UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`IPR2020-00755
`PATENT 6,366,908
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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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
`PATENT 6,366,908
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`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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`
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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 ............................................................................................................... iii
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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 ............................................................................. 3
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`IV. GIVEN THE RESOURCES EXEPENDED IN PARALLEL
`LITIGATION AND OTHER ISSUES RAISED HEREIN, THE
`BOARD SHOULD EXERCISE DISCRETION UNDER 35
`U.S.C. § 314(A) TO DENY INSTITUTION ..................................................... 3
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`A. Overlapping substantive issues warrant discretionary denial. ................... 4
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`B. The litigation is not stayed and there is no evidence it will be. ................. 7
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`C. The advanced stage of the parallel litigation, prior to transfer,
`weighs in favor of discretionary denial. ..................................................... 9
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`D. Other circumstances weigh in favor of discretionary denial. ................... 10
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`V. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 12
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`VI. CLAIM CONSTRUCTION ............................................................................. 13
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`A. Overview of claim construction positions advanced by the parties in
`parallel litigation ....................................................................................... 14
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`B. Claim 6 expressly recites acts corresponding to each step and thus
`avoids application of (pre-AIA) 35 U.S.C. § 112, ¶ 6 ............................. 15
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`C. Google fails to apply a proper construction even if the Board were to
`interpret Claim 6 as invoking (pre-AIA) 35 U.S.C. § 112 ....................... 19
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`VII. GOOGLE DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ................................................................................. 23
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`A. Example substantive deficiencies arising from the “keyfact
`extracting step” ......................................................................................... 24
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`B. Example substantive deficiencies arising from the “keyfact
`retrieving step” ......................................................................................... 27
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`C. No Prima Facie Obviousness for any challenged dependent claim ......... 32
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`VIII.
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`CONCLUSION ........................................................................................ 32
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................. ii
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`EXHIBIT LIST
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`Exhibit Description
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`2001
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`2002
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`Google’s Invalidity Contentions in Uniloc 2017 LLC v. Google LLC,
`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.
`Google LLC, No. 2:18-cv-553 (E.D. Tex.), dated August 26, 2019.
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to the Petition for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 6,366,908 (“the ’908 patent” or “Ex. 1001”) filed by Google LLC
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`(“Google” or “Petitioner”) in IPR2020-00755. The Petition purports to challenge
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`independent claim 6 and claims 7‒12 depending directly or indirectly therefrom.
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`As threshold matter, the Board should exercise its discretion to deny institution
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`under 35 U.S.C. § 314(a) and precedential authority interpreting the same, including
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`NHK Spring Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper 8 (P.T.A.B.
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`Sept. 12, 2018) (precedential) (“NHK”) and Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (discussing NHK).
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`Because, as a threshold issue, denial is independently warranted under 35
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`U.S.C. § 314(a), the Board need not reach the substantive merits of the Petition. A
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`substantive analysis is nevertheless presented herein because the Board has held that
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`“weakness on the merits” also weighs in favor of discretionary denial under 35 U.S.C.
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`§ 314(a) and NHK, particularly when (like here) this factor is coupled with an earlier
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`district court trial date. Apple v. Fintiv, IPR2020-00019, Slip Op. 15 (citing E-One,
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`Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16 at 8, 13, 20 (PTAB June 5, 2019)).
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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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`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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`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. THE BOARD SHOULD EXERCISE DISCRETION UNDER 35 U.S.C.
`§ 314(A) TO DENY INSTITUTION
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`As threshold and dispositive issue, the Board should deny institution under 35
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`U.S.C. § 314(a). The precedential decision in NHK, and the discussion of NHK and
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`its progeny opinions set forth in Apple v. Fintiv, are on point as to discretionary denial
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`under § 314(a). Under the factors set forth in those opinions, instituting a trial under
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`the present facts would be an inefficient use of Board resources.
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`Google erroneously suggests that NHK does not apply here ostensibly because
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`“the parallel litigation is currently stayed” and of the “over 170 invalidity grounds
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`[Google] asserted in the district court, no combinations of Braden-Harder with
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`Grossman or Miller have even been proposed or briefed.” Pet. 92. Google is
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`factually incorrect on all points, as explained further below. Moreover, Google is
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`legally incorrect in suggesting that NHK applies only where “the district court
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`proceeding will analyze the same issues.” Pet. 92 (quoting NHK, Slip. Op. 19‒20).
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`Google takes this statement out of context as expressing a per se rule. It is not.
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`A. Overlapping substantive issues warrant discretionary denial.
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`Decisions applying NHK, including the precedential opinion in in Apple v.
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`Fintiv, have found that “if the petition includes the same or substantially the same
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`claims, grounds, arguments, and evidence as presented in the parallel proceeding, this
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`fact has favored denial.” Apple v. Fintiv, Slip. Op. 10 (collecting cases) (emphasis
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`added). Google’s suggestion that discretionary denial under U.S.C. § 314(a) may be
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`exercised only if the exact same art is at issue in both proceedings is clearly incorrect.
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`Even if NHK and its progeny had interpreted discretionary denial under U.S.C.
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`§ 314(a) as applicable only where parallel litigation completely subsumed all issues
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`presented in the IPR petition, which clearly is not the case, Google neglects to inform
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`the Board that Google had at least attempted in litigation to do just that. While the
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`Petition purports to present no less than eight redundant grounds (Pet. 32), the only
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`alleged distinction Google makes over the redundant grounds in the Petition and those
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`advanced in parallel litigation is that “no combinations of Braden-Harder with
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`Grossman or Miller have even been proposed or briefed” in litigation (id., 92).
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`Google’s contrived distinction at least tacitly acknowledges complete overlap
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`with the parallel litigation for at least the remainder of the proposed combinations set
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`forth in the Petition (e.g., combinations involving Braden-Harder, Heidorn, Messerly,
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`and Kucera). This is not surprising, given Google’s invalidity contentions served in
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`litigation purport to reserve the right to rely on all possible combinations of all
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`references disclosed therein in challenging validity of the same claims 6‒12 of the
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`’908 patent; and every reference asserted in the Petition is also identified (by the same
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`name) in Google’s invalidity contentions. See, e.g., Ex. 2001, pp. 6‒7, 12, 19‒24.
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`Google’s contrived and selective distinction between the parallel proceedings
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`is also demonstrably false. First, Google’s assertion that it made no attempt in
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`litigation to even propose any combination of Braden-Harder with Grossman is
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`misleading at best. Google neglects to inform the Board that Google’s invalidity
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`contentions served in litigation include the following blanket assertions:
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`In addition, the references identified above render one or more
`Asserted Claims of the ’908 Patent obvious when the references
`are read in combination with each other. . . . Google may rely on
`combinations with any reference in Exhibits A-1 to A-23 and
`Exhibit B and any of the other references disclosed herein with
`respect to the ’908 Patent.”
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`Ex. 2001, p. 12 (emphasis added). Google’s invalidity contentions identify the same
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`Grossman reference in challenging the same claims 6‒12 of the same ’908 patent.
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`Id., 20. In view of Google’s bald statements in its invalidity contentions purporting
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`to preserve the right to rely on quite literally every possible combination of the
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`references disclosed therein, Google’s inconsistent statement to the Board that “no
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`combinations of Braden-Harder with Grossman . . . have even been proposed” (Pet.
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`92) is misleading at best.
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`Second, Google’s assertion that it made no attempt in litigation to even propose
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`any combination of Braden-Harder with Miller is also misleading at best.1 Google’s
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`1 Google’s Petition asserts Miller only in challenging dependent claim 9, which is
`but one of the seven claims redundantly challenged in the Petition. Given claim 9
`depends from claim 8, which depends from claim 7, which depends from
`independent claim 6, Google cannot prove obviousness of claim 9 without first
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`Petition identifies the Miller reference (Ex. 1027) as follows: “George A. Miller,
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`Richard Beckwith, Christiane Fellbaum, Derek Gross & Katherine J. Miller,
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`Introduction to WordNet: An On-line Lexical Database, International Journal of
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`Lexicography, Vol. 3 No. 4, 235-244 (1990) (“Miller”).” Pet. ix (emphasis added).
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`Google’s invalidity contentions in litigation identify the “WordNet System” itself as
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`allegedly invalidating art. Ex. 2001, 9. In its corresponding claim chart, attached as
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`Exhibit A-18 to its invalidity contentions (and produced in pertinent part here as Ex.
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`2002), Google identifies the following Miller references, including the same one
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`named in the Petition:
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`Ex. 2002, 3 (highlighting added to emphasize the same Miller reference).
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`Google further baldly asserts, in that same exhibit to its invalidity contentions,
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`that “WordNet also renders obvious the asserted claims under 35 U.S.C. § 103, alone
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`based on the state of the art and/or in combination with one or more references
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`identified in Google’s Patent Local Rule 3-3 disclosure for the ’908 Patent.” Id., 1.
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`Because Google’s invalidity contentions purport to preserve the right to challenge
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`claims 6‒12 of the ’908 patent based on the same Miller reference in combination
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`with any “one or more” other references identified therein (e.g., including Braden-
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`proving obviousness of each claim 6, 7, and 8 from which it depends.
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`Harder), Google’s inconsistent statement to the Board that “no combinations of
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`Braden-Harder with . . . Miller have ever been proposed” (Pet. 92) is, yet again,
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`misleading at best.
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`B.
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`The litigation is not stayed and there is no evidence it will be.
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`The only other argument Google offers against discretionary denial under
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`§ 314(a) is that “the parallel litigation is currently stayed.” Pet. 92. While the
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`litigation was stayed when Google filed its Petition, that is no longer the case. The
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`litigation has since been transferred to the Northern District of California (along with
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`several other cases involving the same parties) and is no longer stayed.
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`It is expected Google will seek leave to file a supplemental pre-institution reply
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`brief to address the simple fact that the parallel litigation is no longer stayed and has
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`been transferred. Google has done so in virtually all other sister IPR proceedings
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`involving the same parties. Nothing Google has argued to date, concerning the fact
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`of transfer, would weigh against exercising discretionary denial.
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`The Board’s decision in Apple v. Fintiv explains that, “[i]n some cases, there
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`is no stay, but the district court has denied a motion for stay without prejudice and
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`indicated to the parties that it will consider a renewed motion or reconsider a motion
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`to stay if a PTAB trial is instituted.” Slip op. at 6–7. Apple v. Fintiv thus considers
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`fact-specific and case-specific guidance from the district court, which is entirely
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`lacking here.
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`In other matters involving the same parties, Google has repeatedly asserted that
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`the Northern District of California “frequently” (and hence admittedly not always)
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`stays cases in view of IPRs; and Google cites cases without regard to facts and
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`analyses set forth therein. See, e.g., Google v. Uniloc, IPR2020-00441, Paper 7 at
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`1‒2; Google v. Uniloc, IPR2020-00463, Paper 10 at 2‒3; Google v. Uniloc, IPR2020-
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`00479, Paper 8 at 2. One of the cases Google has repeatedly cited as granting a stay
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`after a Board decision on institution was based on an unopposed motion. See Uniloc
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`2017 LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020). The
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`two Northern District of California cases Google has cited as granting stays before a
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`Board decision on institution both acknowledge that motions to stay are highly
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`individualized matters the court must decide on a case-by-case basis using its
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`discretion. Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68 (N.D. Cal. Jan.
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`17, 2020); Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 4:19-cv-02269, Dkt. 42 (N.D.
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`Cal. Nov. 8, 2019). For example, in Cellwitch, the court found it significant that the
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`parallel IPR “sought review of every claim in the [challenged patent].” Slip op. at 3.
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`Here, the petition seeks review of only claims 6‒12, which is a far cry from every
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`claim of the ’908 patent.
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`Cellwitch also considered the fact that “[c]laims [sic] construction briefing has
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`not yet been field” weighed in favor of a stay. Slip. op. at 4.2 Here, the claim
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`construction briefing is completed and is made of record (by Google) as Exhibits
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`2 In at least two other opinions Google has previously cited, the court similarly noted,
`as part of its analysis on a motion to stay, that no court had yet issued an order on
`claim construction. Rep. 2 (citing Uniloc, No. 3:19-cv-01904, Dkt. 89; and Elekta
`Ltd. v. ZAP Surgical Sys., Inc. No. 4:19-cv-02269, Dkt. 42 (N.D. Cal. Nov. 8, 2019).
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`1004, 1005, and 1006 to the Petition.
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`Cellwitch also found that the defendant seeking stay had “instigated the IPR
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`proceedings in a timely fashion.” Slip op. at 5. Here, Google inexplicably delayed
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`filing the instant IPR until quite literally the last possible moment, and long after the
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`court and the parties and already expended considered resources in litigation.
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`The other opinions from the Northern District of California Google has
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`previously cited (in addressing similar circumstances in other matters involving the
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`same parties) each similarly consider highly individualized factors applied to the
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`particular facts of the case. Google’s speculative and unsupported assertion in sister
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`matters that the Northern District of California will likely stay the litigation once
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`transferred simply cannot be squared with the analyses applied in the court opinions
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`Google has cited.
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`Given the parties have already repeatedly filed supplemental briefing in this
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`issue in other matters, and Uniloc merely repeats above (quite literally verbatim)
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`points it had previously raised, it would serve no purpose here to grant leave for
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`Google to (yet again) attempt to raise the same points in a futile attempt to avoid
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`discretionary denial here. Moreover, Google should not be allowed to use Uniloc’s
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`prior supplemental briefing as a roadmap to cure deficiencies in Google’s
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`supplemental briefing previously filed on this issue in other matters.
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`C. The investment in the parallel litigation, prior to transfer, weighs in
`favor of discretionary denial.
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`The investment in the parallel litigation, prior to transfer, also weighs in favor
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`of discretionary denial. Here, the advanced stage of the litigation is evidenced by the
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`fact that, prior to transfer, claim construction briefing had already been completed.
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`See Exhibits 1004, 1005, and 1006.
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`Google has recently suggested in other matters involving the same parties that
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`the court’s transfer order renders moot the consideration of the proximity of the
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`court’s trial date to the Board’s projected statutory deadline for a final written
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`decision. See, e.g., Google v. Uniloc, IPR2020-00479, Paper 8 at 4. For this factor
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`to weigh against discretionary denial, however, trial would have to be rescheduled in
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`the transferee district well over an entire year from now (i.e., sometime after August
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`21, 2021). There is no record evidence to support such speculation. On the other
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`hand, that trial will likely be expedited in the transferee district is evidenced at least
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`by the acknowledged fact that claim construction briefing in the parallel litigation
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`was completed long ago. See Exhibits 1004, 1005, and 1006.
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`D. Additional factors further weighing in favor of discretionary denial.
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`That Google is the Petitioner and the defendant in the parallel district court
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`litigation weighs in favor of discretionary denial. Apple v. Fintiv, Slip Op. 13. In
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`addition, as explained further below, the “weakness [of the Petition] on the merits”
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`further supports denying institution. Id., 15 (favorably citing E-One, IPR2019-
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`00162, Paper 16 at 8, 13, 20). Even if the example substantive deficiencies addressed
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`herein were “a closer call,” and here the deficiencies are quite glaring, “if the merits
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`of the grounds raised in the petition are a closer call, then that fact has favored
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`denying institution when other factors favoring denial are present.” Id.
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`E. The Petition should be denied under the Board’s Discretion due to the
`number of claims and inordinate redundant grounds.
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`As an additional and independent basis for denial under 35 U.S.C. § 314, the
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`Petition is unjustifiably redundant. Specifically, the Petition presents no less than
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`eight distinct grounds, where all eight grounds purport to redundantly challenge at
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`least dependent claim 9. Even if the Board were to determine that there is a
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`reasonable likelihood of Petitioner prevailing with respect to a small number of
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`claims or only one ground, the Board should exercise discretion not to institute review
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`because it would not be an efficient use of the Board’s time and resources to address
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`such blatant and unjustified redundancy. As the Board explains in its informative
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`decision Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42 (Jan. 24, 2019):
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`[E]ven when a petitioner demonstrates a reasonable likelihood of
`prevailing with respect to one or more claims, institution of review
`remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`question whether to institute review . . . .” (emphasis omitted));
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir.
`2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”). In exercising that discretion, we are guided
`by the statutory requirement, in promulgating regulations for inter
`partes review, to consider the effect of any regulations on “the
`efficient administration of the Office [and] the ability of the Office
`to timely complete proceedings,” 35 U.S.C. § 316(b), as well as the
`requirement to construe our rules to “secure the just, speedy, and
`inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b).
`Office guidance, issued June 5, 2018, also explains that the Board
`may consider the number of claims and grounds that meet the
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`reasonable likelihood standard when deciding whether to institute
`inter partes review under 35 U.S.C. § 314(a). SAS Q&A’s, Part D,
`Effect of SAS on Future Challenges that Could Be Denied for
`Statutory
`Reasons
`(June
`5,
`2018),
`available
`at
`https://www.uspto.gov/sites/default/files/documents/sas_qas_2018
`0605.pdf (“[T]he panel will evaluate the challenges and determine
`whether, in the interests of efficient administration of the Office and
`integrity of the patent system (see 35 USC § 316(b)), the entire
`petition should be denied under 35 USC § 314(a).”).
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`Accordingly, the wholly unjustified, octet of redundant challenges directed at
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`a single claim provides an additional basis for the Board to exercise discretionary
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`denial under 35 U.S.C. § 314(a).
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`V. 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. Google’s
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`proposed definition of person of ordinary skill is improper at least because it fails to
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`define relational thresholds for either “significant work experience” and “formal
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`education” which would allegedly constitute sufficient offset.
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`Patent Owner does not offer a competing definition for a person of ordinary
`
`skill in the art at this preliminary stage, as, even if the Board adopted Google’s
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`proposed and improper definition, the Petitioner fails to demonstrate a reasonable
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`likelihood that the challenged claims are unpatentable. Patent Owner reserves the
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`right to propose its own definition if trial is instituted.
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`VI. CLAIM CONSTRUCTION
`
`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:
`
`In an inter partes review proceeding, a claim of a patent, or a claim
`proposed in a motion to amend under § 42.121, shall be construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent. Any prior claim construction determination concerning a
`term of the claim in a civil action, or a proceeding before the
`International Trade Commission, that is timely made of record in the
`inter partes review proceeding will be considered.
`
`37 C.F.R. § 42.100(b) (effective November 13, 2018) (emphasis added).
`
`It is well established that inter partes review petitioners cannot prove
`
`obviousness through application of an erroneous construction. See, e.g., Mentor
`
`Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at
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`*11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics
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`Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying petition as tainted by reliance
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`on an incorrect claim construction); Vivint, Inc. v. Alarm.com Inc., 754 F. App’x 999,
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`1005 (Fed. Cir. 2018) (vacating and remanding, in part, because Board had adopted
`
`and applied certain incorrect claim constructions); Int’l Bus. Machines Corp. (IBM)
`
`v. Iancu, 759 F. App’x 1002, 1005–06 (Fed. Cir. 2019) (finding that the Board’s
`
`interpretation of key claim limitations was incorrect resulting in the Board’s decisions
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`having errors).
`
`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. This
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`is true even where the Petition purports to offer alternative claim constructions, as
`
`each one of the alternative constructions set forth in the Petition is tainted by legal
`
`error, as explained further below.
`
`A. Overview of claim construction positions advanced by the parties
`in parallel litigation
`
`For the convenience of the Board, what follows is an overview of the claim
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`construction positions the parties had presented in parallel litigation. See generally
`
`Exs. 1004, 1005, and 1006. The following table lists the constructions set forth in
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`the parties’ respective briefings for disputed terms recited in independent claim 6 (the
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`only independent claim challenged in the Petition).
`
`Claim Term
`
`“keyfact”
`
`“keyword”
`
`
`
`
`
`Google’s Claim
`Construction
`Indefinite under § 112,
`¶2
`“a noun expressed
`within a query used to
`retrieve documents”
`
`14
`
`Uniloc’s Claim
`Construction
`“fact contained in
`sentence(s)”
`Plain and ordinary
`meaning
`
`
`
`“extracting keywords
`without part-of-speech
`ambiguity”
`“keyfact extracting step
`for…,” “keyfact indexing
`step for…,” and “keyfact
`retrieving step for…,”
`Order of method steps for
`independent claims 6 and
`11
`
`“extracting keywords
`tagged with a single
`part-of-speech”
`Subject to § 112, ¶6
`
`
`Claimed steps must
`occur in the order
`recited
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`Plain and ordinary
`meaning
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`Not subject to § 112, ¶6;
`plain and ordinary
`meaning
`
`The claim language recites
`contain acts that can be
`performed in a parallel or
`overlapping manner
`
`See generally Ex. 1004.
`
`Google purports to apply to apply the constructions, for purposes of this
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`proceeding, that “keyfact” means “fact contained in sentence(s)” and that the recited
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`order of the claimed method steps is itself limiting. Given Google fails to meet its
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`threshold burden for institution under such constructions, the Board need not resolve
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`whether such constructions are correct for purposes of rendering an institution
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`decision.
`
`B. Claim 6 expressly recites acts corresponding to each step and thus
`avoids application of (pre-AIA) 35 U.S.C. § 112, ¶ 6
`
`As an independent basis for denial, Google errs as a matter of law in
`
`interpreting claim 6 as invoking (pre-AIA) 35 U.S.C. § 112, ¶ 6. For method claims,
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`the step-plus-function analysis under 35 U.S.C § 112, ¶ 6 applies only when the claim
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`language fails to recite the act implementing the particular step of the method, but
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`instead recites a function without reciting details of the act that achieves that function.
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`35 U.S.C. § 112, ¶ 6 (providing that an “element in a claim for a combination may be
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`expressed as a … step for performing a specified function without the recital of …
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`acts in support thereof, and such claim shall be construed to cover the corresponding
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`… acts described in the specification and equivalents thereof.”).
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`As a district court explained in a claim construction order issued to the same
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`parties here: “[e]ven where the drafter employs the ‘step for’ language, section 112,
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`¶ 6 is implicated only when steps plus function without acts are present.” Uniloc
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`2017 LLC v. Google LLC, No. 2:18-CV-496-JRG-RSP, 2020 WL 340246, at *42
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`(E.D. Tex. Jan. 21, 2020) (citing Masco Corp. v. U.S., 303 F.3d 1316, 1326 (Fed. Cir.
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`2002). The Federal Circuit has ruled that “steps” refers to the generic description of
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`elements of the process and “acts” refers to the implementation of such steps. O.I.
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`Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1582–83, (Fed. Cir. 1997).
`
`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
`
`as a step-plus-function limitation:
`
`Even when a claim element uses language that generally falls under
`the step-plus-function format, however, § 112, ¶ 6 still does not
`apply when the claim limitation itself recites sufficient acts for
`performing the specified function. Therefore, when the claim
`language includes sufficient acts for performing the recited
`function, § 112, ¶ 6 does not apply.
`
`***
`In general terms, the “underlying function” of a method claim
`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
`as a whole accomplish. “Acts,” on the other hand, correspond to
`how the function is accomplished. Therefore, claim interpretation
`focuses on what the claim limitation accomplishes, i.e., it’s
`underlying function, in relation to what is accomplished by the
`other limitations and the claim as a whole.
`
`(emphasis added). In Seal-Flex, the claim limitation “spreading an adhesive tack
`
`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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`a
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