Mimzi, LLC

Patent Trials and Appeals Board

Nov 12, 2020

IPR2019-01080 (P.T.A.B. Nov. 12, 2020)

Trials@uspto.gov Paper 33
571-272-7822 Date: November 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

TRIPADVISOR, LLC,
Petitioner,
v.
MIMZI, LLC,
Patent Owner.

IPR2019-01080
Patent 9,128,981 B1

Before JAMESON LEE, STACEY G. WHITE, and NABEEL U. KHAN,
Administrative Patent Judges.
KHAN, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Petitioner’s Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
TripAdvisor, LLC (“Petitioner”), filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1–4 and 7–18 (the “challenged
claims”) of U.S. Patent No. 9,128,981 B1 (Exhibit 1001, “the ’981 Patent”).
Mimzi, LLC (“Patent Owner”), timely filed a Preliminary Response. Paper
9 (“Prelim. Resp.”). On November 15, 2019, upon consideration of the
Petition, Preliminary Response, and the evidence cited by the parties, we
determined that Petitioner established a reasonable likelihood that it would
prevail with respect to at least one of the claims challenged in the Petition
and instituted review to determine the patentability of the challenged claims
on all grounds. Paper 10 (“Dec. Inst.”), 1.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 17, “PO Resp.”). Petitioner filed a Reply (Paper 21, “Pet.
Reply”) thereto, and Patent Owner filed a Sur-Reply (Paper 23, “PO Sur-
Reply”). Petitioner supports its challenge with the Declaration of Adam A.
Porter, Ph.D. Ex. 1004. Patent Owner supports its Response with the
Declaration of Dr. Jose Luis Melendez. Ex. 2006.
Further, Petitioner filed a Motion to Exclude. Paper 27. Patent
Owner filed a Response to Petitioner’s Motion to Exclude (Paper 29) and
Petitioner filed a Reply in support of its Motion to Exclude (Paper 30). We
address these papers below.
An oral hearing was held on August 21, 2020, and the hearing
transcript is included in the record. Paper 32 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
addresses issues and evidence raised during the inter partes review. For the
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3
reasons that follow, Petitioner demonstrates by a preponderance of the
evidence that claims 1–4 and 7–18 of the ʼ981 Patent are unpatentable.
B. Real Parties-in-Interest
Petitioner identifies TripAdvisor, LLC, and TripAdvisor, Inc., as real
parties-in-interest. Pet. 4. Patent Owner identifies only itself as real parties-
in-interests. Paper 3, 2.
C. Related Matters
The parties identify the following related matters: Mimzi, LLC, v.
TripAdvisor, Inc., No. 1:18-cv-01768 (D. Del.); Mimzi, LLC v. Foursquare
Labs, Inc., No. 1:18-cv-01767-LPS (D. Del.); Mimzi, LLC v. Acer Inc., No.
1:19-cv-00272-LPS (D. Del.); Mimzi, LLC v. ASUSTek Computer Inc., No.
1:19-cv-00273-LPS (D. Del.); Mimzi, LLC v. HTC Corp., No. 1:19-cv-
00274-LPS (D. Del.); Foursquare Labs, Inc., v. Mimzi, LLC, IPR2019-
01287 (PTAB); Microsoft Corp. et al. v. Mimzi, LLC, IPR2019-01516
(PTAB). Pet. 4–5; Paper 15, 2–3.1
D. The ’981 Patent
The ʼ981 Patent, titled “Phone Assisted ‘Photographic Memory,’” is
directed “to using a phone to record phone calls, meeting and dictation, and
for storing the metadata, audio and/or speech recognition text into a
centralized content searchable repository, so that all or most of all
conversations and near everything seen or read can be searched with a single
query . . . .” Ex. 1001, 1:14–19. The ʼ981 Patent describes using the phone
to collect a variety of types of information, including recording phone calls,
recording the audio of a face-to-face meeting, recording an audio description

1 Both IPR2019-01287 and IPR2019-01516 involve the ’981 patent.
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of pictures and video taken from the camera of a phone (e.g. of notes on a
notepad, whiteboard, and article). Id. at 3:23–36. Speech recognition is
applied to the audio of the phone calls, meetings, and descriptions of
pictures and videos to create transcripts so that these sources of information
can be searched. Id. at 3:25–28. In addition to recording the above
information, the phone also records metadata, such as the date, time, name,
or location information of the recorded information. Id. at 2:31–34. For
example, the phone can record the date and location of the phone when a
picture is taken. Id. at 3:40–50. In this way, conversations, pictures and
video can be searched by date, time, and location, as well as by the speech-
recognized text of the recorded audio. Id. at 3:46–50.
The ʼ981 Patent describes an embodiment where the text transcripts
may contain timestamps. Id. at 5:58–60. For applications where the actual
time spoken for each word is important, the start date and start time of the
call or dictation may be read from the metadata, and the start date, start time,
and relative timestamp may be added for each word in the transcript. Id. at
7:23–32. In addition, location coordinates also may be added next to each
timestamp for each word in the transcript. Id. at 7:39–47.
E. Illustrative Claims
Of the challenged claims, claims 1, 10, and 16 are independent.
Claims 2–4 and 7–9 depend from independent claim 1; claims 11–15 depend
from independent claim 10; and claims 17 and 18 depend from independent
claim 16.
Claim 1, reproduced below with bracketed annotations added, is
illustrative:
1. A system for presenting social-network-provided
outputs to a mobile-electronic-device user at a location
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associated with the user in response to the user’s spoken request,
comprising:
[1.1] a data input port configured to receive speech
information from the mobile-electronic-device user;
[1.2] a memory configured to store a transcript of the
spoken request and metadata associated with the spoken request
comprising at least the location during the spoken request;
[1.3] an interface port to a social network database,
configured to transmit a request to mine information of the social
network database based on the transcript and the metadata, and
to receive social network information from the social network
database based on the transmitted request;
[1.4] at least one processor configured to transmit the
request through the interface port dependent on at least the
transcript and the metadata, to receive the social network
information from the interface port; and
[1.5] a communication port configured to communicate
at least a portion of the social-network information to the user,
[1.6] wherein the social network database comprises a
plurality of social network records, the at least one processor
being further configured to rank the received social network
information comprising a plurality of received social network
records dependent on at least one social network ranking factor,
the communication port being further configured to output at
least a portion of the social network records in a manner
dependent on the at least one social network ranking factor.

F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–4 and 7–18 would have been
unpatentable on the following grounds:
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Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–4, 7–18 103 Roth2, Fortescue3
1–4, 7–18 103 Roth, Ng4
1, 10, 16 103 Roth
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner argues that a person of ordinary skill in the art at the time of
the invention, “would have (i) had a bachelor’s degree in Computer Science,
Electrical Engineering, Computer Engineering, or a closely related field, and
about 1–2 years of practical experience in that field; or (ii) had a master’s
degree in Computer Science, Electrical Engineering, Computer Engineering
or a closely related field.” Pet. 12 (citing Ex. 1004 ¶ 55). Patent Owner
argues “POSITA must have some familiarity with social network databases
(the technology at issue) in addition to Petitioner’s proposed general
experience in Computer Science, Electrical Engineering, or Computer
Engineering.” PO Resp. 15.
On this record, we agree with Petitioner’s proposed definition of
person of ordinary skill in the art, and adopt it for purposes of this Decision.
Although the claims of the ʼ981 Patent recite searching a social network
database, we find the fields of Computer Science, Electrical Engineering,
and Computer Engineering would provide knowledge related to social
networks and database search at a level commensurate with the disclosure of
the ʼ981 Patent, and, thus, we adopt Petitioner’s proposed definition of the
level of ordinary skill in the art. We note, however, that our analysis below

2 Roth, US 2007/0099636 A1, May 3, 2007 (Ex. 1005, “Roth”)
3 Fortescue, US 2008/0102856 A1, May 1, 2008 (Ex. 1006, “Fortescue”)
4 Ng, US 2006/0123014 A1, June 8, 2006 (Ex. 1007, “Ng”)
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would be unaffected were we to expressly require that the level of ordinary
skill in the art include knowledge of social network databases, as Patent
Owner proposes.
B. Claim Construction
In inter partes reviews, we interpret a claim “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).” See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.100(b) (2019)). Under this standard, we construe
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.” Id. Only claim terms that are in
controversy need to be construed and only to the extent necessary to resolve
the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
1. Metadata Associated with the Spoken Request
Patent Owner proposes the term “metadata associated with the spoken
request” be construed as “information related to the spoken request attached
to the request, such as time and location.” PO Resp. 15 (citing Ex. 2006
¶¶ 38–43). Patent Owner argues that “[t]he word ‘associated’ signifies a
tighter integration than being merely ‘related.’”5 Id. Patent Owner argues

5 Patent Owner provides a link to a webpage with a definition for the word
“associated” that Patent Owner contends supports their proposed
construction. PO Resp. 16. Patent Owner did not, however, file an exhibit
of the linked webpage so that the definition would be entered into the record.
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that a person of ordinary skill in the art “would understand that metadata
associated with the spoken request requires a greater connection between the
metadata and the spoken request (association) than the mere fact that a
transcript and location metadata may exist or be used contemporaneously,
without association.” Id. at 16 (citing Ex. 2006 ¶¶ 38–43). Patent Owner
argues that subsequent claim limitations in claim 1, such as those that recite
“transmit[ing] a request to mine information . . . based on the transcript and
the metadata, and to receive social network information . . . based on the
transmitted request” indicate that the metadata must be associated with the
spoken request in order for these limitations to make sense. PO Resp. 16–
17. Patent Owner argues that Figures 1 and 2 of the ʼ981 Patent show time
and location metadata “are associated with the spoken request by association
of the corresponding metadata with the transcript of the speech at the ‘Add
Absolute Time,’ and ‘Add location’ steps indicated.” Id. at 17 (citing Ex.
2006 ¶¶ 38–43). Patent Owner contends that the “metadata is associated
with the spoken request when the metadata is joined or connected together
with it.” Id. (citing Ex. 2006 ¶¶ 38–43).
Petitioner argues “[t]he claim language is clear that the metadata only
needs to be ‘associated’ with (i.e., related to) the request and does not
mention the metadata being attached to the request.” Pet. Reply 4.
Petitioner further alleges that Patent Owner’s expert “admitted that metadata
could be ‘associated’ with a request in ways other than attaching it to the
request.” Pet. Reply 4–5 (citing Ex. 1011, 33–34). Petitioner argues that the
example from the Specification on which Patent Owner relies “describes an

Because the definition is not in the record, we do not consider it in our
analysis.
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Patent 9,128,981 B1
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optional feature that associates a time stamp specifically to each line of the
transcript” but that “the specification indicates that this is just one
embodiment of the claimed invention.” Pet. Reply 5 (citing Dec. Inst., 9).
Petitioner points out that the claim requires the metadata to be associated
with the spoken request, but Patent Owner relies on passages of the
Specification that describe metadata being attached to the transcript. Pet.
Reply 5.
Having considered the parties’ arguments and the fully developed trial
record, we do not agree with Patent Owner’s proposed construction. The
ʼ981 Patent describes metadata as data that includes “date data, time data,
name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981
Patent list several examples of metadata, including, “Date of call, dictation
or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone #
other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start
time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,”
“Location start,” “Location time 1,” “Location at end,” “Loc. Start
synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 Patent
describes metadata broadly as encompassing a variety of data associated
with various uses of the mobile device, such as calls, texts, dictation, photos,
and the like.
Patent Owner does not provide sufficient evidence that the word
“associated” means “attached” in the context of the claim. The ʼ981 Patent
does not use the term “attached” anywhere to describe the metadata
associated with the spoken request, nor has Patent Owner identified the use
of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1
and 2 of the ʼ981 Patent as supporting its construction but Figures 1 and 2
show that a time offset and location may be added to the transcript for each
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word in the transcript. In these embodiments the transcript itself includes
the time and location information. The claim, however, recites that metadata
be associated with the spoken request, not that it be added to the transcript.
Ultimately, we fail to see how these embodiments show that time and
location are attached to the spoken request.
In light of the parties’ arguments regarding unpatentability, we
determine that we need not further construe the term “metadata associated
with the spoken request.”
2. Social Network Database
Patent Owner proposes that “social network database” should be
construed as “a centralized database that stores the interpersonal
relationships among multiple members of the community and the content
they contributed to the database.” PO Resp. 19 (Ex. 1001, 15:28–42; Ex.
2006 ¶¶ 45–56). Patent Owner argues “social network database” cannot be
construed as inclusive of any database and that the term “social network”
should be given due regard. Id. at 18. According to Patent Owner, a “social
network” is a community of individuals connected by interpersonal
relationships. Id. at 19.6 Patent Owner also argues that the ʼ981 Patent
“unambiguously defines a social network database as ‘a centralized
community search database.’” Id. (citing Ex. 1001, Abstract). Thus,
according to Patent Owner, a social network database may be understood to

6 Patent Owner again provides a link to a webpage with a definition for the
term “social network” that Patent Owner contends supports their proposed
construction. PO Resp. 19. Patent Owner did not, however, file an exhibit
of the linked webpage so that the definition would be entered into the record.
Because the definition is not in the record, we do not consider it in our
analysis.
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be a centralized database that stores the interpersonal relationships among
multiple members of the community. Id. (citing Ex. 1001, 15:28–42; Ex.
2006 ¶¶ 45–56).
Patent Owner further argues that the term “social network” is not
directed to the content of information, but rather to limitations regarding
contributions by multiple members, accessibility by multiple members, and
the relationships between. Id. at 19. (citing Ex. 2006 ¶¶ 45–56). According
to Patent Owner, the term “social network database” identifies a specific
structure for the database, which necessarily includes a set of relational
tables comprising very specific types of data and links between individuals
and tables. Id. at 20–21. The structure is “dynamic and two-way.” Id. at
21.
Patent Owner argues that the phrase “social network” must be given
weight because there is a functional relationship between “social network
database” and “social network ranking factors” in that the “entire point of
the claim invention is to seek data from a restricted body of information,
where the data is composed and ranked on the basis of the relationships
defined by the membership and rules of the particular network.” Id.
Petitioner argues, “Determining the precise contours of the term
‘social network’ in the Challenged Claims is unnecessary” because whatever
those precise contours may be, the ʼ981 Patent makes clear that “social
network” encompasses user reviews, user ratings, and popularity. Pet. 10–
11. Further, Petitioner argues that the Specification never describes any
database storing interpersonal relationships among members of the
community. Pet. Reply 6. Petitioner notes that the only mention of a social
network database in the ʼ981 Patent describes those databases as “open to
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anyone via the Internet” and describes sharing Location Blogs with anyone
on the Internet. Pet. Reply (citing Ex. 1001, 15:1–9, 27–32).
Moreover, Petitioner argues “the ‘social network’ descriptor should
not be given any patentable weight because they are directed to the content
of information and lack any functional relationship.” Pet. 12 (citing Praxair
Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032
(Fed. Cir. 2018)). Specifically, with regard to the term “social network
database” Petitioner argues that the data in a database is printed matter and,
therefore, not entitled to patentable weight. Pet. Reply 10 (citing Ex Parte
Shaya, No. 2014-001008, 2016 WL 406833, at *3 (PTAB Jan. 28, 2016); Ex
Parte Nehls, 88 U.S.P.Q.2d 1883, at *8 (BPAI 2008)).
Having considered the parties’ arguments and evidence and the fully
developed trial record, we do not agree with Patent Owner’s construction.
The ʼ981 Patent states that it discloses “[a] system and method for providing
social-network (Centralized Community Search database)—provided
outputs to a mobile-electronic-device user in response to the user’s spoken
request.” Ex. 1001, Abstract. The ʼ981 Patent explains that a user may wish
to transmit their “text messages, photos, videos, call and voice annotations
or synopsis (with speech-recognized text and location data), to a Centralized
Community Search database” and that the user may designate this content to
be public and “be shared with anyone via the Internet.” Ex. 1001, 14:64–
15:6. The ʼ981 Patent calls the public sharing of information as “Location
Blogging.” See Ex. 1001, 15:1–6. The ʼ981 Patent explains that the
publicly shared content contributed to the Centralized Community Search
database may include information such as “a review of a restaurant or
business.” Ex. 1001, 15:7–15. The Centralized Community Search database
“may be searched or mined based on social network or type of information,
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such as ‘Urgent Road Warning’ when driving or ‘Best Menu Choice’ at a
restaurant location.” Ex. 1001, 15:22–26.
Although the ʼ981 Patent describes information being stored in a
centralized community search database, it does not restrict the community in
any way nor does it describe the database as storing interpersonal
relationships between community members. We find insufficient support in
the ʼ981 Patent for such a limitation. Moreover, we find no support for
Patent Owner’s argument that a social network database has a specific
structure with relational tables and links between tables and between
individuals, nor any support for the database being dynamic and two-way.
We therefore decline to import such limitations into the claim.
For purposes of this Decision, we do not consider whether the term
“social network” should be given patentable weight. As explained below,
even if we give the term patentable weight, when properly construed, the
relied upon references teach a social network database.
The ʼ981 Patent describes a centralized database that stores
information, such as text messages, photos, videos, road warnings and
restaurant reviews, accessible by anyone on the Internet, without disclosing
or requiring the storage of interpersonal relationships. In light of the parties’
arguments regarding unpatentability, we need not further construe the term
“social network database.”
3. Social Network Ranking Factor
Patent Owner proposes that “social network ranking factor” should be
construed as “an interpersonal metric, based upon relationships between
members, that is derived from a social network database.” PO Resp. 22
(citing Ex. 2006 ¶¶ 45–56). Patent Owner argues that the term should not be
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construed as encompassing any ranking factor, rather the claims require the
ranking factor to be derived from the social network database. PO Resp. 23.
Petitioner points to dependent claim 4 which describes social network
records as comprising user reviews of restaurants and social network ranking
factors as comprising user review ratings of those restaurants, as indicating
that the term “social network,” when applied to records, databases and
ranking factors, includes user contributed reviews of restaurants. Pet Reply.
7. Petitioner argues that this reading is also consistent with the ʼ981 Patent’s
description of a centralized community search database that would allow for
searching for the Best Menu Choice and describes ranking restaurants based
on rating. Pet. Reply 7 (citing Ex. 1001, 15:22–26, 33–37).
Patent Owner responds that the reference to “social network ranking
factor” in claim 4 refers to a ranking factor such as “social network
credibility” or “social network popularity” and that claim 4 then adds that
this ranking must include “user reviews.” PO Resp. 23–24. In other words,
Patent Owner argues that user reviews on their own do not constitute a social
network ranking factor and claim 4 refers to them only in addition to another
social network ranking factor. PO Resp. 23–24.
Having reviewed the arguments and evidence presented by the parties,
we do not agree with Patent Owner’s proposed construction. The ʼ981
Patent describe several “ranking factors” such as “distance from the Phone
user’s current location and the location of the original Location Blog
poster,” “reverse chronological order, social network credibility or social
network popularity of the Location Blog poster, and type of data (e.g. Urgent
Road Warning versus restaurant ratings).” Ex. 1001, 15:27–37.
The term “social network ranking factor” appears at least in claims 2,
3 and 4. Claims 2 and 3, for example, depend from claim 1 and recite that
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the “social network ranking factor comprises” a “social network credibility”
and a “social network popularity” respectively. Claim 4 depends from claim
1 and recites the “social network ranking factor comprising user review
ratings of respective restaurants.” These claims make clear that social
network credibility, social network popularity, and user review ratings of
restaurants are each encompassed by the term “social network ranking
factor.”
Patent Owner provides insufficient evidence to support its argument
that the social network ranking factor must be an interpersonal metric, based
upon relationships between members. The ʼ981 Patent is devoid of any such
description. Moreover, we are persuaded by Petitioner that claim 4 shows
that “social network ranking factor” must encompass user review ratings.
Patent Owner’s argument that the user review rating must be accompanied
by another social network ranking factor is contradicted by the language of
claim 4 itself which explicitly states that “the social network ranking factor
comprising user review ratings of respective restaurants.” Claim 4 is
directly dependent on claim 1 and no other ranking factors are required by
either claim other than the user review ratings. Thus, we disagree with
Patent Owner’s argument that claim 4 requires some other social network
ranking factor in addition to user review ratings, or that the user review
ratings must somehow include or be dependent on interpersonal metrics.
For the foregoing reasons, we determine “social network ranking
factor” is not limited to an interpersonal metric, based upon relationships
between members. Instead, based on the Specification and claim language,
“social network ranking factor” encompasses social network credibility,
social network popularity, and user review ratings. In light of the parties’
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arguments regarding unpatentability, we determine that we need not further
construe the “social network ranking factor.”
4. Transcript
Patent Owner argues that “the ʼ981 Patent requires that ‘transcript’ be
searchable electronically and capable of being generated as a conversion of
speech by a speech recognition engine, where speech is received through the
data input port.” PO Resp. 18. According to Patent Owner this is distinct
from “any mere text representation of speech.” Id. Patent Owner, however,
does not provide an explicit construction for the term in its Patent Owner
Response.
Petitioner also does not propose a construction for this term but argues
that Patent Owner seeks to “add extraneous limitations to this well-
understood word.” Pet. Reply. 9. Petitioner argues that “[c]laim 1 has no
requirement for how the spoken request becomes a transcript.” Ultimately,
however, Petitioner argues that Patent Owner does not argue validity based
on its own construction and therefore, the term does not require construction.
We agree with Petitioner that Patent Owner does not base its
arguments for patentability on the construction of the term “transcript.”
Although Patent Owner argues that “‘transcript’ warrants construction
because Roth does not disclose or suggest the claimed ‘transcript’ under the
correct construction” (PO Sur-Reply 4 (citing PO Resp., 29, 45)) the
arguments it cites to do not show any dispute as to whether Roth discloses a
transcript based on Patent Owner’s construction. For example, Patent
Owner argues for claim 1 that the buffer in Roth would be temporary, and
that Roth does not store information sufficient to associate that data with the
transcript or spoken request. See PO Resp. 29. Patent Owner’s arguments
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for claim 10 rely on its arguments for claim 1. See PO Resp. 45. These
arguments do not depend on Patent Owner’s proposed construction.
Because we find that the term “transcript” does not need express
construction to resolve the disputes presented before us we decline to
construe the term.
C. Obviousness over Roth Alone, Roth with Fortescue, or Roth with Ng
Petitioner argues claims 1, 10, and 16 would have been obvious over
Roth alone, and that claims 1–4 and 7–18 would have been obvious over the
combination of Roth with Fortescue or Roth with Ng. Pet. 22–60. To
support its contentions, Petitioner relies on the declaration of Dr. Porter (Ex.
1004).
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; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Below we analyze the objective indicia of nonobviousness,
summarize the content of the prior art, determine whether Petitioner has
provided a sufficient motivation to combine the references, and analyze
whether the references teach the limitations of the challenged claims. We
then weigh these Graham factors together in determining whether Petitioner
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has demonstrated by a preponderance of the evidence that the subject matter
of the challenged claims is obvious over the prior art.
1. Objective Indicia of Non-Obviousness
Patent Owner argues that “the alleged obviousness of the invention is
further undercut by several objective indicia of nonobviousness, including
satisfaction of a long-felt need and praise by the industry.” PO Resp. 50.
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to one with ordinary skill in
the art at the time of the invention, the totality of the evidence submitted,
including objective evidence of nonobviousness, may lead to a conclusion
that the claimed invention would not have been obvious to one with ordinary
skill in the art. In re Piasecki, 745 F.2d 1468, 1471–1472 (Fed. Cir. 1984).
Patent Owner relies on two pieces of evidence as establishing long felt
need and industry praise for its invention: (1) a blog post, dated September
10, 2008, by Google’s then-Vice President of Search Products & User
Experience, Marissa Mayer, (“Google Blog Post”) and (2) a 2011 Apple
product presentation in which Apple demonstrated its Siri functionality
(“Apple Presentation”).
As to the Google blog post, Patent Owner relies on statements that
Patent Owner argues show “the search industry needed exactly what was
provided by the ʼ981 Patent Invention.” PO Resp. 50 (quoting Ex. 2001, 3).
Below we quote portions of the Google Blog Post that Patent Owner relies
upon:
[W]hy couldn’t I do these searches right then, when I needed to?
Because search still isn’t accessible enough or easy enough.
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Search needs to be more mobile—it should be available and easy
to use in cell phones and cars and on handheld . . .
one far-fetched idea: how about a [device] that does searches in
the background based on the words it picks up from
conversations . . .
Why can’t I capture a snippet of audio and have the search engine
identify and analyze it and tell me any relevant information about
it? Services that do parts of that are available today, but not in
an easy-to-use, integrated way . . .
Ex. 2001, 3. Patent Owner further relies on the following statements as
evidence that the Google Blog Post “identified location data in context (such
as part of the metadata of the spoken query) as pivotal to increasing
relevancy and ease of search.”
Your location is one potentially useful facet of personalization
information. Looking at my questions, the answers to a number
of them . . . require the search engine to know that I was in
Yankton, South Dakota and Crofton, Nebraska when I asked.
Since location is relevant to a lot of searches, incorporating user
location and context will be pivotal in increasing the relevance
and ease of search in the future.
Ex. 2001, 5. Patent Owner also relies upon statements that it contends show
search of a social network database as important for making search efficient
and relevant. For example, Patent Owner relies on the following statement
from the Google Blog Post:
Another element of personalization is social context. Who am I
friends with, and how do I relate to them? How can I harness
their knowledge more efficiently? . . . There’s a lot of expertise,
knowledge, and context in user’s social graphs, so putting tools
in place to make “friend-augmented” search easy could make
search more efficient and more relevant.
PO Resp. 51 (quoting Ex. 2001, 5–6).
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Turning to the Apple Presentation, Patent Owner focuses on a part of
the presentation where Scott Forstall, an Apple Senior Vice President,
demonstrated “the ability to speak into an iPhone and get social network
reviews of a nearby Greek restaurant.” PO Resp. 52. Patent Owner relies on
the following statements by Mr. Forstall:
I’ve been in the AI field for a long time, and this still blows me
away, the fact that it understands the words, the concepts, and
even now ranks it by Yelp’s ordering.
PO Resp. 53 (quoting Ex. 2004, 11). Patent Owner argues “three years after
the ’981 patent application was filed, Apple presented the invention with
pride and it was met with praise by the tech-savvy audience.”
a) Long Felt but Unmet Need
In order to show a long-felt but unmet need for the claimed invention,
the objective evidence must show that the need was a persistent one that was
recognized by those of ordinary skill in the art at the time of the invention.
In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Google’s Blog post is
dated September 2008, several weeks after the application which ultimately
resulted in the ʼ981 Patent was filed. Thus, the date of the blog post itself
cannot establish a long felt persistent but unmet need. Moreover, the blog
post does not provide any evidence of how long the needs expressed by Ms.
Mayer existed.
Patent Owner argues that Ms. Mayer’s comments show a need for the
invention and that this need was “encountered extensively over nine-years
of experience at Google.” PO Resp. 51. In support, Patent Owner relies on
Ms. Mayer’s statement that “I’ve worked at Google on search for the past 9
years and 3 months. . . . I’m very proud that Google in its first 10 years has
changed expectations around information and how quickly and easily it
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should be able to be retrieved. But I’m even more excited about what
Google search can achieve in the future.” PO resp. 52 (quoting Ex. 2001, 2,
10). Patent Owner argues that these statements “clearly suggests the
challenges she describes are challenges she has attempted to address but had
not yet succeeded.” PO Resp. 52.
We disagree. Nothing in the Google Blog Post shows that the ideas
Ms. Mayer was describing were ones she or others at Google had been
persistently trying to achieve for long period of time. The only statements
mentioning a time period are Ms. Mayer’s statement that, at the time of the
blog post, she had worked at Google for nine years, and a statement at the
end of the post stating that she was very proud of what Google had achieved
over that time period. See Ex. 2001, 2, 10. These statements are too general
and disconnected to show sufficiently a long felt and persistent need.
Instead, when read in the context of the blog post, Ms. Mayer’s statement
that she had worked at Google for nine years, was more likely intended as an
introductory statement showing that she has a strong interest in search
technology. See Ex. 2001, 2 (“I am a search addict. I’m naturally
inquisitive – I’ve always liked finding things out. Plus, I’ve worked at
Google on search for the past 9 years and 3 months. Of course I search a
lot.”)
The Apple Presentation, which occurred roughly three years after the
ʼ981 Patent application was filed, suffers from similar problems in that its
date alone cannot be used to establish long-felt but unmet need. As before,
Patent Owner does not present any evidence relating to this presentation
indicating that the need was long felt and persistent. Patent Owner relies on
a statement during the presentation that “for decades, technologists have
teased us with this dream that you’re going to be able to talk to technology,
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and it’ll do things for us. Haven’t we seen this before, over and over? But it
never comes true.” PO Resp. 53 (quoting Ex. 2004, 11). Like the
statements in the Google Blog Post, this statement is simply too general to
sufficiently show a long felt persistent need. Other than mention the desire
to “talk to technology,” the statement fails to provide any information
regarding specific needs identified by Apple, what they wanted the
technology to deliver (other than “it’ll do things for us”) and when such
needs were specifically identified.
Based on the evidence and arguments presented in the current record,
we give little weight to Patent Owner’s evidence of long-felt need as
supporting non-obviousness.
b) Industry Praise
Praise in the industry for a patented invention, and specifically praise
from a competitor, tends to indicate that the invention was not obvious.
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1370 (Fed.
Cir. 2012). Industry praise for an invention may provide evidence of
nonobviousness where the industry praise is linked to the claimed invention.
See Geo. M. Martin Co. v. Alliance Mach. Sys. Intern. LLC, 618 F.3d 1294,
1305 (Fed. Cir. 2010); Asyst Tech’n, Inc., v. Emtrak, Inc., 544 F.3d 1310,
1316 (Fed. Cir. 2008). “[T]o be accorded substantial weight in the
obviousness analysis, the evidence of secondary considerations must have a
‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient
connection’ between the evidence and the patented invention.” Henny Penny
Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019).
Patent Owner points to comments by Mr. Forstall at the Apple
Presentation praising Apple’s own Siri functionality. Mr. Forstall noted,
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“We’ve also partnered with Yelp, and so you can ask questions about
businesses or restaurants, something like, ‘Find me a great Greek restaurant
in Palo Alto.’ . . . Now I’ve been in the AI field for a long time, and this still
blows me away, the fact that it understands the words, the concepts, and
even now ranks it by Yelp’s ordering.” Ex. 2004, 40: 22–23. Patent Owner
uses these statements as a basis for arguing that there was a nexus to their
claimed invention because these statements show (1) speech recognition on
a mobile device; (2) location awareness; (3) social networks; and (4) social
network ranking factors. PO Resp. 53–56.
Even assuming Patent Owner’s claimed invention can be generalized
to the aforementioned four categories, Mr. Forstall’s comments are simply
insufficient to show a nexus to the claims of the ʼ981 Patent. For example,
Patent Owner argues that Mr. Forstall’s comments show that Siri was
location aware because it found restaurants in Palo Alto. But as can be seen,
Mr. Forstall asked Siri to search for Greek restaurants in Palo Alto as part of
the spoken search request. Because a location was provided as part of the
search request, these comments alone do not indicate that the mobile device
was location aware.
Further, Mr. Forstall’s comments also appear to be directed at features
that may go beyond the ʼ981 Patent’s invention, such as Siri’s AI
capabilities of being able to understand the words and concepts being
spoken, and not just its ability to transcribe them. Thus, at least to the extent
the comments by Apple’s Vice President are based on the ability of Apple’s
products to “understand[] the words, the concepts” being spoken, we note
that, without further evidence or explanation, such comments have a tenuous
nexus with the claimed invention.
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As to speech recognition, the ʼ981 Patent describes that transcribing
the spoken request was a process that was performed by prior art speech
recognition engines, “such as the Nuance Communications speech
recognition engine.” Ex 1001 7:3–4. In order to establish a nexus, the
evidence relied upon must trace its basis to a novel element in the claim, not
to something in the prior art. Institut Pasteur & Universite Pierre et Marie
Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). Objective
evidence that results from something that is not “both claimed and novel in
the claim,” lacks a nexus to the merits of the invention. In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011). Thus, because the ʼ981 Patent acknowledges
that speech recognition was known in the art at the time of the invention, and
to the extent Apple’s comments are directed to its products’ ability to
convert speech to text, such praise does not provide the required nexus to the
claimed invention.
Patent Owner argues that even if speech recognition was well known,
“the novelty is the combination of speech recognition, location metadata,
and social network data. It is the novel combination that has received praise
in the industry . . . .” As we explained above however, Mr. Forstall’s
comments do not establish location awareness. We therefore do not find his
comments sufficient to establish a nexus to the claimed invention.
Even if we were to assume a nexus between Mr. Forstall’s comments
and the ʼ981 Patent, we still find the comments to be fairly weak support for
industry praise. Mr. Forstall comments fail to show, for example, that any
praise for the concepts described, was shared industry wide, rather than by
Mr. Forstall or Apple themselves. Further, Mr. Forstall praise for Apple’s
own products, at Apple’s own product launch event, is self-congratulatory
and insufficiently persuasive of industry praise for the invention claimed in
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the ʼ981 Patent. See Bayer Healthcare v. Watson Pharms., 713 F.3d 1369,
1377 (Fed. Cir. 2013) (explaining that bare journal citations and self-
referential commendation fall short of demonstrating industry praise).
To the extent Patent Owner relies on the Google Blog Post as
evidence of industry praise, we find such evidence unpersuasive. We find
no evidence of industry praise in the relied upon sections of the Google Blog
Post. The Google Blog Post is one person’s description of the possible
future direction of Google’s search technology, rather than praise, let alone
industry praise, for advances in that technology as described in the ʼ981
Patent.
Accordingly, based on the evidence and arguments presented, we do
not weigh Patent Owner’s evidence of alleged industry praise as
significantly supportive of Patent Owner’s position in the obviousness
analysis.
2. Overview of Roth
Roth is directed to a system in which “a wireless mobile device takes
a vocally entered query and transmits it in a text message format over a
wireless network to a search engine; receives search results based on the
query from the search engine over the wireless network; and displays the
search results.” Ex. 1005, Abstract. Roth was filed in October 2005, and
explains that navigating through web pages on a mobile device with a small
screen was difficult at that time. Id. ¶ 2. For this reason, text messaging
based information retrieval systems, such as Google’s Short Message
Service (SMS), which allowed users to send queries as text messages,
eliminated the need for web pages and browsers on a mobile device. Id. ¶ 3.
However, text messaging was also inconvenient because of the lack of a full
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keyboard on mobile devices. Id. Roth addresses this problem by providing
a means for querying by spoken query. Id. ¶¶ 4–5. Roth describes a method
of obtaining query results on a mobile device verbally using speech
recognition software. Id. ¶ 6. The user’s verbal input is converted
automatically to SMS format and transmitted to a search engine. Id. Search
results are sent back in SMS format from the search engine and are
displayed on the screen of the mobile device. Id.
3. Overview of Fortescue
Fortescue is directed towards “updating location information for the
social network and/or to providing the location information from the social
network.” Ex. 1006 ¶ 35. In Fortescue: “A request for the location
information associated with a GPS coordinate is received from a client
device associated with a member of the social network. In response to the
request, a location name associated with another member of the social
network is provided to the client device based on the GPS coordinate.”
Ex. 1006 ¶ 35. The other location name may be associated with the GPS
coordinate and with the member in the social network. Fortescue, therefore,
describes that the GPS coordinate and/or member may be associated with a
plurality of location names, and that a location description may also be
received and associated with the location name and with the member in the
social network. Id.
Figure 12 of Fortescue, reproduced below, shows a display for
providing search results of a search for location information from a social
network. Ex. 1006 ¶ 198. The display shows search results for a search of
“Restaurants within 500 metres” and includes a map of the searched area.
Ex. 1006 ¶ 199. Each of the points 1204–1208 correspond with a different
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one of the returned search results. Id. Fortescue explains that the search
results may be ordered, such that some of the points are more relevant to the
user than others. Ex. 1006 ¶ 200. Location names, ratings, and other tags
related to the search results are also displayed. Ex. 1006 ¶ 202.

Figure 12 of Fortescue illustrates a display for providing search
results of a search of the social network for location information.

4. Overview of Ng
Ng relates to ranking search engine results based on popularity with
mobile-device users. Ex. 1007, Abstract. Ng explains that results for a
search can be ranked based on several factors, including distance or user
reviews. Ex. 1007 ¶¶ 5–9. However, when user reviews are either
unreliable or lacking, an automated system to determine user ratings is
needed. Ex. 1007 ¶ 10. Ng therefore uses geo-position data from mobile
devices to calculate traffic at particular businesses and rank search results.
Ex. 1007, Abstract.
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Figure 7 of Ng, reproduced below, shows a map of search results with
ratings determined by device visits. Ex. ¶ 61. The ranking in this figure is
done by distance from the center, however, the search results may be ranked
based on other factors, such as user rating and user traffic. Ex. 1007 ¶¶ 62–
64, Fig. 7.

Figure 7 shows a 2-D map of search results with star ratings determined by
mobile-device visits
5. Combination of Roth with Fortescue
Petitioner argues “The POSITA would have had ample motivation to
modify the disclosures in Roth to incorporate some of the additional features
disclosed in Fortescue for search results.” Pet. 55. Petitioner argues that
Roth “describes as its goal improving a user’s ability to use his mobile
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device to obtain information about local restaurants and other businesses” by
allowing verbal input and by formatting the information returned to the user.
Pet. 55 (citing Ex. 1005 ¶ 3, 29). Dr. Porter testifies that a person of
ordinary skill “would have been motivated to add to Roth the additional
feature of formatting the results based on other ranking factors” such as the
relevancy information described in Fortescue. Pet. 55 (citing Ex. 1004
¶ 164). According to Petitioner, Fortescue overlaps with Roth “as they are
both directed to allowing users to more effectively perform internet searches
on their mobile phones for local businesses like restaurants.” Pet. 55–56
(citing Ex. 1004 ¶ 164). Therefore, Petitioner argues “a POSITA would
logically look to a reference like Fortescue for features and elements to
incorporate into the system of Roth for performing those same search
functions.” Pet. 56. Additionally, Petitioner argues that incorporating
Fortescue’s social network elements into Roth would not require any
significant technical changes. Pet. 56 (citing Ex. 1004 ¶ 165).
Alternatively, Petitioner argues that a person of ordinary skill would have
been motivated to modify Fortescue to incorporate Roth’s speech to text
features. Pet. 56 (citing Ex. 1004 ¶ 167).
Patent Owner does not present arguments in its Response disputing
Petitioner’s evidence and arguments that a person of ordinary skill would
have combined Roth with Fortescue.
We find Petitioner has demonstrated that one of ordinary skill in the
art would have been motivated to combine Roth with Fortescue. Both
references relate to performing internet searches and both discuss searching
for restaurants. On this record, we are persuaded by Petitioner that a person
of ordinary skill would have considered adding Fortescue’s social network
elements and the ability to rank based on various factors to benefit Roth’s
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search results. Similarly, the present record supports Petitioner’s assertion
that a skilled artisan would have been motivated to modify Fortescue to add
Roth’s speech to text feature for additional convenience for the user.
6. Combination of Roth with Ng
Petitioner argues, “[t]he POSITA would have been motivated to
modify the disclosures in Roth to incorporate the features disclosed in Ng.”
Pet. 57 (citing Ex. 1004 ¶ 168). According to Petitioner, a person of
ordinary skill in the art “would have been motivated to add to Roth the
additional feature of ranking the results based on social-network-based
factors (i.e., the popularity and repeat visitor information described in Ng) in
addition to physical location.” Pet 58 (citing Ex. 1004 ¶ 169). Petitioner
points out that Ng discusses performing searches on search engines like
Google and Yahoo, and that Ng discloses ranking those search results based
on multiple factors, including personal reviews, ratings, and popularity
based on visits. Pet. 58 (citing Ex. 1007 ¶¶ 2–5, 8). Petitioner argues that
modifying Roth to add Ng’s ranking of results based on various social
networking factors would benefit Roth’s speech based search system and
also would have been within the skill of the ordinary artisan. Alternatively,
Petitioner argues one of skill would have been motivated to modify Ng to
add Roth’s speech to text features to provide users with additional ways to
interact with Ng’s system. Pet. 59 (citing Ex. 1004 ¶ 171).
Patent Owner does not present arguments in its Response disputing
Petitioner’s evidence and arguments that a person of ordinary skill would
have combined Roth with Ng.
We find Petitioner has demonstrated that one of ordinary skill in the
art would have been motivated to combine Roth with Ng. The evidence
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supports Petitioner’s contention that a skilled artisan would have understood
Ng’s ability to rank search results based on user rating and popularity would
benefit Roth’s speech based search system. On this record, we are also
persuaded that a person of ordinary skill would have considered Roth’s
speech to text features beneficial to Ng’s searches by providing additional
user convenience.
7. Analysis of Independent Claim 1
Claim 1 is one of three independent claims of the ʼ981 Patent, along
with claims 10 and 16. Claims 10 and 16 include limitations similar to those
of claim 1 and Petitioner presents similar evidence for claims 10 and 16 as it
does for claim 1. See Pet. 42–55. Thus, some of our analysis of claim 1
below also applies to claim 10 and claim 16. In the few instances that they
differ, we explicitly address those differences separately below.
a) Preamble: “A system for presenting social-network-provided
outputs to a mobile-electronic-device user at a location associated
with the user in response to the user’s spoken request.”
Petitioner argues the preamble does not limit the claims, but argues in
the alternative that it has shown the elements of the preamble in their
arguments of the other limitations. See Pet. 23 n. 4. Patent Owner argues
that the preamble is limiting and that Petitioner has failed to address the
preamble at all. PO Resp. 27.
Regardless of whether the preamble is limiting, we find Petitioner has
demonstrated that the cited prior art references teach elements such as
“social-network-provided outputs,” (see §§ II.C.6.d–II.C.6.e below)
“mobile-electronic device” (see § II.C.6.b) and “user’s spoken request” (see
§ II.C.6.b) in the arguments it presents for the other limitations of the
independent claims, as we analyze below.
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b) Limitation 1.1: “a data input port configured to receive speech
information from the mobile-electronic-device user”
Petitioner argues Roth teaches the aforementioned limitation by
disclosing “a wireless mobile device that ‘allows its user to submit a verbal
query.’” Pet. 23 (citing Ex. 1004 ¶¶ 89–90). For example, Figure 2 of Roth
depicts a wireless mobile device with a voice input that includes “a
microphone which is electrically connected to speech to text converter 112.”
Pet. 23–24 (citing Ex. 1005 ¶¶ 18, 19, 25, 29).
By identifying Roth’s wireless mobile devices that allow users to
submit verbal input through, for example, a microphone to a speech to text
converter, Petitioner has demonstrated that Roth alone, and Roth combined
with either Fortescue or Ng, teaches “a data input port configured to receive
speech information from the mobile-electronic-device user” as claimed.
c) Limitation 1.2: “a memory configured to store a transcript of the
spoken request and metadata associated with the spoken request
comprising at least the location during the spoken request.”
Petitioner argues Roth alone teaches the aforementioned limitation by
disclosing a speech to text converter that converts the spoken request to a
transcript of the spoken request. Pet. 24 (citing Ex. 1005 ¶¶ 25, 29; Ex. 1004
¶¶ 91–93). Petitioner also argues that a person of skill in the art would have
understood that the mobile devices include memory configured to store the
transcript in order for it to be processed to the desired format. Pet. 24–25
(citing Ex. 1004 ¶ 92).
Petitioner further argues that Roth “automatically detects the location
of the wireless mobile device 100 and passes that information along with the
text message to the search engine 104.” Ex. 1004 ¶ 34. Similarly, “[i]n
another alternative described in Roth, ‘mobile devices with Global
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Positioning System (GPS) capability can transfer its location directly to the
search engine.’” Pet. 25 (citing Ex. 1005 ¶ 34). Petitioner’s declarant
testifies that passing location information to a search engine “indicates that
the system of Roth includes a memory configured to store this location
metadata so that it can be sent with the text message and used by the search
engine.” Pet. 25 (citing Ex. 1004 ¶ 93).
Petitioner also argues the combination of Roth and Fortescue teaches
this limitation. For example, Petitioner argues Fortescue “discloses
‘Memory 230 . . . which can be utilized by client device 200 to store, among
other things, programs 244 and/or other data,’ which may include ‘data input
by a user of client device 200’ or ‘location information data, or the like.”
Pet. 25 (citing Ex. 1006 ¶ 77). Thus, Petitioner argues that “[t]o the extent it
is argued that Roth does not disclose the claimed memory, it would have
been obvious to the POSITA to use the memory available in the devices
described by Roth to store the query and the location data as described
expressly in Fortescue.” Pet. 25.
Petitioner argues the combination of Roth and Ng also teaches this
limitation. Here, Petitioner argues that Ng discloses that when a user
performs a local search, the geographic location of the user may be provided
along with the search and factored into ranking the search results. Pet. 26
(citing Ex. 1007 ¶¶ 32, 33, 20). As before, relying on the testimony of
Dr. Porter, Petitioner argues that the disclosure of cellular phones in Ng with
memory indicates that Ng “discloses a memory storing the user’s current
location when the user searches for information.” Pet. 26 (citing Ex. 1004
¶ 95).
Patent Owner generally argues that Roth does not teach storing both
the transcript of the spoken request and metadata associated with the spoken
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request, because the metadata in Roth is not associated with the spoken
request and because Roth does not teach that a device stores the two
together. PO Resp. 28–32. For example, Patent Owner argues Petitioner
does not explain how Roth’s transcript would have metadata associated with
the transcript. PO Resp. 29. Patent Owner argues “[n]othing in ¶ 34 [of
Roth] discloses that a transcript of a spoken request is stored with metadata.
Rather Roth discloses only that location data can be sent to a search engine.”
PO Resp. 30 (citing Ex. 2006 ¶¶ 60–67). According to Patent Owner, “Roth
never suggests that the text message is associated with the location. Rather,
Roth teaches that GPS or other location data is separately sent in order to
send advertisements to the user.” PO Resp. 30 (citing Ex. 1005 ¶ 35).
According to Patent Owner, “[m]erely because a device location is
‘detected’ in a later transmission to a search engine does not mean the
metatdata is ‘associated with the spoken request’ or the location is attached
‘during the spoken request,’ and it is incorrect to assume so.” PO Resp. 31.
Addressing Fortescue and Ng, Patent Owner argues that both of those
references fail because, other than disclosure of memory, neither references
teaches that the memory stores both the transcript and the metadata, that the
metadata is associated with the spoken request, and that the metadata
comprises the location during the spoken request. PO Resp. 31–32.
We find Petitioner has demonstrated that Roth alone, or Roth
combined with either Fortescue or Ng, teaches “a memory configured to
store a transcript of the spoken request and metadata associated with the
spoken request comprising at least the location during the spoken request.”
In particular, we are persuaded that Roth’s speech to text converter converts
a spoken request into a transcript of that request, stores it in memory, and
sends the transcript to a search engine. Ex. 1005 ¶¶ 25, 29. For example,
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Roth discloses that a “wireless mobile device 100 receives via its voice input
110 a query spoken by a user,” and that this query “is converted by the
speech to text converter 112 to text,” and that this text is ultimately
transmitted to a search engine. Ex. 1005 ¶ 29. The speech to text converter
112 is a component of the wireless mobile device itself. See Ex. 1005 ¶ 25,
Fig. 2. We credit and are persuaded by the testimony of Petitioner’s expert
that one of ordinary skill in the art would understand that in order to convert
the voice input into text and then transmit the text to a search engine, the text
(i.e. the claimed transcript) would be stored, at least temporarily, in the
memory of the wireless mobile device. Ex. 1004 ¶ 91–92.
The same is true for the metadata. Roth discloses that “mobile
devices with Global Position System (GPS) capability can transfer its
location directly to the search engine without the requirement of mobile
triangulation.” Ex. 1005 ¶ 34. Here, once again, we credit and are
persuaded by the testimony of Petitioner’s expert that one of ordinary skill
would understand that in order to transmit its location directly to the search
engine, a wireless mobile device would store that location, at least
temporarily, in its memory. Ex. 1004 ¶ 93.
Patent Owner argues that Roth does not disclose that the transcript
and the metadata identifying the location of the spoken request are stored
together. PO Resp. 31. This argument, however, is incommensurate with
scope of claim 1. Claim 1 requires a memory configured to store the
transcript and the metadata without requiring that the two are stored
together.
Finally, we address Patent Owner’s argument that the location data in
Roth is not “associated with” the spoken request. This argument is
unpersuasive in light of Roth’s disclosure. Roth discloses that a user can
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speak a command into a mobile device to initiate a search. Ex. 1005 ¶ 31.
An example of such a search may be for restaurants. Ex. 1005 ¶¶ 31–32.
The user is then prompted for location in which to search for restaurants.
Ex. 1005 ¶ 32. Alternatively, the location of the mobile device may be
automatically detected by having the mobile device transfer its GPS location
to the search engine along with the text transcript. Ex. 1005 ¶ 34. In
response, the search engine sends back results for restaurants based on the
location of the device. See Ex. 1005 ¶ 35, Fig. 6. In addition,
advertisements for other restaurants may be appended to the search results,
where the advertisements are also based on the location of the mobile
device. Ex. 1005 ¶ 35. This disclosure makes clear that the location of the
mobile device (i.e. the claimed “metadata”) is associated with the search for
restaurants (i.e. the claimed “spoken request”). If there were no association
between the transmitted location of the device and the transmitted spoken
request for restaurants, the search results and advertisements would not be
for restaurants in the geographic vicinity of the user.
The claim, as properly construed, requires no more than this. In
particular, we disagree with Patent Owner’s argument that the transcript and
location data are not associated with each other because the location data is
not attached to the transcript in the memory of Roth’s device. This
argument is based on a claim construction (requiring an attachment between
the location data and the transcript) that is unsupported by the ʼ981 Patent,
as explained above in our analysis of the parties’ claim construction
positions.
Accordingly, Petitioner has shown by a preponderance of the evidence
that Roth teaches “metadata associated with the spoken request comprising
at least the location during the spoken request.” Similarly, on this record,
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Fortescue and Ng’s teaching that location data is sent with the search
request, combined with Roth’s teaching of a transcript of the spoken request,
teaches the aforementioned limitation.
d) Limitation 1.3: “an interface port to a social network database,
configured to transmit a request to mine information of the social
network database based on the transcript and the metadata, and
to receive social network information from the social network
database based on the transmitted request.”
Petitioner argues Roth alone teaches the aforementioned limitation if
the term “social network” is not given patentable weight. Pet. 26–27.
Petitioner relies on Roth’s disclosure that a spoken search query is converted
to SMS format and sent to a search engine along with the location of the
mobile device, and that the search results are sent back to the mobile device
in SMS format from the search engine. Pet. 26–27 (citing Ex. 1004 ¶¶ 96,
97; Ex. 1005 ¶¶ 6, 18, 26, 29, 34, Fig. 2). Petitioner argues, in the
alternative, that if “social network” is given patentable weight, Roth “still
suggests” a social network database because it describes searching for
information about restaurants, and, therefore, it would have been obvious to
one of ordinary skill in the art to search for user reviews of those restaurants.
Pet. 28 (citing Ex. 1004 ¶ 99). Petitioner argues that databases containing
user reviews necessarily constitute a social network database. Pet. 28 (citing
Ex. 1004 ¶ 99).
Further, Petitioner argues “Fortescue discloses an interface from a
mobile device that allows searching a database that includes user reviews
(the rating and review server 133).” Pet. 28 (citing Ex. 1006 ¶ 58).
According to Petitioner, “Fortescue further discloses a mobile device
configured to transmit the user’s search request to such a social network
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database and to receive those search results in response.” Pet. 28–29 (citing
Ex. 1006 ¶¶ 190–192, 198, Figs. 2, 11, 12).
Petitioner also relies on Ng, arguing that “when the user enters a
search, ‘the user makes a connection to server 54 through Internet 46 or
some other network’ and the server ‘extracts the search terms from a
request” and “sends a search query to search engine 52.” Pet. 29 (citing
Ex. 1007 ¶ 32). Petitioner further alleges that Ng’s “Biz Database” that
includes the traffic count used as a measure of popularity, and links to user
ratings, teaches a social network database and that the information received
is social network information that is ranked based in popularity and user
ratings. Pet. 29 (citing Ex. 1007, Fig. 2, ¶ 31).
Patent Owner argues Roth alone does not disclose a social network
database that contains social network information. PO Resp. 33. Indeed,
Patent Owner argues that Roth never uses the word database and does not
disclose anything resembling a database. PO Resp. 33 (citing Ex. 2006
¶¶ 76–80).
Patent Owner further argues that mining a database is distinct from
searching a database, in that mining implies adding additional value to the
retrieved stored data to reveal further insights into the data, while searching
implies receiving information stored as it is stored in the database for
formatting and display. PO Resp. 34. Patent Owner argues that Petitioner
ignores this distinction in its Petition. PO Resp. 34–35.
As to Fortescue or Ng, Patent Owner argues that neither reference
teaches the claim limitation because neither teaches mining a social network
database rather than simply searching such database, and because Petitioner
incorrectly relies on the databases storing user reviews as evidence that they
constitute social network databases. PO Resp. 35 (citing Ex. 2006 ¶ 79).
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We find Petitioner has not demonstrated by a preponderance of the
evidence that Roth alone teaches limitation 1.3. In particular, we find
Petitioner has not presented sufficient evidence for the contention that
because Roth discloses searching for restaurants, one of ordinary skill in the
art would have understood that Roth also suggests searching for restaurant
reviews and that Roth’s search engine would include user reviews. Roth
does not disclose a user searching for user reviews of restaurants. Roth also
does not disclose that the search engine it interfaces with contains user
reviews of restaurants, even if a user were to search for such reviews.
Instead, Roth simply teaches searching for certain types of restaurants in an
area. Ex. 1005, Figs. 5, 6. Petitioner relies on its expert’s testimony, but
Dr. Porter merely repeats the arguments Petitioner makes in the Petition
without adding significantly more analysis or explanation. There is
insufficient explanation to support the contention that searching for
information about restaurants would suggest searching for user reviews of
restaurants. See Ex. 1004 ¶ 99. We, therefore, are not persuaded that
Petitioner has presented sufficient evidence of either of the aforementioned
contentions.
We, however, find Petitioner has demonstrated that Roth combined
with either Fortescue or Ng, teaches “an interface port to a social network
database, configured to transmit a request to mine information of the social
network database based on the transcript and the metadata, and to receive
social network information from the social network database based on the
transmitted request.” Fortescue, for example, explicitly teaches searching
social networks for locations and restaurants based on various factors such
as proximity, user rating, etc. See Ex. 1006 ¶¶ 192, 198–200, Figs. 11, 12.
This information is kept in databases such Fortescue’s ratings and review
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server and in social network database tables and data structures. See Ex.
1006 ¶¶ 58, 60, 61, 89–92, Figs. 14–16. As explained previously, Petitioner
provides a rational reason why a person of ordinary skill in the art would
have combined Roth’s voice based search for restaurants with Fortescue’s
disclosure of searching a social network, to improve search results and
provide information such as user ratings for restaurants and the like. See
supra § II.C.4.
Ng teaches a business database that includes information such as
popularity and user ratings. Ex. 1007, Figs. 2, 7, ¶¶ 9, 32–34, 64. We are
persuaded by Petitioner’s arguments that Ng’s business database teaches a
social network database. The business database is searchable and includes
information such as links to user ratings and also a traffic counter that tracks
number of mobile devices found to be within the premises of a business. Ex.
1007 ¶¶ 31, 33. Both user ratings and traffic information are types of
information that are the same as or similar to the types of information
described in the ʼ981 Patent as being contributed by members of a
community to a searchable database. See Ex. 1001, 14:64–67. As explained
above, Petitioner has provided a rational reason why one of ordinary skill
would have modified Roth’s voice based search for restaurants based on
Ng’s teaching of ranking the results based on user rating and other factors.
See supra § II.C.5.
We are persuaded by Petitioner’s arguments that Fortescue and Ng
each teach an interface to a social network database, configured to transmit a
request to mine information of the social network database. As explained
above, we find Petitioner has demonstrated that a person of ordinary skill
would have been motivated to combine Roth with Fortescue, and Roth with
Ng. Roth teaches performing a search based on a transcript of a spoken
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request and associated metadata such as the location of the device. Ex. 1005
¶¶ 6, 34. Petitioner has shown sufficiently that the combination of Roth and
Fortescue, and also Roth and Ng teaches, “an interface port to a social
network database, configured to transmit a request to mine information of
the social network database based on the transcript and the metadata, and to
receive social network information from the social network database based
on the transmitted request.”
e) Limitation 1.4: “at least one processor configured to transmit the
request through the interface port dependent on at least the
transcript and the metadata, to receive the social network
information from the interface port.”
Petitioner argues, and we are persuaded, that Roth teaches the
aforementioned limitation by disclosing a “transmitter and receiver that are
configured to transmit the user’s request to the search engine and receive the
results of the search therefrom.” Pet. 30 (citing Ex. 1005 ¶ 25, Fig. 2).
Petitioner argues that a person of ordinary skill would have understood that
Roth’s mobile device would use at least one processor to transmit and
receive data. Pet. 30 (citing Ex. 1004 ¶ 104; Ex. 1005 ¶ 19).
Further, Petitioner argues Fortescue, in combination with Roth, also
teaches the aforementioned limitation by disclosing processors that “transmit
a user’s request based on the query and the location metadata and to receive
the social network information in response.” Pet. 30–31 (citing Ex. 1006
¶¶ 112, 131, 106).
Patent Owner does not present arguments separately addressing this
limitation. See PO Resp. 36. On this record, we are persuaded that Roth in
combination with Fortescue teaches at least one processor that transmits a
search request through an interface port based on a transcript of a search
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request (as taught by Roth) and metadata associated with the search request
(as taught by both Roth and Fortescue) and receives social network
information from the interface port (as taught by Fortescue). As explained
above, Petitioner has provided a sufficient reason to combine Roth with
Fortescue in order to provide the benefits of social network information that
can be used to improve, format, and rank the search results of Roth. See
supra § II.C.4.
Petitioner argues that the combination of Roth and Ng also teaches
this limitation by disclosing that Ng’s device sends a search query and
location data to a server, which searches a business database storing social
network information and returns results back to Ng’s device for display.
Pet. 31–32 (citing Ex. 1007 ¶¶ 32, 34, 43–47). Based on the present record,
we are persuaded that Roth in combination with Ng teaches at least one
processor that transmits a search request through an interface port based on a
transcript of a search request (as taught by Roth) and metadata associated
with the search request (as taught by both Roth and Ng) and receives social
network information from the interface port (as taught by both Roth and
Ng). As explained above, Petitioner has provided a rational reason why one
of ordinary skill would have modified Roth’s voice based search for
restaurants based on Ng’s teaching of ranking the results based on user
rating and other social networking factors. See supra § II.C.5.
f) Limitation 1.5: “communication port configured to communicate
at least a portion of the social-network information to the user.”
Petitioner argues that Roth teaches the aforementioned limitation by
disclosing “that ‘[a]fter receiving the search results, either directly from the
search engine 104 or from the intermediary site 106, the wireless mobile
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device 100 displays the search results on its screen.’” Pet. 32–33 (citing Ex.
1005 ¶ 23, Fig. 2).
Petitioner also relies on Fortescue as teaching the aforementioned
limitation, arguing that Fortescue discloses that the mobile device includes
an input/output interface that is used to, inter alia, receive the social network
information and communicate it to the user.” Pet. 33 (citing Ex. 1006 ¶¶ 81,
131, 132, Figs. 1, 12 and 13).
Petitioner argues the combination of Roth and Ng teaches this
limitation as well. Petitioner contends Ng describes that once search results
are received, they are ranked based on the information in the business
database and then displayed to the user. Pet. 33 (citing Ex. 1007 Fig. 2,
¶ 43). Figures 4 and 7, for example, depict social network information being
communicated to the user that include popularity and user reviews. Pet. 33.
Patent Owner does not present separate arguments addressing this
limitation. We are persuaded that the combination of Roth and Fortescue,
and the combination of Roth and Ng, each teach a communication port
configured to communicate social network information to the user by
displaying search results from a social network. For example, Fortescue
teaches a display 1200 and 1300 in Figures 12 and 13, respectively, that
present search results to the user. Ex. 1006 ¶ 81, Figs. 12, 13. Similarly, Ng
teaches displaying search results for a restaurant based on popularity. Ex.
1007 ¶¶ 42–43, Fig. 4. For reasons stated above, we find Petitioner has
presented rational reason for combining Roth with Fortescue and Roth with
Ng, to provide search results based on social network information. See
supra §§ II.C.4–5.
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g) Limitation 1.6: “wherein the social network database comprises a
plurality of social network records, the at least one processor
being further configured to rank the received social network
information comprising a plurality of received social network
records dependent on at least one social network ranking factor,
the communication port being further configured to output at least
a portion of the social network records in a manner dependent on
the at least one social network ranking factor”
Petitioner argues Roth teaches the aforementioned limitation by
disclosing “when records are received as a result of the search query, the
formatter is used to format and order the records for display” at least based
on distance from the user’s location. Pet. 34 (citing Ex. 1005 ¶¶ 30–31, Fig.
6). Petitioner explains that the search results in Figure 6 of Roth are ranked
based on distance from the user, and Dr. Porter testifies that it would be
obvious to a person of ordinary skill in the art, based on Figure 6 (and
common sense), to rank restaurants based on physical distance from the user.
Pet. 35 (citing Ex. 1004 ¶ 114). Petitioner argues that distance is a social
network ranking factor and that “[t]herefore Roth’s disclosure of results
ordered by distance from the user would disclose this element to the
POSITA.” Pet. 35.
Petitioner argues that Fortescue also teaches the aforementioned
limitation. Petitioner argues Fortescue discloses a social network database
with multiple social network records and that information received from this
database is ranked based on a social networking factor. Pet. 36 (citing
Ex. 1006 ¶¶ 31–32, 54, 127). Petitioner argues “The output of a portion of
the social network records depending on at least one social network ranking
factor is shown, inter alia, in Figures 12 and 13.” Pet. 36.
Petitioner argues that “Ng discloses a processor that is configured to
rank the social network information.” Pet. 36 (citing Ex. 1007 ¶ 34).
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According to Petitioner, Ng ranks its results based on popularity and other
factors as well, such as user ratings (Pet. 36 (citing Ex. 1007 ¶¶ 24, 35, 5)),
and that these factors fall within the scope of “social network ranking
factors” as shown by dependent claims 3 and 4 (Pet. 36 (citing Ex. 1004
¶ 116)). Petitioner also relies on Figures 4 and 7 of Ng as showing that
search results displayed on a user’s screen are ranked by factors such as
popularity and user rating. Pet. 36–37 (citing Ex. 1007, Figs. 4, 7, ¶ 79).
Addressing obviousness over Roth alone, Patent Owner argues that
Roth “never refers to any social network at all, and thus by definition, does
not disclose any ‘social network ranking factor.’” PO Resp. 37. Roth also
never discloses ranking of any sort, according to Patent Owner, and while
Roth discloses formatting search results, “‘formatting’ is not ‘ranking.’” PO
Resp. 37. Patent Owner argues that Roth simply formats the results it
receives, preserving its order, and never explicitly discloses ranking the
results it receives. PO Resp. 37–38. Additionally, Patent Owner argues that
even if it were assumed Roth orders based on distance, Roth still does not
disclose ranking based on a “social network ranking factor” because distance
is not dependent upon an interpersonal metric. PO Resp. 39.
Addressing the combination of Roth and Fortescue, Patent Owner
argues Fortescue’s ordering is based on “relevancy” not a “social network
ranking factor.” Relevancy, is related to degree of separation between two
members of a social network, and ordering based on such degree of
separation is not ranking based on a social network ranking factor, according
to Patent Owner. PO Resp. 39–40. Patent Owner also argues that “the
received social network information” being ranked is the information
received in the prior limitations of the claim from the social network
database based on the transcript and associated metadata. PO Resp. 36–37.
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According Patent Owner, Fortescue does not disclose “the received social
network information.” PO Resp. 39.
Addressing the combination of Roth and Ng, Patent Owner argues
that Ng never uses the word “social” and thus does not disclose a social
network ranking factor. PO Resp. 40. The ranking based on popularity in
Ng is based on a count of how many mobile devices were found in a given
business, and this count is not based on an interpersonal metric, thus,
according to Patent Owner, ranking based on Ng’s popularity does not teach
a social network ranking factor. PO Resp. 40. Similarly, ranking based on
user reviews does not teach ranking based on a social network ranking factor
because user reviews are not an interpersonal metric according to Patent
Owner.
Having reviewed the arguments and evidence presented by the parties,
we determine Petitioner has not demonstrated that Roth alone teaches
ranking search results based on a social network ranking factor. Roth
discloses that when search results become available, they are received as a
text message. Ex. 1005 ¶ 29. The text message is sent to the formatter
which formats the search results for display. Ex. 1005 ¶ 29. “Formatted
information is ordered and presented in an easily digestible way.” Ex. 1005
¶ 29. In addition to this disclosure, Figure 6 of Roth lists three restaurants in
order of distance. These disclosures alone, we determine, are insufficient to
teach ranking the received social network information dependent on a social
network ranking factor. Although Roth discloses ordering the search results
as part of the formatting, it does not expressly disclose that the search results
are ordered by distance or other specific factor. The fact that the results in
Figure 6 of Roth are ordered based on distance may be the result of
happenstance since only three results are shown. Without further
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explanation or disclosure, we find Roth alone is insufficient in teaching
limitation 1.6.
The same is not true of the combination of Roth and Fortescue, which
we determine teaches limitation 1.6. Here, Fortescue discloses that its
search results (e.g. for a restaurant) are ordered based on relevancy
information. Ex. 1006 ¶ 127. Relevancy information can include a degree
of separation between the member and the other members associated with
search results, an amount of match of the search criteria, . . . [and] a rating
associated with the search result.” Ex. 1006 ¶ 127. Thus Fortescue
explicitly discloses ordering search results based on degree of separation,
and also based on a rating of the location. See also Ex. 1006, Figs. 11–13
(which depict searching for restaurants based on distance, time, and rating).
We determine both degree of separation and user ratings are social network
ranking factors as disclosed in Fortescue. As explained above, Petitioner has
provided a sufficient reason to combine Roth with Fortescue in order to
provide the benefits of social network information that can be used to
improve, format, and rank the search results of Roth. See supra § II.C.4.
Similarly, we determine the combination of Roth and Ng also teach
limitation 1.6. Ng discloses searching for restaurants and shows that these
search results may be ranked based on popularity and user reviews. Ex.
1007 ¶¶ 5, 24, 31, 34, Figs. 4, 7. As we said earlier, user reviews of
restaurants are encompassed by the claim term “social network ranking
factor.” Ng discloses displaying the ranking search results to the user. Ex.
1007 Figs. 4, 7. As explained above, Petitioner has provided a rational
reason why one of ordinary skill would have modified Roth’s voice based
search for restaurants based on Ng’s teaching of ranking the results based on
user rating and other social networking factors. See supra § II.C.5.
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h) Conclusion
Based on a review of the record, we find Petitioner has not
sufficiently demonstrated Roth alone teaches all the limitations of claim 1 at
least because Petitioner has not shown that Roth teaches limitations 1.3 and
1.6. However, for the reasons stated above, we find Petitioner has
demonstrated by a preponderance of the evidence that the combination of
Roth with Fortescue and Roth with Ng teach all the limitations of claim 1.
8. Analysis of Claim 10
The limitations of independent claim 10 are similar to those of
independent claim 1 and Petitioner relies on largely the same evidence and
arguments for claim 10 as it does for claim 1. See Pet. 42–47. Patent Owner
presents largely the same arguments against claim 10, as it does against
claim 1. See PO Resp. 44–47. For those common assertions and counter-
arguments, the corresponding discussions above in the context of claim 1
equally apply. In one limitation, however, claim 10 differs slightly. We
analyze this limitation below.
a) Limitation 10.3: “automatically selecting a plurality of social-
network-provided information records with at least one automated
processor, by searching the social-network for information
records using both the location and the transcript”
Petitioner argues Roth teaches this claim limitation by disclosing “that
‘after receiving a query over the wireless network 102, the search engine 104
generates search results and sends the search results back over the wireless
network 102 to the wireless mobile device 100.’” Pet. 44 (quoting Ex. 1005
¶ 20. Petitioner further relies on Roth’s disclosure that “the wireless
network 102 automatically detects the location of the wireless mobile device
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100 and passes that information along with the text message.” Pet. 44
(quoting Ex. 1005 ¶ 34).
Petitioner relies on Fortescue’s disclosure that the GPS coordinate of
the mobile device is received with the search criteria and then the social
network is searched. Pet. 44 (citing Ex. 1006 ¶¶ 112–113). As explained
above, Petitioner has provided a sufficient reason to combine Roth with
Fortescue in order to improve Roth’s voice based search with the ability to
search social networks. See supra § II.C.4.
Petitioner also relies on Ng’s disclosure that when a user performs a
local search, the search engine uses the query and the location information to
consult its business database and creates a result set of businesses “matching
the search terms that are close to the search center.” Pet. 44–45 (quoting Ex.
1007 ¶ 33). As explained above, Petitioner has provided a rational reason
why one of ordinary skill would have modified Roth’s voice based search
for restaurants based on Ng’s teaching of ranking the results based on user
rating and distance. See supra § II.C.5.
Patent Owner argues that Petitioner ignores that references to “the
social-network,” “the location,” and “the transcript” refer back to the “social
network database,” the “location associated with the user during the spoken
request,” and “the transcript of the spoken request and metadata associated
with the spoken request” respectively recited previously in the claim. With
regard to the social network database, Patent Owner argues that Petitioner
fails to show that the references disclose a social network database under
Patent Owner’s proposed construction. Regarding “the location,” and “the
transcript,” Patent Owner argues that the references do not show that the
location is associated with the spoken request and that instead they disclose
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sending the location of the device independently of any query. PO Resp.
46–47.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated that the combinations of Roth and Fortescue,
and Roth and Ng, each teach limitation 10.3. As explained in our analysis of
claim 1, Roth teaches creating a transcript of a spoken search request. See
supra § II.C.6.b–II.C.6.d; Ex. 1005 ¶¶ 18, 19, 25, 29. In addition, Roth
discloses detecting the location of the mobile device, or alternatively having
the device itself transmit its location, and using this location as a basis for
conducting the search. Ex. 1005 ¶ 34. Fortescue also clearly shows that
searches are performed using the location of the device. Ex. 1006 ¶ 112–
113. For example, Fortescue teaches that GPS coordinates are received from
the client device as part of searching the social network. Ex. 1006 ¶¶ 10,
112, Fig. 4. Finally, Ng discloses conducting searches using the location of
the mobile device. For example, Ng discloses “[u]sing search terms and the
search center location, search engine 52 consults business database . . . .
Businesses matching the search terms that are close to the search center are
included in the result set.” Ex. 1007 ¶ 33. For reasons stated above, we find
Petitioner has presented a rational reason for combining Roth with Fortescue
and Roth with Ng, to provide search results based on social network
information. See supra §§ II.C.4–5.
Patent Owner’s argument that the references do not disclose a social
network database has been addressed in our analysis of claim 1. As we
explained, we do not agree with Patent Owner’s construction of social
network database. Instead we find Fortescue and Ng both disclose social
network databases under our adopted construction of the term. We also have
addressed Patent Owner’s argument that the location is not associated with
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the spoken request because the two are sent independently of one another.
We disagree with Patent Owner. Instead we explained that Roth discloses
that the location of the device is associated with the spoken request because
the two are sent together and because the search engine sends back search
results for restaurants, and additional advertisements, based on the location
of the device. See Ex. 1005 ¶ 35, Fig. 6.
b) Conclusion
Based on a review of the record, and for the same reasons explained
with regard to limitations 1.3 and 1.6 of claim 1, we find Petitioner has not
sufficiently demonstrated Roth alone teaches limitation 10.4 of claim 10
because Roth does not teach “ranking the plurality of selected social
network-provided information records . . . dependent on at least one social
network ranking factor.”
However, for the reasons stated above, we find Petitioner has
demonstrated by a preponderance of the evidence that the combination of
Roth with Fortescue and Roth with Ng teach the limitations of claim 10
because both Fortescue and Ng teach ranking the search results dependent
on a social network ranking factor.
9. Analysis of Independent Claim 16
The limitations of independent claim 16 are similar to those of
independent claim 1 and Petitioner relies on largely the same evidence and
arguments for claim 16 as it does for claim 1. See Pet. 48–55. Patent Owner
presents largely the same arguments against claim 16, as it does against
claim 1. See PO Resp. 48–49. For those common assertions and counter-
arguments, the corresponding discussions above in the context of claim 1
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equally apply. One limitation of claim 16, however, differs slightly from the
corresponding limitation of claim 1. We analyze this limitation below.
a) Limitation 16.4: “automatically ranking the plurality of social
network records corresponding to the query, with the at least one
automated processor, according to at least one social network
ranking factor comprising at least a physical distance from the
location and a factor dependent on the user ratings with the at
least one automated processor”
Petitioner argues that Roth alone teaches the aforementioned
limitation. Specifically, Petitioner argues that Roth’s Figure 6 shows
restaurant listings based on the physical distance from the location of the
mobile device. Ex. 1005 ¶¶ 26, 29, Fig. 6. For reasons explained in our
analysis of limitation 1.6 above, we do not find Petitioner has sufficiently
shown that Roth teaches ranking social network records based on physical
distance.
Petitioner additionally argues that the combination of Roth and
Fortescue teach limitation 16.4. Pet. 52 (citing Ex. 1004 ¶¶ 158–159).
According to Petitioner, Fortescue describes ranking the results of a search
based on both physical distance from a location and user rating. Pet. 52
(citing Ex. 1006 ¶¶ 121, 127).
Petitioner also argues that the combination of Roth and Ng teach
limitation 16.4. Pet. 52–53. Petitioner argues Ng describes that ranking of
results could be based on a combination of visits per area, repeat visitors,
and distance, and that “other combinations could be tested and offered.” Pet.
52–53 (citing Ex. 1007 ¶ 67). Petitioner points out that Ng describes using
user ratings as one of the factors on which to rank search results. Pet. 53
(citing Ex. 1007 ¶ 64). Thus, relying on its expert’s testimony, Petitioner
argues that a person of ordinary skill would recognize based on Ng’s
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disclosure of using a combination of a variety of factors to rank search
results, along with its disclosure of individual factors being distance and user
rating, that both location and user rating could be used together as factors on
which to rank Ng’s search results. Pet. 53 (citing Ex. 1004 ¶ 159).
Patent Owner argues that this limitation requires “that the processor
factor both physical distance from the location and a factor dependent on the
user ratings” and that Petitioner has ignored these points. PO Resp. 49.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated that the combinations of Roth and Fortescue,
and Roth and Ng, each teach limitation 16.4. For reasons stated above, we
find Petitioner has presented a rational reason for combining Roth with
Fortescue and Roth with Ng, to provide, format, and rank search results
based on social network information. See supra §§ II.C.4–5. Fortescue
discloses that both distance and rating are used together as filters for
searching a social network. See Ex. 1006 ¶ 121 (“At block 412, the plurality
of search results are filtered based on the search criteria [or] . . . based on
information about the social network. In one embodiment, the search
criteria may include a query string, a search distance, a search time, a rating
level . . . .”). Fortescue further teaches that search results may be ordered
based on a variety of relevancy information such as degree of separation and
rating. We are persuaded by Petitioner’s arguments that these disclosures
would teach to one of ordinary skill in the art that search results would be
ranked based on both distance and user ratings.
Similarly, Petitioner has demonstrated that Ng ranks search results
based on a combination of factors. Ex. 1007 ¶ 67 (“Sorting could also be
performed by a combination of factors.”). This combination includes, at
least, visits per area, repeat visitors, and distance. Ex. 1007 ¶ 67. Ng is
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clear that “[v]arious other combinations could be tested and offered.” Ex.
1007 ¶ 67. Separately, Ng teaches ranking search results based on user
ratings. Ex. 1007 ¶ 64, Fig. 7. We are persuaded by Petitioner’s arguments
and credit their expert’s testimony that these disclosures would teach one of
ordinary skill in the art that search results would be ranked based on both
distance and user ratings. Ex. 1004 ¶ 159.
b) Conclusion
Based on a review of the record, and for the same reasons explained
with regard to limitations 1.3 and 1.6 of claim 1, we find Petitioner has not
sufficiently demonstrated Roth alone teaches ranking social network records
based on physical distance as limitation 16.4 requires.
However, for the reasons stated above, we find Petitioner has
demonstrated by a preponderance of the evidence that the combination of
Roth with Fortescue and Roth with Ng each teach the limitations of claim
16, including limitation 16.4, as explained above.
10. Analysis of Claim 2
Claim 2 depends from claim 1 and further recites “wherein the at least
one social network ranking factor comprises a social network credibility.”
Petitioner argues “Ng discloses ‘[s]ome customers may be better judges than
others so visits by better judges could be given more weight.” Pet. 37 (citing
Ex. 1007 ¶ 95). According to Petitioner, “Ng describes using social network
credibility in terms of dining at popular restaurants as a ranking factor for
search results.” Pet. 37 (citing Ex. 1007 ¶ 95).
Petitioner also argues “Fortescue describes that the search results may
be ranked by ‘social network information’ and describes that the search may
consider factors such as the strength of the association between that social
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network member and the user, a set of members having strength of
association with the user or other social network factors.” Pet. 37 (citing Ex.
1006 ¶¶ 125–129).
Patent Owner argues that because claim 2 depends from claim 1, the
words “social network credibility” means that the credibility factors must be
based on the interpersonal relationships of the social network database.” PO
Resp. 41–42. Addressing the combination of Roth and Ng, Patent Owner
argues Ng’s “better judges” are not determined to be such by social network
credibility but instead by traffic. PO Resp. 42 (citing Ex. 1007 ¶ 95; Ex.
2006, ¶ 91). According to Patent Owner, Petitioner confuses credibility and
traffic. Patent Owner argues “Ng’s ‘better judges’ factor is not a social
network ranking factor, but is instead a scoring system based on traffic,
visitor patterns and restaurant alleged popularity as determined by traffic
patterns.”
Addressing the combination of Roth and Fortescue, Patent Owner
argues that “the only factor Fortescue considers is the degree of separation
between the user and other individuals, with those having a first degree of
separation being deemed more relevant than individuals who are of lower
degrees of separation.” PO Resp. 43 (citing Ex. 1006 ¶ 129). Patent Owner
argues Fortescue teaches against using social network credibility. PO Resp.
43. Patent Owner points out Fortescue’s disclosure that “First-degree
relationships can have varying degrees of closeness, trust, and other
characteristics” as indicating that having a direct relationship within a social
network does not make them any more or less credible. PO Resp. 43 (citing
Ex. 1006 ¶ 27).
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated that the combinations of Roth and Fortescue,
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and Roth and Ng, each teach limitations of claim 2. For reasons stated
above, we find Petitioner has presented a rational reason for combining Roth
with Fortescue and Roth with Ng, to provide search results based on social
network information such as social network credibility. See supra
§§ II.C.4–5. Ng, for example, teaches keeping count of customer visits to a
business location (or traffic) as a metric for business popularity. See Ex.
1007 ¶ 24. However, Ng notes that “[s]ome customers may be better judges
than others, so visits by better judges could be given more weight.” Ex.
1007 ¶ 95. In other words, Ng keeps track of more than just customer visits
and traffic, it also takes into account whether a customer is a better judge of
a business than others. Contrary to Patent Owner’s argument, this disclosure
teaches more than just a scoring system based on traffic. Instead, we are
persuaded by Petitioner, that this disclosure teaches a “social network
credibility,” as claimed in claim 2.
Fortescue teaches that search results may be ordered based on degree
of separation between the user and another member of the social network.
Ex. 1006 ¶ 127. Fortescue explains that “a first search result associated with
a first member of the social network may be ordered higher . . . than a
second search result associated with a second member, if the first member
has a lower degree of separation . . . than the second member.” Ex. 1006
¶ 129. We are persuaded by Petitioner that ordering search results by degree
of separation, or “strength of association” as Fortescue sometimes refers to
it, would teach one of ordinary skill to order search results based on social
network credibility. Degree of separation may be consistent with, or a proxy
of, credibility or trustworthiness. Being able to rank by degree of separation
would teach the ordinary artisan that search results would equally be able to
be ranked by social network credibility.
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11. Analysis of Claim 3
Claim 3 depends from claim 1 and further recites “wherein the at least
one social network ranking factor comprises a social network popularity.”
Petitioner argues Ng teaches this limitation by disclosing the use of
popularity as a social network ranking factor in conjunction with physical
distance. Pet 38 (citing Ex. 1007 ¶ 27). Petitioner argues Fortescue also
describes ranking of search results by social network popularity. Pet. 38
(citing Ex. 1006 ¶¶ 125–129; Ex. 1004 ¶ 121).
Patent Owner argues that Ng’s popularity is not a “social network
popularity” because “interpersonal relationships do not matter at all” in Ng.
PO Resp. 43 (citing Ex. 2006 ¶ 99). According to Patent Owner, Ng’s
popularity indicates a number of visits of a mobile device not popularity.
Patent Owner provides an example of a popular movie theater that would not
be considered popular by Ng because customers would turn their phones off
when inside the premise of the theater and thus their visits would not be
counted towards the theater’s popularity. PO Resp. 43–44.
As for Fortescue, Patent Owner argues that Fortescue’s disclosure of
ordering search results based on degree of separation does not teach ranking
search results based on social network popularity. PO Resp. 44.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated that the combination of Roth and Ng teaches the
limitations of claim 3. For reasons stated above, we find Petitioner has
presented rational reasons for combining Roth with Fortescue and Roth with
Ng, to provide search results based on social network information such as
social network popularity. See supra §§ II.C.4–5. Ng discloses ordering
search results of a business, such as a restaurant, based on popularity of the
restaurant. Ex. 1007 ¶ 27 (“Users of mobile devices 10 may perform a
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search for local restaurants that is ranked by popularity. The popularity
ranking may reveal that Tutti Sushi 28 receives relatively few visits while
Fry's Food 26 receives many.”). Whether this popularity is measured by
accounting for user visits or otherwise, it is still a measure of popularity of a
business. We find this to be sufficient in teaching to one of ordinary skill in
the art ranking search results based on social network popularity. Patent
Owner’s argument that Ng’s popularity is not based on an interpersonal
metric is unpersuasive under our adopted construction of the term social
network ranking factor.
As to the combination of Roth and Fortescue, we agree with Patent
Owner that the cited paragraphs of Fortescue teach ranking by various
relevancy information, including degree of separation, but do not teach
ranking the search results based on social network popularity.
Accordingly we determine that the combination of Roth and Ng
teaches the limitations of claim 3, but the combination of Roth and Fortescue
does not.
12. Analysis of Claim 4
Claim 4 depends from claim 1 and further recites “the social network
ranking factor comprising user review ratings” where the ratings are output
“dependent on the respective user review ratings and a geographical distance
of the restaurants from the user.” Petitioner argues that the combination of
Roth and Fortescue teaches these limitations. Specifically, Petitioner relies
on Fortescue’s disclosure that “‘relevancy information may include . . . a
rating associated with the search result’ and ‘search results for a search of
‘Restaurants within 500 meters.’” Pet. 39 (citing Ex. 1006 ¶¶ 127, 199).
Petitioner contends that Figure 12 of Fortescue “also depicts the output of
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restaurant reviews based on user review ratings and distance.” Pet. 39
(citing Ex. 1006, Fig. 12, ¶¶ 199–200).
Petitioner argues that the combination of Roth and Ng also teaches the
limitations of claim 4. Petitioner relies on Ng’s disclosure of allowing a user
to re-rank restaurants by user reviews of those restaurants, and its disclosure
that a combination of factors may be used to rank search results including
factors such as distance. Pet. 39 (citing Ex. 1007 ¶ 64, 35).
Patent Owner relies on the same arguments made with respect to
limitation 1.6 of claim 1. See PO Resp. 36–40.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated that the combinations of Roth and Fortescue,
and Roth with Ng each teach the limitations of claim 4. For reasons stated
above, we find Petitioner has presented rational reason for combining Roth
with Fortescue and Roth with Ng, to provide search results based on social
network information such as user ratings and reviews. See supra §§ II.C.4–
5. Fortescue teaches that “search results are ordered based on relevancy
information” and that “relevancy information may include . . . a rating
associated with the search result.” Fortescue ¶ 127. Fortescue also discloses
searching for a restaurant where both rating and distance are factors in the
search. See Figs. 11–13, ¶¶ 198–200. One of ordinary skill in the art would
understand these disclosures to teach that ranking of search results would be
based on both user rating and distance.
Ng also teaches ranking by a combination of factors such as “physical
distance . . . from the search center” and other factors. Ex. 1007 ¶ 35, 67.
Ng further teaches that search results may be re-ranked based on factors
such as user rating. Ex. 1007 ¶ 64, Fig. 7. Thus, Ng also teaches ranking
based on both user review ratings and distance.
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Having reviewed the arguments and evidence presented, we conclude
Petitioner has demonstrated by a preponderance of the evidence that the
combinations of Roth with Fortescue and Roth with Ng both teach the
limitations of claim 4. Patent Owner’s arguments have been addressed in
our analysis of limitation 1.6 above.
13. Analysis of Claims 7 and 11
Claim 7 depends from claim 1 and claim 11 depends from claim 10.
Claim 7 further recites “further comprising ranking the mined information
based on criteria comprising a physical distance from the location” and
claim 11 further recites “wherein said ranking comprises ranking a plurality
of the selected social network information records on criteria comprising a
physical distance from the mobile-electronic device user’s location.”
Petitioner argues, “Roth, Fortescue, and Ng all disclose ranking by distance
from the user.” Pet. 40 (citing Ex. 1004 ¶ 126). Specifically, Petitioner
argues “Figure 6 of Roth shows restaurants ranked by distance from the
user.” Pet. 40 (citing Ex. 1005 Fig.6). Petitioner further argues, “Ng
discloses ‘the ranking parameter could be a combination of one-third visits
per area, one-third repeat visitors and one-third distance’ and Figure 7 of Ng
shows that the results are ‘[s]orted by [d]istance.’” Pet. 40 (citing Ex. 1007
¶¶ 64, 67). Finally, Petitioner argues, “Fortescue discloses ‘a relevancy
score may be associated with at least one of location information in a search
result’ and ‘may be used (alone or in combination with other relevancy
information) to order the search results.’” Pet 40 (citing Ex. 1006 ¶ 130).
As explained above, we find Petitioner has presented rational reason for
combining Roth with Fortescue and Roth with Ng, to provide search results
based on social network information, including improvements to those
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search results by formatting and ranking based on various factors. See supra
§§ II.C.4–5.
Patent Owner does not present any separate arguments specifically
directed to claims 7 and 11.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated by a preponderance of the evidence that the
combinations of Roth and Fortescue, and also Roth with Ng, teach the
limitations of claims 7 and 11 for the reasons summarized above.
14. Analysis of Claims 8, 9, 13, 14, and 18
Claims 8 and 9 each depend from claim 1. Claims 13 and 14 each
depend from claim 10. Claim 18 depends from claim 16. Claims 8, 13, and
18 each add limitations requiring communicating the social network
information within a location or spatial mapping user interface. Claims 9
and 14 each add limitations requiring communication of the social network
information within Google maps.
Petitioner argues, “Roth recognizes the opportunity to incorporate
mapping into the results returned from a query, indicating that ‘a map query
function that provides directions to a destination returned as a part of the
search results’ could be appended to the search results.” Pet. 41 (citing
Ex. 1005 ¶ 21). Petitioner argues Fortescue communicates social network
information within a location mapping user interface platform such as those
shown in Figures 12 and 13 of Fortescue, which are described as including
“display 1200 includes the map of the searched area.” Pet. 41 (quoting
Ex. 1006 ¶ 199). Petitioner further argues that Figure 7 of Ng displays
search results within a map interface. Pet. 41 (citing Ex. 1007, Fig. 7, ¶¶ 61,
79). Relying on its expert, Petitioner concludes that, based on these
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disclosures, a person of ordinary skill “would understand that the
commercially available Google maps would be an obvious choice to
implement such a map interface.” Pet. 41–42 (citing Ex. 1004 ¶ 131).
Patent Owner does not present any separate arguments specifically
directed to claims 8, 9, 13, and 14. Patent Owner does, however, argue that
claim 18 is worded differently than claims 9, 13, and 14 in that it requires
“outputting the ranked plurality of records within a spatial mapping user
interface.” PO Resp. 49 (citing Ex. 2006 ¶¶ 134–136). Patent Owner argues
that even if the prior art discloses outputting reviews to a map interface,
“Petitioner fails to explain how the prior art outputs the ranked records
within a spatial mapping user interface.” PO Resp. 49.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated by a preponderance of the evidence that Roth
combined with Fortescue, and Roth combined with Ng, each teach the
limitations of claims 8, 9, 13, 14, and 18 for the aforementioned reasons
presented by Petitioner. As we have explained, we find Petitioner has
presented a rational reason for combining Roth with Fortescue and Roth
with Ng, to provide search results based on social network information and
for improving the search results by formatting and ranking based on various
factors. See supra §§ II.C.4–5. Petitioner, here explains that Roth discloses
a map query function and that both Fortescue and Ng display search results
on a map. Pet. 41 (citing Ex. 1006 ¶ 199; Ex. 1007, Fig. 7, ¶¶ 61, 79). Thus,
a person of ordinary skill would have combined the references to format and
rank Roth’s search results on a map based display.
We disagree with Patent Owner’s argument regarding claim 18. In
both Fortescue and Ng, the results displayed on the map are ranked, at the
very least by distance. For example, Fortescue discloses that the results of
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the search are displayed on a map based on “a physical proximity to a
location.” Ex. 1006 ¶ 199. Additionally, Fortescue discloses that the results
displayed on a map are “ordered, such that some points are more relevant to
the user of display 1200/member, then [sic] other points.” Ex. 1006 ¶ 200.
Ng also discloses displaying search results on a map based on distance. Ex.
1007 ¶¶ 61, 67, 79, Fig. 7. Thus, both Fortescue and Ng output search
results ranked within a spatial mapping user interface.
15. Analysis of Claims 12 and 17
Claim 12 depends from claim 10 and further recites “wherein the at
least one social network ranking factor comprises at least one of reverse
chronological order, social network credibility, social network popularity,
and type of social information, and said communicating comprises
outputting.” Claim 17 depends from claim 16 and further recites “wherein
the plurality of records are further automatically ranked by the at least one
automated processor in dependence on the at least one social network
ranking factor selected from the group consisting of a social network
credibility and a social network popularity.”
Petitioner relies on its arguments made with respect to claims 2 and 3
for the limitations of claims 12 and 17. Pet. 48. Patent Owner does not
present any separate arguments specifically directed to claims 12 and 17.
Having reviewed the arguments and evidence presented, we determine
Petitioner has demonstrated by a preponderance of the evidence that Roth
combined with Fortescue, and Roth combined with Ng, each teach the
limitations of claims 12 and 17.
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16. Claim 15
Claim 15 depends from claim 10 and further recites “outputting the
user reviews of the plurality of restaurants ranked based on at least the
distance from the user and the user review ratings.” Petitioner relies on the
same arguments and evidence presented for claim 4. See Pet. 38–39.
Patent Owner argues the scope of claims 4 and 15 are different, in that
claim 4 requires a distance from a restaurant, while claim 15 requires a
distance from a user review. PO Resp. 47 (citing Ex. 2006 ¶¶ 121–123).
These two distances may not be the same, according to Patent Owner,
because the “user review can be made at any location, not merely
restaurants.” Patent Owner’s expert cites to various portions of the ʼ981
Patent as supporting its interpretation. Ex. 2006 ¶ 121 (citing Ex. 1001,
Abstract, 2:5–13, 3:46–50, 5:61–64, 6:3–7, 7:54–58, 8:14–20, 9:31–39,
12:27–37, 13:7–16, Figs. 1, 2). Petitioner responds that claim 15 should be
construed as requiring that the output be ranked based on (1) the distance
from the user and (2) the ratings provided by user reviews. Pet. Reply 21.
Patent Owner essentially argues that claim 15 requires ranking based
on one factor: the distance between the user’s current location and the
location where the user review took place. Under Patent Owner’s
interpretation, the phrase “distance from the user and user review rating” is
to be taken as one single clause. Petitioner argues that claim 15 requires
ranking based on two factors: (1) the distance of the restaurant from the
location of the user and (2) the user review ratings. Under Petitioner’s
interpretation the phrase “distance from the user and the user review ratings”
is taken as two separate clauses separated by the word “and” in the phrase.
We find Petitioner’s interpretation to be more reasonable. As
Petitioner argues, ranking based on a distance between the user and the
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location where the user review took place would be of very little benefit to
the user (if at all) especially in the case where the location of the user review
rating is different than the location of the restaurant. If the user review
rating occurred in a reviewer’s home, but the restaurant being reviewed was
20 miles away, a user searching for restaurants based on distance would not
want the results ranked based on the distance between the user and the
reviewer’s home. Rather the user would naturally want results based on
distance from the user and the restaurant itself. Moreover, Patent Owner’s
interpretation assumes that a “user review rating” has a location, but the
phrase “user review ratings” does not imply a location on its own. Thus, one
of ordinary skill in the art would have more reasonably interpreted it as an
additional factor under which to rank search results, rather than a location
with a distance. Further, we do not find any of Patent Owner’s citations to
the ʼ981 Patent to support its interpretation.
We, therefore, adopt Petitioner’s interpretation of claim 15. Under
this interpretation and for the same reasons we explained in our analysis of
claim 4, we are persuaded that the combinations of Roth with Fortescue, and
Roth with Ng, teach ranking search results based on a combination of
distance between the user and the restaurant and also user review rating.
17. Conclusion: Weighing the Graham Factors
For the aforementioned reasons, we determine Petitioner has provided
a sufficient motivation to combine the references. We determine Petitioner
has demonstrated that the combination of Roth with Fortescue teaches the
limitations of claims 1, 2, 4, and 7–18. We also determine that Petitioner
has demonstrated that the combination of Roth with Ng teaches the
limitations of claims 1–4 and 7–18. We do not find, however, that Petitioner
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has sufficiently demonstrated that Roth alone teaches each of the limitations
of claims 1, 10, and 16. We find that the objective indicia of
nonobviousness has little probative value in the overall analysis of
nonobviousness on this record.
Accordingly, when weighing all of the evidence of obviousness and
nonobviousness together, including the content of the prior art, the
differences between the prior art teachings and the claim limitations, and the
objective indicia of nonobviousness, we determine Petitioner has shown by a
preponderance of the evidence that claims 1–4 and 7–18 are obvious over
the combination of Roth and Ng and that claims 1, 2, 4, and 7–18 are
obvious over the combination of Roth and Fortescue. Petitioner has not
shown that claims 1, 10, 16 are obvious over Roth alone or that claim 3 is
obvious over the combination of Roth and Fortescue.
D. Motion to Exclude
Petitioner filed a Motion to Exclude (Paper 27) Patent Owner’s
Exhibits 2001–2005, which relate to the Google Blog Post and Apple
Presentation. Petitioner argues that Patent Owner has failed to establish the
authenticity of the exhibits and that the exhibits are inadmissible hearsay.
Paper 27, 1–7.
As indicated above, in rendering our Final Written Decision, we have
considered the exhibits Petitioner seeks to exclude, but still arrive at a
conclusion not adverse to Petitioner. Accordingly, we dismiss Petitioner’s
Motion to Exclude as moot.
E. Constitutional Challenge
Patent Owner argues the Board should terminate or stay this
proceeding because Administrative Patent Judges (“APJs”) are
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unconstitutionally appointed. PO Resp. 57 (citing Lucia v. SEC, 138 S. Ct.
2044, 2049 (2018); Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020
WL 6037206 (Oct. 13, 2020)). Patent Owner argues that although the
Federal Circuit attempted to cure this constitutional defect in Arthrex by
severing Title 5’s removal protections, the solution is insufficient because
IPR proceedings are formal adjudications under the APA. PO Resp. 57
(citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).
Under 5 U.S.C. § 556(b), Patent Owner argues, formal adjudications must be
conducted by administrative law judges appointed under 5 U.S.C. § 3105
and such judges may be removed only for good cause. PO Resp. 57 (citing 5
U.S.C. § 7521). Because APJs are now removable, Patent Owner argues
they lack the authority to preside over formal adjudications such as the
present proceeding, and thus, Patent Owner requests the Board to dismiss or
stay this proceeding pending review of the Arthrex decision. PO Resp. 58.
Such a stay would not result in undue prejudice according to Patent Owner.
PO Resp. 58–59.
We decline to consider Patent Owner’s constitutional challenge. The
Federal Circuit has addressed this issue in Arthrex, 941 F.3d at 1325, 1337–
38 (“This as-applied severance . . . cures the constitutional violation.”); see
also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir.
2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs
were constitutionally appointed as of the implementation of the severance,
inter partes review decisions going forward were no longer rendered by
unconstitutional panels.”).
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III. CONCLUSION7
For the foregoing reasons, we conclude Petitioner has demonstrated
by a preponderance of the evidence that claims 1–4 and 7–18 of the ʼ981
Patent are unpatentable under 35 U.S.C. § 103(a) over Roth in combination
with Ng, and that claims 1, 2, 4, and 7–18 are unpatentable over Roth in
combination with Fortescue. We conclude Petitioner has not demonstrated
that claim 3 is unpatentable over Roth in combination with Fortescue. We
also conclude that Petitioner has not demonstrated that claims 1, 10 and 16
are unpatentable over Roth alone.
In summary:

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C. § Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–4, 7–18 103(a) Roth, Fortescue 1, 2, 4, 7–18 3
1–4, 7–18 103(a) Roth, Ng 1–4, 7–18
1, 10, 16 103(a) Roth 1, 10, 16

Overall
Outcome
1–4, 7–18
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–4, 7–18 of the ʼ981 Patent are held to
unpatentable; and
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:
Brian Rosenbloom
Michael Jones
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
brosenbloom@rfem.com
mjones@rfem.com

FOR PATENT OWNER:
Minghui Yang
HARDY PARRISH YANG LLP
myang@hpylegal.com

Bradley Liddle
CARTER ARNETT
bdliddle@gmail.com

Eric Evain
GRANT & EISENHOFER P.A.
eevain@gelaw.com