IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`
`Case No. To Be Assigned
`Patent No. 7,917,843
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,917,843
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`
`
`
`
`
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`
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` DC: 5375608-7
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`

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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`TABLE OF CONTENTS
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ...................................... - 1 -
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ................................... - 1 -
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. - 1 -
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........................... - 2 -
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... - 2 -
`
`II. FEES (37 C.F.R. § 42.103) ................................................................................. - 2 -
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ................................................................................................ - 3 -
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) .................................... - 3 -
`
`Citation of Prior Art .............................................................................. - 3 -
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2)) ..................................................................................................... - 3 -
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) .................................. - 4 -
`
`Person of Ordinary Skill in the Art ....................................................... - 6 -
`
`Unpatentability of the Construed Claims (37 C.F.R. §
`42.104(b)(4)) ......................................................................................... - 6 -
`
`G.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ................................ - 6 -
`
`IV. SUMMARY OF THE ’843 PATENT ............................................................. - 7 -
`
`A.
`
`B.
`
`Overview of the ’843 Patent ................................................................. - 7 -
`
`Prosecution History Summary of the ’843 Patent (Ex. 1002) ............. - 9 -
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
`OF THE ’843 PATENT ............................................................................... - 11 -
`
`A.
`
`Prior Art - Pandit (U.S. Patent No. 5,859,636) .................................. - 11 -
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`- i -
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`

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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`B.
`
`Ground I: Pandit Renders Obvious Claims 1, 2, 8, 14-17, 20, 21,
`23, 24, 30, 36-39, 42 and 43 Under § 103(a) ..................................... - 15 -
`
`1. Method Claims ......................................................................... - 15 -
`
`2.
`
`Computer Readable Medium Claims ...................................... - 29 -
`
`VI. CONCLUSION ................................................................................................ - 30 -
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`- ii -
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`

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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
`
`Exhibit
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`LIST OF EXHIBITS
`
`
`Description
`U.S. Patent No. 7,917,843
`Office Action in prosecution of ’843 patent dated October 28,
`2010
`Applicant’s response in prosecution of ’843 patent dated
`December 8, 2010
`Amendment in prosecution of ’854 patent dated January 24, 2008
`U.S. Patent No. 5,859,636 (“Pandit”)
`Decision Instituting Inter Partes Review, Case IPR2014-00208,
`Paper No. 8, June 11, 2014
`Declaration of Dr. Paul Clark
`Curriculum vitae of Dr. Paul Clark
`Merriam-Webster’s Collegiate® Dictionary, Tenth Edition, 1999,
`p. 242
`
`- iii -
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`

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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest for this petition for Inter Partes Review (“IPR”)
`
`are Samsung Electronics Co., Ltd. (“Petitioner”); Samsung Electronics America,
`
`Inc.; and Samsung Telecommunications America, LLC.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`U.S. Patent No. 7,917,843 (“the ’843 Patent”) is currently the subject of
`
`
`
`litigation against multiple defendants in the District of Delaware, including the action
`
`captioned Arendi S.A.R.L. v. Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Samsung Telecommunications America, LLC (Civil Action No.
`
`12-1598 (LPS); the “Samsung Litigation”). Other defendants in the Delaware
`
`litigations include LG Electronics, Inc. (C.A. No. 12-1595), Apple Inc. (C.A. No. 12-
`
`1596), Blackberry Limited (C.A. No. 12-1597), Nokia Corp. (C.A. No. 12-1599),
`
`HTC Corp. (C.A. No. 12-1600), Motorola Mobility LLC (C.A. No. 12-1601), Sony
`
`Mobile Communications (USA) Inc. (C.A. No. 12-1602), Google Inc., (C.A. No. 13-
`
`0919), and Yahoo! Inc., (C.A. No. 13-0920).
`
`The ’843 Patent is the subject of Case IPR2014-00208 that was instituted on
`
`June 11, 2014. A Motion for Joinder to IPR2014-00208 accompanies the present
`
`petition. The present proceeding seeks to institute trial on the sole ground that was
`
`instituted in IPR2014-00208. Petitioner is also seeking Inter Partes Review of U.S.
`
`- 1 -
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
`
`Patent No. 7,496,854 (and joinder to instituted Cases IPR2014-00206 and IPR2014-
`
`00207) that is directed to related subject matter.
`
`
`
`C. Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`Lead Counsel
`Back-up Counsel
`Andrea G. Reister (Reg. No. 36,253)
`Gregory S. Discher (Reg. No. 42,488)
`
`areister@cov.com
`
`gdischer@cov.com
`
`Postal and Hand-Delivery Address:
`
`Postal and Hand-Delivery Address:
`
`Covington & Burling LLP
`
`Covington & Burling LLP
`
`1201 Pennsylvania Avenue, NW
`
`1201 Pennsylvania Avenue, NW
`
`Washington, DC 20004
`
`Washington, DC 20004
`
`Phone: (202) 662-5141
`
`Phone: (202) 662-5485
`
`Fax: (202) 778-5141
`
`Fax: (202) 778-5485
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`The undersigned authorizes the Office to charge $24,200 ($9,000 request fee;
`
`$14,000 post-institution fee; and $1,200 post-institution fee for three claims in excess
`
`of 15) to Deposit Account No. 50-0740 for the fees set forth in 37 C.F.R. § 42.15(a)
`
`for this Petition for Inter Partes Review. The undersigned further authorizes
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`payment for any additional fees that might be due in connection with this Petition to
`
`be charged to the above-referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’843 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ’843 Patent on the grounds
`
`identified herein.1
`
`B. Citation of Prior Art
`The sole prior art reference on which the present petition relies is U.S. Patent
`
`No. 5,859,636 (“Pandit”; Ex. 1005) that was filed on December 27, 1995 and
`
`qualifies as prior art to the ’843 patent under 35 U.S.C. § 102(e) (pre-AIA).
`
`C. Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) &
`(b)(2))
`
`
`
`The relief requested by Petitioner is that claims 1, 2, 8, 14-17, 20, 21, 23, 24,
`
`30, 36-39, 42 and 43 of the ‘843 Patent be found unpatentable and cancelled from
`
`the ’843 Patent on the following ground:
`
`
`
`
`1 Because the present Petition is accompanied by a request for joinder, the time period
`
`set forth in 37 C.F.R. § 42.101(b) does not apply. 37 C.F.R. § 42.122(b).
`
`- 3 -
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`Ground Claims
`
`Basis
`
`I
`
`1, 2, 8, 14-17, 20, 21, 23, 24, 30,
`
`Obvious under 35 U.S.C. § 103(a)
`
`36-39, 42, and 43
`
`in view of Pandit
`
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`Should Patent Owner, in an effort to avoid the prior art, contend in this proceeding
`
`that the claims have a construction different from their broadest reasonable
`
`construction, the appropriate course is for Patent Owner to seek to amend the
`
`claims to expressly correspond to its contentions in this proceeding. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (August 14, 2012). Of
`
`course, any such amendment would only be permissible if the proposed amended
`
`claims comply with 35 U.S.C. § 112. Petitioner has included below a discussion of
`
`the “broadest reasonable construction consistent with the specification” (“referred
`
`to herein as BRI”) for the term “an input device, configured by the first computer
`
`program.”
`
`The term “an input device, configured by the first computer program”
`
`appears in each of independent claims 1, 20, 23, and 42. As noted in the Decision
`
`Instituting Inter Partes Review, Case IPR2014-00208, for the ’843 patent, “it
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`appears that no form of the word ‘configure’ is used in the patent’s description of
`
`the input device as it relates to a computer program. . . . , with no discussion as to
`
`how the input device may be ‘configured by’ the first computer program, nor any
`
`indication as to how the phrase might be deemed to distinguish over the prior art.”
`
`(Ex. 1006, p. 8). Thus, one skilled in the art would understand “configured by” to
`
`have its ordinary and customary meaning. Clark Dec., ¶ 18. Merriam-Webster’s
`
`Collegiate® Dictionary from the 1998-1999 time frame when the priority
`
`applications for the ’843 patent were filed defines “configure” to mean “to set up
`
`for operation.” Ex. 1009, p. 242. Therefore, “an input device, configured by the
`
`first computer program” means that the input device is set up by the first computer
`
`program. Clark Dec., ¶ 182.
`
`As explained at 3:35-48, 10:8-13, and FIG. 3 item 42 of the ‘843 Patent,
`
`“single button addressing is achieved by providing an input device, such as a touch
`
`screen, keyboard, icon, menu, voice command device, etc. (hereinafter called
`
`‘button’), in a computer program, such as a word processing program, spreadsheet
`
`program, etc. (hereinafter called ‘word processor’), for executing address handling
`
`therein.” Ex. 1001, 3:35-41; Clark Dec., ¶ 19. The specification presents “One
`
`Button” 42 as the input device in every embodiment. See, e.g., Ex. 1001, FIGS. 3-
`
`
`2 This construction was adopted in the decision instituting trial on the ’843 patent in
`
`Case IPR2014-00208. See Ex. 1006, p. 9.
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`- 5 -
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`5, 1:60-64, 2:51-54, 3:35-48, 5:63-6:3, and 10:8-13; Clark Dec., ¶ 19. Based on
`
`this, one skilled in the art would understand that the “input device” would have an
`
`interface to receive a user command, such as a user-selectable area or icon on a
`
`computer screen. Clark Dec., ¶ 19; see also Ex. 1006, p. 9.
`
`Person of Ordinary Skill in the Art
`
`E.
`A person of ordinary skill in the art of the ’843 Patent at the time of the
`
`
`
`alleged invention (“POSA”) would typically have had an undergraduate degree in
`
`computer science in addition to two or more years of work experience relating to
`
`the field of computerized information processing or equivalent graduate education
`
`or work experience. Clark Dec., ¶ 12.
`
`F. Unpatentability of the Construed Claims (37 C.F.R. §
`42.104(b)(4))
`
`
`
`An explanation of how claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42
`
`and 43 of the ’843 Patent are unpatentable under the statutory ground identified
`
`above, is provided in Section V, below.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`G.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided below in the form of explanatory text and claim charts. An Exhibit List
`
`with the exhibit numbers and a brief description of each exhibit is set forth above.
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`Ex. 1007 is a Declaration of Dr. Paul Clark, which explains what the art would
`
`have conveyed to a POSA. Ex. 1008 is an accompanying curriculum vitae of Dr.
`
`Paul Clark.
`
`IV. SUMMARY OF THE ’843 PATENT
`A. Overview of the ’843 Patent
`The ’843 Patent addresses a method, system and computer readable medium
`
`for name and address handling through the use of a computer program coupled to
`
`an information management source for providing address handling within a
`
`document created by the computer program. Ex. 1001, 1:18-26. One aspect
`
`relates to inserting information from a database into a document. This aspect is
`
`described in connection with the left side of the flow charts of FIGS. 1 and 2 and
`
`Examples 1, 5 and 7. Another aspect relates to adding data from a document into a
`
`database. This is described in connection with the right side of FIGS. 1 and 2 and
`
`Examples 2-4 and 6.
`
`In an embodiment described in the patent and shown in FIG. 1, the user has
`
`typed information into a document, for example a word processing document. As
`
`shown at step 2 of FIG. 1, the user presses a button that initiates the operation of a
`
`program using information from that document. Ex. 1001, 3:42-54, 4:25-28. As
`
`shown in step 4 of FIG. 1, this program retrieves the information that the user has
`
`typed into the document and analyzes it. Id. At step 6, the program decides what
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`was found in the document and takes some action based on what was found. Id. at
`
`4:28-32, 4:40-67. The actions that the program takes can include, for example,
`
`looking up a name in a database, as shown in step 12. Id. at 4:43-45. Further
`
`actions may be taken by the program depending upon the result of the database
`
`lookup, including, for example, inserting an address related to the name into the
`
`document, as shown in step 22 of FIG. 1; inserting an address into a database, as
`
`shown in step 36; and/or displaying the data to the user, as shown in step 20. Id. at
`
`4:46-5:8.
`
`Example 1 relates to searching for and inserting an address into the
`
`document. Figure 3 (below) illustrates a document into which a name 40 has been
`
`entered. Ex. 1001, 5:63-65. The user presses a “OneButton” button 42. Id. at
`
`5:65-6:3, FIG. 1 at step 2. A program then analyzes what the user has typed into
`
`the document to detect certain types of information. Id. at 4:25-39, FIG. 1 at step
`
`4.
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`
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`
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`Upon detection, the name is searched in a database. Id. at 5:65-6:3, FIG. 1
`
`at step 12. If the search returns one matching contact with only one address, the
`
`address is inserted into the document, as shown in FIG. 4. Id. at 5:65-6:3, FIG. 1 at
`
`step 22. If multiple matching contacts are found, the user is prompted to select an
`
`address for insertion into the document. Id. at 7:33-49, FIG. 10, FIG. 1 at steps 20
`
`and 22.
`
`Prosecution History Summary of the ’843 Patent (Ex. 1002)
`
`B.
`A number of Office Actions, responses, amendments, and interview
`
`
`
`summaries are present in the file history of the ’843 Patent. Petitioner summarizes
`
`here those most relevant to the grounds of unpatentability set forth in the present
`
`Petition.
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`
`
`The application resulting in the ’843 Patent was filed on July 29, 2008, as
`
`application number 12/182,048 (“the ’048 application”), which is a continuation of
`
`the application that issued as 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 (Ex. 1005), was marking information or identifying information, such as a
`
`name and address in a document, “without user intervention.” See, e.g.,
`
`Amendment dated January 24, 2008, at 31 (Ex. 1004).
`
`
`
`However, during the prosecution of the ‘843 patent, the recitation of
`
`marking or identifying without user intervention was dropped. In an Office Action
`
`dated October 28, 2010 (Ex. 1002, p. 33), the Examiner cited Pandit as pertinent to
`
`Applicant’s disclosure. Applicant responded on December 8, 2010 by broadening
`
`the claims from analyzing a “document to identify any first information that can be
`
`searched for” to analyzing “first information from the document.” Ex. 1003 at 9.
`
`Applicant explained at page 15 of the Amendment:
`
`the original claims were
`that
`Applicant believes
`patentable over the cited prior art at least because none of
`the cited references discloses “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
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`limitation described in the previous paragraph has been
`amended out of the claims, which, in that respect,
`broadens the claims.
`Ex. 1003 at 17 (emphasis added).
`
`
`
`As set forth below, Applicant’s admitted broadening of the claims renders
`
`them unpatentable over Pandit.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONER WILL PREVAIL WITH RESPECT TO AT
`LEAST ONE CLAIM OF THE ’843 PATENT
`
`The subject matter of claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42 and
`
`43 of the ’843 Patent is disclosed and taught in the prior art as explained below in
`
`§§ V.A. and V.B. As set forth below, the reference utilized in Ground I renders
`
`obvious each of claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42 and 43 pursuant
`
`to 35 U.S.C. § 103(a), and provides a reasonable likelihood that the Petitioner will
`
`prevail on at least one claim. 35 U.S.C. § 314(a).
`
`Prior Art - Pandit (U.S. Patent No. 5,859,636)
`
`A.
`As the discussion below makes clear, by September 1998, the purported
`
`innovations of the ’843 patent were well-known.
`
`Pandit (Ex. 1005) qualifies as prior art to the ’843 Patent under 35 U.S.C.
`
`§ 102(e), with a prior art date of December 27, 1995. As set forth in the title,
`
`Pandit is directed to recognition of and operation on text data. For example, a
`
`document is illustrated in FIGS. 1a - 1f. Various text items in the document can be
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`selected by the user and analyzed to determine the nature of the text, e.g., whether
`
`it is a date, an email address or a phone number. More particularly, Pandit displays
`
`documents such as email messages or word processor documents electronically
`
`and, while the document is being displayed, analyzes information from the
`
`document to determine if the information is one of a set of types of detectable
`
`structures (e.g., telephone numbers, telefax numbers, dates, nouns and verbs). See,
`
`e.g., Ex. 1005 at 5:17-21 (“Any text appearing on a video monitor can be operated
`
`on by the invention, whether the text is within an EMail message, World-Wide
`
`Web site, created by a word processing or database program, etc.”); 2:3-4 (“The
`
`invention selectively recognizes text and performs relevant operations based on the
`
`recognition.”); 2:25-32 (“[T]he invention is not limited to the recognition of dates
`
`in text . . . the invention can recognize e-mail addresses and telephone numbers . . .
`
`Uniform Resource Locators, nouns, verbs, names, street addresses, etc.”). Clark
`
`Dec., ¶ 21.
`
`Based upon this determination, various actions relating to the determined
`
`type of text can make available for selection by the user. For example, as shown in
`
`FIG. 1f below, determination that a selected text item is a phone number results in
`
`provision of available actions including calling the number, adding the number to
`
`an address book or sending a fax to the number.
`
`Pandit provides an input device, configured by the first program, that allows
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`a user to initiate an operation (e.g., setting up an appointment in a calendar)
`
`comprising performing a search of a person’s calendar (i.e., second information)
`
`for the recognized date (i.e., first information). See Ex. 1005 at 2:9-10 (“The
`
`invention . . . provides a menu bar 13”); 2:12-18 (“In the example of FIG. 1a, the
`
`Date menu 12 is shown in bold type, signifying that the invention includes a menu
`
`of operations and/or programs which are relevant to dates. A user can ‘click’ on the
`
`Date menu name 12 or otherwise call the menu by one or more keystrokes on a
`
`keyboard.”); FIG. 1b (“Display calendar . . . Create appointment . . .”); 2:20-21
`
`(“A user may directly call a calendar or appointment database program from
`
`pulled-down menu 18.”). Pandit teaches that the “application 29 will build the
`
`appropriate menus” at run-time using any installed libraries. Id. at 4:55-64. See
`
`also Clark Dec., ¶ 23.
`
`Pandit discloses retrieving the first information (e.g., date), performing a
`
`search using at least part of the first information (e.g., search an electronic calendar
`
`for a date entry) and performing an action using at least part of the second
`
`information (e.g., setting up an appointment under the date entry). See Ex. 1005 at
`
`2:37-50 (“[T]he pulled-down menu 18 can identify operations and/or programs
`
`relevant to dates, such as the calendar program and appointment programs shown
`
`as well as a To-Do list program, an anniversary database, a scheduling program
`
`etc. … A user is able to run one or more of the programs relevant to dates which
`
`- 13 -
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`are identified in the pulled-down menu in a known manner, such as by clicking on
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`the name of the program as it appears in the pulled-down menu (step 25) or
`
`through the execution of one or more keyboard key strokes. In the example shown,
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`therefore, a user is able to record in, for example, a calendar program, an upcoming
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`event mentioned in a body of text in which a date has been recognized.”). See also
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`Clark Dec., ¶ 24.
`
`Figure 1f shows a graphical representation of text on a video monitor. Ex.
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`1005, 1:59-60. As explained in the Decision instituting inter partes review of the
`
`‘843 patent based on Pandit in IPR2014-00208 (Ex. 1006):
`
`
`
`The Figure [1f] shows that text (telephone number 16)
`has been selected by the user and highlighted. Pull down
`menu 17 (“Phone #”) in menu bar 13 has been selected,
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`yielding pulled-down menu 20. Links in pulled-down
`menu 20 allow the user to, for example, select the link
`“Add to address book . . .” in order to call a program to
`add the selected text (telephone number 16) to the
`address book. Id. [Pandit] at col. 2, l. 1 - col. 3, l. 10.
`[¶]
`. . . Pandit teaches that, from pulled down-menu 20 (Fig.
`1f), programs that can be called may include a writeable
`computer database of telephone and telefax numbers.
`Ex. 1009 [Pandit], col. 3, ll. 1-3. Dynamically linked
`libraries may contain subroutines for implementing the
`invention with respect to telephone and telefax numbers.
`Id. at col. 4, ll. 20-31.
`Ex. 1006, at 16-17.
`
`B. Ground I: Pandit Renders Obvious Claims 1, 2, 8, 14-17, 20, 21,
`23, 24, 30, 36-39, 42 and 43 Under § 103(a)
`1. Method Claims
`
`Set forth below are claim charts that specify where each element of method
`
`claims 1, 2, 8, 14-17, 20, and 21 are disclosed by Pandit. Any narrative discussion
`
`with respect to obviousness for a given claim or claim element is provided directly
`
`under that claim or claim element with double-line spacing.
`
`Claim 1
`[1a] A computer-
`implemented method
`for finding data related
`to the contents of a
`
`Pandit (Ex. 1005)
`Pandit discloses a computer-implemented method for
`finding data related to identified text. See, e.g., Ex. 1005
`at 5:25-43; Abstract (“Text of a predetermined class is
`recognized in a body of text. After recognition,
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`Pandit (Ex. 1005)
`operations relevant to the recognized text may be
`performed.”); 3:1-15.
`
`
`
`
`
`The document is displayed using a first computer
`program. See, e.g., 5:18-21 (“Any text appearing on a
`video monitor can be operated on by the invention,
`whether the text is within an Email message, World-Wide
`Web site, created by a word processing or database
`program, etc.”).
`While the document is being displayed, the text is
`analyzed in a computer process to determine if the text is
`of a type that can be searched to find related information.
`See, e.g., 2:8-15 and 2:25-32 (“ . . . the invention is not
`limited to the recognition of dates in text and preferred
`embodiments of the invention can recognize e-mail
`addresses and telephone numbers . . .”).
`
`The text is retrieved and identified. See, e.g., 2:8-15 and
`2:25-32 (“ . . . the invention is not limited to the
`recognition of dates in text and preferred embodiments of
`the invention can recognize e-mail addresses and
`telephone numbers . . .”) and element 1c.
`Pandit discloses providing a menu (input device) that
`allows a user to select an operation to be performed. See,
`e.g., FIGS. 1b, 1d, and 1f; 2:8-23 (“A view of an
`embodiment of a pulled-down Date menu 18 is shown in
`FIG. 1b. A user may directly call a calendar or
`appointment database program from pulled-down menu
`18. Other programs may be included in pulled-down date
`menu 18 as discussed below.”). See narrative below.
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`Claim 1
`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 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,
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`To the extent that building the menus of Pandit does not explicitly disclose that
`
`
`
`the menu is “configured by” the first application program, it would have been
`
`obvious to a person of ordinary skill in the art at the relevant timeframe that the menu
`
`must be configured by the first application program in order to be displayed with the
`
`first application program. Clark Dec., ¶ 27. At the relevant time frame, it would
`
`have been common knowledge to one of ordinary skill in the art that a computer
`
`program would set up some sort of user selectable area, or menu, so as to allow a
`
`user to initiate an operation. Id. As explained by Dr. Clark, during the relevant
`
`timeframe, configuring window managers like those for X Windows (e.g.,
`
`“.Xdefaults” files) to construct and display menus for user input to initiate an
`
`operation (e.g., run an application program) would have been a predictable
`
`modification of Pandit that was well within ordinary skill, because configuring a
`
`menu was a well-known function of word processing programs that use a graphical
`
`user interface, such as Microsoft Word 95. Id.
`
`Claim 1
`
`[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 with the
`
`Pandit (Ex. 1005)
`If the identified text is of a certain type, the user can use
`the text to search an external information source to find
`information associated with the text. For example,
`searching a dictionary for the meaning of an identified
`word. See, e.g., 3:11-15 (“Where the invention is capable
`of recognizing nouns or verbs, pull-down menus can, for
`example, identify executable programs which provide the
`meaning of the highlighted word, appropriate synonyms
`and the singular or plural version of the noun or
`conjugation of the verb.”).
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`Claim 1
`
`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
`
`Pandit (Ex. 1005)
`
`Further, Pandit discloses adding an identified number to
`an address book. See, e.g., FIGS. 1d and 1f; 2:56-63; 3:1-
`10 (“As shown in FIG. 1f on pulled-down menu 20,
`possible programs include a writable computer database
`of telephone and telefax numbers . . .”). See narrative
`below.
`
`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.
`
`It would also have been obvious to a person of ordinary skill in the art at the
`
`
`
`relevant timeframe 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 that is located. Clark Dec., ¶ 28. For example,
`
`a person wanting to enter a contact into a paper address book would first look to
`
`determine whether the contact has been entered previously. Users using an address
`
`book program would also first look to determine whether the contact has been
`
`entered previously. Id. Therefore, it would have been a simple design decision to
`
`automate the task. In fact, address book programs implemented during the relevant
`
`time frame, such as Microsoft Mail, searched the address book to avoid duplicate
`
`entries. Id. Thus, first searching the address book would have been a matter of
`
`common sense to one of ordinary skill, in order to avoid multiple incoherent entries
`
`of the same address. Id.
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`Docket No. 032449.0031-US07 Inter Partes Review of U.S. Patent No. 7,917,843
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`
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`Moreover, as explained in the Decision instituting inter partes review of the
`
`‘843 patent based on Pandit in IPR2014-00208 (Ex. 1006):
`
`Pandit teaches that, from pulled down-menu 20 (Fig. 1f),
`programs that can be called may include a writeable
`computer database of telephone and telefax numbers.
`Ex. 1009 [Pandit], col. 3, ll. 1-3. Dynamically linked
`libraries may contain subroutines from implementing the
`invention with respect to telephone and telefax numbers.
`Id. at col. 4, ll. 20-31. It would be reasonable to
`presume, as a matter of common sense, that the
`subroutine would
`search
`for duplicate
`telephone
`numbers, and, upon locating a duplicate entry, both the
`first information and associated (or second) information,
`such as the name and/or address associated with the
`telephone number, would be displayed to the user. A
`person having a bound paper address book would look
`first to determine if a potential new contact had been
`entered previously. A computerized search for duplicate
`entries would be a search “in order to find the second
`information, of a specific t