Veveo, inc.

Patent Trials and Appeals Board

Jun 30, 2020

IPR2019-00239 (P.T.A.B. Jun. 30, 2020)

Trials@uspto.gov Paper 50
571-272-7822 Date: June 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,
v.
VEVEO, INC.,
Patent Owner.

IPR2019-00239
Patent 7,779,011

Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and KARA L.
SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting In Part Petitioner’s Motion to Seal Documents
Granting Petitioner’s Motion to Enter Protective Order
35 U.S.C. § 318(a)
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I. INTRODUCTION
Comcast Cable Communications, LLC (“Petitioner”) filed a Petition
(Paper 2, “Pet.”) to institute inter partes review of claims 1–24 of US Patent
No. 7,779,011 (Ex. 1201, “the ’011 patent”). Veveo, Inc. (“Patent Owner”)
filed a Preliminary Response (Paper 9, “Prelim. Resp.”).
After consideration of the parties’ contentions and supporting
evidence, we instituted inter partes review pursuant to 35 U.S.C. § 314, as to
claims 1–24 of the ’011 patent. Paper 15 (“Inst. Dec.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
21, “PO Resp.”); Petitioner filed a Reply (Paper 33, 39, “Pet. Reply”); and
Patent Owner filed a Sur-Reply (Paper 42, “PO Sur-Reply”). Petitioner also
filed a Motion to Seal and Motion to Enter Protective Order (Papers 31, 32).
An oral hearing was conducted on April 2, 2020 and a transcript of the
hearing has been entered into the record as Paper 49 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine that Petitioner has demonstrated
by a preponderance of the evidence that claims 1–24 of the ’011 patent are
unpatentable.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies the following as real parties-in-interest: Comcast
Corporation; Comcast Business Communications, LLC; Comcast Cable
Communications Management, LLC; Comcast Cable Communications,
LLC; Comcast Financial Agency Corporation; Comcast Holdings
Corporation; Comcast Shared Services, LLC; Comcast STB Software I,
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LLC; Comcast of Massachusetts I, Inc.; Comcast of Milton, Inc.; Comcast of
Southern New England, Inc.; Comcast of Massachusetts/New Hampshire,
LLC; Comcast of Needham, Inc.; Comcast of Massachusetts/Virginia, Inc.;
Comcast of Boston, Inc.; Comcast of Brockton, Inc.; Comcast of
California/Massachusetts/Michigan/Utah, LLC; Comcast of
Connecticut/Georgia/Massachusetts/New Hampshire/New York/North
Carolina/Virginia/Vermont, LLC; Comcast of Massachusetts II, Inc.; and
Comcast of Massachusetts III, Inc. Pet. 1.
Patent Owner names Veveo, Inc.; Rovi Guides, Inc.; and Rovi
Corporation as real parties-in-interest. Paper 4, 1.
B. Related Matters
As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial
matter that would affect, or be affected by, a decision in this proceeding.
Both parties identify Veveo Inc. v. Comcast Corporation, et al., Case
No. 1:18-cv-10056-GAO (D. Mass) and In the Matter of Certain Digital
Receivers and Related Hardware and Software Components, Investigation
No. 337-TA-1103 (“ITC Investigation”). Pet. 2; Paper 4, 1.
Patent Owner additionally identifies Veveo Inc. v. Comcast
Corporation, et al., Case No. 1:13-cv-11885-GAO (D. Mass) and Veveo,
Inc. v. Verizon Services Corp. et al., Case No. 1-10-cv-06709 (D. Mass).
Paper 4, 1.
Additionally, Petitioner also filed IPR2019-00237, IPR2019-00238,
and IPR2019-00239 requesting inter partes review of claims 1–24 of U.S.
Patent No. 7,779,011 (“the ’011 patent) (“the ’011 proceedings”). Petitioner
also filed IPR2019-00290, IPR2019-00291, and IPR2019-00293 also
requesting inter partes review of claims 1–11 of the ’394 patent (“the ’394
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proceedings”). We exercised our discretion under 35 U.S.C. § 314(a) and
denied institution of inter partes review as to three of these proceedings,
IPR2019-00291, IPR2019-00293, and IPR2019-00238. See, e.g., Comcast
Cable Communications, LLC v. Veveo, Inc., IPR2019-00291, Paper 16
(PTAB July 5, 2019) (Decision Denying Institution); see, e.g., Comcast
Cable Communications, LLC v. Veveo, Inc., IPR2019-00293, Paper 16
(PTAB July 5, 2019) (Decision Denying Institution); see, e.g., Comcast
Cable Communications, LLC v. Veveo, Inc., IPR2019-00238, Paper 15
(PTAB July 5, 2019) (Decision Denying Institution).
In addition, the parties refer to IPR2017-00715, which concerned U.S.
Patent No. 8,433,696 (Ex. 1205, “the ’696 patent”), a patent related to the
’011 patent (hereafter “the ’696 patent proceeding”).
C. The ’011 Patent
The ’011 patent claims priority from US Provisional Patent
Application No. 60/711,866, filed Aug. 26, 2005, and US Provisional Patent
Application No. 60/716,101, filed Sept. 12, 2005. Ex. 1201, 1:8–18.
The ’011 patent is titled “Method and System for Dynamically
Processing Ambiguous, Reduced Text Search Queries and Highlighting
Results Thereof” and generally describes “identifying an item from a set of
items” from a search query entered by a user on a device having a text input
interface with overloaded keys. Id. codes (54), (57). An overloaded key has
multiple alpha-numeric characters or functions so that the same key can be
pressed to enter different characters. Id. at 1:39–42. For example, the “2”
key can be pressed to enter the number “2” or the letters “A,” “B,” or “C.”
Id. at 1:42–43. Such a keypad is illustrated below in Figure 1.
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Figure 1 illustrates a keypad with overloaded keys. Id. at 2:54–55.
The ’011 patent explains that text entry using a keypad with overloaded
keys, as shown in Figure 1 above, can result in an ambiguous text entry,
which requires some type of disambiguation action, such as multiple key
presses to select a desired character. Id. at 1:43–50. These known
disambiguation actions may have deficiencies, such as too many key strokes
needed to make a text entry. Id. at 1:55–57.
The ’011 patent processes a search query to identify an item from a
set of items, where each of the items has a name comprising one or more
words. Id. at 2:12–17. Using the text input interface, a user can enter an
ambiguous search query that comprises a prefix substring of at least one
word in the name of the desired item. Id. at 3:26–29; see 3:29–31 (“A prefix
substring of a word is a variable length string of characters that contains
fewer than all the characters making up the word”). A prefix query may be a
single-word query that matches a single word term or an abbreviation
representing multiple words, or a multi-word prefix query, that matches a
multi-word term or an abbreviation representing multiple words. Id. at
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6:52–58.
The search space containing the searchable items is “initially indexed
by performing a many-to-many mapping of the alphanumeric space of terms
to numeric strings corresponding to the various prefixes of each
alphanumeric term constituting the query string.” Id. at 3:43–49. In the
numeric string, each alphanumeric character is replaced by its corresponding
numeric equivalent. Id. at 3:49–53. This allows the system to incrementally
retrieve results matching the ambiguous search query as the user types in
each character of the query. Id. at 3:53–56. The items that match the search
query are displayed on the device, preferably in the order of expected
interest to the user, with the characters of the one or more words in the
names corresponding to the prefix substring of the search query highlighted.
Id. at 3:35–40, 5:35–42, 6:26–31.
For instance, as keystrokes are entered, the identified subsets of items
are identified and displayed, as shown in Figures 6A and 6B reproduced
below, with the respective figures illustrating a text input interface and a
display interface. See Ex. 1201, 2:65–3:2; 7:4–12.

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As illustrated in this example, in Figure 6A above, the user has entered a
single-word text input query “866” using the overloaded keypad interface
602 and the results of the search input are shown in Figure 6B above. Ex.
1201, 7:8–10. Figure 6B shows single-word term matches 603 and 604
ordered before abbreviation matches 605 and 606. Id. at 7:10–12.
D. Illustrative Claim
Petitioner challenges claims 1–24 of the ’011 patent. Pet. 1. Claims
1, 9, and 17 are independent. Claim 1 is reproduced below, with annotations
added to the step limitations for reference purposes:
1. A method of processing unresolved keystroke entries by a user
from a keypad with overloaded keys in which a given key is in fixed
association with a number and at least one alphabetic character, said
unresolved keystroke entries being directed at identifying an item from
a set of items, each of said items being associated with information
describing the item comprising one or more words, said method
comprising:

[a] indexing said items by associating subsets of said items with
corresponding strings of one or more unresolved keystrokes for
overloaded keys so that the subsets of items are directly mapped to the
corresponding strings of unresolved keystrokes for various search
query prefix substrings;

[b] for at least one subset of items, which determining letters and
numbers present in the information associated with and describing the
indexed items of said subset caused said items to be associated with the
strings of one or more unresolved keystrokes that are directly mapped
to said subset;

[c] subsequent to said indexing, receiving from a user a search
query for desired items composed of unresolved key strokes, said
search query comprising a prefix substring for at least one word in
information associated with the desired item;

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[d] in response to each unresolved keystroke, identifying and
displaying the subsets of items, and information associated therewith,
that are associated with the strings of one or more unresolved
keystrokes received from the user based on the direct mapping of
strings of unresolved keystrokes to subsets of items;

[e] in response to each unresolved keystroke, as the identified
items are displayed, highlighting the letters and numbers present in the
one or more words in said information describing the identified items
that were determined to have caused the displayed items to be
associated with the strings of unresolved keystrokes that are directly
mapped to said items received so as to illustrate to the user how the
unresolved keystrokes entered match the information associated with
the displayed items; and

[f] ordering the displayed items in accordance with one or more
given criteria.

Ex. 1201, 8:40–9:13.
E. Evidence Relied Upon
Petitioner relies on the following prior art references (see Pet. 8), as
well as the Declarations of Dr. Edward A. Fox (Ex. 1214, Ex. 1233):
Reference Exhibit Patent/Printed
Publication
Prior Art Basis
Gross Ex. 1211 US 2004/0133564 A1
(filed Sep. 3, 2003,
published July 8, 2004)
35 U.S.C. § 102(b)
Smith Ex. 1213 US 6,529,903 (issued
Mar. 4, 2003)
35 U.S.C. § 102(b)
Sanders Ex. 1210 US 7,885,963 (filed Mar.
24, 2003, issued Feb. 8,
2011)
35 U.S.C. § 102(e)

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F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–24 would have been unpatentable on
the following grounds. Pet. 8. Trial was instituted on these grounds. Inst.
Dec. 7, 49.
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1–3, 5, 6, 8–11, 13,
14, 16–19, 21, 22, 24 103(a) Gross, Smith
4, 7, 12, 15, 20, 23 103(a) Gross, Smith, Sanders

III. ANALYSIS
A. Legal Standards
A claim is unpatentable under 35 U.S.C. § 103(a) if, to one of
ordinary skill in the pertinent art, “the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
§ 103(a)). The question of obviousness is resolved based on underlying
factual determinations, including the “scope and content of the prior art,”
“differences between the prior art and the claims at issue,” “the level of
ordinary skill in the pertinent art,” and objective evidence of

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’011 patent issued was filed
before this date, the pre-AIA version of § 103 applies.

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nonobviousness, i.e., secondary considerations.2 Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
To establish obviousness, a petitioner must “demonstrate both that a
skilled artisan would have been motivated to combine the teachings of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so.” In
re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
(internal quotation marks omitted); see also KSR, 550 U.S. at 418 (for an
obviousness analysis, “it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does”). A motivation to
combine the teachings of two references can be “found explicitly or
implicitly in market forces; design incentives; the ‘interrelated teachings of
multiple patents’; ‘any need or problem known in the field of endeavor at the
time of invention and addressed by the patent’; and the background
knowledge, creativity, and common sense of the person of ordinary skill.”
Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
(citation omitted). Further, an assertion of obviousness “cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016)
(a finding of a motivation to combine “must be supported by a ‘reasoned
explanation’” (citation omitted)).

2 Patent Owner does not present objective indicia of nonobviousness. See
generally PO Resp.
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B. Level of Ordinary Skill in the Art
Petitioner asserts a person of ordinary skill in the art “would have had
at least a bachelor’s degree in computer science and at least two years of
experience in the field of search-query processing spent designing,
constructing, and/or testing systems that utilize data and/or information
search techniques.” Pet. 16 (citing Ex. 1214 ¶¶ 44–48).
Patent Owner asserts a person of ordinary skill in the art “would have
a bachelor’s degree in electrical engineering, computer engineering,
computer science, or applied mathematics as well as two or more years of
relevant industry experience, including in electronic content delivery,
electronic program guides, television video signal processing, graphical user
interfaces, cable or satellite television systems, set-top boxes, multimedia
systems, or data search techniques.” PO Resp. 16–17 (citing Ex. 2014
¶¶ 17–19).
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(citation and internal quotation marks omitted).
The ’011 patent addresses methods and systems of processing
ambiguous search queries. Ex. 1201, code (57), 1:23–26. Gross addresses
data processing methods and systems “for quick and efficient searching.”
Ex. 1211, code (57), ¶ 4. Smith addresses systems and methods for
“providing search results in response to an ambiguous search query provided
by a user.” Ex. 1213, code (57), 1:16–18.
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Based on the full record before us, and considering the subject matter
and technology at issue in the ’011 patent and prior art, we generally agree
with Petitioner’s proposed qualifications, but in addition to having a
bachelor’s degree in computer science, having a bachelor’s degree in
electrical engineering, computer engineering, computer science, or applied
mathematics, or some equivalent level of education, provides sufficient
educational background. Further, we agree that having two years of
experience in the field of search-query processing spent designing,
constructing, and/or testing systems that utilize data and/or information
search techniques is sufficient background, but more advanced formal
education could be substituted for work experience. In view of the scope
and complexity of the ’011 patent and prior art, we disagree with Patent
Owner that one of ordinary skill would need to have industry experience
specifically in electronic content delivery, electronic program guides,
television video signal processing, graphical user interfaces, cable or satellite
television systems, set-top boxes, or multimedia systems.
Accordingly, we determine that a person of ordinary skill in the art
would have a bachelor’s degree in computer science, electrical engineering,
computer engineering, computer science, or applied mathematics, or some
equivalent level of education, and at least two years of experience in the
field of search-query processing spent designing, constructing, and/or testing
systems that utilize data and/or information search techniques, but more
advanced formal education could be substituted for work experience.
Moreover, we determine that any differences between the parties’
proposed level of skill in the art would not affect our analysis below, and the
parties agree. Neither party identifies any impact to the obviousness
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analysis based upon the level of ordinary skill in the art adopted. See e.g.,
Tr. 24:19–21 (Petitioner’s counsel stating “even an engineer in satellite or
television is familiar with how to use search engines and highlighting on
search engines.”); id. at 60:22–24 (Patent Owner’s counsel stating “I don’t
think our arguments really would change in terms of whether or not –
depending on which level of ordinary skill you adopt here.”). The
significance of the level of ordinary skill in the art is the role it plays in an
obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
level of skill in the art is a prism or lens through which a judge, jury, or the
Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-
Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving
the level of ordinary skill in the art lies in the necessity of maintaining
objectivity in the obviousness inquiry”).
Even though Petitioner does not identify any impact to the
obviousness analysis based upon the level of ordinary skill in the art
adopted, and its argument at the oral hearing seems to acknowledge Dr.
Russ’s qualifications would be sufficient, Petitioner nonetheless argues that
Patent Owner’s expert, Dr. Russ, is not an expert in search query processing,
and, therefore, is not qualified to provide expert testimony about such
matters. Pet. Reply 18–19; Tr. 24:19–21 (“even an engineer in . . . television
is familiar with how to use search engines and highlighting on search
engines”). Patent Owner enumerates Dr. Russ’s experience, and responds
that Dr. Russ “has substantial academic and industry credentials to qualify
him as an expert.” PO Sur-Reply 22 (citing Ex. 2014 ¶¶ 7–15; Ex. 2015).
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Reviewing this evidence of record, we are persuaded that Dr. Russ’s
qualifications align with the subject matter sufficiently so that his knowledge
is helpful in understanding the evidence and determining the facts in issue.
In particular, we emphasize that Dr. Russ need not be a person of ordinary
skill in the art to testify as an expert under Federal Rule of Evidence 702.
See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed.
Cir. 2010). Instead, in order to testify in this proceeding, Dr. Russ must
have sufficient specialized “knowledge, skill, experience, training, [and]
education” to demonstrate that his testimony is likely to “assist the trier of
fact” in understanding the evidence and in determining whether the
challenged claims are unpatentable. Id. Nor must his qualifications
perfectly match the patent at issue. However, we agree with Patent Owner
that Dr. Russ’s academic and industry credentials are extensive. See Ex.
2014 ¶¶ 7–15; Ex. 2015. Accordingly, we decline to discount Dr. Russ’s
testimony, as Petitioner requests. Rather, we will weigh the testimony
regarding each particular issue on which Dr. Russ opines based on the
factual corroboration, articulated reasoning, and disclosure of underlying
facts or data provided. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a)
(“Expert testimony that does not disclose the underlying facts or data on
which the opinion is based is entitled to little or no weight.”); cf. In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
(Petitioner’s burden of proving obviousness cannot be satisfied by mere
conclusory statements).
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C. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b)3
(2018); see In re Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–
46 (2016). Under that standard, and unless the record shows otherwise, we
give claim terms their ordinary and customary meaning, as they would be
understood by one of ordinary skill in the art in the context of the patent
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definitions for claim terms must be set forth with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner contends the terms “directly mapped,” “letters and
numbers,” and “caused said items to be associated with the strings of one or
more unresolved keystrokes that are directly mapped to said subset” in claim
1 require construction. See Pet. 9–15.
In the Institution Decision, we determined that, at that preliminary
stage of the proceeding, no terms required express construction. Inst.
Dec. 21–22.
Patent Owner does not address Petitioner’s proposed constructions,
propose constructions for any of the three terms, or argue that the

3 This Petition was filed on November 12, 2018. A different claim
construction standard applies to petitions filed on or after November 13,
2018. 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 (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)).
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construction of these terms affects any disputed issue in this proceeding. See
generally PO Resp.
Because the terms are not in controversy, we find it is not necessary to
expressly construe any of these terms to resolve the parties’ dispute. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
1013, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 1695 (April 30, 2018)
(noting that “we need only construe terms ‘that are in controversy, and only
to the extent necessary to resolve the controversy’”) (citing Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
D. Preliminary Matters
1. ITC Investigation
Patent Owner argues that in a June 2019 Initial Determination in the
ITC investigation concerning the ’011 patent, the Administrative Law Judge
(“ALJ”) rejected Petitioner’s arguments and found Petitioner had not
demonstrated a motivation to combine Gross and Smith. PO Resp. 40–43
(citing Ex. 2017). Patent Owner argues that “it is evident that the same
theories made by Comcast at the ITC are being put forth here in an attempt
to invalidate the ’011 patent–the result of which is that Rovi is now
prejudiced by being forced to re-litigate issues at a great expense that should
not be re-litigated,” which “frustrates the purpose of the AIA and results in
unnecessary legal process and unfairness.” Id. at 42. Patent Owner,
therefore, argues that the doctrine of issue preclusion prevents this “exact
unfairness.” Id. Patent Owner also argues that “the ALJ’s (correct)
reasoning is fully applicable and should be given substantial weight here.”
Id. at 43; see PO Sur-Reply 24 (clarifying that Patent Owner is not arguing
“that the ITC’s determination is mandatory authority”).
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Petitioner argues that the “ITC determinations of patent validity and
infringement are specifically excluded from carrying any preclusive weight.”
Pet. Reply 20. Petitioner further contends that the “legal standards applied
by the ITC and the Board are different,” “the records before the ITC and the
Board are different,” and “the instant Petition sets forth and seeks
consideration of additional and new obviousness rationales based in part on
the testimony of Dr. Fox.” Pet. Reply 20–21.
The ITC investigation does not have preclusive effect on this
proceeding, but can be considered for any persuasive value it offers. Texas
Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed.
Cir. 1996) (ITC decision has no preclusive effect in other forums but a
district court can attribute persuasive value to a prior ITC decision, as
justified); see Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d
1017, 1019 (Fed. Cir. 1987) (holding ITC’s determinations regarding patent
issues should be given no res judicata or collateral estoppel effect); Patent
Trial and Appeal Board Consolidated Trial Practice Guide at 49 (Nov.
2019), available at https://ptabe2edocs.uspto.gov/prps-
services/casedocs/IPR2019-00290/document/4f1ef0be-e24e-400a-ab7f-
174a36542c25/content (indicating that prior claim construction from the ITC
is considered by the Board, but no guidance that it is binding).
The ITC investigation concerned, inter alia, the infringement and the
invalidity of several patents, including the’011 patent. Ex. 2017 at iii–iv. In
particular, and pertinent to Patent Owner’s arguments, Petitioner asserted
that claims 1 and 9 of the ’011 patent were obvious over Gross and Smith.
Id. at 100–113. The ITC determined that “Gross in combination with Smith
teaches all the limitations recited in claims 1 and 9. However, Comcast
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failed to demonstrate that a person of ordinary skill in the art would have
had a motivation to combine the references.” Id. at 100.
The parties have not provided the full record from the ITC in this
proceeding, and more particularly, we do not have the full briefing on the
obviousness assertions. In the June 2019 Initial Determination provided, the
discussion of the parties’ arguments on the rationale to combine Gross and
Smith is limited. See Ex. 2017, 111–113. The arguments and evidence
presented to the ITC are not before us. Petitioner argues that the record in
this proceeding is different, and additional and new obviousness rationales
have been presented here. Pet. Reply 20–21; Tr. 8:18–23, 9:9–10:4. Patent
Owner conceded at the hearing that the record in this proceeding is
determinative, and that “I don’t think that anything that happened in the ITC
is that relevant in this case because we have to look at the record here.” Tr.
39:20–24. We have reviewed the portions of the ITC investigation in the
record, and determine that Petitioner’s assertion that the record before the
ITC is more limited than the record here is accurate. Importantly, the only
motivation to combine the references cited by the ITC is that Gross and
Smith “are in the same field of art, they are related to searching, indexing,
presenting information.” Ex. 2017 at 111.
We have reviewed and considered the ITC’s June 2019 Initial
Determination. We, however, come to a different conclusion on the
rationale to combine Gross and Smith based upon the record before us, as
discussed below. In light of the differences in the records in each respective
proceeding, however, we do not consider any determination herein to be in
tension with that made by the ITC.
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Patent Owner also argues that Petitioner engaged in gamesmanship by
delaying the Petition filing until after the ITC investigation had progressed.
PO Resp. 43. Patent Owner contends that by waiting to file the Petition,
Petitioner gained a tactical advantage. Id. at 44–45. Patent Owner argues
that Petitioner’s alleged gamesmanship results in unnecessary legal process
and unfairness, and Petitioner’s tactics should not be rewarded. Id.
We addressed the alleged gamesmanship issues and potential
overlapping issues with the ITC proceeding in the Decision on Institution.
See Inst. Dec. 13–16. In our Decision, we did not find that there was
substantial overlap in the proceedings because there was insufficient
evidence in the record showing Petitioner’s theories and arguments on
invalidity in the ITC investigation, and the claims at issue in both
proceedings also differed. Id. As such, we were not persuaded that
Petitioner gained a tactical advantage or engaged in gamesmanship. Id. In
its Response, Patent Owner’s arguments are substantially similar to those
previously raised, and we find them unpersuasive for similar reasons.
Compare Inst. Dec. 13–16, with PO Resp. 44–45.
2. Collateral Estoppel
Petitioner argues that collateral estoppel prevents Patent Owner “from
re-litigating issues of invalidity that have been fully and fairly tried in a
previous action and adversely resolved against it.” Pet. Reply 6.
Specifically, Petitioner argues that Patent Owner may not argue against the
combination of Gross and Smith to provide an incremental searching system
because this issue has already been decided by the Board and affirmed by
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the Federal Circuit in IPR2017-00715, which concerned the ’696 patent.4
Id. at 5–9. Petitioner argues
[t]he Board considered a nearly identical combination of Gross
and Smith with respect to the ’696 patent, specifically holding
that a [person of ordinary skill in the art] ‘would have readily
recognized the proposed combination and would have been able
to incorporate the incremental searching system and method
described by Gross with the overloaded keypad environment
and numeric index taught by Smith.’
Id. at 6–7. Petitioner argues that the claim elements are nearly identical
between the ’011 and ’696 patents, and to the extent that they are different,
the differences are not material. Id. at 7–8.
Patent Owner responds that “[t]he issues litigated for the ’696 patent
had nothing to do with the highlighting element at issue in this case” because
“the ’696 patent does not recite highlighting at all.” PO Sur-Reply 2; see
also id. at 3–6. Patent Owner argues that Petitioner admits that the
“identical” issue was not previously decided, and “[t]he fact that the ’011
patent and the ’696 patent are related and have some similar claim elements
does not reach the threshold for collateral estoppel.” Id. at 3.
We agree with Patent Owner that there is no collateral estoppel.
“Collateral estoppel protects a party from having to litigate issues that have
been fully and fairly tried in a previous action and adversely resolved against
a party-opponent.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
1342 (Fed. Cir. 2013). To prove collateral estoppel, a party must show:
[1] that in the prior action the party against whom estoppel is
sought had a full and fair opportunity to litigate the issue; [2]

4 Both the ’696 patent and the ’011 patent claim priority to provisional
application No. 60/711,866 and provisional application No. 60/716,101. See
Ex. 2005, code (60), 1:7–23; Ex. 1201, code (60), 1:8–18.
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the issue was actually litigated; [3] the controlling facts and
applicable legal rules were the same in both actions; [4]
resolution of the particular issue was essential to the final
judgment in the first action; and [5] the identical issue was
decided in the first action.
See Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1537 (Fed.
Cir. 1995) (emphasis added). In considering collateral estoppel of
adjudicated patent claims, the patent claims do not have to be identical;
rather, “it is the identity of the issues that were litigated that determines
whether collateral estoppel should apply.” Ohio Willow Wood, 735 F.3d at
1342.
Here, we agree with Patent Owner that the issues presented are not
identical to the issues addressed in IPR2017-00715 as to the ’696 patent.
Importantly, the ’696 patent does not claim, discuss, or describe the claimed
“highlighting” limitation 1[e], which is the central subject of the arguments
presented by Patent Owner in this proceeding. See PO Sur-Reply 3–7; see
Ex. 2005. Indeed, Patent Owner clarified at the hearing that the primary
dispute is “whether or not Gross and Smith teaches the claimed highlighting
in response to unresolved element of the claims.” Tr. 37:7–12; 38:15–17
(“overall, I think our arguments related to combinability relate to the
highlighting element”); 38:21–24 (“[indexing is] not precisely what we’re
arguing, although, frankly, it’s all linked together. But the arguments related
to combinability here are primar[ily] related to the highlighting argument–
the highlighting aspect of the claims.”).
We agree with Patent Owner that the arguments could have some
potential overlap, but given the differences between the ’696 patent and the
’011 patent with respect to claimed “highlighting,” as well as the differences
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in arguments presented in this proceeding, we are not persuaded that
collateral estoppel applies to Patent Owner’s arguments. Moreover,
Petitioner clarified at the hearing that they “don’t think that [Patent Owner
is] precluded from arguing the combination with respect to highlighting.”
Tr. 35:2–4.
E. Obviousness of Claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and 24
Over the Combination of Gross and Smith
Petitioner contends claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and
24 would have been obvious over the combination of Gross and Smith.
Pet. 26–54. Patent Owner opposes. See generally PO Resp. In our
discussion below, we first provide a brief overview of the prior art, and then
address the parties’ contentions in turn.
1. Gross (Ex. 1211)
Gross is titled “Methods and Systems for Search Indexing” and
generally describes methods and systems for quick and efficient searching.
Ex. 1211, code (54), code (57). Gross provides for incremental or reactive
searching, which allows search results to be provided and narrowed
substantially immediately after each character in a search string is entered by
a user, thus providing the user with immediate visual feedback. Ex. 1211
¶¶ 10, 29.
Gross’s search application includes an index engine that creates
indexes of the potential search targets. Id. ¶¶ 38, 175. “The index includes a
data structure that associates character strings with files, documents, and the
like.” Id. ¶ 40. “In one example embodiment, for each word or character
string found with[in] a file or document, the index stores which field of
which documents or files contain that word or character string.” Id. In
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addition to complete words, the index may also store “prefix” entries, such
as “d” or “do,” which will enhance the speed of response for the first letter
or two of a filtering or search operation. Id. ¶ 51. “The ‘d’ prefix entry
contains information indicating which documents or files contain a word or
character string starting with ‘d.’” Id. In response to a query, the search
engine accesses the index and locates corresponding matches. Id. ¶ 58. The
search results are displayed to the user in the list pane or area, and the view
area or pane displays the contents of the first item or a selected item from the
list area. Id. ¶ 48. Gross also teaches that the first matching character or
character string in the search results may be highlighted or otherwise
emphasized. Id. ¶ 49.
2. Smith (Ex. 1213)
Smith is titled “Methods and Apparatus for Using a Modified Index to
Provide Search Results in Response to an Ambiguous Search Query” and
generally “allows a user to submit an ambiguous search query and to receive
potentially disambiguated search results.” Ex. 1213, code (54), code (57).
Smith explains that the data input interface in certain devices, such as
wireless telephones, may result in a particular action by a user (e.g., pressing
a key) corresponding to more than one alphanumeric character. Id. at 1:27–
30. For example, pressing the number 2 on a telephone keypad may
correspond to the number “2” or the letters “A,” “B”, or “C.” Id. at Fig. 5B.
Such a keypad is illustrated below in Figure 5B of Smith.
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Figure 5B shows a keyboard where multiple letters on a key map to a
particular number. Id. Therefore, with conventional search methods, the
“user may be required to press multiple keys to select a particular letter” in a
keypad such as that illustrated in Figure 5B of Smith, above, which can be
inefficient. Id. at 1:37–39, 1:62–63.
Smith seeks to resolve these problems by “generating a numeric index
based on the mapping of a standard telephone handset.” Id. at 4:63–65.
Smith describes generating an alphanumeric index of terms corresponding to
documents to be searched. Id. at 5:1–3, Fig. 4A. The alphanumeric terms in
the index are then translated into their numeric equivalents using mapping
information corresponding to a standard telephone handset. Id. at 5:5–7.
For example, “the alphanumeric term ‘car’ is translated into the numeric
term ‘227’.” Id. at 5:10–11. Then, “a numeric index is generated based on
the translated terms” that corresponds to each document. Id. at 5:20–24.
The user’s search query (e.g., “227”) is compared to the numeric index and
the corresponding documents are provided to the user as search results. Id.
at 2:62–64. Figure 5A of Smith, depicted below, illustrates Smith’s
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technique for providing search results in response to an ambiguous search
query:

Figure 5A of Smith, above, illustrates Smith’s technique for providing
search results in response to an ambiguous search query.
3. Analysis of Claim 1
Petitioner contends claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and
24 would have been obvious over the combination of Gross and Smith.
Pet. 26–54. The dispute between the parties centers on element 1[e] and
Petitioner’s proffered motivation to combine Gross and Smith with respect
to the claimed “highlighting” feature of limitation 1[e]. PO Resp. 17–35.
Petitioner’s contentions regarding other elements recited in claim 1 are
unopposed. Unless otherwise noted, Patent Owner’s arguments as to the
motivation to combine Gross and Smith will be addressed below in Section
III.E.3.f.2, in connection with limitation 1[e].
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a) Preamble
The preamble of claim 1 recites
[a] method of processing unresolved keystroke entries by a user
from a keypad with overloaded keys in which a given key is in
fixed association with a number and at least one alphabetic
character, said unresolved keystroke entries being directed at
identifying an item from a set of items, each of said items being
associated with information describing the item comprising one
or more words, the method comprising:.

Ex. 1201, 8:40–46. Petitioner contends that the combination of Gross and
Smith teaches the preamble. Pet. 26–27. Specifically, Petitioner asserts
Gross discloses a system for searching, e.g., emails and files, that “includes
an index engine with a data structure that associates information regarding
files, documents, and the like with character strings.” Id. at 27 (citing
Ex. 1211 ¶¶ 10, 38, 40; Ex. 1214 ¶ 123). Petitioner explains “[e]ach item is
indexed and can be searched by information” and the “[l]etters and words in
these various searchable fields are mapped to the search query strings
entered by the user.” Id. (citing Ex. 1211 ¶¶ 103, 111, 135; Ex. 1214 ¶ 123).
Petitioner contends “Gross explains that indexed strings can be input
via a computer-networkable wireless phone, which suggests the use of
‘unresolved keystroke entries . . . from a keypad with overloaded keys.’” Id.
(citing Ex. 1211 ¶ 60; Ex. 1214 ¶¶ 124–125). However, Petitioner asserts
Smith explicitly discloses the “unresolved keystroke entries by a user from a
keypad with overloaded keys in which a given key is in fixed association
with a number and at least one alphabetic character.” Id. at 29 (citing
Ex. 1213, 5:7–19, Fig. 5B; Ex. 1214 ¶¶ 126–127). Petitioner explains “[i]n
Smith, overloaded key inputs are used to conduct searches using a numeric
index that maps the numeric inputs from the overloaded keypad to search
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results.” Id. (citing Ex. 1213, 1:62–2:22, 5:20–42, Figs. 4A, 5A, 5C).
Petitioner contends, with supporting testimony from Dr. Fox, that “[i]t
would have been obvious to combine Gross’s search system using a wireless
phone with Smith’s search system to efficiently search using a keypad with
overloaded keys.” Pet. 30 (citing Ex. 1213, 2:1–3; Ex. 1214 ¶¶ 127–131).
Petitioner explains “Smith converts alphanumeric indexes (as described by
Gross) to numeric indexes useful for when a user has an overloaded
keypad.” Id.
Petitioner and Dr. Fox present several reasons why a person of
ordinary skill in the art would have been motivated to combine Gross with
Smith. Pet. 30––32; Ex. 2014 ¶¶ 127–131. First, Petitioner argues that
“Gross was ready for the improvement Smith offers, and Smith explicitly
teaches that it improves systems such as the one disclosed in Gross, which
have an overloaded keypad.” Id. at 30 (citing Ex. 1214 ¶ 128); see also id.
at 32 (“Smith explicitly teaches . . . how to translate Gross’s alphanumeric
index to a numeric index . . .”). Second, Petitioner argues that a person of
ordinary skill in the art “would have been motivated to combine Gross with
Smith’s more efficient input and indexing method to improve the speed and
efficiency of Gross’s searching using an overloaded keypad.” Id. (citing Ex.
1214 ¶ 128); id. at 31 (citing Ex. 1214 ¶ 129) (“the combination would allow
the user to enter fewer keystrokes on an overloaded keypad . . .” and the
combination would “allow[] the user to more quickly find content the user
desires to view, and enhanc[e] the user experience”); id. at 32 (citing Ex.
1214 ¶ 129) (the combination “would reduce the keystrokes necessary to
find matching items…and thus improve a user’s search experience”).
Finally, Petitioner asserts that “[a]ll claimed elements were known in the
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prior art, and a [person of ordinary skill in the art] would have combined
them by known methods ‘with no change in their respective functions,’”
and, therefore, “[t]he combination . . . does no more than yield predictable
results.” Id. at 30 (citing Ex. 1214 ¶ 129); see also id. at 31–32 (citing Ex.
1214 ¶¶ 126–131) (clear expectation of success to modify Gross with
Smith’s numeric indexing because these “known options [were] within [a
person of ordinary skill in the art’s] technical grasp”).
Patent Owner does not dispute Petitioner’s showing. See generally
PO Resp.; PO Sur-Reply. We agree with Petitioner’s contentions and credit
and give weight to the testimony of Dr. Fox, both of which are consistent
with the evidence of record. Accordingly, Petitioner has sufficiently
demonstrated that a person of ordinary skill in the art would have combined
the teachings of Gross and Smith in the manner suggested and that the
combination teaches or suggests the preamble of claim 1.5
b) Limitation 1[a]
Limitation 1[a] of claim 1 recites “indexing said items by associating
subsets of said items with corresponding strings of one or more unresolved
keystrokes for overloaded keys so that the subsets of items are directly
mapped to the corresponding strings of unresolved keystrokes for various
search query prefix substrings.” Ex. 1201, 8:47–52. Petitioner relies on
Gross in combination with Smith to teach this limitation. Pet. 33.

5 Neither party argues whether the preamble limits claim 1. Although we
find that the evidence supports that the prior art teaches the preamble, we
make no determination in this Decision that the preamble of claim 1 is
limiting.
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Specifically, Petitioner contends Gross provides for incremental
searching through use of an index that “includes a data structure that
associates character strings with files, documents, and the like.” Id. at 33–34
(citing Ex. 1211 ¶¶ 10–12, 29, 31, 38, 40, 45, 46, 48–51, 58, 103–107 111,
112, 149; Ex. 1214 ¶¶ 135–138). Petitioner argues Gross describes “for
each word or character string found with a file or document, the index stores
which fields of which documents or files contain that word or character
string.” Id. at 34 (citing Ex. 1211 ¶ 40). In support, Petitioner points to
paragraph 51 of Gross, which states “in addition to bare or complete words,
such as ‘dog,’ common prefixes, such as ‘d’ or ‘do’, are stored as well. The
‘d’ prefix entry contains information indicating which documents or files
contain a word or character string starting with ‘d.’” Pet. 34 (citing Ex. 1211
¶ 51; Ex. 1214 ¶ 137) (emphasis omitted). Petitioner contends “each
alphanumeric character of a search query prefix substring associated with an
item is matched, based on direct mapping in the index, to alphanumeric
characters being entered by the user.” Id. at 35 (citing Ex. 1211 ¶¶ 45–47,
51, 68, 82, 83, 124, 131, 135, 137, 149, 150, 165–170, 177; Ex. 1214 ¶ 138).
Petitioner explains that although “Gross discloses an alphanumeric
index, it does not explicitly disclose an index that maps the index items to
numeric key equivalents of queries entered by a user.” Id. at 35. Therefore,
Petitioner relies on Smith to disclose “an index that maps subsets of items to
numeric key equivalents, and uses an alphanumeric index to generate an
index for numeric key equivalents.” Id. at 35–36 (citing Ex. 1214 ¶¶ 138–
139). Petitioner contends that in Smith “[o]nce the numeric index is
generated, indexed items are directly mapped to the numbers corresponding
to overloaded keystrokes.” Id. at 36 (citing Ex. 1213, 5:20–62, Fig. 5C;
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Ex. 1214 ¶ 139). Petitioner explains “[t]o create the numeric index, Smith
translates alphanumeric terms in an index[.]” Id. at 37.
Petitioner, with supporting testimony from Dr. Fox, contends a person
of ordinary skill in the art would modify “Gross’s index to directly map
subsets of items to the numeric key equivalent (i.e., unresolved keystrokes
for overloaded keys) that could be entered by a user who was using an
overloaded keypad. . . .” Id. at 37 (citing Ex. 1214 ¶¶ 140–152); see also id.
at 40–42. Petitioner explains “[i]n the Gross/Smith combined system’s
numeric index, subsets of items associated with words beginning with ‘3’,
‘d’, ‘e’, and ‘f’ would be all directly mapped to ‘3,’ since ‘3’ is the numeric
equivalent of ‘3,’ ‘d,’ ‘e,’ and ‘f’ on an overloaded keyboard.” Id. at 39
(citing Ex. 1214 ¶ 145). Petitioner further explains “the subsets of items
associated with words beginning with ‘do’ would be directly mapped to
‘36,’ so that as the user entered more of the search query (i.e., ‘3’ then ‘36’),
the results would be more narrowly filtered.” Id. (citing Ex. 1214 ¶¶ 140–
151). Therefore, Petitioner argues the Gross/Smith combination
meets the proposed construction of ‘directly mapped’ because
‘each alphanumeric character of a search query prefix substring
associated with an item’ (e.g., the characters ‘d,’ ‘do,’ or ‘dog,’
which are associated with items in a subset) ‘is matched with its
corresponding numeric key equivalent on an overloaded
keypad’ (e.g., the index maps ‘36’ to the items associated with
‘DM,’ ‘DN,’ ‘DO,’ etc.).

Id. (citing Ex. 1214 ¶ 151). Petitioner, with supporting testimony from
Dr. Fox, asserts similar motivations to combine the references as discussed
infra at Section III.E.3.a, such as efficient searching, improvement to
Gross’s system, and the use of a known technology to modify a known
system to achieve predictable results, with benefits as explained in Smith.
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Id. at 40–41 (citing Ex. 1214 ¶¶ 128–131, 138, 140–141, 146; Ex. 1211 ¶ 60;
Ex. 1213, 1:20–65, 2:1–3, 5:33–42).
Patent Owner does not dispute Petitioner’s showing. See generally
PO Resp.; PO Sur-Reply. We agree with Petitioner’s contentions and credit
and give weight to the testimony of Dr. Fox, both of which are consistent
with the evidence of record. Accordingly, Petitioner has sufficiently
demonstrated that a person of ordinary skill in the art would have combined
the teachings of Gross and Smith in the manner suggested and that the
combination teaches or suggests limitation 1[a].
c) Limitation 1[b]
Limitation 1[b] of claim 1 recites “for at least one subset of items,
which determining letters and numbers present in the information associated
with and describing the indexed items of said subset caused said items to be
associated with the strings of one or more unresolved keystrokes that
directly mapped to said subset.” Ex. 1201, 8:53–58. Petitioner contends the
combination of Gross and Smith teaches this limitation. Pet. 41.
Petitioner asserts “Gross, combined with Smith, teaches this in
conjunction with displaying highlighted search results.” Id. Petitioner
argues “Gross discloses highlighting characters that matched keystroke
entries during an incremental search,” so, therefore, “highlights each
corresponding character of the search results that were determined to have
caused the match to the search query.” Id. at 41–42 (citing Ex. 1211 ¶¶ 49,
107, 114, 120; Ex. 1214 ¶ 162). Petitioner explains “[t]he Gross/Smith
system, therefore, determines which characters match a string of unresolved
keystrokes directly mapped to the subset (e.g., if a user types ‘364,’ the
system highlights matching characters ‘dog’).” Id. at 42. Petitioner
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contends “[u]se of Gross’s highlighting technique in the Gross/Smith system
results in the ‘determining’ being performed.” Id.; see also id. at 43 (citing
Ex. 1214 ¶¶ 162–163). Petitioner further argues “[a] POSA with ordinary
creativity would have recognized that incorporating Gross’s highlighting
technique in the Gross/Smith system would require determining which
alphanumeric characters to highlight.” Id. at 42 (citing Ex. 1214 ¶ 163).
Patent Owner does not dispute Petitioner’s showing. See generally
PO Resp.; PO Sur-Reply. We agree with Petitioner’s contentions and credit
and give weight to the supporting testimony of Dr. Fox, both of which are
consistent with the evidence of record. Accordingly, Petitioner has
sufficiently demonstrated that a person of ordinary skill in the art would
have combined the teachings of Gross and Smith in the manner suggested
and that the combination teaches or suggests limitation 1[b].
d) Limitation 1[c]
Limitation 1[c] recites “subsequent to said indexing, receiving from a
user a search query for desired items composed of unresolved keystrokes,
said search query comprising a prefix substring for at least one word in
information associated with the desired item.” Ex. 1201, 8:59–63.
Petitioner relies on the combination of Gross and Smith to teach this
limitation. Pet. 46.
Petitioner contends “Gross’s incremental search queries are prefix
substrings (the ‘d’ in ‘dog’), used to pull subsets of items from an index
mapping the substring to items with information associated with the items
that match the prefix.” Id. at 47 (citing Ex. 1211 ¶¶ 40, 51, 118). Therefore,
according to Petitioner, in Gross, “if a user searches for ‘dog,’ the first
entered key corresponds to ‘d,’” whereas “[i]n the combined Gross/Smith
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system, the entered prefix for ‘d’ would be ‘3,’ the unresolved numeric
keystroke corresponding to ‘d.’” Id. (citing Ex. 1211 ¶ 51; Ex. 1214 ¶¶ 168–
169; Ex. 1213, Fig. 5A, 5:33–42).
Petitioner asserts the same motivations to combine the references as
discussed infra at Section III.E.3.a, such as using Smith’s techniques to
generate numeric indexes in Gross’s system “for the purpose of efficiently
searching when receiving input from devices with overloaded keypads.”
Pet. 48.
Patent Owner does not dispute Petitioner’s showing. See generally
PO Resp.; PO Sur-Reply. We agree with Petitioner’s contentions and credit
and give weight to the supporting testimony of Dr. Fox, both of which are
consistent with the evidence of record. Accordingly, Petitioner has
sufficiently demonstrated that a person of ordinary skill in the art would
have combined the teachings of Gross and Smith in the manner suggested
and that the combination teaches or suggests limitation 1[c].
e) Limitation 1[d]
Limitation 1[d] recites “in response to each unresolved keystroke,
identifying and displaying the subsets of items, and information associated
therewith, that are associated with the strings of one or more unresolved
keystrokes received from the user based on the direct mapping of strings of
unresolved keystrokes to subsets of items.” Ex. 1201, 8:64–9:2. Petitioner
contends the combination of Gross and Smith teaches this limitation.
Pet. 49.
Petitioner asserts “Gross discloses an incremental search system . . .
and the Gross/Smith system allows input of search queries via unresolved
keystrokes on an overloaded keypad . . . , so the results of the Gross/Smith
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system are identified and displayed ‘in response to each unresolved
keystroke.’” Id. (citing Ex. 1211 ¶¶ 10–12, 29, 30, 35, 51, 103, 111–113,
117–119, 123, 131, 136, 137, 141, 142, 144, 145, 149, 150, 171, 173, 174,
181, 187; Ex. 1214 ¶¶ 172–173). Petitioner argues “the identified and
displayed results in Gross are the subsets of items, and information
associated therewith (e.g., titles, file paths, dates, genres), associated with
strings of one or more keystrokes received from the user based on direct
mapping of strings of keystrokes to subsets of items.” Id. at 50–51 (citing
Ex. 1211 ¶¶ 40, 51, 58, Figs. 3A–3H; Ex. 1214 ¶¶ 174–176). Petitioner
further argues “[i]n the Gross/Smith system, the keystrokes are unresolved
keystrokes from an overloaded keypad. In Gross, the results of the search
display links to the items themselves, portions of the contents of the items,
or information about the items that caused the items to be returned in search
results.” Id. at 51 (citing Ex. 1211 ¶¶ 31, 48–50, 58, 104–107).
Petitioner asserts the same motivations to combine the references as
discussed infra at Section III.E.3.a. Pet. 51. Patent Owner does not dispute
Petitioner’s showing. See generally PO Resp.; PO Sur-Reply. We agree
with Petitioner’s contentions and credit and give weight to the supporting
testimony of Dr. Fox, both of which are consistent with the evidence of
record. Accordingly, Petitioner has sufficiently demonstrated that a person
of ordinary skill in the art would have combined the teachings of Gross and
Smith in the manner suggested and that the combination teaches or suggests
limitation 1[d].
f) Limitation 1[e]
Limitation 1[e] recites,
in response to each unresolved keystroke, as the identified items
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are displayed, highlighting the letters and numbers present in the
one or more words in said information describing the identified
items that were determined to have caused the displayed items to
be associated with the strings of unresolved keystrokes that are
directly mapped to said items received so as to illustrate to the
user how the unresolved keystrokes entered match the
information associated with the displayed items,

Ex. 1201, 9:3–12 (emphasis added). Petitioner contends the combination of
Gross and Smith teaches this limitation. Pet. 51–52.
Petitioner contends “Gross discloses that search results ‘may be
highlighted or otherwise emphasized.’” Id. at 52 (Ex. 1211 ¶¶ 49, 107, 114,
120). Petitioner points to paragraph 114 of Gross, which states “search
terms will be highlighted in the list pane or area search results and/or in the
view pane or area content display. The highlighting can be in the form of a
different coloring, the use of different fonts, blinking text, and/or the like.”
Id. (emphasis in Petition). Petitioner explains:
If a search is run for “dog” in the Gross/Smith system, following
the entry of the “3” by the user (corresponding to the “d” in
“dog”), results with the word “dog” in the title, along with other
“d” words, are returned with the letter “d” highlighted. Items
having words associated with “e,” “f,” and “3” would also be
returned, with the “e,” “f,” or “3” highlighted, respectively. Ex.
1214, ¶ 164. Following the entry of the “6” (corresponding to
the “o” in “dog”), results with the word “dog” in the title, along
with other “do” words, would be returned, with the “do”
highlighted. Id. The highlighting of the search terms “illustrate
to the user how the unresolved keystrokes entered match the
information associated with the displayed items.” Id., ¶¶ 58–59,
180.

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Pet. 52–53; see also Pet. 41–43. Petitioner asserts that “[i]n combination,
Gross-Smith teaches highlighting the ambiguous search terms in the search
results.” Pet. Reply 3.
Patent Owner argues that (1) neither Gross nor Smith teaches or
suggests the claimed “highlighting”; and (2) a person of ordinary skill in the
art would not have been motivated to modify Gross’s system based on
Smith’s teachings. PO Resp. 17–18. We address each argument in turn.

(1) Whether the Combination of Gross and Smith teaches limitation 1[e]
Patent Owner argues that Gross highlights the exact alphanumeric
search string entered by a user, which consists only of unambiguous
alphanumeric keystrokes. PO Resp. 19. For example, Patent Owner argues
“if the user enters the search term ‘866,’ Gross highlights the exact search
term ‘866.’” Id. at 20. Patent Owner further argues that Smith does not
cure Gross’s deficiencies because Smith does not highlight numbers or
letters, but, rather, simply returns document results with no manipulation of
the letters and numbers within the returned documents. Id. at 19–21; see PO
Sur-Reply 8 (“Smith does not describe highlighting at all”).
We do not find Patent Owner’s arguments persuasive. Instead, we
agree with Petitioner that Patent Owner’s arguments address the teachings of
Gross and Smith separately, rather than in the combination as asserted by
Petitioner. See Pet. Reply 4–5; In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012); In re Keller, 642 F.2d 413, 425 (CCPA 1981). As Patent Owner
points out, there is no dispute that Gross only highlights the exact search
terms in the search results, e.g., unambiguous or resolved keystrokes. See,
e.g., PO Resp. 20–21 (citing Ex. 2016, 275:19–276:1, 281:20–25, Ex. 1214,
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¶ 164); Sur-Reply 8; Pet. 41–42. However, Smith is relied upon to teach
providing search results in response to an ambiguous or unresolved search
query by using a numeric index to translate alphanumeric terms into their
numeric equivalents. E.g., Pet. 29–32. Therefore, “[i]n combination, Gross-
Smith teaches highlighting the ambiguous search terms in the search
results.” Pet. Reply 3 (emphasis added).
Moreover, the fact that Smith returns documents is irrelevant in
Petitioner’s analysis, as Petitioner is not relying on Smith’s documents as
part of the combination. E.g., Ex. 1233 ¶ 13 (“Gross/Smith would have
highlighted the ‘matching character string’ or ‘search terms’ corresponding
to the ambiguous keystroke(s) by the user that are within the displayed
search results, as taught in Gross.”) (emphasis added). Patent Owner’s
arguments, therefore, do not persuasively address the teachings of the
combination of Gross and Smith as disclosing the claimed “highlighting”
feature in the manner proposed by Petitioner.
Patent Owner also asserts that Petitioner “never explains how or why
the combination of Gross/Smith discloses the claimed highlighting.” PO
Sur-Reply 8; PO Resp. 23. Specifically, Patent Owner argues that neither
Petitioner nor Dr. Fox “explained how Smith’s numeric index would
integrate into Gross’s index such that Gross would know which character
strings to highlight in the documents.” PO Sur-Reply 9; see PO Sur-Reply
10–11. According to Patent Owner, this is especially problematic because
Gross does not describe how its highlighting process works; rather, it only
describes that the results are highlighted. PO Sur-Reply 11, 14.
We disagree that Petitioner’s explanation of how and why the
combination of Gross and Smith discloses the claimed highlighting is
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inadequate. To the contrary, as cited infra, Petitioner, supported by
testimony from Dr. Fox, has sufficiently described how and why the
combination teaches the claimed highlighting. See Pet. 41–43, 52–53,
Ex. 1214 ¶¶ 162–163, 180. Petitioner is not required to provide technical
detail on exactly how the features of the secondary reference – Smith –
would be incorporated into Gross. “It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d at 1332. The skilled artisan is “[a] person of ordinary creativity,
not an automaton” and “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416, 421; see also id. at 417 (“If a
person of ordinary skill in the art can implement a predictable variation,
§ 103 likely bars its patentability.”). Dr. Fox provides unrebutted testimony
that “highlighting characters that were determined to have caused matches to
a search query was a predictable technique long known in the art” (Ex. 1214
¶ 163), and submitted evidence supporting such testimony. Ex. 1214 ¶ 59
(citing Ex. 1204, 197 (“Highlighting of query terms has been found time and
again to be a useful feature for information access interfaces”)). That such
highlighting was well known in the art is also supported by the lack of
detailed disclosure in Gross. In re Buchner, 929 F.2d 660 (Fed. Cir. 1991)
(“The specification need not disclose what is well known in the art.”).
Accordingly, Petitioner has sufficiently demonstrated that the
combination of Gross and Smith teaches or suggests limitation 1[e]. We
now turn to Petitioner’s contentions, and Patent Owner’s arguments, on the
motivation to combine the references.
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(2) Whether Petitioner has Shown Sufficient Motivation to Combine Gross
and Smith with Respect to Limitation 1[e]
Upon review of the evidence in the current record and the parties’
contentions, we determine that Petitioner has shown sufficiently that a
person of ordinary skill in the art would have had reason, with rational
underpinnings, to combine Gross and Smith in the manner Petitioner
proposes.
Petitioner, with supporting testimony from Dr. Fox, contends
a [person of ordinary skill in the art] would have found it
obvious to determine and highlight the alphanumeric characters
of the items that caused the displayed items to be associated
with the strings of unresolved keystrokes, so that the system
could efficiently display to the user how the search results
correspond to the indexed search terms.

Pet. 53 (citing Ex. 1214 ¶¶ 162–163). Petitioner further contends that it
would have been obvious “to determine which letters and numbers to
highlight, since doing so would save processing power at the time of search,
and thereby allow the system to more quickly provide highlighted results to
the user, thus resulting in an improved user experience.” Id. (citing Ex. 1214
¶ 163); see also Pet. 41–43.
Patent Owner presents several arguments regarding the combination
of Gross and Smith. Specifically, Patent Owner argues that (1) Petitioner
“can only be resorting to hindsight bias” to arrive at the combination of
Gross-Smith, given the “technical problems” with the combination; (2) the
proposed modification results in alleged deficiencies, such as performance
degradation, irrelevant search results that would undesirably confuse the
user, and frustration of Gross’s intended purpose of providing precise
results; and (3) Smith teaches away from search queries based on exact
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matches. PO Resp. 22–35; see also PO Sur-Reply 15. We address each
argument in turn.
(a) Whether the Combination of Gross and Smith is the Result of Hindsight
Bias Given “Technical Problems” With the Combination
Patent Owner contends that Petitioner “can only be resorting to
hindsight bias” to arrive at the combination of Gross-Smith, given the
“technical problems” with the combination. PO Resp. 24; see also PO Sur-
Reply 15. Patent Owner asserts that Petitioner’s modifications to Gross are
not trivial, and would not have been obvious to a person of ordinary skill in
the art during the relevant timeframe. PO Resp. 23 (citing Ex. 2014 ¶ 71).
Specifically, and supported by testimony from Dr. Russ, Patent Owner
argues that “an additional and undesirable layer of search result processing,
beyond what is disclosed in Gross and Smith, would be required to identify
the alleged terms highlighted.” Id.
We do not find these arguments persuasive. Specifically, there is no
persuasive evidence in the record that it would have been “uniquely
challenging or difficult for one of ordinary skill in the art” to combine the
teachings of the Gross and Smith, with respect to the highlighting. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). As discussed above, Petitioner has
submitted unrebutted evidence that highlighting search results was well
known in the art. E.g., Ex. 1204 at 197. Dr. Fox provides testimony that “a
POSA would have found the modification to be a straightforward
application of Smith’s teaching to Gross.” Ex. 1214 ¶ 129; see also id. ¶ 130
(“a POSA would have recognized, from Smith’s description of a numeric
index and comparing a numeric query to the numeric index, how to modify
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Gross’s system (e.g., by modifying Gross’s software) to use numeric indexes
and numeric queries.”); id. ¶ 163 (“logical and efficient to combine Gross
and Smith so that in the combined Gross/Smith system, the highlighted
characters correspond to the characters that caused the items to be associated
with the strings of unresolved keystrokes” and “highlighting characters that
match a search query was a predictable technique long known in the art”).
Dr. Fox also testifies that the combination does not require a change to
Gross’s or Smith’s functions. Id. ¶ 129; see KSR, 550 U.S. at 416 (“[i]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”).
Dr. Russ testifies that
a [person of ordinary skill in the art] would have needed to
modify Gross and Smith beyond their disclosures in a non-trivial,
complex manner that would not have been obvious to a [person
of ordinary skill in the art] during the relevant timeframe. For
example, another additional and undesirable layer of search
result processing, beyond what is disclosed in Gross and Smith,
would have been required to actually identify the alleged terms
to be highlighted.

Ex. 2014 ¶ 71. Dr. Russ’s testimony does not provide persuasive
explanation or refer to supporting evidence as to why the proposed
modification was “complex” or “non-trivial,” or why adding an additional
layer of processing would have been challenging or difficult for a person of
ordinary skill in the art. “Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.” 37 C.F.R. § 42.65 (2019).
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We also find that Petitioner and Dr. Fox have provided a credible and
persuasive rationale for making the proposed modification to Gross in light
of Smith’s teachings, namely “so that the system could efficiently display to
the user how the search results correspond to the indexed search terms.” See
Pet. 53 (citing Ex. 1214 ¶¶ 162–163). Petitioner and Dr. Fox’s reasoning is
consistent with what was known in the art, that highlighting “is thought to
help draw the user’s attention to the parts of the document most likely to be
relevant to the query.” Ex. 1204 at 197.

(b) Whether a Person of Ordinary Skill in the Art Would Not Have Been
Motivated to Combine Gross and Smith Due to Alleged Deficiencies in
the Combination
Patent Owner, with supporting testimony from Dr. Russ, argues that
because the Gross-Smith combination would highlight additional irrelevant
search results (e.g., non-matching words), rather than only highlighting
“matching words” as intended by Gross, the modification “directly conflicts
with Gross’s goal of providing clear search results and preventing
undesirable user confusion.” PO Resp. 29–31; see also PO Sur-Reply 17.
For example, Patent Owner points out that entering “227” would result in
returning documents with both “car” and “bar” because both map to “227.”
PO Resp. 24 (citing Ex. 2014 ¶¶ 72–73). Dr. Russ testifies that this type of
operation would be “detrimental to the user experience.” Ex. 2014 ¶ 72.
According to Patent Owner, because Gross is directed to unambiguous
search queries, and Smith is directed to ambiguous search queries, “no
[person of ordinary skill in the art] would have combined the teachings of
Gross and Smith since such a combination would necessarily result in a
change of principle of operation of one or both references.” PO Resp. 31.
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Petitioner contends that, “rather than frustrate Gross’s purpose, a
[person of ordinary skill in the art] would have appreciated that applying
Smith to Gross would allow Gross to be used efficiently when inputting
entries on an overloaded keypad.” Pet. Reply 12. Dr. Fox provides
supporting testimony that the combination of Gross/Smith “would provide a
user the ability to search using quick search entries through an overloaded
keypad, thus expanding the scope of applicability of Gross.” Ex. 1233 ¶ 16.
We do not find Patent Owner’s arguments persuasive. It is correct
that a person of ordinary skill in the art has little reason to make a
modification that renders the prior art unsatisfactory or inoperable for its
intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
However, merely showing that the result of the modification may be
inconsistent with some of the reference’s goals is not sufficient for a
modification to be unsatisfactory or inoperable for its intended purpose. In
re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994).
Patent Owner identifies Gross’s intended purpose as “providing
accurate results to avoid user confusion” by “only highlight[ing] ‘matching
words.’” PO Resp. 29–30. But Gross’s intended purpose is much broader
than that: “The present invention provides for quick and efficient
searching.” Ex. 1211, code (57). To provide quick and efficient searching,
Gross discloses “incremental or reactive searching . . . [to provide the user]
with substantially immediate feedback as the search string is being entered,
and so can quickly decide on the desirability of entering additional search
characters, entering a new search string, or deleting one or more search
string characters.” Id. ¶ 10. Gross also discloses highlighting a matching
character or character string “so that the user can immediately see the
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matching word . . . in context.” Id. ¶ 49. We note that in connection with
other arguments presented, Patent Owner acknowledges this disclosure in
Gross. See PO Resp. 32 (stating that “Gross’s system is directed to ‘quick
and efficient searching’” and “advantageously provides for incremental or
reactive searching of a variety of search targets . . .” in arguing that the
modification would degrade Gross’s system performance); PO Resp. 34
(“[s]earching all of the permutations of possible strings . . . would result in
undesirable processing time and frustrate Gross’s goal of achieving a fast
and efficient search process”) (emphasis added); Ex. 2014 ¶ 85 (“[a]s an
additional goal to providing precise results, Gross describes another goal of
‘quick and efficient searching’”).
Patent Owner points to testimony from Dr. Fox in support of its
arguments, where Dr. Fox testified that “a [person of ordinary skill in the
art] would recognize that highlighting any other characters (instead of the
matching characters) would undesirably confuse the user, which would lead
away from Gross’s goal of helping the user ‘see the matching word . . . in
context.’” Ex. 1214 ¶ 163 (citing Ex. 1211 ¶ 49). But nothing in Dr. Fox’s
testimony describes anything other than how Gross would perform when
combined with Smith. The Gross-Smith combination, as proposed by
Petitioner, does not highlight characters that do not match. Dr. Fox’s
testimony supports this: “[a person of ordinary skill in the art] would
combine the references in this way so that the highlighted characters
correspond to the characters that were determined to have caused the
matches to the search query.” Ex. 1214 ¶ 163 (emphasis added); Ex. 1233
¶ 16 (“[a person of ordinary skill in the art] would appreciate that when
ambiguous keystrokes are entered in Gross/Smith, the results presented
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would, correctly, match at least one permutation of the ambiguous
keystrokes, and are thus, not ‘irrelevant.’”). Rather, Gross continues to
highlight matching characters; there are simply more matching characters
because the user input is ambiguous due to the overloaded keypad.
Accordingly, even under the combination, Gross continues to highlight
matching characters so that the user can “see the matching word . . . in
context.” Ex. 1211 ¶ 49.
That there are additional search results that may not match the user’s
intended search query (e.g., where the user types in a “2” intending to select
“c,” but words beginning with “b” are returned), or are irrelevant to the
user’s intended search query (e.g., the user us searching for “car” and not
“bar”), does not frustrate Gross’s intended purpose. The combination may
be less accurate in returning words that do not directly match the user’s
intended character entry, but that is simply a trade off in allowing the search
query functionality to be able to provide ambiguous input on an overloaded
keypad. Even if the modified system highlights more search results, the fact
that another alternative may be more effective does not mean that a person
of ordinary skill in the art would not have been motivated to make the
proposed combination. See In re Mouttet, 686 F.3d at 1334 (“[J]ust because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes.”); In re Fulton, 391 F.3d
1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a
particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide motivation for the
current invention.”). We agree with Petitioner that “[t]he return of
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additional results is the tradeoff for the added convenience of using an
ambiguous search query.” Pet. Reply 12; see Ex. 1233 ¶ 19.
Patent Owner, supported by testimony from Dr. Russ, additionally
argues that the modification to Gross’s system would degrade Gross’s
system performance by introducing unnecessary search processing
operations and frustrate Gross’s goal of achieving a fast and efficient search
process. PO Resp. 32–33 (citing Ex. 2014 ¶¶ 84–87); see also id. at 33–34;
PO Sur-Reply 17–18. According to Patent Owner, the proposed
modifications to Gross would slow down Gross’s system because it “would
introduce additional (and unnecessary) search processing to perform Smith’s
search term disambiguation,” and result in the return of irrelevant and
ambiguous search results. PO Resp. 32–33; see also PO Sur-Reply 17–18.
Patent Owner further argues that adding Smith’s additional processing
would provide no benefit to Gross’s system. PO Resp. 34 (citing Ex. 2014
¶ 91).
Petitioner contends that “Gross-Smith system would improve the
original functionality of the Gross search technique so that it could handle
ambiguous search queries.” Pet. Reply 12 (citing Ex. 1233 ¶ 19; Ex. 1214
¶¶ 140–141). Petitioner further contends that the return of additional results
is a tradeoff for the added convenience of using an ambiguous search query.
Id. According to Petitioner, “[a]ny extra processing is simply a result of
having implemented Smith the way Smith says to do, but that is not a reason
that a [person of ordinary skill in the art] would foreswear input on an
overloaded keypad.” Id. at 13.
We are not persuaded by Patent Owner’s arguments. It is not disputed
that, due to the ambiguous search query, the combined system will search
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more permutations and return more matches than Gross’s system alone. See
PO Resp. 33–34 (citing Dr. Fox’s deposition testimony, Ex. 2016, 296:17–
297:19); Ex. 1233 ¶ 19. However, as discussed above, the fact that there
may be some disadvantages to the combination, e.g., requiring additional
processing, does not mean there is no motivation to combine the references.
To the contrary, we credit Dr. Fox’s testimony that a person of ordinary skill
in the art would have realized the trade-off between quick search entry and
the potential for extra processing required to handle ambiguous search
queries, but would not be a reason to reject the combination. Ex. 2033 ¶ 19.
Petitioner has shown sufficiently that modifying Gross with Smith provides
an improvement to Gross, in that it can process ambiguous search queries.
E.g., Pet. 30–32, 41, 53–54; Ex. 1214 ¶ 128–129, Ex. 1233 ¶ 14, 17, 19. We
are, therefore, not persuaded by Dr. Russ’s testimony that the additional
processing would provide no benefit to Gross’s system. See Ex. 2014 ¶ 91.

(c) Whether Smith Teaches Away from Search Queries Using Exact
Matches
Patent Owner, with supporting testimony from Dr. Russ, argues that
Smith teaches away from search queries using exact matches, like the one in
Gross. PO Resp. 26 (citing Ex. 2014 ¶¶ 75–79). According to Patent
Owner, Gross is directed to a search system that receives alphanumeric
unambiguous keystroke entries (e.g., exact terms for search queries), while
Smith is directed to a search system that receives ambiguous keystrokes and,
therefore, Smith differentiates its system from alphanumeric search systems
like the one in Gross. Id. at 26–27. Patent Owner argues that Smith teaches
ambiguous search queries because unambiguous search queries, like the one
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in Gross, are inefficient. Id. (citing Ex. 1213, 1:62–65, 2:1–3). However,
Patent Owner argues Smith’s search results may be “less precise” relative to
the results generated by exact match systems like the one in Gross. Id. at 27.
Petitioner contends that Smith expresses an alternative solution, rather
than a teaching away. Pet. Reply 11. Petitioner further argues that “the fact
that there are some tradeoffs–various advantages and disadvantages–does
not mean the claim is not obvious. Patent Owner ignores (and thus does not
dispute) the other benefits of Smith’s ambiguous search using an overloaded
keypad.” Id.
We are not persuaded that Smith teaches away from search queries
using exact matches. A reference teaches away from a claimed invention if
it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the
reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Petitioner’s obviousness grounds are based on Gross
modified by Smith. E.g., Pet. 30. Patent Owner is correct that Smith and
Gross describe different search functionalities in that Smith teaches
ambiguous search queries, while Gross teaches unambiguous search queries.
PO Resp. 26–27. However, Smith describes the inefficiencies resulting from
unambiguous (or exact match) search queries, like the one in Gross, and
describes a need to provide relevant search results in response to an
ambiguous search query. Ex. 1213, 1:62–2:3; see PO Resp. 26–27. Smith,
thus provides motivation to modify Gross and even suggests the desirability
of such a modification. See In re Urbanski, 809 F.3d 1237, 1243–244 (Fed.
Cir. 2016); see Pet. 30 (“Gross was ready for the improvement Smith offers,
and Smith explicitly teaches that it improves systems such as the one
disclosed in Gross, which have an overloaded keypad”); Pet. Reply 14 (“[a
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person of ordinary skill in the art] would have understood that Smith’s
searching techniques would extend the capabilities of Gross’s search
system”). We, therefore, credit Dr. Fox’s testimony that “[t]his was the
purpose of Smith’s teachings, i.e., to convert indexes like Gross’s for
compatibility with ambiguous entries through an overloaded keypad.” Ex.
1233 ¶ 12; see also id. ¶ 14 (“a [person of ordinary skill in the art] would
have appreciated that these techniques may be complementary and can be
combined readily to yield an improved overall system . . . [and] the
combined Gross/Smith system would have the advantage of being able to
handle both scenarios appropriately”); see also id. ¶ 15 (“the Smith patent
states explicitly that such is its purpose, and it is designed to be combined
with a search system (like that of Google, the assignee of Smith – or Gross),
that handles unambiguous search queries.”).
We do not find credible Dr. Russ’s testimony that “Smith explicitly
teaches that query systems based on [alphanumeric indexes and numeric
indexes] would not have been combined” simply because Smith describes a
different type of search system. See Ex. 2014 ¶ 77. We do not see where
Smith teaches that such systems would not have been combined; rather,
Smith simply describes alternative search systems that provide
improvements in efficiency over conventional, unambiguous search queries,
like the one in Gross. See Ex. 1213, 1:20–2:3. The “mere disclosure of
alternative designs does not teach away.” In re Fulton, 391 F.3d at 1201.
Moreover, Patent Owner does not point to any disclosure in Gross that can
be said to discourage a person of ordinary skill in the art from modifying
Gross to use the ambiguous search query methods taught in Smith for its
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search queries. Rather, even Dr. Russ conceded that there are drawbacks in
using multi-tap entry in conventional keyboards. Ex. 2014 ¶¶ 32–34.
Patent Owner’s arguments also imply that there is a teaching away
because there are some trade-offs that would result in adopting Smith’s
ambiguous search query functionality, e.g., less precise search results.
These arguments were addressed above. Although modification to Gross
may result in less precise, or additional search results, than would result
from an exact match search, “a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (citation omitted). Accordingly, the record does
not include sufficient or credible evidence that the references teach away
from modifying Gross with the teachings of Smith.
Therefore, we agree with Petitioner’s contentions as to limitation 1[e],
and credit and give weight to the supporting testimony of Dr. Fox, both of
which are consistent with the evidence of record. Accordingly, Petitioner
has sufficiently demonstrated that a person of ordinary skill in the art would
have combined the teachings of Gross and Smith in the manner suggested
and that the combination of Gross and Smith teaches or suggests limitation
1[e].
g) Limitation 1[f]
Limitation 1[f] recites, “ordering the displayed items in accordance
with one or more given criteria.” Ex. 1201, 9:12–13. Petitioner relies on
Gross to teach this limitation. Pet. 54 (citing Ex. 1214 ¶¶ 182, 183).
Specifically, Petitioner contends “Gross discloses ordering results in
different ways, including chronology, relevance, and size, all of which meet
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this limitation.” Pet. 54 (citing Ex. 1211 ¶¶ 52, 53, 81, 115, 116).
Patent Owner does not dispute Petitioner’s showing. See generally
PO Resp.; PO Sur-Reply. We agree with Petitioner’s contentions and credit
and give weight to the supporting testimony of Dr. Fox, both of which are
consistent with the evidence of record. Accordingly, Petitioner has
sufficiently demonstrated that the combination of Gross and Smith teaches
or suggests limitation 1[f].
h) Summary of Claim 1
We are persuaded by Petitioner’s showing for all recitations in claim
1. Also, we are persuaded that Petitioner has offered articulated reasoning
with a rational underpinning as to why one of ordinary skill in the art would
have modified and combined the teachings of Gross and Smith in the
manner proposed by Petitioner. Therefore, Petitioner has shown by a
preponderance of evidence that claim 1 is unpatentable as obvious over
Gross and Smith.
4. Analysis of Claims 9 and 17
Independent claim 9 is the corresponding system claim to independent
method claim 1. Ex. 1201, 9:37–10:15. Petitioner relies on Gross and
Smith for the teaching of the limitations of claim 9 for essentially the same
reasons as described above with respect to claim 1. Pet. 62–65. Petitioner
also relies on Gross’s teachings of a display, as recited in limitations 9[d]
and 9[f], which are similar to limitations 1[d] and 1[f]. Pet. 63 (citing
Ex. 1211 ¶¶ 35, 38, 60, Figs. 3A–3H, 5, 6; Ex. 1214 ¶ 198). Similarly,
independent claim 17 is the corresponding computer program product claim
to independent method claim 1. Ex. 1201, 10:38–11:14. Petitioner relies on
Gross and Smith for the teaching of the limitations of claim 17 for
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essentially the same reasons as described above with respect to claim 1.
Pet. 65–67. For both claim 9 and claim 17, Petitioner also relies on Gross’s
teachings of a system whose functions “are preferably performed by
executable code and instructions running on one or more general-purpose
computers.” Pet. 63–64 (citing Ex. 1211 ¶¶ 33, 38, Fig. 1; Ex. 1214 ¶ 197).
Patent Owner does not argue separately Petitioner’s contentions for
claims 9 and 17, but argues that these claims are patentable for the same
reasons as claim 1. See PO Resp. 12, 17–35. We disagree for the reasons
discussed in § III.E.3, supra.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 9 and 17 are unpatentable as
obvious over Gross and Smith.
5. Analysis of Claims 2, 10, and 18
Claim 2 depends from claim 1 and recites “wherein said alphabetical
and numeric symbols are highlighted by being colored, bolded, italicized,
underlined, or changed to a different font, or some combination thereof.”
Ex. 1201, 9:14–17. Claims 10 and 18 recite similar limitations, and depend
from claims 9 and 17, respectively. Ex. 1201, 10:14–17, 11:15–18.
Petitioner relies on Gross to teach these limitations, asserting that Gross
discloses that “highlighting can be in the form of a different coloring, the use
of different fonts, blinking text, and/or the like.” Pet. 55 (citing Ex. 1211
¶¶ 114, 49, 107; Ex. 1214 ¶ 185); Pet. 67.
Patent Owner does not argue separately Petitioner’s contentions for
claims 2, 10, and 18, but argues that these claims are patentable for the same
reasons as claim 1. See PO Resp. 35. We disagree for the reasons discussed
in § III.E.3, supra. We determine that Petitioner’s arguments and evidence,
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for instance, the disclosure in paragraph 114 of Gross, show that the
limitations in claims 2, 10, and 18 are taught by Gross.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 2, 10, and 18 are unpatentable as
obvious over Gross and Smith.
6. Analysis of Claims 3, 11, and 19
Claim 3 depends from claim 1 and recites “wherein said one or more
given criteria include one or more of: temporal relevance, location
relevance, popularity, personal preferences and character count.” Ex. 1201,
9:18–21. Claims 11 and 19 recite similar limitations, and depend from
claims 9 and 17, respectively. Ex. 1201, 10:20–23, 11:19–22. Petitioner
relies on Gross to teach these limitations, asserting that Gross “discloses
sorting by personal preferences.” Pet. 56 (citing Ex. 1211 ¶¶ 31, 52–55, 80,
102, 109, 111, 115, 116, 118, 120–123, 131, 134, 137, 142, 146); Pet. 67.
For example, Gross describes “the user can optionally specify that only
search results that are likely to be relevant are to be displayed” and the “user
can optionally specify that a particular attribute is to be used as a default sort
key when presenting a document list.” Pet. 56 (citing Ex. 1211 ¶¶ 81, 52).
Petitioner further explains that in Gross, “the user may sort the results in
various ways, including by chronology (‘temporal relevance’), relevance, or
size (‘character count’).” Pet. 56 (citing Ex. 1211 ¶¶ 52, 53, 81, 110–116;
Ex. 1214 ¶¶ 186–188).
Patent Owner does not argue separately Petitioner’s contentions for
claims 3, 11, and 19, but argues that these claims are patentable for the same
reasons as claim 1. See PO Resp. 35. We disagree for the reasons discussed
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in § III.E.3, supra. We determine that Petitioner’s arguments and evidence
show that the limitations in claims 3, 11, and 19 are taught by Gross.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 3, 11, and 19 are unpatentable as
obvious over Gross and Smith.
7. Analysis of Claims 5, 13, and 21
Claim 5 depends from claim 1 and recites “wherein said search query
is processed by a server system remote from said user.” Ex. 1201, 9:26–27.
Claims 13 and 21 recite similar limitations, and depend from claims 9 and
17, respectively. Ex. 1201, 10:28–29, 11:7–9. Petitioner relies on Gross to
teach these limitations, particularly the disclosure that Gross’s system may
be implemented by a “server-based search application.” Pet. 57–59 (citing
Ex. 1211 ¶¶ 8, 35, 80, 173–185, Figs. 1, 5, 6; Ex. 1214 ¶¶ 189); Pet. 67–68.
Patent Owner does not argue separately Petitioner’s contentions for
claims 5, 13, and 21, but instead argues that these claims are patentable for
the same reasons as claim 1. See PO Resp. 35. We disagree for the reasons
discussed in § III.E.3, supra. We determine that Petitioner’s arguments and
evidence, for instance, the disclosure in paragraphs 173–185 of Gross, show
that the limitations in claims 5, 13, and 21are taught by Gross.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 5, 13, and 21 are unpatentable as
obvious over Gross and Smith.
8. Analysis of Claims 6, 14, and 22
Claim 6 depends from claim 1 and recites “wherein said search query
is processed by a device operated by said user.” Ex. 1201, 9:29–30. Claims
13 and 21 recite similar limitations, and depend from claims 9 and 17,
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respectively. Ex. 1201, 10:28–29, 11:7–9. Petitioner relies on Gross for the
teaching of the limitation of this claim, and particularly Gross’s disclosure
that its system may be implemented by a “client-based search application . . .
where indexing and searching are implemented on the user’s terminal 104.”
Pet. 59–60 (citing Ex. 1211 ¶¶ 35, 38, 58, 60–62, 112, 113, 118, 123, 145,
Fig. 1; Ex. 1214 ¶¶ 190–191); Pet. 68.
Patent Owner does not argue separately Petitioner’s contentions for
claims 6, 14, and 22 but instead argues that these claims are patentable for
the same reasons as claim 1. See PO Resp. 34. We disagree for the reasons
discussed in § III.E.3, supra. We determine that Petitioner’s arguments and
evidence, for instance, the disclosure in paragraphs 38, 60, and 61 of Gross,
show that the limitations in claims 6, 14, and 22 are taught by Gross.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 6, 14, and 22 are unpatentable as
obvious over Gross and Smith.
9. Analysis of Claims 8, 16, and 24
Claim 8 depends from claim 6 and recites “wherein the device is a cell
phone, desk phone, a PDA, or a remote control device for a television.” Ex.
1201, 9:34–36. Claims 16 and 24 recite similar limitations, and depend from
claims 14 and 22, respectively. Ex. 1201, 10:28–29, 11:7–9. Petitioner
relies on Gross to teach this limitation, specifically that Gross discloses a
user terminal that “can be a personal computer, an interactive television, a
networkable programmable digital assistant, a computer networkable
wireless phone, and the like . . .” Pet. 61–62 (citing Ex. 1211 ¶ 60).
Petitioner contends “[a] POSA would have known that some computer
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networkable wireless phones were used in cellular networks (i.e., a ‘cell
phone’).” Id. at 62 (citing Ex. 1214 ¶¶ 192, 193); Pet. 67.
Patent Owner does not argue separately Petitioner’s contentions for
claims 8, 16, and 24, but instead argues that these claims are patentable for
the same reasons as claim 1. See PO Resp. 34. We disagree for the reasons
discussed in § III.E.3, supra. We determine that Petitioner’s arguments and
evidence, for instance, the disclosure in paragraph 60 of Gross, show that the
limitations in claims 8, 16, and 24 are taught by Gross.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 8, 16, and 24 are unpatentable as
obvious over Gross and Smith.

F. Obviousness of Claims 4, 7, 12, 15, 20, and 23 Over the Combination of
Gross, Smith, and Sanders
Petitioner contends claims 4, 7, 12, 15, 20, and 23 would have been
obvious over the combination of Gross, Smith, and Sanders. Pet. 68–75. In
our discussion below, we first provide a brief overview of Sanders, and then
address the parties’ contentions in turn.
1. Sanders (Ex. 1210)
Sanders is titled “Free Text and Attribute Searching of Electronic
Program Guide (EPG) Data,” and generally describes a search engine for
electronic program guide (EPG) data. Ex. 1210, codes (54), (57). In
particular, Sanders describes “stemming,” which is “a process of removing
prefixes and/or suffixes from a search term to allow the root of the search
term to proxy for the original search term.” Id. at 6:43–46. For example, the
word “divine” can be stemmed so it matches “divinity,” “divination,” or
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“diviner.” Id. at 6:46–49. Search hits may be ranked so that results can be
sorted for display so that the most likely results are presented first. Id. at
11:52–55. Exact matches of the search term may be ranked higher than hits
that only match the text to be searched after stemming. Id. at 11:56–62.
2. Analysis of Claims 4, 12, and 20
Claim 4 depends from claim 1 and recites “wherein said displayed
items are ordered such that items having single-word or multi-word term
matches are displayed before items having single-word or multi-word
abbreviation matches.” Ex. 1201, 9:22–25. Claims 12 and 20 recite similar
limitations, and depend from claims 9 and 17, respectively. Ex. 1201,
10:24–27, 12:1–5.
Petitioner, with supporting testimony from Dr. Fox, relies on Sanders
to teach these limitations. Pet. 68–75. Petitioner explains that “Gross
contemplates ordering displayed items according to relevancy to the user.”
Id. at 69–70 (citing Ex. 1214 ¶ 209; Ex. 1211 ¶ 81). Petitioner contends that
Sanders, like Gross, discloses “that results may be ranked by a results ranker
326.” Id. at 70 (quoting Ex. 1210, 11:48–62), 71. Petitioner asserts that
“Sanders discloses ranking exact term matches before abbreviation matches,
to display items according to relevancy to the user.” Id. (quoting Ex. 1214
¶ 210); see also id. at 71 (citing Ex. 1214 ¶¶ 214, 215, 217). Petitioner
argues that a person of ordinary skill in the art would have understood
Sanders’s “stemming” to refer to word abbreviations because stemming
generates an abbreviation of a query term. Pet. 70–71 (citing Ex. 1214
¶¶ 210, 214). Petitioner further contends “a [person of ordinary skill in the
art] would have understood that Sanders’s description of ranking exact
matches of search terms before stemming matches shows ordering items
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having single-word or multi-word term matches before items having single-
word or multi-word abbreviation matches.” Id. at 70.
Petitioner contends it would have been obvious to modify the
Gross/Smith combination with Sanders “to generate additional search results
and rank those additional search results in a way most useful to the user.”
Id. at 71 (citing Ex. 1214 ¶ 220). According to Petitioner, although
“[i]including additional search results based on abbreviations (stemming)
would improve the chances of finding the user’s desired item, [it] may
increase the number of irrelevant results as well,” and, therefore, “a [person
of ordinary skill in the art] would have been motivated to incorporate
Sanders’s stemming and ranking techniques in order to rank exact matches
above additional matches based on stemming, as taught by Sanders.” Id. at
72 (citing Ex. 1210, 11:59–62; Ex. 1214 ¶¶ 220–225). Petitioner also argues
“a [person of ordinary skill in the art] would have understood that applying
Sanders’s ordering criteria to the Gross/Smith combination was simply the
application of a known technique to prior art ready for the improvement.”
Id. at 73 (citing Ex. 1214 ¶ 225).
Patent Owner argues that “Sanders’s stemming process orders longer
words after shorter words (or abbreviations)–rather than ordering longer
words before abbreviations, as required by the claims.” PO Resp. 36 (citing
Ex. 2014 ¶ 94). Patent Owner points to Figures 5A and 5B of the ’011
patent as examples of item display order, and Figure 6B as an example of
ranked items. Id. at 36–37. For example, Patent Owner argues Figure 6B
“shows ‘abbreviations’ or words having shortened, partial matches ranked
and displayed below search term matches.” Id. at 37–38 (citing Ex. 2014
¶ 96). Patent Owner contrasts this disclosure with that in Sanders, where
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Sanders’s “stemming process broadens the search scope and generates
results longer than the originally entered word.” Id. at 38 (citing Ex. 2014
¶ 97). Patent Owner explains:
For example, Sanders describes the stemming of the word
“divine” with the results being “divinity,” “divination,” and
“diviner.” EX1210, 6:42-61. Sanders ranks (or orders) the
longer words of “divinity” and “divination” below the word
“divine,” despite the word “divine” being a shorter (or
abbreviated) word. Id., 11:57-62. Sanders states that “[e]xact
matches of each search term, for instance, may be afforded a
relevancy ranking of 100% and given top priority” and that
“[h]its that only match the text to be searched after some
transformation such as stemming or spell-correcting are
usually given a lower relevancy.” Id., 11:57- 62 (emphasis
added). Sanders thus does not rank or order longer words before
shorter or abbreviated words, as required by the claims. Id.
(emphasis added); EX2014, ¶ 97.

Id. at 38–39. Patent Owner further argues that words like “divinity,”
“divination,” and “diviner,” are not abbreviation matches of the term
“divine.” PO Sur-Reply 21. According to Patent Owner, “the only arguable
abbreviation in Sanders (‘divin’) is not displayed.” Id.
Petitioner responds that the claims do not require ordering based on
length, but rather, ordering items with matching terms before items with
matching abbreviations. Pet. Reply 14. Petitioner argues that this is
supported by the ’011 patent, where, for example, in Figures 6A and 6B the
term matches (e.g., “8MM”) are ordered before abbreviation matches (e.g.,
“Teenage mutant ninja turtles”). Id. at 15. Petitioner asserts that even
Patent Owner’s expert, Dr. Russ, acknowledged that the results in Figure 6B
are not sorted by the length of the result. Id. at 16. Petitioner argues that
Sanders, likewise, “teaches the ordering of results that match a whole search
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term (single-word matches) ahead of results that match an abbreviated
search term (single-word abbreviation matches).” Id.
We determine that Petitioner’s arguments and evidence show the
limitations in claims 4, 12, and 20 are taught by Sanders. The claim
language simply requires that the items are ordered so that term matches are
displayed before abbreviation matches. We agree with Petitioner that the
claim language and portions of the specification cited have nothing to do
with the length of the items, or ordering based on the length. See Pet. Reply
14 (citing Ex. 1214 ¶ 211; Ex. 1233 ¶¶ 20–21). Patent Owner’s expert, Dr.
Russ, conceded as much. Ex. 1232, 155:2–5 (“Q. And just so we are clear
the results in Figures 6B are not sorted by how long the total result is.
Correct? A. Right.”). Rather, the claim language recites ordering term
matches before abbreviation matches.
Patent Owner’s arguments appeared to shift between the Response
and the Sur-Reply, and the crux of Patent Owner’s later argument is
apparently that Sanders’ “stemming” does not teach the claimed
“abbreviation matches.” See Tr. 59:9–13 (“JUDGE SZPONDOWSKI: Is
your argument that the stemming in Sanders doesn’t teach an abbreviation
match? MR. BLOCK: Yes, that’s it. That’s fundamentally what our point
is.”).
Patent Owner concedes that the ’011 patent does not provide an
explicit definition of the term “abbreviation match.” Tr. 59:8–12. The ’011
patent describes that “[a] single word query 501 can either match a single-
word term 503 or an abbreviation representing multiple words 505.” Ex.
1201, 6:52–54. Likewise, “[a] multi-word prefix query 502 can match a
multi-word term 504 or an abbreviation presenting multiple words.” Id. at
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6:56–58. Both parties focus on the embodiment shown in Figure 6B to show
the claimed ordering. Pet. Reply 15–16; PO Resp. 37–38. Figure 6B is
shown below:

Figure 6B, above, depicts the search results shown when a user has
input the single-word text input query “866.” Ex. 1201, 7:8–12. The results
show single-word term matches (e.g., “TOON: Cartoon Network,” “The
Tonight Show with Jay Leno,” “Tom Hanks,” “Tootsie(1982), “8MM
(1999)”) ordered before abbreviation matches (“Twelve Monkeys (1995),”
“Teenage mutant ninja turtles”). Id. at 7:9–12.
Petitioner contends “a ‘single-word term match’ is an item associated
with a word that matches a query term, and a ‘single-word abbreviation
match’ is an item associated with a word that matches an abbreviation of a
query term.” Pet. Reply 17 (citing Pet. 69; Ex. 1214 ¶ 211). Petitioner
distinguishes between an abbreviation and an abbreviation match. Id. For
example, according to Petitioner, “Twelve Monkeys” is an item which
matches apparent abbreviation “TMO,” but is not the abbreviation itself. Id.
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at 16 (citing Ex. 1233 ¶ 24). Patent Owner does not appear to dispute this.
E.g., Sur-Reply 20 (describing the disclosure in Figure 6B).
Sanders describes the following:
“Stemming” is a process of removing prefixes and/or suffixes
from a search term to allow the root of the search term to proxy
for the original search term. This produces more hits capturing
more variants of the original search term. For example, the word
“divine” can be stemmed to “divin” so that it matches “divinity,”
“divination”, “diviner”, “divinity,” etc.

Ex. 1210, 6:2–49. Sanders further describes ranking or ordering search
results:
A results ranker 326 may organize hits for display by relevance
or other criteria . . . The hits generated by the search engine 204
can often be ranked so that hit results can be sorted for display in
such a way as to present the most likely results first, i.e., hits that
are closest to the interpretation of the users intent in constructing
the search string 202 (as hypothesized by the string interpreter
304). Exact matches of each search term, for instance, may be
afforded a relevancy ranking of 100% and given top priority.
Hits that only match the text to be searched after some
transformation such as stemming or spell-correcting are usually
given a lower relevancy.

Ex. 1210, 11:48–62 (emphasis added). In other words, Sanders teaches that
exact matches of search terms (e.g., “divine”) may be given a higher
relevancy ranking than matches of search terms after stemming (“divinity,”
“divination,” “diviner,”). This is undisputed. E.g., PO Resp. 38–39; Ex.
1232, 155:11–16; Pet. Reply 17–18.
We find Dr. Fox’s testimony credible that Sanders’ stemming process
teaches the claimed abbreviation matches. See Ex. 1214 ¶¶ 210–218. Dr.
Fox provides testimony that a single-word abbreviation could refer to an
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abbreviation created by shortening a single word, such as the abbreviations
“ex.” or “exh.” for the word “exhibit.” Id. ¶ 213. Likewise, an abbreviation
could be created by shortening the word “divine” to “divin,” and matching
words related (e.g., “divinity,” “divination,” and “diviner”) to that
abbreviation. Id. ¶ 214. Therefore, Petitioner contends, in Sanders, the
stemmed term “divin” discloses an abbreviation, and, therefore, search term
matches “divinity,” “divination,” and “diviner,” disclose the claimed
“abbreviation matches.” Pet. Reply 17. Although Patent Owner argues that
these search term matches are not “abbreviation matches,” Patent Owner
does not persuasively rebut Petitioner’s showing or Dr. Fox’s testimony. PO
Sur-Reply 21–22.
Patent Owner does not dispute Petitioner’s rationale for combining
Sanders with Gross and Smith. We are persuaded that Petitioner has offered
articulated reasoning with a rational underpinning as to why one of ordinary
skill in the art would have modified and combined the teachings of Gross,
Smith, and Sanders in the manner proposed by Petitioner.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 4, 12, and 20 are unpatentable as
obvious over Gross, Smith, and Sanders.
3. Analysis of Claims 7, 15, and 23
Claim 7 depends from claim 1 and recites “wherein said items
comprise television content items, or a product or service sought by the
user.” Ex. 1201, 9:31–33. Claims 15 and 23 recite similar limitations, and
depend from claims 9 and 17, respectively. Ex. 1201, 10:32–34, 12:14–16.
Petitioner relies on the combination of Gross and Sanders to teach the
limitations in claim 7. Pet. 74–75. Specifically, Petitioner points to Gross’s
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teaching of searching for content items, services, and movie times. Id. at
73–74 (citing Ex. 1211 ¶ 164; Ex. 1214 ¶ 226). Petitioner also points to
Gross’s teachings that the searching may be done via a network of
interactive televisions. Id. at 74 (citing Ex. 1211 ¶¶ 32, 60). Petitioner
further relies on Sanders to teach “television content items” in that it
discloses “an electronic program guide (EPG) database ‘capable of receiving
and recording television broadcasts,’ then allowing the user to search for and
watch television content items.” Id. (citing Ex. 1210, 2:65–3:19). Petitioner
further contends it would have been obvious to combine the Gross/Smith
system with Sanders to “provide the benefit of allowing a user to use the
search system of Gross with an overloaded keypad device, as disclosed in
Smith, to search for television content items, as disclosed by Sanders.” Id. at
74.
Patent Owner does not argue separately Petitioner’s contentions for
claims 7, 15, and 23, but instead argues that these claims are patentable for
the same reasons as claim 1. See PO Resp. 39. We disagree for the reasons
discussed in § III.E.3, supra. We determine that Petitioner’s arguments and
evidence show that the limitations in claims 7, 15, and 23 are taught by
Sanders. Also, we are persuaded that Petitioner has offered articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
art would have modified and combined the teachings of Gross, Smith, and
Sanders in the manner proposed by Petitioner.
Accordingly, for the reasons discussed above, Petitioner has shown by
a preponderance of evidence that claims 7, 15, and 23 are unpatentable as
obvious over Gross, Smith, and Sanders.
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IV. MOTION TO SEAL
Petitioner filed a Motion to Seal “portions of its Petitioner’s Reply to
Patent Owner Response, portions of supporting declarations, and the entirety
of certain exhibits.” Paper 31 at 1 (“Motion”). Petitioner also filed a
Motion to Enter Protective Order. Paper 32. Specifically, Petitioner seeks
to file under seal (1) Petitioner’s Reply to Patent Owner’s Response (Paper
33) (“Reply”); (2) portions of the supporting Declaration of Dr. Edward A.
Fox in Support of Petitioner’s Reply to Patent Owner’s Response (Ex. 1233)
(“Declaration”); and (3) the entirety of the deposition transcript of Dr.
Samuel H. Russ (Ex. 1232), Patent Owner’s expert. Motion 1. Petitioner
filed public versions of each of the three documents. Paper 39, Ex. 1232,
Ex. 1233.6 Petitioner “respectfully requests that this motion be granted in
light of Patent Owner’s Motion to Seal in related IPR2019-00237 (Paper No.
22) and [IPR2019]-00290 (Paper No. 22), and Patent Owner’s designation of
Dr. Russ’s deposition transcript as confidential under the Standing
Protective Order in those matters.” Motion 1.
Petitioner asserts that it relies on Dr. Russ’s deposition testimony in
its Reply, and, for efficiency purposes, took a single deposition of Dr. Russ
for all of IPR2019-00237, -00239, -00290, and -00292. Motion 1–2.
Petitioner asserts that Dr. Russ’s testimony relates to Patent Owner’s
confidential business information, including information relating to
conception and reduction to practice. Id. Therefore, Petitioner requests that
the entire deposition transcript, as well as the Reply and Dr. Fox’s
Declaration be kept under seal. Id. at 1–2.

6 Petitioner used the same Exhibit number for the confidential and public
versions of Exhibits 1232 and 1233.
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Although Petitioner generally asserts that it relies on Dr. Russ’s
deposition testimony in its Reply, it does not identify any specific
information that it cited, discussed, or referred to in the Reply that disclosed
any purported confidential business information. The Reply contains
citations to Dr. Russ’s deposition testimony that pertain to Dr. Russ’s
qualifications, what a person of ordinary skill would have understood, the
level of ordinary skill in the art, and the disclosure of the ’011 patent, none
of which appear to refer to any confidential business information,
conception, or reduction to practice. See Pet. Reply 2, 11, 12, 16, 18.
Moreover, many of these citations do not even disclose Dr. Russ’s
testimony; they merely provide the page and line numbers of Dr. Russ’s
testimony. See id. at 2, 11, 12. Other citations do disclose Dr. Russ’s
testimony, but that testimony is not related to Patent Owner’s confidential
business information, conception, or reduction to practice. See id. at 16, 18.
Indeed, conception and reduction to practice are not even at issue in this
inter partes review. Further, none of the cited testimony – nor anything else
– is redacted in the public version of the Reply. Compare Paper 33
(confidential), with Paper 39 (public). In other words, the confidential and
public versions of the Reply brief are identical and the public version does
not contain any redactions. See Papers 33, 39. The same is true for Dr.
Fox’s Declaration. See e.g., Ex. 1233 ¶¶ 7, 22. Accordingly, we are not
persuaded of the confidential nature of the Reply (Paper 33) or of Dr. Fox’s
Declaration (Ex. 1233) and deny without prejudice Petitioner’s motion as to
both of these documents.
With respect to Dr. Russ’s deposition transcript, the testimony
pertaining to Patent Owner’s confidential business information, including
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the conception and reduction to practice, was not relevant to or relied upon
in this proceeding and therefore, the transcript should not have been filed in
its entirety. In the future, we encourage Petitioner to only file the portions of
testimony, along with any additional pages required for context, that are
relied upon, as opposed to filing an entire deposition transcript that
necessitates the need for filing under seal. Nonetheless, we will grant
Petitioner’s motion as to Dr. Russ’s deposition transcript (Exhibit 1232).
Likewise, we will grant Petitioner’s Motion to Enter Protective Order (Paper
32.)
V. CONCLUSION
The outcome for the challenged claims in this proceeding is set forth
below.7 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.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–3, 5, 6,
8–11, 13,
14, 16–19,
21, 22, 24
103(a) Gross, Smith
1–3, 5, 6, 8–
11, 13, 14,
16–19, 21, 22,
24

4, 7, 12,
15, 20, 23 103(a)
Gross, Smith,
Sanders
4, 7, 12, 15,
20, 23
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VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–24 of the ’011 patent have been proven to
be unpatentable by a preponderance of the evidence;
ORDERED that Petitioner’s Motion to Enter Protective Order is
granted;
ORDERED that Petitioner’s Motion to Seal Documents is denied
without prejudice as to Petitioner’s Reply (Paper 33) and Dr. Fox’s
Declaration (Ex. 1233) and granted as to Dr. Russ’ deposition transcript (Ex.
1232); and
FURTHER ORDERED that because this is a Final Written Decision,
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.
Overall
Outcome 1–24
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FOR PETITIONER:
Frederic M. Meeker
Bradley C. Wright
John R. Hutchins
Chunhsi Andy Mu
Blair A. Silver
R. Gregory Israelsen
Bennett Ingvolstad
BANNER & WITCOFF, LTD.
fmeeker@bannerwitcoff.com
bwright@bannerwitcoff.com
jhutchins@bannerwitcoff.com
amu@bannerwitcoff.com
bsilver@bannerwitcoff.com
risraelsen@bannerwitcoff.com
bingvoldstad@bannerwitcoff.com

FOR PATENT OWNER:
Jason D. Eisenberg
Daniel Block
Christian A. Camarce
Todd M. Hopfinger
Timothy L. Tang
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
jastone-ptab@sternekessler.com
dblock-ptab@sternekessler.com
ccamarce-ptab@sternekessler.com
thopfinger-ptab@sternekessler.com
ttang-ptab@sternekessler.com