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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`
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`IPR2020-00755
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`PATENT 6,366,908
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`PATENT OWNER RESPONSE TO PETITION
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`TABLE OF CONTENTS
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`Exhibit List ................................................................................................................ ii
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`I.
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`INTRODUCTION .............................................................................................. 1
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`II. OVERVIEW OF THE ’908 PATENT ............................................................... 1
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`III. RELATED PROCEEDINGS ............................................................................. 4
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`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................... 4
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`V. CLAIM CONSTRUCTION ............................................................................... 5
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`A. Overview of claim construction positions in parallel litigation ................. 6
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`A. The “keyfact” term ..................................................................................... 6
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`B. Claim 6 does not invoke 35 U.S.C. § 112, ¶ 6 ........................................... 9
`1. Petitioner misconstrues claim 6 as invoking 35 U.S.C.
`§ 112, ¶ 6 ........................................................................................... 10
`2. Petitioner errs by conflating distinct claim
`requirements in a manner that impermissibly reads out
`limitations ......................................................................................... 14
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`VI. PETITIONER FAILS TO PROVE UNPATENTABILITY ............................ 19
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`A. Example deficiencies arising from a proper interpretation of the
`“keyfact” term........................................................................................... 20
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`B. Example deficiencies arising from Petitioner’s failure to recognize
`claim 6 affirmative recites certain acts ..................................................... 23
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`C. Example substantive deficiencies arising from the “keyfact
`retrieving step” ......................................................................................... 24
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`D. No Prima Facie Obviousness for any challenged dependent claim ......... 28
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`VII. CONCLUSION ................................................................................................ 29
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`i
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`Exhibit Description
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`EXHIBIT LIST
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`2001
`
`2002
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`Google’s Invalidity Contentions in Uniloc 2017 LLC v. Google LLC,
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`No. 2:18-cv-553 (E.D. Tex.), dated August 26, 2019.
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`Exhibit A-18 to Google’s Invalidity Contentions in Uniloc 2017 LLC v.
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`Google LLC, No. 2:18-cv-553 (E.D. Tex.), dated August 26, 2019.
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`ii
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to the
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`Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No.
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`6,366,908 (“the ’908 patent” or “Ex. 1001”) filed by Google LLC (“Google” or
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`“Petitioner”) in IPR2020-00755. The Petition fails to prove obviousness of the claims
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`challenged therein—i.e., independent claim 6 and claims 7‒12 depending therefrom.
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`II. OVERVIEW OF THE ’908 PATENT
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`The ’908 patent, titled “Keyfact-Based Text Retrieval System, Keyfact-based
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`Text Index Method, and Retrieval Method,” issued on April 2, 2002 and claims
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`priority to a foreign counterpart application filed on Dec. 30, 1999—two decades ago.
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`In general, the ’908 patent describes keyfact-based search techniques. Words
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`in a document of a document collection (or words in a search query) can be analyzed
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`to extract keywords. See, e.g., ’908 patent, 5:19‒6:4, Fig. 3, Abstract. Keyfacts can
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`then be extracted from the keywords. Id., 6:5‒55, Fig. 3, Abstract. Indexing of the
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`document collection can result in a list of keyfacts for a document and statistics
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`regarding those keyfacts. Id., 4:66‒5:6, Fig. 4, Abstract. Queries can be parsed for
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`keyfacts and information can be retrieved from the document collection based on
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`keyfacts. Id., 7:36‒8:24, Fig. 5, Abstract.
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`Given the significance of the “keyfact” concept to the claimed invention at
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`issue, an overview of certain relevant disclosure pertaining to the extraction of
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`“keyfacts” from an input sentence is warranted. One example embodiment is
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`explained in the context of extracting “keyfacts” from the input sentence, “the fast
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`1
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`retrieval of the distributed information.” Id., 5:49‒6:55. The exemplary process
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`includes applying tags to the input sentence as follows: “S (stop-word) A (adjective)
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`NV (vocative noun) PO (possessive preposition) S (stop-word) V-ed (verb) NV
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`(vocative noun).” Id., 5:51‒53. Merely applying a morphological analysis to the
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`input sentence does not result in the generation of a keyfact, however.
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`The example process further involves converting certain tags into a keyfact tag
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`“MP” and others (i.e., those representing a “sequence of nouns”) into a distinct
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`keyfact tag “KEY”. Id., 5:53‒57. The conversion result is expressed as “NMP KEY
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`PO MP KEY”. This conversion result still is not identified as being a “keyfact” as
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`claimed, even though it is a syntactic representation of the input sentence. Additional
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`example processing (using part-of-speech tagging) results in the sequence of tags
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`“MP KEY PO MP KEY”—which is still not described as a “keyfact” as claimed. Id.,
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`5:61‒6:4.
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`In this example, the processed “sequence of tags ‘MP KEY PO MP KEY”
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`obtained from ‘the fast retrieval of the distributed information’ is applied to the
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`keyfact pattern rule and the keyfact pattern ‘MP1 KEY1PO MP2 KEY2’ is the
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`result.” Id., 6:34‒37. This keyfact pattern is still not described as being a “keyfact”
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`itself. Rather, the keyfact pattern is used an input at a keyfact generation stage 35 to
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`generate a list of keyfact terms that each have the form of [object, property]—i.e., a
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`paired relationship between an “object” that is the head and a “property” that is the
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`modifier. Id., 6:38‒44; see also id., 1:16‒18. Thus, in the disclosed example,
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`applying the keyfact pattern “MP1 KEY1PO MP2 KEY2” to the keyfact generation
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`2
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`U.S. Patent No. 6,366,908
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`stage 35 results in the following keyfact terms: “[KEY2, KEY1], [KEY1, NIL],
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`[KEY2, NIL], [KEY2 KEY1, NIL], [KEY1, MP1], [KEY2, MP2].” Id., 6:46‒51.
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`Note that each keyfact term in this disclosed example is expressed in the form [object,
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`property], even where the object itself has multiple tags.
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`As shown by the above summary of a preferred embodiment, extracting
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`keyfacts from the input sentence “the fast retrieval of the distributed information”
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`yields a collection or list of keyfact terms that collectively reflect the “keyfacts” claim
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`term recited in the challenged claims. Table 1 of the ’908 patent (at 6:15‒30)
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`discloses example input sentences in its left column and exemplary keyfacts terms
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`that are extracted from such sentences in the righthand column. Table 1 lists each
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`keyfact term in the form [object, property], even where the object itself has multiple
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`tags. As shown in Table 1, different input sentences having readily distinguishable
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`semantic information may nevertheless produce certain identical keyfact terms. Id.
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`Claim 6 is the only independent claim challenged in the Petition. For ease of
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`reference, the text of challenged independent claim 6 is reproduced here:
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`6. A keyfact-based text retrieving method comprising:
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`keyfact extracting step for analyzing a document collection and a
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`user query, and extracting keywords without part-of-speech ambiguity
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`from said document collection and said user query, and respectively
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`extracting keyfacts of said document collection and said user query from
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`said keywords;
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`keyfact indexing step for calculating the frequency of said keyfacts
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`of said document collection and generating a keyfact list of said document
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`collection for a keyfact index structure; and
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`3
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`keyfact retrieving step for receiving said keyfact of said user query
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`and said keyfacts of said document collection and defining a keyfact
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`retrieval model in consideration of weigh factors according to a keyfact
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`pattern and generating a retrieval result.
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`III. RELATED PROCEEDINGS
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`The ’908 patent has been asserted in Uniloc 2017 LLC et al v. Google LLC,
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`Case No. 2-18-cv-00553 (E.D. Tex.), which has been transferred to the Northern
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`District of California per court order dated June 19, 2020 (Dkt. No. 169). Before the
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`court ordered transfer of the litigation, the parties had completed all claim
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`construction briefing. Petitioner Google attached the parties respective claim
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`construction briefs as Exhibits 1004, 1005, and 1006 to the Petition.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition proposes that a person of ordinary skill “would have had a
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`Bachelor’s degree in computer science, information technology, or the equivalent,
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`and one to two years of experience working with at least one of information retrieval
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`systems, the structure and organization of databases, and natural language
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`processing.” Pet. 22‒23. The Petition further asserts that “significant work
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`experience in any of these areas could substitute for formal education.” Id.
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`Petitioner’s proposed definition of person of ordinary skill is improper at least
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`because it fails to define relational thresholds for either “significant work experience”
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`and “formal education” which would allegedly constitute sufficient offset.
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`Although Patent Owner does not concede that Petitioner’s definition for a
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`person of ordinary skill is correct, Patent Owner does not offer a competing definition
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`4
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`U.S. Patent No. 6,366,908
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`for purposes of this proceeding. The Petition fails to establish unpatentability even
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`if the Board were to apply Petitioner’s definition for a person of ordinary.
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`V. CLAIM CONSTRUCTION
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`Consistent with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its
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`progeny, as of the filing date of the Petition, the standard for claim construction in
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`inter partes review before the Board is as follows:
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`In an inter partes review proceeding, a claim of a patent, or a claim
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`proposed in a motion to amend under § 42.121, shall be construed
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`using the same claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. 282(b),
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`including construing the claim in accordance with the ordinary
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`and customary meaning of such claim as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to
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`the patent. Any prior claim construction determination concerning a
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`term of the claim in a civil action, or a proceeding before the
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`International Trade Commission, that is timely made of record in the
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`inter partes review proceeding will be considered.
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`37 C.F.R. § 42.100(b) (effective November 13, 2018) (emphasis added).
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`It is well established that inter partes review petitioners cannot prove
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`obviousness through application of an erroneous construction. See, e.g., Int’l Bus.
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`Machines Corp. (IBM) v. Iancu, 759 F. App’x 1002, 1005–06 (Fed. Cir. 2019)
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`(finding that the Board’s interpretation of key claim limitations was incorrect
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`resulting in the Board’s decisions having errors); Vivint, Inc. v. Alarm.com Inc., 754
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`F. App’x 999, 1005 (Fed. Cir. 2018) (vacating and remanding, in part, because Board
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`had adopted and applied certain incorrect claim constructions).
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`5
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`U.S. Patent No. 6,366,908
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`Accordingly, as a dispositive an independent basis for denial of the Petition in
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`its entirety, the Petition is impermissibly keyed to incorrect claim constructions, as
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`explained further below in addressing specific claim language.
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`A. Overview of claim construction positions in parallel litigation
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`The following table lists the constructions set forth in the parties’ respective
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`claim construction briefings filed in parallel litigation for disputed terms recited in
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`independent claim 6 (the only independent claim challenged in the Petition).
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`Claim Term
`“keyfact”
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`“keyword”
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`“extracting keywords
`without part-of-speech
`ambiguity”
`“step for” terms
`Whether method steps
`require an order of
`execution
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`See generally Ex. 1004.
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`Google’s Position
`Indefinite under § 112,
`¶2
`“a noun expressed within
`a query used to retrieve
`documents”
`“extracting keywords
`tagged with a single
`part-of-speech”
`Subject to § 112, ¶6
`Claimed steps must
`occur in the order recited
`
`Uniloc’s Position
`“fact contained in sentence(s)”
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`Plain and ordinary meaning
`
`Plain and ordinary meaning
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`Not subject to § 112, ¶6
`The claim language recites
`acts that can be performed in a
`parallel or overlapping manner
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`A. The “keyfact” term
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`While Petitioner argued in litigation that the “keyfact” term (recited in every
`
`challenged claim) is indefinite, Petitioner has purported to advance invalidity theories
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`here based on an interpretation that “keyfact” means “fact contained in sentence(s).”
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`Upon further review of how Petitioner has applied such a construction in its Petition,
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`6
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`it has become apparent that Petitioner seeks here to unduly broaden claim scope
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`beyond how the “keyfact” term is consistently used in the ’908 patent and in a manner
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`that would impermissibly encompass disparaged art. That the parties agree “keyfact”
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`is not a term of art and requires construction here only underscores the importance of
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`interpreting this term in light of definitive statements in the specification.
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`The Petition emphasizes statements in the ’908 patent “that a ‘keyfact means
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`an important fact contained in sentences which constitute a document” (Ex. 1001,
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`1:15-16), and ‘a part of text that represent[s] the same meaning is described as a
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`keyfact’ (1:53-55).” Pet. 17. At the outset of the Petition, Petitioner also states
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`““keyfacts’ … express semantic relation between words[.]” Pet. 1 (citing, inter alia,
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`Ex. 1001, 4:58‒60). It is curious that Petitioner opted to not provide a more fulsome
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`quotation of the cited passage, where the specification universally qualifies “all”
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`keyfacts as follows: “[a]ll keyfacts express semantic relation between words in the
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`form of [object, property].” Ex. 1001, 4:58‒60.
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`This definitive [object, property] form included in “all” keyfact expression is
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`a consistent and repeated theme of the ’908 patent. See, e.g., id., 1:8‒10 (“In
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`particular, the method [of the present invention] describe the formalized concept of a
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`document as pair comprising an object that is the head and a property that is the
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`modifier.”); 1:16‒18 (“The keyfact is represented by an object and property
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`information through syntactic analysis of the sentence.); see also id., 6:38‒44; Table
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`1 and accompanying description. This form represents a paired relationship between
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`an “object” that is the head and a “property” that is the modifier. Id.
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`7
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`The summary of an example embodiment provided above (in § II) serves to
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`demonstrate several crucial points bearing on a proper claim construction of the
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`“keyfact” term. While it is correct that a “keyfact” must express “fact contained in
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`sentence(s)”—as the term itself connotes—the specification further clarifies that “all”
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`keyfacts “express semantic relation between words in the form of [object, property].”
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`Id., 4:58‒60.
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`As emphasized in the summary above (§ II), the ’908 patent does not describe
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`or define a “keyfact” as a precise semantic representation of the phrase or word
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`pattern of a given sentence. That is more akin to the word-based or phrase-based
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`approach disparaged in the specification. Ex. 1001, 1:19‒28; see also id., 1:42‒45
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`(“The phrase-based text retrieval methods extract a precise phrase pattern though a
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`morphological-syntactic normalization process and perform indexing and retrieval by
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`extracted phrase.”). In contrast to the disparaged approaches, the “keyfact” term itself
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`connotes, and the surrounding context set forth in the claim language confirms, that
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`generation of a keyfact involves a factual derivation extracted from keywords.
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`This example novel aspect of “keyfacts” is reflected, for example, in the
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`description in the ’908 patent corresponding to Table 1. Ex. 1001, 6:15‒30. Table 1
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`shows example lists of keyfact terms that are not necessarily configured to
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`collectively convey the precise semantic phrasing of the respective input string.
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`Indeed, as shown in Table 1, different input sentences which have readily
`
`distinguishable semantic information may nevertheless produce certain identical
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`keyfact terms, each in the form [object, property]. Id.
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`8
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`In view of the above, it appears undisputed, at least in this proceeding, that the
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`specification provides certain defining statements concerning the “keyfact” claim
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`term, which is a word coined by the ’908 patent and used thematically throughout the
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`disclosure. To avoid undue expansion of the “keyfact” term beyond the
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`acknowledged definitive scope of the disclosure, the term should be construed for
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`purposes of this proceeding to mean “a factual extraction of a sentence which
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`expresses semantic relation between words in the sentence in the form of [object,
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`property].” See Ex. 1001 at 4:58‒60 (“All keyfacts express semantic relation between
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`words in the form of [object, property].”).
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`B. Claim 6 does not invoke 35 U.S.C. § 112, ¶ 6
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`The Petition is tainted by reliance on erroneous claim constructions for the
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`“step for” terms recited in independent claim 6 (and hence all challenged claims).
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`See, e.g., IBM, 759 F. App’x at 1005–06; Vivint, 754 F. App’x at 1005. In incorrectly
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`arguing claim 6 invokes 35 U.S.C. § 112, ¶ 6, Petitioner fails to recognize that the
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`claim language recites various acts, each corresponding to a respective one of the
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`three steps recited in claim 6. In applying an erroneous step-plus-function analysis,
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`Petitioner would have the Board construe each recited act, instead, as a function. Pet.
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`25‒31. Petitioner then looks to the specification for the corresponding “act” required
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`by the claim language. Even worse, in erroneously recasting interrelated acts as
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`independent functions, Petitioner fails to recognize that the recited acts are
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`themselves meaningfully limiting. Each recited act defines its corresponding step in
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`terms of the result it is designed to achieve by operation of the act (e.g., “keyfact
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`9
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`extracting step …,” “keyfact indexing step…,” and “keyfact retrieving step …”). Id.
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`In its Institution Decision, the Board stated “[w]e preliminarily agree with
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`Patent Owner that here; 35 U.S.C. § 112, ¶ 6 does not apply to claim 6, because the
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`claim contains acts to perform the cited functions.” Inst. Dec. (Paper 14) 17.
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`Nevertheless, the Board preliminary found that the lower evidentiary threshold for
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`institution had been met regardless of whether the “step for” terms invoke U.S.C.
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`§ 112, ¶ 6. Id. 17‒18. According to the Board, Petitioner’s erroneous application of
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`35 U.S.C. § 112, ¶ 6 would only “narrow” the terms by looking exclusively “to the
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`’908 patent for the corresponding acts that allegedly correspond to the recited
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`function in the claims.” Id. 17.
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`Patent Owner endeavors herein to better explain certain example deficiencies
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`of the Petition that arise when the challenged claims are properly understood as
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`reciting affirmative acts. Before doing so, for the sake of completeness, Patent Owner
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`repeats its prior explanation (submitted in its Preliminary Response at pp. 15‒19) as
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`to why 35 U.S.C. § 112, ¶ 6 does not apply to the challenged claims. As noted above,
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`the Board preliminarily found this explanation persuasive. See Inst. Dec. (Paper 14)
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`17‒18.
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`1. Petitioner misconstrues claim 6 as invoking 35 U.S.C. § 112, ¶ 6
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`Petitioner fails to advance any theory consistent with the proper interpretation
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`that claim 6 expressly recites acts corresponding to each step and thus avoids
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`application of (pre-AIA) 35 U.S.C. § 112, ¶ 6. As a district court explained in a claim
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`construction order issued to the same parties here: “[e]ven where the drafter employs
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`10
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`the ‘step for’ language, section 112, ¶ 6 is implicated only when steps plus function
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`without acts are present.” Uniloc 2017 LLC v. Google LLC, No. 2:18-CV-496-JRG-
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`RSP, 2020 WL 340246, at *42 (E.D. Tex. Jan. 21, 2020) (citing Masco Corp. v. U.S.,
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`303 F.3d 1316, 1326 (Fed. Cir. 2002). The Federal Circuit has ruled that “steps”
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`refers to the generic description of elements of the process and “acts” refers to the
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`implementation of such steps. O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1582–
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`83, (Fed. Cir. 1997).
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`In his concurring opinion in Seal-Flex, Inc. v. Athletic Track and Court Const.,
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`172 F.3d 836, 850, (Fed. Cir. 1999), Judge Rader provided an analysis of the
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`difficulties encountered, in determining whether a claim limitation should be treated
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`as a step-plus-function limitation:
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`Even when a claim element uses language that generally falls under
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`the step-plus-function format, however, § 112, ¶ 6 still does not
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`apply when the claim limitation itself recites sufficient acts for
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`performing the specified function. Therefore, when the claim
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`language includes sufficient acts for performing the recited
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`function, § 112, ¶ 6 does not apply.
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`***
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`In general terms, the “underlying function” of a method claim
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`element corresponds to what that element ultimately accomplishes
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`in relationship to what the other elements of the claim and the claim
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`as a whole accomplish. “Acts,” on the other hand, correspond to
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`how the function is accomplished. Therefore, claim interpretation
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`focuses on what the claim limitation accomplishes, i.e., it’s
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`underlying function, in relation to what is accomplished by the
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`11
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`other limitations and the claim as a whole.
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`(emphasis added). In Seal-Flex, the claim limitation “spreading an adhesive tack
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`coating for adhering the mat to the foundation over the foundation surface” was not
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`a step-plus-function claim because it specified an act (“spreading an adhesive”)
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`associated with the underlying function (“adhering the mat to the foundation”). Id.
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`Here, claim 6 is a method claim that recites three overarching steps, each
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`followed by a respective set of acts logically and visually grouped together as being
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`associated with, and collectively operating to achieve, the underlying step. The first
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`recited step is expressed as “keyfact extracting step for ....” The word “for” in this
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`context could have been written as “comprising” without changing the meaning. This
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`understanding is confirmed, for example, by the statement in the specification that
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`“[t]he keyfact extracting step is to analyze a document collection and a user query,
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`and extract[] keywords without part-of-speech ambiguity from the document
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`collection and the user query, and respectively extract[] keyfacts of the document
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`collection and the user query from the keywords.” Ex. 1001, 3:13‒18.
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`To be clear, claim 6 does not recite “a step for keyfact extracting” in the
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`abstract, without reciting any acts for accomplishing keyfact extracting. Rather, each
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`operative gerund (i.e., “analyzing ...,” “extracting ...,” and “respectively extracting
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`...”) that follows the phrase “keyfact extracting” recites respective acts expressly
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`directed to accomplishing the “keyfact extracting step.” Moreover, claim 6 also
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`recites how the acts are performed—e.g., keywords are extracted “without part-of-
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`12
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`speech ambiguity” and keyfacts are extracted “from said keywords.” Accordingly,
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`the first recited step does not invoke 35 U.S.C. § 112, ¶ 6.
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`The second recited step of claim 6 is expressed as “keyfact indexing step
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`for ....” Here again, “keyfact indexing” refers to the underlying result that a
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`corresponding set of acts collectively achieve; and the word “for” in this context
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`could have been written as “comprising” without changing the meaning. This
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`understanding is confirmed, for example, by the statement in the specification that
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`“[t]he key fact indexing step is to calculate[] the frequency of the key facts of the
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`document collection and generate[] a key fact list of the document collection for a
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`key fact index structure.” Ex. 1001, 3:18‒21. To be clear, claim 6 does not recite “a
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`step for keyfact indexing” in the abstract, without reciting any acts for accomplishing
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`the keyfact indexing. Rather, each operative gerund (i.e., “calculating ...” and
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`“generating ...”) that follows the phrase “keyfact indexing” recites respective acts
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`expressly directed to accomplishing the “keyfact indexing step.” Accordingly, the
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`second step does not invoke 35 U.S.C. § 112, ¶ 6.
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`The third recited step of claim 6 is expressed as “keyfact retrieving step for ....”
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`Consistent with the other recited steps, “keyfact retrieving” refers to the underlying
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`result that a corresponding set of acts collectively achieve; and the word “for” in this
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`context could have been written as “comprising” without changing the meaning. This
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`understanding is confirmed, for example, by the statement in the specification that
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`“[t]he key fact retrieving step is to receive[] the key fact of the user query and the key
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`facts of the document collection and define[] a key fact retrieval model in
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`consideration of weigh factors according to the key fact pattern and generate[] the
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`retrieval result.” Ex. 1001, 3:21‒26. To be clear, claim 6 does not recite “a step for
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`keyfact retrieving” in the abstract, without reciting any acts for accomplishing keyfact
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`retrieving. Rather, each operative gerund (i.e., “receiving ...,” “defining ...,” and
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`“generating ...”) that follows the phrase “keyfact retrieving” recites acts expressly
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`directed to accomplishing the “keyfact retrieving step.” Accordingly, the third recited
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`step does not invoke 35 U.S.C. § 112, ¶ 6.
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`Petitioner’s challenge is tainted by its incorrect construction that claim 6
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`invokes 35 U.S.C. § 112, ¶ 6. Obviousness cannot be shown through application of
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`an incorrect claim construction. See, e.g., IBM, 759 F. App’x at 1005–06; Vivint, 754
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`F. App’x at 1005. By misconstruing claim 6 as invoking § 112, ¶ 6, at a minimum,
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`Petitioner fails to comprehend the logical interrelationship between groups of acts
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`and the underlying respective result, expressed as a “step,” that each group of acts
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`operates to collectively achieve. To suggest this language is merely functional fails
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`to appreciate that the acts themselves are meaningfully limiting.
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`2. Petitioner errs by conflating distinct claim requirements in a
`manner that impermissibly reads out limitations
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`Petitioner not only misconstrues recited acts of claim 6 as invoking 35 U.S.C.
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`§ 112, ¶ 6, Petitioner also compounds its error by conflating distinct claim
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`requirements in a manner that broadens claim scope by reading out limitations.
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`Specifically, Petitioner advances theories that would misconstrue affirmative acts
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`required in claim 6 as mere functional descriptions of distinct acts recited in
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`dependent claims. This violates both the doctrine of claim differentiation and the “all
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`elements” rule. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
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`banc) (“The presence of a dependent claim that adds a particular limitation gives rise
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`to a presumption that the limitation in question is not present in the independent
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`claim.”); Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29
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`(1997) (proscribing claim constructions that would read out an express limitation).
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`Claim 6 expressly defines the “keyfact extracting step” as at least requiring
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`multiple acts, each introduced with a respective operative gerund (i.e., “analyzing
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`…,” “extracting …,” and “respectively extracting …”). Dependent claim 7 recites
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`additional acts required for the “keyfact extracting step” of claim 6. To suggest any
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`of the acts recited in claim 6 require nothing more than the additional and expressly
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`differentiated acts in claim 7 would violate the doctrine of claim differentiation.
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`Phillips, 415 F.3d at 1315. Thus, the “analyzing” act of claim 6 (expressly directed
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`to both “a document collection and a user query” together) must require something
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`more than the distinct “analyzing” of dependent claim 7 (which is directed, instead,
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`to “morphology of an input sentence”).
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`Claim 8 is expressly directed to the distinct and additional “analyzing
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`morphology” of claim 7. Among other limitations, claim 8 requires the “analyzing
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`morphology” to further require “dividing said input sentence into words; performing
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`morphological analysis on said words using part-of-speech dictionaries; performing
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`morphological variation and recovering prototypes; and obtaining said tag sequence
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`of part-of-speech by tagging part-of-speech tags in accordance with the result of said
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`morphological analysis.” It is significant that claim 8 is expressly tethered to the
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`“analyzing morphology …” act recited in claim 7. This confirms that claim 7 recites
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`additional acts for the “key-fact extracting step” of claim 6 that are distinct from what
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`claim 6 recites. In other words, claims 7 and 8 reveal that the dependent claims make
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`explicit whether they recite additional acts for the “keyfact extracting step” itself or,
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`instead, further define a previously recited act.
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`Petitioner erroneously conflates the “analyzing” of claim 6 with distinct
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`requirements directed to the “analyzing morphology” recited in dependent claims 7
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`and 8. In misconstruing acts as underlying functions, Petitioner asserts that
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`“analyzing a document collection and a user query” (recited in claim 6 as an act of
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`the “keyfact extracting step”) requires, instead, “dividing a sentence into words and
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`performing morphological analysis with dictionaries or rules, where ‘morphological
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`variation is considered in order to recover prototypes.’” Pet. 26 (citing Ex. 1001,
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`5:20‒60). Petitioner’s claim interpretation fails to appreciate that the act of
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`“analyzing” in claim 6 is distinct from the act of “analyzing morphology” recited as
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`an additional requirement in claims 7 and further defined in claim 8. Petitioner has
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`not and cannot show obviousness of the “analyzing” of claim 6 by advancing theories
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`that exclusively focus, instead, on distinct “analyzing morphology” recited in
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`dependent claims. Petitioner’s error in this regard, which effectively reads out
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`limitations of claim 6, taints the entirety of its Petition.
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`Petitioner similarly errs by conflating the “extracting keywords …”
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`requirement of claim 6 with distinct requirements more analogous to what is recited
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`in dependent claim 7. In misconstruing acts as underlying functions, Petitioner
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`asserts that “extracting keywords without part-of-speech ambiguity from said
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`document collection and said user query” (recited in claim 6) requires, instead, “part-
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`of-speech tagging, where ‘the part-of-speech tags obtained from the morphological
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`analysis’ are converted into a final sequence of tags.” Pet. 27 (citing Ex. 1001, 5:61‒
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`6:4). Yet again, Petitioner fails to recognize that claim 7 recites additional acts that
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`are distinct from, and are required in addition to, those other acts also expressly
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`directed to the “key-fact extracting step” of claim 6. Among other limitations, claim
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`7 further defines the overarching “keyfact extracting step” itself as further requiring
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`the additional acts of “obtaining tag seque