Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Date: October 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00755
`Patent 6,366,908 B1
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KRISTEN L. DROESCH, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-00755
`Patent 6,366,908 B1
`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition for inter partes review of
`claims 6–12 of U.S. Patent No. 6,366,908 B1 (Ex. 1001, “the ’908 patent”).
`Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). In accordance with Board
`authorization, Petitioner filed a Reply to the Preliminary Response (Paper 9,
`“Reply”) and Patent Owner filed a Sur-Reply (Paper 11, “Sur-Reply”),
`limited to addressing discretionary denial issues under Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). Upon consideration of the Petition, the Preliminary Response, and
`the evidence of record, we determine that Petitioner has established a
`reasonable likelihood of prevailing with respect to the unpatentability of at
`least one claim of the ’908 patent. Accordingly, for the reasons that follow,
`we institute an inter partes review of claims 6–12 of the ’908 patent.
`Related Matters
`A.
`Petitioner and Patent Owner indicate that the ’908 patent is the subject
`of the court proceeding, Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-
`00553 (E.D. Tex.) (“district court case”). Pet. 93; Prelim. Resp. 3. As
`discussed in more detail below, Petitioner’s motion to transfer the district
`court case to the Northern District of California was granted. Ex. 1046.
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`IPR2020-00755
`Patent 6,366,908 B1
`
`The ’908 Patent
`B.
`The ’908 patent describes a keyfact-based text retrieval method and a
`keyfact-based text index method. Ex. 1001, 1:6–7. The ’908 patent states
`that a keyfact is “an important fact contained in sentences which constitute a
`document,” where the keyfact is “represented by an object and property
`information through syntactic analysis of a sentence.” Id. at 1:15–18. As
`described in the ’908 patent, a keyword-based text retrieval method was the
`mainstream in conventional text retrieval methods, but the precision of a
`keyword-based text retrieval method was less than ideal for several reasons.
`Id. at 1:19–22. First, the meaning of the document was not precisely
`represented because the document is represented by keywords, which are
`nouns. Id. at 1:22–25. Second, when a query included a natural language
`phrase, sentence, or keywords, the intention of the user’s query was not
`reflected precisely in a keyword-based text retrieval method. Id. at 1:27–32.
`Therefore, the keyword-based text retrieval method had a fundamental
`limitation in retrieval precision because it performed document retrieval by
`keywords. Id. at 1:32–34. Phrase-based text retrieval methods perform
`more precise text retrieval than the keyword-based text retrieval method but
`performs less precise text retrieval than a concept-based text retrieval
`method, which expresses text by concept units. Id. at 1:45–49.
`The ’908 patent further describes a new approach to keyfact-based
`text retrieval that overcomes the shortcomings of the keyword-based text
`retrieval method and generalized phrase-based text retrieval methods. Id. at
`1:50–53. In a keyfact-based text retrieval method, parts of text that
`represent the same meaning are described as a keyfact, where the phrases or
`words having the same meaning are indexed as the same indexing terms. Id.
`at 1:53–55, 60–62. According to the ’908 patent, since the keyfact-based
`
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`IPR2020-00755
`Patent 6,366,908 B1
`retrieval method is a concept-based retrieval method, indexing and retrieval
`of the keyfact-based retrieval method are performed with the unit of the
`keyfact, and precision of the retrieval is greatly improved. Id. at 1:55–59.
`A block diagram of a keyfact-based text retrieval system is illustrated
`in Figure 1, reproduced below.
`
`
`
`Figure 1 is a block diagram illustrating a keyfact-based text retrieval
`system. Id. at 4:22–23. The keyfact-based text retrieval system comprises
`keyfact extraction device 11, keyfact index device 12, and keyfact retrieval
`device 13. Id. at 4:23–26. The ’908 patent describes that once a document
`collection 14 or a query 15 is given, the keyfact extraction device 11 extracts
`words without ambiguity by performing morphological analysis and tagging.
`Id. at 4:42–45. The keyfact generation rule is applied to the words and then
`the keyfacts are extracted. Id. at 4:45–46. The keyfact index device 12
`indexes the document collection 14 or the query 15 with the unit of keyfact
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`IPR2020-00755
`Patent 6,366,908 B1
`and calculates the frequencies of the keyfacts. Id. at 4:47–49. The
`frequencies of the keyfacts are stored into the index structure 16 with the
`document ID information. Id. at 4:49–51. The keyfact retrieval device 13
`orders documents using a similarity calculation method and shows retrieval
`results. Id. at 4:51–53.
`A block diagram of a keyfact extraction device of a keyfact-based text
`retrieval system is illustrated in Figure 3, reproduced below.
`
`
`Figure 3 illustrates a block diagram of keyfact extraction device 11
`that analyzes a document and generates keyfacts through the processes of
`morphological analysis, part-of-speech tagging, keyfact pattern extraction,
`and keyfact generation. Id. at 5:15–18. The ’908 patent describes that a
`document is supplied at stage 31 and morphological analysis is performed at
`
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`IPR2020-00755
`Patent 6,366,908 B1
`stage 32. Id. at 5:19–20. More specifically, a sentence in the document is
`divided into words, the morphological analysis is performed with
`dictionaries 36 at stage 32, and various results are obtained. Id. at 5:20–22,
`59–60. At stage 33, part-of-speech tagging is performed, where a precise
`sequence of tags is chosen among the various results of the morphological
`analysis. Id. at 5:61–63. Once the final sequence of tags is obtained, the
`stage of keyfact pattern extraction 34 searches the keyfact pattern rule 37
`and extracts meaningful keyfact patterns necessary for keyfact generation.
`Id. at 6:5–8. “Keyfact terms that have forms of [object, property] are
`generated as to the input keyfact pattern at the stage of the keyfact
`generation 35 by searching the keyfact generation rule 38,” resulting in a
`keyfact list 39. Id. at 6:38–41, 51.
`A block diagram of a keyfact index device of a keyfact-based text
`retrieval system is illustrated in Figure 4, reproduced below.
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`IPR2020-00755
`Patent 6,366,908 B1
`
`
`Figure 4 illustrates a block diagram of keyfact index device 12 that
`calculates statistical frequencies of keyfacts in a document obtained from the
`keyfact extraction device 11, and that forms an index structure. Id. at 6:58–
`60. The ’908 patent describes that, for each document, a keyfact frequency
`and document frequency of a keyfact 42 are calculated at 43 in order to
`obtain the frequency information of the keyfacts. Id. at 6:65–67. Next,
`supplementary tables, such as a document index table, a document table, and
`a keyfact index table, are generated to form an efficient index structure 44.
`
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`IPR2020-00755
`Patent 6,366,908 B1
`Id. at 7:1–3. Subsequently, an index structure is formed in a unit of the
`keyfact at 45, and an index file is stored at 46. Id. at 7:10–11.
`A block diagram of keyfact retrieval device of a keyfact-based text
`retrieval system is illustrated in Figure 5, reproduced below.
`
`
`Figure 5 illustrates a block diagram of keyfact retrieval device 13 that,
`at 54, forms a document vector and query vector with a keyfact supplied
`from a keyfact extraction device 53 and an index file 52 generated by a
`keyfact index device 51. Id. at 7:35–39. At 55, the keyfact weight constants
`(CKfType#), which are fit for the attribute of a document collection, are
`determined. Id. at 7:40–41. Subsequently, at 56, the keyfact weights are
`calculated from the document and query vector. Id. at 7:42–43. Further, at
`57, the similarity of each document appropriate for the query is calculated by
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`IPR2020-00755
`Patent 6,366,908 B1
`employing a keyfact retrieval model 58, where the result of a similarity
`calculation determines an order of appropriate documents. Id. at 8:20–24.
`Illustrative Claim
`C.
`Petitioner challenges claims 6–12 of the ’908 patent. Claim 6 is an
`independent claim, and claims 7–12 depend therefrom. Claim 6 is
`reproduced below.
`6. A keyfact-based text retrieving method comprising:
`keyfact extracting step for analyzing a document collection and
`a user query, and extracting keywords without part-of-speech
`ambiguity from said document collection and said user query,
`and respectively extracting keyfacts of said document
`collection and said user query from said keywords;
`keyfact indexing step for calculating the frequency of said
`keyfacts of said document collection and generating a keyfact
`list of said document collection for a keyfact index structure;
`and
`keyfact retrieving step for receiving said keyfact of said user
`query and said keyfacts of said document collection and
`defining a keyfact retrieval model in consideration of weigh
`factors according to a keyfact pattern and generating a
`retrieval result.
`Ex. 1001, 9:54–10:7.
`Asserted Grounds of Unpatentability
`D.
`Petitioner asserts that claims 6–12 would have been unpatentable on
`the following grounds:
`
`9
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`

`IPR2020-00755
`Patent 6,366,908 B1
`Claim(s) Challenged
`6–12
`6–12
`
`35 U.S.C. §
`103(a)1
`103(a)
`
`7–9
`
`7–9
`
`9
`
`9
`
`9
`
`9
`
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Braden-Harder2 and Grossman3
`Braden-Harder, Heidorn4,
`Messerly5, and Grossman
`Braden-Harder, Grossman, and
`Kucera6
`Braden-Harder, Heidorn,
`Messerly, Grossman, and
`Kucera
`Braden-Harder, Grossman, and
`Miller7
`Braden-Harder, Heidorn,
`Messerly, Grossman, and Miller
`Braden-Harder, Grossman,
`Kucera, and Miller
`Braden-Harder, Heidorn,
`Messerly, Grossman, Kucera,
`and Miller
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’908
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 US 5,933,822, issued Aug. 3, 1999 (Ex. 1020, “Braden-Harder”).
`3 David A. Grossman and Ophir Frieder, Information Retrieval: Algorithms
`and Heuristics, Kluwer International Series in Engineering and Computer
`Science (Kluwer Academic Publishers, Springer Science + Business Media
`New York prtg.) (1st. ed. 1998) (Ex. 1010, “Grossman”).
`4 US 5,966,686, issued Oct. 12, 1999 (Ex. 1022, “Heidorn”).
`5 US 6,076,051, issued June 13, 2000 (Ex. 1025, “Messerly”).
`6 US 4,868,750, issued Sept. 19, 1989 (Ex. 1011, “Kucera”).
`7 George A. Miller et al., Introduction to WordNet: An Online Lexical
`Database, International Journal of Lexicography, Vol. 3, No. 4, 235–244
`(1990) (Ex. 1027, “Miller”).
`
`10
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`

`IPR2020-00755
`Patent 6,366,908 B1
`
`II. DISCUSSION
`A. Discretionary Denial under 35 U.S.C. § 314(a)
`Patent Owner asks that we exercise our discretion under 35 U.S.C.
`§ 314(a) to deny the Petition in light of the related litigation proceeding.
`Prelim. Resp. 3 (“[I]nstituting a trial under the present facts would be an
`inefficient use of Board resources.”). In assessing whether to exercise such
`discretion, the Board weighs the following factors:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 6. Recognizing that “there is some overlap among these factors”
`and that “[s]ome facts may be relevant to more than one factor,” the Board
`“takes a holistic view of whether efficiency and integrity of the system are
`best served by denying or instituting review.” Id.
`On June 19, 2020, Petitioner’s motion to transfer the district court
`case from the Eastern District of Texas to the Northern District of California
`was granted. Ex. 1046. Petitioner advises us that “[t]he parties agreed to
`stay all proceedings until ‘the Northern District of California has set a
`schedule.’” Reply 1 (citing Ex. 1048, 1). According to Petitioner, the
`district court has set an initial case management conference for November
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`IPR2020-00755
`Patent 6,366,908 B1
`10, 2020. Id. at 4. On September 14, 2020, Petitioner filed a Joint Case
`Management Statement in the form of a Proposed Order in the district court
`case which states that if the Board institutes this inter partes review, then the
`parties will stipulate to stay the district court case pending the outcome of
`this inter partes review. Ex. 1051, 26–27.8 We address the Fintiv factors
`below in light of these developments.
`Stay of Related Litigation Proceeding and
`1.
`District Court Trial Date
`Under the circumstances before us, the first two Fintiv factors are
`interrelated. Most significant is that no trial date has been set in the district
`court case. Although Patent Owner asserts that “[the] trial will likely be
`expedited,” we agree with Petitioner that “attempting to predict the case
`schedule would be pure speculation.” Reply 4; Sur-Reply 3. The fact that
`no trial date has been set weighs significantly against exercising our
`discretion to deny institution of the proceeding. See Oticon Med. AB v.
`Cochlear Ltd., IPR2019-00975, Paper 15 (PTAB Oct. 16, 2019)
`(precedential) (lack of trial date weighs against exercising discretion to deny
`institution, even when discovery is “well underway”). Also, although no
`court-ordered stay is in effect, the Joint Case Management Statement states
`that if the Board institutes this inter partes review, the parties will stipulate
`to stay the district court case. Ex. 1051, 26–27.
`Investment in the Related Litigation Proceeding
`2.
`The third factor considers the investment in the district court case by
`the court and parties. Fintiv at 6, 9–12. Patent Owner argues that claim
`
`
`8 All references to the page numbers in the “Joint Case Management
`Statement & [Proposed] Order” refer to the original page numbers in the
`bottom, middle portion of each page in Exhibit 1051.
`
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`IPR2020-00755
`Patent 6,366,908 B1
`construction briefing has been completed. See Prelim. Resp. 9–10; see also
`Sur-Reply 5. Petitioner, however, indicates that the claim construction
`hearing has not occurred. Reply 5.
`Although Patent Owner relies on the fact that claim construction
`briefing has been completed, Patent Owner does not identify any other
`significant discovery that has been completed. See Prelim. Resp. 3, 9–10;
`Fintiv at 10 n.7 (explaining that the weight to give claim construction orders
`varies because some district courts may postpone significant discovery until
`after the issuance of a claim construction order). Rather, Petitioner explains
`that discovery is not complete, depositions remain to be taken, and expert
`reports have not been served. Reply 3.
`Fintiv also states that, “[i]f, at the time of the institution decision, the
`district court has not issued orders related to the patent at issue in the
`petition, this fact weighs against exercising discretion to deny institution.”
`Fintiv at 10. Here, the record indicates that the district court has not
`substantially invested in the case, apart from scheduling a case management
`conference to be held in November. Also, no claim construction orders have
`issued. See id. (“[C]laim construction orders may indicate that the court and
`parties have invested sufficient time in the parallel proceeding to favor
`denial.”). We further agree with Petitioner that, “the new court ‘does not
`have the benefit of familiarity with the issues that the transferring court
`gained through considering the parties’ claim construction positions.’”
`Reply 5 (quoting Google LLC v. Uniloc 2017 LLC, IPR2020-00441, Paper
`13 at 36 (PTAB July 17, 2020) (institution decision)). Accordingly, even
`though claim construction briefing has been completed by the parties, this
`factor does not weigh significantly in favor of a discretionary denial.
`
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`IPR2020-00755
`Patent 6,366,908 B1
`
`Remaining Factors
`3.
`The remaining factors including overlap of issues and parties, as well
`as an initial evaluation of the strength of the petition’s merits, may affect the
`overall assessment. Fintiv at 12–16. In this instance, such factors do not
`significantly affect our analysis. Although Petitioner is the defendant in the
`related litigation, Petitioner’s combinations of prior art in its Petition are
`presented in the related litigation “alongside over 180 invalidity
`combinations that are different from the combinations identified” in its
`Petition. See Reply 6. Also, to the extent that the merits present a close call
`for the reasons given in the Preliminary Response, this fact generally would
`favor denying institution, but only when other factors favoring denial are
`present. Fintiv at 15. As discussed above, there are no other factors that
`weigh significantly in favor of a discretionary denial.
`Assessment
`4.
`Based on a holistic review of the Fintiv factors, we conclude that we
`should not exercise our discretion to deny institution. The various impacts
`of transferring the related litigation between district courts, including the
`facts that no trial date has been set, the need for a new district court to
`become familiar with the case, and the parties’ proposed stipulation to stay
`the district court case if we institute an inter partes review all weigh against
`a discretionary denial. The relevance and weight of other factors on this
`record are small in comparison. Accordingly, we decline to exercise our
`discretion under § 314(a) to deny the Petition in light of the underlying
`litigation that has occurred to date in the involved district courts.
`Other factors unrelated to the parallel district court case “that bear on
`discretion to deny institution include the filing of serial petitions, parallel
`petitions challenging the same patent, and considerations implicated by 35
`
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`IPR2020-00755
`Patent 6,366,908 B1
`U.S.C. § 325(d).” Fintiv at 16 (footnotes omitted). Petitioner points out that
`the prior art presented in the Petition has not been considered previously by
`the Office, and the Petition is the only challenge to the ’908 patent that has
`ever been or is currently before the Board. Reply 7. We agree with
`Petitioner that these factors further weigh against a discretionary denial.
`Assertion of Redundant Challenges
`B.
`According to Patent Owner, “[a]s an additional and independent basis
`for denial under 35 U.S.C. § 314, the Petition is unjustifiably redundant.”
`Prelim. Resp. 11. In advancing this argument, Patent Owner focuses
`primarily on Petitioner’s challenge of claim 9, arguing that “all eight
`grounds purport to redundantly challenge at least dependent claim 9.” Id.
`Patent Owner contends “[e]ven if the Board were to determine that there is a
`reasonable likelihood of Petitioner prevailing with respect to a small number
`of claims or only one ground, the Board should exercise discretion not to
`institute review because it would not be an efficient use of the Board’s time
`and resources to address such blatant and unjustified redundancy.” Id. at
`11–12 (citing Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42
`(Jan. 24, 2019).
`Although the Petition presents challenges of claim 9 over the same
`prior art in different sections of the Petition, each subsequent analysis makes
`explicit reference to the preceding analysis. See e.g., Pet. 87, 90. Thus, the
`level of redundancy is modest when compared with circumstances where the
`Board has denied institution of redundant challenges. Cf., e.g., Liberty Mut.
`Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 7 (PTAB Oct.
`25, 2012) (“Against all 20 claims of the ’358 patent, Petitioner asserts four
`hundred and twenty two (422) grounds of unpatentability over prior art on a
`unit claim basis thus averaging more than 21 grounds per claim.”).
`
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`IPR2020-00755
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`As a matter of discretion, it is appropriate to consider the context of
`redundancies that are presented in petitions, including not only the impact on
`the Board in evaluating multiple redundant grounds but also the realistic
`need of petitioners to anticipate potential responses to certain challenges in
`satisfying its burden. See 35 U.S.C. § 316(e) (2018) (“In an inter partes
`review instituted under this chapter, the petitioner shall have the burden of
`proving a proposition of unpatentability by a preponderance of the
`evidence.”). We are not persuaded that the limited degree of redundancy
`justifies discretionary denial of the Petition. Accordingly, we decline to
`deny the Petition on that basis.
`Claim Construction
`C.
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`The parties present an overview of their respective claim construction
`positions in the related litigation. Pet. 23–24; Prelim. Resp. 14–15.
`Petitioner proposes constructions for the following claim 6 limitations:
`“keyfact extracting step for,” “keyfact indexing step for,” and “keyfact
`retrieving step for.” Pet. 25–31. Petitioner contends that, other than
`interpreting the claim 6 “step-for” limitations in accordance with 35 U.S.C.
`§ 112, ¶ 6, the Board need not resolve the claim construction disputes
`presented in the related litigation. Id. at 24. In essence, by proposing that
`
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`IPR2020-00755
`Patent 6,366,908 B1
`certain claim limitations of claim 6 require a construction in accordance with
`35 U.S.C. § 112, ¶ 6, Petitioner’s overall construction of claim 6 is narrow,
`because Petitioner looks to the ’908 patent for the corresponding acts that
`allegedly correspond to the recited function in the claims. See, e.g., id. at
`25–31. Petitioner, however, contends that the prior art renders the claims
`obvious “regardless of whether §112, ¶6, applies.” See, e.g., id. at 25, 47,
`54, 62. Patent Owner argues that claim 6 expressly recites acts
`corresponding to each step and thus avoids application of 35 U.S.C. § 112,
`¶ 6. Prelim. Resp. 15. In essence, Patent Owner proposes a broader
`construction in that the construction would not require, as Patent Owner
`argues, importing “acts” from the Specification of the ’908 patent as
`limitations. Id. at 20.
`We preliminarily agree with Patent Owner that here; 35 U.S.C. § 112,
`¶ 6 does not apply to claim 6, because the claim contains acts to perform the
`cited functions. O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1582–1583
`(Fed. Circ. 1997) (35 U.S.C. § 112, ¶ 6 “is implicated only when steps plus
`function without acts are present”); Masco Corp. v. U.S., 303 F.3d 1316,
`1327–1328 (Fed. Cir. 2002) (determining that “transmitting a force”
`“describes how the lever is driven into the cam. In other words,
`‘transmitting’ in the sense of causing a force to be conveyed through a
`medium by mechanical parts is an act, since it describes how the function of
`the ‘transmitting a force’ limitation is accomplished.”).
`We determine, however, at this stage of the proceeding, that whether
`the claim 6 “keyfact extracting step for,” “keyfact indexing step for,” or the
`“keyfact retrieving step for” invokes 35 U.S.C. § 112, ¶ 6 is not material to
`resolving the issues currently before us, because Petitioner has shown a
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`reasonable likelihood of prevailing under either construction.9 See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(holding that “only those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy”); see also Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes
`review). To the extent material to the issues presented during trial, the
`parties are invited to further present their respective claim constructions.
`Principles of Law
`D.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;10 and (4) when in evidence, objective
`
`
`9 We disagree with Patent Owner’s argument made throughout the
`Preliminary Response, that Petitioner’s “incorrect step-plus-function
`construction” is dispositive in favor of denial. See, e.g., Prelim. Resp. 27.
`Petitioner shows a reasonable likelihood of prevailing whether claim 6 is
`evaluated under a 35 U.S.C. § 112, ¶ 6 analysis or not.
`10 Relying on the testimony of Dr. Bernard J. Jansen, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill (POSA) at the time of the ’908
`patent. Pet. 22–23 (citing Ex. 1003 ¶¶ 139–146). For example, Dr. Jansen
`states that a POSA “would have had a Bachelor’s degree in computer
`science, information technology, or the equivalent, and one to two years of
`experience working with at least one of information retrieval systems, the
`
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`IPR2020-00755
`Patent 6,366,908 B1
`indicia of obviousness or nonobviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`Asserted Obviousness of Claims 6–12 Over Braden-Harder,
`E.
`Heidorn, Messerly, and Grossman
`Petitioner contends claims 6–12 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious either over Braden-Harder and Grossman, or Braden-
`Harder, Heidorn, Messerly, and Grossman. Pet. 33–84.11 In support of its
`showing, Petitioner relies upon the declaration of Dr. Bernard J. Jansen. Id.
`(citing Ex. 1003).
`
`Braden-Harder
`1.
`Braden-Harder describes an information retrieval system that utilizes
`natural language processing to process results retrieved by an information
`retrieval search engine that ultimately yields a set of retrieved documents.
`Ex. 1020, code (57). Each document is subjected to natural language
`processing to produce a set of logical forms, where each logical form
`encodes, in a word-relation-word manner, semantic relationships between
`
`
`structure and organization of databases, and natural language processing.”
`Ex. 1003 ¶ 142. Patent Owner does not propose an alternative assessment.
`Prelim. Resp. 12–13. To the extent necessary, and for purposes of this
`Decision, we accept the assessment offered by Petitioner as it is consistent
`with the ’908 patent and the asserted prior art.
`11 Petitioner contends that Heidorn and Messerly are incorporated by
`reference into the Braden-Harder disclosure and that everything disclosed in
`Heidorn and Messerly can be considered part of Braden-Harder as if the
`disclosures were contained therein. Pet. 5–6 (citing Ex. 1020, 14:53–61).
`At this juncture of the proceeding, Patent Owner does not dispute
`Petitioner’s assertions that Heidorn and Messerly are incorporated by
`reference into the Braden-Harder disclosure or that the entire disclosure of
`Heidorn and Messerly can be considered part of Braden-Harder. See
`generally Prelim. Resp.
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`IPR2020-00755
`Patent 6,366,908 B1
`words in a phrase. Id. A user-supplied query is analyzed in the same
`manner to yield a set of corresponding logical forms, where documents are
`ranked as a predefined function of the logical forms from the documents and
`the query. Id.
`A high-level block diagram of an information retrieval system is
`illustrated in Figure 1, reproduced below.
`
`
`
`Figure 1 is a high-level block diagram of an information retrieval
`system 5. Id. at 7:25–27. In operation, a user supplies a search query to
`system 5. Id. at 7:35–36. System 5 applies this query both to information
`retrieval engine 20 and natural language processor 30. Id. at 7:40–41. In
`response to the query, engine 20 searches through a dataset 10 of stored
`documents to yield a set of retrieved documents. Id. at 7:41–43. The set of
`documents is then applied, as symbolized by line 25, as an input to processor
`30. Id. at 7:43–46. Within processor 30, each of the documents in the set is
`subjected to natural language processing, specifically morphological,
`syntactic and logical form, to produce logical forms for each sentence in that
`document. Id. at 7:46–50. Each such logical form encodes semantic
`relationships between words in a linguistic phrase in that sentence. Id. at
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`IPR2020-00755
`Patent 6,366,908 B1
`7:50–53. Processor 30 analyzes the query in an identical fashion to yield a
`set of corresponding logical forms. Id. at 7:53–55. Processor 30 then
`compares the set of forms for the query against the sets of logical forms
`associated with each of the documents in the set in order to ascertain any
`match between logical forms in the query set and logical forms for each
`document. Id. at 7:55–59. Documents that produce no matches are
`eliminated from further consideration, where each remaining document that
`contains at least one match is retained and heuristically scored by processor
`30. Id. at 7:59–63. Finally, processor 30 presents the retained documents to
`the user rank-ordered based on their respective scores. Id. at 8:2–4.
`Heidorn
`2.
`Heidorn describes a method and system for performing semantic
`analysis of an input sentence within a natural language processing (“NLP”)
`system. Ex. 1022, 6:28–30. A semantic analysis subsystem receives a
`syntax parse tree generated by morphological and syntactic subsystems. Id.
`at 6:30–32. The semantic analysis subsystem applies two sets of semantic
`rules to make adjustments to the received syntax parse tree. Id. at 6:32–34.
`The semantic analysis subsystem then applies a third set of semantic rules to
`create a skeletal logical form graph from the syntax parse tree. Id. at 6:34–
`36. The semantic analysis subsystem finally applies two additional sets of
`semantic rules to the skeletal logical form graph to provide semantically
`meaningful labels for the links of the logical form graph, to create additional
`logical form graph nodes for missing nodes, and to unify redundant logical
`form graph nodes. Id. at 6:36–42. The final logical form graph generated by
`the semantic analysis subsys