UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`
`Petitioners,
`
`v.
`
`Arendi S.A.R.L.,
`
`Patent Owner.
`
`____________
`
`Case No. IPR2014-01142
`
`Patent No. 7,917,843
`____________
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`PATENT OWNER ARENDI S.A.R.L.’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 and 37 C.F.R. § 42.107
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`Arendi Exhibit Number Description
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`EXHIBIT LIST
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`2001
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`2002
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`2003
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`
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`American Heritage College dictionary 3rd edition 1997
`definition of the term “configure”.
`
`Arendi S.A.R.L. v. Samsung Electronics Co. Ltd., et
`al., Case No. 1:2012cv01598 (D. Del.), Complaint
`
`Arendi S.A.R.L. v. Samsung Electronics Co. Ltd., et
`al., Case No. 1:2012cv01598 (D. Del.), Proof of
`Service
`
`
`
`ii
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................. 1
`I. OVERVIEW OF THE ‘843 PATENT .............................................................. 1
`II. CLAIM CONSTRUCTION .......................................................................... 5
`A. “an input device, configured by the first computer program” ........................ 6
`III. OVERVIEW OF THE PRIOR ART ............................................................. 7
`A. Overview of Pandit ....................................................................................... 7
`IV. SINCE PETITIONERS FAILED TO FILE A REQUEST FOR INTER
`PARTES REVIEW WITHIN THE TIME PERIOD SET FORTH IN 37 C.F.R §
`42.101(b), NO INTER PARTES REVIEW SHOULD BE INITIATED................... 9
`SINCE THE PRIOR ART DOES NOT RENDER ANY CLAIM OBVIOUS,
`V.
`NO INTER PARTES REVIEW SHOULD BE INITIATED .................................. 10
`A. 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, Ground I fails to establish that Petitioners have a reasonable
`likelihood of prevailing based upon obviousness. .............................................. 10
`B. Because the hypothesized search for duplicate first information is not a
`search “using at least part of the first information as a search term in order to find
`the second information…associated with the search term in an information
`source external to the document”, Ground I fails to establish that the Petitioners
`have a reasonable likelihood of prevailing based on obviousness. ..................... 21
`CONCLUSION .................................................................................................... 24
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`iii
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`TABLE OF AUTHORITIES
`
`
`Cases
`Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1363 (Fed. Cir. 2009)
` ......................................................................................................................... 19
`Arendi S.A.R.L. v. Samsung Electronics Co. Ltd., et al., Case No. 1:2012cv01598
`(D. Del.) ............................................................................................................. 9
`Eizo Corp. v. Barco N.V., IPR 2014-00358, Paper No. 11 ................................... 16
`Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327, 1338 (Fed.
`Cir. 2003) ........................................................................................................... 7
`In re Baxter Int’l, 678 F. 3d. 1357 (Fed. Cir. 2012) ................................................ 6
`K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362 (Fed. Cir. 2014). . 14
`KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) .................................... 18
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2013-00003, Paper
`No. 11, p. 23 ..................................................................................................... 17
`Medtronic, Inc. v. Nuvasive, Inc., Appeal No. 2012-009491, Reexam Control No.
`95/001,247 ....................................................................................................... 18
`Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005) (en banc) .................... 5, 6
`Whitserve, LLC v. Computer Packages, Inc. 694 F.3d 10, 24 (Fed. Cir. 2012) .... 17
`Statutes
`35 U.S.C. § 314 ...................................................................................................... 1
`Regulations
`37 C.F.R. § 42.100(b) ............................................................................................. 5
`37 C.F.R. § 42.101(b) ................................................................................. 9, 17, 21
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`iv
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`INTRODUCTION
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`Patent Owner Arendi S.A.R.L. (“Arendi” or “Patent Owner”) respectfully
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`requests that the Board decline to initiate inter partes review of claims 1, 2, 8, 14-
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`17, 20, 21, 23, 24, 30, 36-39, 42 and 43 of U.S. Patent No. 7,917,843 (the “’843
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`Patent”) because Petitioners Samsung Electronics Co., Ltd., Samsung Electronics
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`America, Inc., and Samsung Telecommunications America, LLC (“Petitioners”)
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`have failed to show that they have a reasonable likelihood of prevailing with
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`respect to any of the challenged claims. 35 U.S.C. § 314.
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`Petitioners have submitted a proposed ground for challenge based on
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`obviousness. At least one claim element is missing from the relied-upon reference.
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`Very recently, the Federal Circuit Court of Appeals set forth a clear statement of
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`the law with respect to proper use of “common sense” in a proceeding before the
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`U.S. Patent and Trademark Office. Consequently, Petitioners may not simply argue
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`“common sense” to substitute for the limitation that is missing from the prior art.
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`Thus, Petitioners have failed to meet its initial burden to show that each element
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`was known in the prior art.
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`I. OVERVIEW OF THE ‘843 PATENT
`The ‘843 Patent is directed, among other things, to computer-implemented
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`processes for automating a user’s interaction between a first application, such as a
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`word processing application or spreadsheet application, on the one hand, and a
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`1
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`second application, such as contact management application having a database, on
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`the other hand. In the ‘843 Patent, Exhibit 1001, Figs. 1 and 2 are flow charts
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`showing for these interactions a number of scenarios, which are described from
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`col. 4, line 25-col. 5, line 53. Further details of the interactions are provided in
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`discussion thereafter of the other figures of the ‘843 Patent, and the discussion
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`includes references back to relevant portions of the flow charts in Figs. 1 and 2.
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`Fig. 1 is reproduced below.
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`The user interface of the first application includes a One Button 42 that the
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`user can select to initiate the Patent’s functions. See ‘843 Patent, Exhibit 1001,
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`Fig. 1, step 2; Fig. 3. In various scenarios, after the user has clicked on the One
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`2
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`Button 42, text in a document in the first application is analyzed (in step 2 of Fig.
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`1) to identify information, such as names, persons, companies, and addresses. Id.,
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`col. 4, lines 32-39. The second application receives this information as a search
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`term, which it uses to look up and retrieve related information from its database.
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`Id., Fig. 3, steps 12 and 14.
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`The type of the latter
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`information depends on
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`the type of the former. For
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`example, if the search term
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`is a name, the second
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`application may retrieve an
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`address, related to the
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`name, from the database.
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`Id., col. 5, line 61-col. 6,
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`line 3. Likewise, if the
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`search term is a name of a
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`mailing list, the second
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`application may retrieve
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`mailing or e-mail addresses
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`for members of the group.
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`3
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`Id., col. 4, lines 16-18.
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`Once the related information has been obtained from the database, a number
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`of different scenarios can follow. In particular, the word processing application
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`can either insert the related information into the document, or display the related
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`information. Which action the application performs depends on the type of
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`information (e.g., name, name and address) identified in the document.
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`For example, if the identified information includes only a name, a search is
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`initiated in the database associated with the second application for the name. Id.,
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`Fig. 1, steps 6 and 12. If only a single entry is found in the database for the name
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`and the entry includes a single address, then the address is inserted into the
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`document. Id., Fig. 1, steps 6, 12, 18, and 22; Fig. 4; col. 3, lines 63-67; col. 4,
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`lines 43-54; col. 5, line 61-col. 6, line 5. Figs. 3 and 4 are reproduced above. Fig.
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`3 shows a document displayed in Microsoft Word when the document includes
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`solely a name, “Atle Hedloy” 40. Fig. 4 shows the document after the address has
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`been inserted.
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`In another example, if the identified information includes a name and an
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`address, a search is initiated in the database associated with the second application
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`for the name. Id., Fig. 1, steps 6 and 14. If an entry matching the name and
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`address is found, both may be displayed for the user to edit. Id., Fig. 1, step 32;
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`col. 4, lines 57-64. If the name happens to be in the contact database but the
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`4
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`address in the contact database for that name differs from the address typed by the
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`user into the document (per Fig. 1, step 26), then the user is prompted to make a
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`choice (per Fig. 1, step 30). The user is presented with a screen shown in Fig. 9,
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`which is reproduced below.
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`Fig. 9 represents a screen
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`presented to the user in which the
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`user is given a series of choices
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`that can be made in this specific
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`context. Id., col. 6, line 66-col. 7,
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`line 14. The screen reproduces the
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`name that is both in the document
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`and in the contact database, and it
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`also displays the address that is in the contact database for that name. Thus, the
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`screen displays the name and address retrieved from the database that is related to
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`the name and address from the document.
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`II. CLAIM CONSTRUCTION
`In an inter partes review, the Patent Trial and Appeal Board gives patent
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`claims their “broadest reasonable interpretation in light of the specification of the
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`patent”. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F. 3d 1303, 1316 (Fed.
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`Cir. 2005) (en banc). “To ascertain the scope and meaning of the asserted claims,
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`5
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`we look to the words of the claims themselves, the specification, the prosecution
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`history, and, lastly, any relevant extrinsic evidence. Phillips v. AWH Corp., 415 F.
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`3d 1303, 1315-17 (Fed. Cir. 2005) (en banc).” In re Baxter Int’l, 678 F. 3d. 1357,
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`1362 (Fed. Cir. 2012) (Standard on appeal from ex parte reexamination.).
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`Extrinsic evidence may also be relevant to establish the meaning of terms, but such
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`evidence is only relevant to the extent it is consistent with the specification and file
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`history. Phillips, 415 F. 3d at 1319.
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`Patent Owner Arendi proposes construction of certain claim terms below
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`pursuant to the broadest reasonable interpretation consistent with the specification
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`standard. The proposed claim constructions are offered for the sole purpose of this
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`proceeding and thus do not necessarily reflect appropriate claim constructions to be
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`used in litigation and other proceedings should a different claim construction
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`standard be applied.
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`A. “an input device, configured by the first computer program”
`Independent claims 1, 20, 23, and 42 all recite the limitation “providing an
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`input device, configured by the first computer program”. Therefore, according to
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`this limitation, a first computer program must “configure” the input device. Words
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`of a claim must be given their plain meaning, which refers to the ordinary and
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`customary meaning given to the words by one of ordinary skill in the art. Phillips
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`v. AWH Corp., 415 F. 3d 1303, 1313 (Fed. Cir. 2005) (en banc). Dictionary
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`definitions may be used to determine the ordinary and customary meaning of
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`words. Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327,
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`1338 (Fed. Cir. 2003) (Dictionary definitions were used to determine the ordinary
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`and customary meaning of the words “normal” and “predetermine” to those skilled
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`in the art.)
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`In this situation, we turn to the American Heritage College Dictionary 3 rd
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`edition 1997 for a definition of “configure”. This dictionary defines “configure” as
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`“to design, arrange, set up, or shape with a view to specific applications or uses”.
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`See Exhibit 2001. When this definition is applied to the claim limitations, the
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`claims consequently require that the first computer program set up the input device
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`so that it can be used. Therefore, “an input device, configured by the first
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`computer program” should be construed as “an input device, set up by the first
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`computer program for use”.
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`III. OVERVIEW OF THE PRIOR ART
`A. Overview of Pandit
`Pandit describes a program that enables users to identify text of interest and
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`select an operation applicable to the text. Pandit identifies classes of text in a
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`document and enables a user to select programs, based on the identified classes,
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`applicable to the text. When a document is open in the program, the program
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`provides a menu bar 13 that displays classes of text, such as “Date”, “EMail”, and
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`7
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`“Phone #”. Exhibit 1009, Figs. 1a-1f. The user selects text in the document by
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`shading, underlining, or pointing and clicking on the text. Id., col. 2, lines 4-8.
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`The program identifies the class of the selected text and highlights that class in the
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`menu bar 13 using boldface type. Id., col. 2, lines 8-16, 51-53, 64-66 and Figs. 1a,
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`1c, and 1e. The boldface type indicates that the programs for that class of text
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`have been enabled. Id., col. 2, lines 11-12.
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` When the user selects the bolded class, the program displays the programs
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`for the class. Id., col. 2, lines 15-18, 20-21, 33-35. For example, if a user selects
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`the highlighted option “Date” from the menu bar 13, the program displays potential
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`programs that display a calendar or create an appointment based on the selected
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`date in the document. Id., Fig. 1b. If a user selects the highlighted option “Email”
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`from the menu bar 13, the program displays potential programs that create an email
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`message addressed to the selected email address or add the address to an address
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`book. Id., Fig. 1d. If a user selects the highlighted option “Phone #” from the
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`menu bar 13, the program displays potential programs of dialing the selected phone
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`number, adding the phone number to an address book, or preparing a fax to be sent
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`to the phone number. Id., Fig. 1f. The user selects a program to be performed by
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`clicking on the operation or executing one or more keyboard strokes. Id., col. 2,
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`lines 41-46.
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`8
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`IV. SINCE PETITIONERS FAILED TO FILE A REQUEST FOR INTER
`PARTES REVIEW WITHIN THE TIME PERIOD SET FORTH IN 37
`C.F.R § 42.101(b), NO INTER PARTES REVIEW SHOULD BE
`INITIATED
`
`On December 4, 2012, Patent Owner served a complaint against Petitioners
`
`alleging that certain of Petitioners’ products infringe certain claims of the ’843
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`patent. See Ex.2002, Arendi S.A.R.L. v. Samsung Electronics Co. Ltd., et al., Case
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`No. 1:2012cv01598 (D. Del.), and Ex. 2003, Proof of Service.
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`On July 11, 2014, Petitioners filed a petition requesting inter partes review
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`challenging the ‘843 Patent. Because Petitioners filed its petition more than one
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`year after it was served with a complaint alleging infringement of the ‘843 patent,
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`the time period set forth in 37 C.F.R. § 42.101(b) has tolled. Therefore, no inter
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`partes review should be initiated.
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`9
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`V. SINCE THE PRIOR ART DOES NOT RENDER ANY CLAIM
`OBVIOUS, NO INTER PARTES REVIEW SHOULD BE INITIATED
`A. 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, Ground I fails to establish that
`Petitioners have a reasonable likelihood of prevailing based upon
`obviousness.
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`Independent claims 1, 20, 23, and 42 require “performing a search using at
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`least 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”. These
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`claims further specify that the search by the second computer is a consequence of a
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`user command received by the first computer program (“in consequence of receipt
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`by the first computer program of the user command… causing a search…using a
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`second computer program, in order to find second information”). These limitations
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`are found in all the independent claims and hence are required by all of the claims
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`challenged in Ground I.
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`The limitation poses at least two requirements: (1) a search must be
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`performed by the second computer program in response to a user command
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`received in the first computer program (also referred to herein as the “Search
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`10
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`Limitation”) and (2) the type or types of second information must be dependent at
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`least in part on the type or types of the first information (also referred herein as the
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`“Second Information Type Limitation”). Although Petitioners attempt to apply
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`examples for two types of first information from Pandit, neither example fulfills
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`both requirements of the limitations.
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`The first example from Pandit is searching a dictionary for a meaning of a
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`word. See Petition, page 17. Although the Petition argues that the dictionary
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`search fulfills the Search Limitation, the Petition fails to explain how the dictionary
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`search fulfills the Second Information Type Limitation. In fact, when discussing
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`the latter in section [1f] of the claim chart, the Petition merely states that “The type
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`of second information depends on the type of first information. For example, if the
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`first information is a phone number, the second information is contact information
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`associated with the phone number.” See Petition, page 18. Thus, nowhere does
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`the Petition discuss the dictionary search with respect to the Second Information
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`Type Limitation.
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`Moreover, the dictionary search of Pandit simply cannot be applied to the
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`Second Information Type Limitation. The dictionary search arises in an
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`embodiment in which the classes of information distinguished by the invention are
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`nouns and verbs. Ex. 1005, Pandit, col. 3, lines 11-12. In particular, the “first
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`information” must be a word, such as a noun or verb, and the “second information”
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`11
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`must be a definition for the word. Whether the “first information” is a noun or a
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`verb, the “second information” would be a definition. As a result, the “type” of
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`information retrieved is a definition and does not depend on the “type” or class of
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`information searched. When Petitioners use the dictionary search of Pandit, they
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`fail to establish a prima facie case of obviousness for “performing a search using at
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`least 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”.
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`Furthermore, claims 2 and 24 require “the first information [to] comprise[s] at least
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`one of name-, person-, company- and address-related information”. Because the
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`dictionary search of Pandit is not directed to names, persons, companies, or
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`addresses, the dictionary search would fail to meet the limitations of claims 2 and
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`24.
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`We now turn to the second example from the Petition – adding an identified
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`telephone number to an address book. See Petition, page 18. As discussed above,
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`Petitioners apply the addition of a telephone number to an address book to the
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`Second Information Type Limitation: “The type of second information depends on
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`the type of first information. For example, if the first information is a phone
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`number, the second information is contact information associated with the phone
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`number.” See Petition, page 18. This second example fails to fulfill the Second
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`12
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`Information Type Limitation, but even if it did, the second example would still fail
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`to fulfill the Search Limitation.
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`Adding a contact does not suggest or disclose a search. One may naturally
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`add a contact by being provided with a form with fields for various contact
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`information. The program might automatically fill the phone number field with the
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`phone number. Alternatively, there may be several phone number fields for home,
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`work, and cell phone numbers, so the user would be left with the task of choosing
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`the particular field. The user fills the contact information fields as desired and
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`applies the completed entry to the address book. No search in the second program
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`is suggested or required by the “Add to address book” user command in the first
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`program.
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`In fact, the Petitioners admit that Pandit fails to disclose searching the
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`address book. Instead of identifying where Pandit describes a search, Petitioners
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`argue that “[I]t would also have been obvious to a person of ordinary skill in the art
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`at the relevant timeframe that the first step in adding to an address book is
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`searching the address book to determine if an entry already exists with this
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`information and displaying any associated information that is located. Clark Dec.,
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`¶ 28.” See Petition, page 18. In particular, Petitioners argue that “first searching
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`the address book would have been a matter of common sense to one of ordinary
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`skill, in order to avoid multiple incoherent entries of the same address.” Id.
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`13
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`As a matter of law, neither “common sense” nor “basic knowledge” can be
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`used to supply a missing claim limitation. On May 27, 2014, the Federal Circuit
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`reinforced this long-standing principle by affirming a decision by the Board of
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`Patent Appeals and Interferences (the “Board”) to require evidence in the record
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`for supporting an assertion that a claimed feature was known in the art. K/S
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`HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014).
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`In Hear-Wear, during an inter partes reexamination, HIMPP failed to
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`provide documentary evidence that the recited detachable connections were known
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`in the art, but HIMPP still alleged that the connections were known and the claims
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`were therefore obvious. The Examiner rejected HIMPP’s conclusory, unsupported
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`remarks to maintain the claims’ patentability, and on appeal, the Board affirmed
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`the Examiner’s conclusion. Hear-Wear, 751 F.3d at 1364.
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`The Federal Circuit rejected HIMPP’s contention that the Board
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`overemphasized the importance of published articles and issued patents and by
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`requiring documentary evidence, failed to consider the knowledge of a person
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`having ordinary skill in the art. Although HIMPP argued that this practice was
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`contrary to KSR, the Federal Circuit distinguished KSR from the case at hand: KSR
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`stated that the person of ordinary skill could use “common sense” to combine
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`references that collectively taught all of the claimed limitations, but since Hear-
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`Wear was missing evidence for a limitation, the case fell outside the scope of KSR:
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`14
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`[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.
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`Hear-Wear, 751 F.3d at 1365-1366 (see also, “In contradistinction to KSR, this
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`case involves the lack of evidence of a specific claim limitation, whereas KSR
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`related to the combinability of references where the claim limitations were in
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`evidence.” Id.)
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`Additionally, Hear-Wear prohibits the use of “common sense” to
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`compensate for a claim limitation that is missing from the prior art: “We recognize
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`that the Board has subject matter expertise, but the Board cannot accept general
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`conclusions about what is `basic knowledge’ or `common sense’ as a replacement
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`for documentary evidence for core factual findings in a determination of
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`patentability.” Id. at 1366. While the Federal Circuit recognizes that “common
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`knowledge” may support a rejection, such “common knowledge” must still be
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`bolstered by documentary evidence, especially for limitations that are not
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`indisputably known in the art. Id. at 1365-1366.
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`15
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`Moreover, on July 23, 2014, this Board followed the Hear-Wear decision for
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`these very points of law. Eizo Corp. v. Barco N.V., IPR 2014-00358, Paper No.
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`11. In Eizo, the Petitioner admitted that the prior art failed to “explicitly disclose
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`the specific spatial periods of one and fifty millimeters”, yet still argued that the
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`periods would be obvious to one of ordinary skill in the art. Id. at 9. Since the
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`Petitioner did not support its contention with evidence, the Board rejected its
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`argument based on Hear-Wear. Id. (citing Hear-Wear, “Although basic
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`knowledge available to a person with ordinary skill in the art may provide a reason
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`to combine elements in prior art, it does not establish the presence of the element
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`itself”; see also, “General conclusions about what is ‘basic knowledge’ are not a
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`substitute for documentary evidence for describing 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. 18. 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.
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`In fact, all of the statements in the Petition and in Dr. Paul C. Clark’s
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`declaration are conclusory. Although Dr. Clark references products, Petitioners
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`has failed to submit documentary evidence on the products and have also failed to
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`demonstrate how the products teach the claimed search. Absent factual evidence
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`to support Dr. Clark’s conclusions, the declaration of Dr. Clark 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., CBM2013-00003, Paper No. 11, p. 23 (“Liberty’s expert
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`testimonial evidence also does not provide adequate factual evidence to support
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`Liberty’s assertion of obviousness… We determine that the testimony of Mr.
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`Andrews (Ex. 1015, ¶ 29) relied upon by Liberty also contains no such factual
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`evidence, other than an unsupported allegation of obviousness, which is entitled to
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`no weight.”); see also Medtronic, Inc. v. Nuvasive, Inc., Appeal No. 2012-009491,
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`Reexam Control No. 95/001,247 (“[T]he opinion of expert witness as to the legal
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`conclusion of obviousness is of limited value, particularly, where, as here, it rests
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`on an inadequately established 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, 383 U.S.
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`at 36); see also Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1363
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`(Fed. Cir. 2009) (affirming determination of non-obviousness where the supporting
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`testimony was based on “hindsight, not of reasonable expectation of success at the
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`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.). Ex. 1001, 1:28-42. The ‘843 patent invention is to
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`provide a computer implemented method, system and computer readable medium
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`for retrieval of second information in consequence of a user command while within
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`the word processor. Ex. 1001, 1:56-59. The ‘843 patent discloses the computer
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`flow chart of this invention in Figures 1 and 2. Ex. 1001, 2:45-50.
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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 explicitly disclose
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`that the menu is `configured by’ the first application program.” See Petition, p. 17.
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`Petitioners admit that Pandit does not disclose performing a search of the first
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`information using a second program: “It would also have been obvious to a person