)
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`The statutory grounds for the challenge of each claim are set forth below.
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`All the statutory citations are pre-AIA.
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`Ground 35 USC
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`Claims
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`References
`
`1
`
`2
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`3
`
`4
`
`103(a) 1-44
`
`103(a) 1-44
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`LiveDoc/Drop Zones
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`Miller
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`103(a) 1-7, 10-29, and 32-44
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`Luciw
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`103(a) 1, 2, 8, 14-17, 20, 21, 23, 24,
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`Pandit
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`30, 36-39, 42, and 43
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`Below is a discussion of why the challenged claims of the '843 patent are
`
`unpatentable under the statutory grounds raised, including claim charts specifying
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`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
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`of prevailing as to each ground of invalidity with respect to the challenged claims
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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. GROUND 1: OBVIOUSNESS OF CLAIMS 1-44 IN VIEW OF
`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
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`two articles, by James Miller and Thomas Bonura, describing an Apple technology
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`that allowed documents to reveal structures for identification and action. The
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`articles are entitled “From Documents to Object: An Overview of LiveDoc” and
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`“Drop Zones: An Extension of LiveDoc” and are sequential in the SIGCHI
`
`Bulletin from pages 53-63 (collectively, “LiveDoc/Drop Zones”). LiveDoc/Drop
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`Zones thus qualifies as prior art under § 102(a) based on the earliest alleged U.S.
`
`filing date of the '843 patent.
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`LiveDoc/Drop Zones discloses creating and displaying a document using a
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`text entry application program, such as shown in Fig. 2 of Drop Zones below.1
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`(LiveDoc at 53-55; Drop Zones at 59-60.)
`
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`1 Fig. 2 is from a website posting (Ex. 1010) of Drop Zones and is identical in
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`content to the Drop Zones publication accompanying this Petition.
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`The word processor is enabled with LiveDoc and its “structure detection
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`process.” (Live Doc at 55 (“[W]e decided to modify a simply text editor
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`application, SimpleText, to be a LiveDoc client.”); Drop Zones at 60 (referring to a
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`“LiveDoc enabled word processor, LiveSimpleText”).) Accordingly, while the
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`document in LiveSimpleText is being displayed, LiveDoc’s process runs in the
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`background and highlights information in the document that can be used to
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`perform a related action. (LiveDoc at 54-55.) In Fig. 2 above, names, telephone
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`numbers, dates and stock information have been detected in the document.
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`When the user selects a highlighted structure, the Drop Zones “Assistants”
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`determine if they can perform an action based on the selected information. (Drop
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`Zones at 60-61.) This determination is made by searching a database for
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`information related to the selected structure. (Id.) For example, when the user
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`selects the name “Tom Bonura” in Fig. 2, the Email Assistant searches a database
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`for an email address associated with Tom Bonura. (Id.) If an email address is
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`located, the Email Assistant enables the user to perform various actions using the
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`email address, such as sending an email. (Fig. 2 (“Send email”).)
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`This is just one example. LiveDoc/Drop Zones discloses numerous
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`examples and contemplates variations as discussed below and in the accompanying
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`declaration of Dr. Menascé (Ex. 1002). For example, Drop Zones discloses
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`detecting a telephone number and then searching an address book to obtain a name
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`based on that number and, in turn, searching an address book to obtain an e-mail
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`address for that name, to send an e-mail. (Drop Zones at 61.)
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`B. Method Claims
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`Set forth below is a claim chart that specifies where each element of method
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`claims 1-22 is met by LiveDoc/Drop Zones. Any narrative discussion with respect
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`to obviousness for a given claim or claim element is provided directly under that
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`claim or claim element with double line spacing.
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`Claim
`[1a] 1. A computer-
`implemented method for
`finding data related to the
`contents of a document using a
`first computer program
`running on a computer, the
`method comprising:
`
`[1b] displaying the document
`electronically using the first
`computer program;
`
`[1c] while the document is
`being displayed, analyzing, in
`a computer process, first
`information from the
`document to determine if the
`first information is at least one
`
`
`
`
`LiveDoc/Drop Zones
`LiveDoc/Drop Zones is a computer-implemented
`method for performing actions related to contents
`of a document, including finding data related to
`information identified in the document. See, e.g.,
`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 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.”); Drop Zones at 61
`(“Another call to the address book application,
`guided by another mapping rule, will return the
`email address for the identified person.”).
`Documents in LiveDoc/Drop Zones are displayed
`using a first computer program; for example, the
`document shown in Fig. 2 of Drop Zones is
`displayed using a text entry application program,
`LiveSimpleText. The text can includes names,
`addresses, telephone numbers, URLs and
`molecular formulas. See also LiveDoc at 58 and
`Fig. 2.
`While the document is being displayed,
`LiveDoc/Drop Zones analyzes the document’s
`contents (first information) to determine if the
`document contains at least one of a plurality of
`types of information that can be used to perform a
`search. See, e.g., LiveDoc at 55 (“In LiveDoc,
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`of a plurality of types of
`information that can be
`searched for in order to find
`second information related to
`the first information;
`
`[1d] retrieving the first
`information;
`[1e] providing an input device,
`configured by the first
`computer program, that allows
`a user to enter a user
`command to initiate an
`operation,
`
`the structure detection process is run in the
`background on the visible document's text,
`whenever that document is presented or updated.
`… 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.”);
`Drop Zones at 59 (“For example, the name
`‘Apple Computer, Inc.’ could be associated with
`such actions as, ‘Find the corporate headquarters
`on a map’, ‘Get Apple’s corporate phone
`number’, ‘Get the current trading price of Apple
`stock’, ‘Get the people in my address book
`associated with Apple’ and so forth.”).
`LiveDoc/Drop Zones retrieves and highlights the
`first information. See claims 1c and 1e.
`LiveDoc/Drop Zones highlights detected
`information. See, e.g., Live Doc at 55 (“The
`results of LiveDoc’s analysis are then presented
`by visually highlighting the discovered structures
`with a patch of color around the structure.”).
`When the user selects a highlighted structure (an
`input device) the system determines the related
`actions that can be performed (initiates an
`operation). See, e.g., Drop Zones at 60 (“When
`an object is selected, it is sent to the Drop Zone
`control system. Each of the assistants determines
`if it is able to accept and act upon the set of
`currently selected objects.”).
`
`Configured by the first computer program –
`LiveDoc/Drop Zones knows where to place the
`selectable highlights because the first application
`tells it where the structures are located in the
`document (i.e., the input device is configured by
`the first computer program). See, e.g., LiveDoc at
`56 (“LiveDoc knows where these structures
`appear in the text passed to it … but it has no idea
`where in the window those characters physically
`appear, and, thus, where the highlights should
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`13
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`appear: this is information held by the
`application, not by LiveDoc. Hence, LiveDoc
`must ask the application for the information about
`the structures it has found via a callback. Once
`this information is available, the highlights and
`their associated mouse-sensitive regions can be
`constructed.”). See narrative below.
`
`As discussed above, LiveDoc/Drop Zones discloses that the word processor
`
`
`
`
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`passes text to LiveDoc, which identifies structures and their positions within text.
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`However, LiveDoc does not know of their positions within a visible window,
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`whereas a word processor is able to map positions in the text to positions in a
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`visible window. Thus, it would have been obvious for LiveDoc to contact the
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`word processor via callback and inform it of the position of the detected structures
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`within text, such that the word processor would then construct the highlights (input
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`device) by mapping positions in text to positions in the visible window. (Menascé
`
`Decl. ¶ 61.) This would have been a predictable modification of LiveDoc that was
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`well within ordinary skill, in order to perform a known function of standard word
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`processing programs. (Id.)
`
`[1f] the operation
`comprising (i)
`performing a search
`using at least part of the
`first information as a
`search term in order to
`find the second
`information, of a specific
`type or types, associated
`
`LiveDoc/Drop Zones uses the selected first information
`(e.g., a name) to search an information source external
`to the document (e.g., an address book) to find
`associated second information, such as an email
`address for the person identified. See, e.g., Drop Zones
`at 59 (“For example, the name ‘Apple Computer, Inc.’
`could be associated with such actions as, ‘Find the
`corporate headquarters on a map’, ‘Get Apple’s
`corporate phone number’, ‘Get the current trading price
`
`
`
`
`
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`
`
`with the search term in
`an information source
`external to the document,
`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
`
`[1g] (ii) performing an
`action using at least part
`of the second
`information;
`
`[1h] in consequence of
`receipt by the first
`computer program of the
`user command from the
`input device, causing a
`search for the search
`term in the information
`source, using a second
`computer program, in
`order to find second
`information related to
`the search term; and
`
`of Apple stock’, ‘Get the people in my address book
`associated with Apple’ and so forth.”); Drop Zones at
`60-61 (“Another call to the address book application,
`guided by another mapping rule, will return the e-mail
`address for the identified person.”); 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.”).
`
`The type of second information depends on the type of
`first information. For example, if the first information
`is a company, second information can be a stock price;
`if the first information is a personal name, second
`information can be an email address.
`LiveDoc/Drop Zones performs an action using the
`second information (e.g., send an email to the email
`address retrieved or inserting a rendering of a molecule
`in the document). See, e.g., Drop Zones, Fig. 2 (“send
`email”); Drop Zones at 60-61; LiveDoc at 58 and Fig.
`2.
`As discussed in claim 1e, when a user selects a
`highlighted structure the system determines the related
`actions that can be performed. This determination is
`made by performing the search discussed in claim 1f—
`e.g., searching an address book (information source)
`using an address book application (second computer
`program) to find the email address associated with an
`identified name. See, e.g., Drop Zones at 61 (“When
`objects are selected, they are inspected by the assistants
`in the Drop Zone. These assistants are built around a
`collection of facts and axioms that determine whether
`and how they can operate in some meaningful way on
`various kinds of objects.”). See also claims 1e and 1f.
`
`
`
`
`
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`

`
`
`[1i] if searching finds
`any second information
`related to the search
`term, performing the
`action using at least part
`of the second
`information,
`[1j] wherein the action is
`of a type depending at
`least in part on the type
`or types of the first
`information.
`
`
`2. A method according
`to claim 1, wherein the
`first information
`comprises at least one of
`name-, person-,
`company- and
`address-related
`information.
`
`3. A method according
`to claim 2, wherein
`performing the action
`includes performing the
`action in the first
`computer program.
`
`See claim 1g
`
`The action performed depends on the type of first
`information. For example, retrieving a stock price of
`an identified company, sending an email to an
`identified person and providing a rendering of a
`molecule based on molecular formula. See claims 1f-
`1g.
`
`
`First information in LiveDoc/Drop Zones can be at
`least one of name- and company-related information.
`See claims 1c and 1f.
`
`LiveDoc/Drop Zones discloses performing an action
`which includes displaying in the document a rendering
`of a molecule associated with a molecular formula
`identified in the document (i.e., displaying is done in
`the first computer program). See, e.g., LiveDoc at 58
`(“However, other styles of interaction exist: 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.)
`
`
`4. A method according to claim 1, wherein performing the
`action includes performing the action in the first computer
`program.
`
`See claim 3.
`
`
`
`
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`
`
`LiveDoc/Drop Zones discloses adding a rendering
`of a molecule (second information) to the formula
`of the molecule (first information) in the
`document. See claim 3.
`
`
`5. A method according to
`claim 4, wherein performing
`the action includes causing
`addition of at least part of the
`second information to the first
`information in the document.
`
`6. A method according to
`claim 4, wherein performing
`the action includes causing
`display of at least part of the
`second information.
`
`7. A method according to claim 4, wherein performing
`the action includes causing display of at least part of the
`second information by the first computer program.
`
`8. A method according to
`claim 1, further comprising,
`providing a prompt for
`updating the information
`source to include the first
`information.
`
`LiveDoc/Drop Zones retrieves and displays
`information related to items identified in the
`document—e.g., displaying retrieved contact
`information or displaying a rendering a molecule.
`See also claim 3.
`
`See claims 3 and 6.
`
`As show in Fig. 2 of Drop Zones, when a user
`drags highlighted information to an activity in the
`activities window, the assistant window prompts
`the user to select an action. See, e.g., Drop Zones
`at 61 (“After the user drops the name on the E-
`mail Assistant, a set of actions that make sense
`for people are presented in the Assistant
`window.”). If a user enters a name and phone
`number (first information), an available action is
`to add this information to an address book (i.e.,
`update the information source to include first
`information). See, e.g., Drop Zones at 60
`(“[T]hinking about the name of a person and a
`phone number … from the perspective of an
`address book easily leads to the interpretation,
`‘Add this person to my address book’.”).
`
`
`
`
`
`
`
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`

`
`
`9. A method according to
`claim 1, further comprising, if
`the search is not successful,
`providing a prompt for
`updating the information
`source to include the first
`information.
`
`
`When a user selects information in LiveDoc/Drop
`Zones the system searches a database for related
`information and provides actions accordingly.
`See, e.g., Drop Zones at 61 (“Semantics and
`Representation” section). See narrative below.
`
`It would have been obvious to one of ordinary skill in the art that a user
`
`would be prompted to update his/her address book (i.e., “information source”) to
`
`include the first information in the event of a search that does not find any
`
`information. This would have been simply a matter of common sense and
`
`common knowledge at the relevant time frame. (Menascé Decl. ¶ 62.) One of
`
`ordinary skill would have been able to apply a known technique (a prompt to
`
`update a data source) to the known method of LiveDoc to yield a predictable result.
`
`(Id.)
`
`10. A method according to
`claim 1, wherein receipt by the
`first computer program of the
`user command precedes
`analyzing the document.
`
`LiveDoc/Drop Zones discloses that analyzing the
`document (or the first information, as recited in
`independent claim 1) could be done in a number
`of ways, including “on demand” (i.e., the user
`command precedes the analyzing). See, e.g.,
`LiveDoc at 56 (“LiveDoc works quietly in the
`background and displays the results of its analysis
`on demand, rather than performing the analysis
`on demand.”).
`
`
`11. A method according to claim 1, wherein analyzing the
`document is completed after the receipt of the user command is
`completed and before searching is initiated.
`
`
`See claim 10.
`
`
`
`
`
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`
`
`12. A method according to
`claim 1, wherein the input
`device is a graphical input
`device.
`
`13. A method according to
`claim 1, wherein the user
`command is the only
`command from a user
`necessary to initiate
`performing the operation.
`
`14. A method according to
`c