Mimzi, LLC

Patent Trials and Appeals Board

Jan 13, 2021

IPR2019-01287 (P.T.A.B. Jan. 13, 2021)

Trials@uspto.gov Paper 34
571-272-7822 Entered: January 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FOURSQUARE LABS, INC.,
Petitioner,
v.
MIMZI, LLC,
Patent Owner.
____________
IPR2019-01287
Patent 9,128,981 B1
____________

Before JAMESON LEE, STACEY G. WHITE,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
On June 28, 2019, Foursquare Labs, Inc. (“Petitioner”) filed a Petition
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1–19 of U.S. Patent No. 9,128,981 B1 (Ex. 1001, “the ’981 patent”).
Paper 1 (“Pet.”). Subsequent to the filing of the Petition, Patent Owner
Mimzi filed a Preliminary Response and an authorized Sur-Reply Petitioner
filed an authorized Reply. Papers 7, 10, 9.
On January 14, 2020, applying the standard set forth in 35 U.S.C.
§ 314(a), which requires demonstration of a reasonable likelihood that
Petitioner would prevail with respect to at least one challenged claim, we
instituted an inter partes review of claims 1–19. Paper 11. In the Institution
Decision, we determined that Petitioner demonstrated a reasonable
likelihood that it would prevail as to the challenged claims, and we instituted
trial on all challenged claims and all grounds in the Petition. Institution
Dec. 37–38. Patent Owner subsequently requested a rehearing of the
Decision to Institute, which request was denied. Papers 14, 20
On April 16, 2020, Patent Owner filed its Response to the Petition.
Paper 18 (PO Resp.). On July 9, 2020, Petitioner filed a Reply to Patent
Owner’s Response, and on August 11, 2020, Patent Owner filed a Sur-
Reply. Paper 23 (Reply); Paper 25 (Sur-Reply). Also, Petitioner has filed a
Motion To Exclude, Patent Owner has filed an Opposition to the Motion To
Exclude, and Petitioner has filed a Reply to the Opposition to the Motion To
Exclude. Papers 28, 31, 32.
An oral hearing took place on October 20, 2020. The Hearing
Transcript (“Tr.”) is included in the record as Paper 33. After considering
the parties’ arguments and supporting evidence, we determine that Petitioner
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has proved by a preponderance of the evidence that claims 1–19 of the ’981
patent are unpatentable. 35 U.S.C. § 316(e).
II. BACKGROUND AND SUMMARY
A. The ’981 Patent
The ’981 patent, titled “Phone Assisted ‘Photographic Memory,” was
filed March 21, 2015, and issued September 8, 2015. Ex. 1001, codes (54),
(22), (45). The patent recites, as “related” application data, that it is a:
[c]ontinuation of application No. 14/321,332, filed on Jul. 1,
2014, which is a continuation of application No. 12/181,956,
filed on Jul. 29, 2008, now Pat. No. 8,775,454, application No.
14/664,841, which is a continuation of application
No. 13/900,495, filed on May 22, 2013, which is a division of
application No. 12/181,956, filed on Jul. 29, 2008, now Pat. No.
8,775,454.
Id. at code (60).
The patent is directed “to using a phone to record phone calls, meetings
and dictation, and for storing the metadata, audio and/or speech recognized text
into a centralized content searchable repository, so that all or most of all
conversations and near everything seen or read can be searched with a single
query.” Id. at 1:14–19. The ʼ981 patent describes using the phone to collect a
variety of types of information, including recording phone calls, recording the
audio of a face-to-face meeting, and recording an audio description of pictures
and video taken from the camera of a phone (e.g., of notes on a notepad, a
whiteboard, and an article). Id. at 3:23–36. Speech recognition is applied to the
audio of the phone calls, meetings, and descriptions of pictures and videos to
create transcripts so that these sources of information can be searched. Id. at
3:25–28. In addition to recording the above information, the phone also
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records metadata, such as the date, time, name, or location information of the
recorded information. Id. at 2:31–34.
For example, the phone can record the date and location of the phone
when a picture is taken. Id. at 3:40–50. In this way, conversations, pictures and
video can be searched by date, time, and location, as well as by the speech-
recognized text of the recorded audio. Id. at 3:46–50.
The ʼ981 patent describes an embodiment where the text transcripts may
contain timestamps. Id. at 5:58–60. The start date and start time of the call or
dictation may be read from the metadata, and the start date, start time, and
relative timestamp may be added for each word in the transcript. Id. at 7:23–
31. In addition, location coordinates also may be added next to each timestamp
for each word in the transcript. Id. at 7:39–47.
B. Illustrative Claim
Petitioner challenges claims 1–19. Claims 1, 10, and 16 are the
independent claims. Claim 10 is illustrative and is reproduced below:
10. A computer-implemented method for presenting
social-network-provided information records from a social
network database comprising a plurality of social network-
provided information records to a mobile-electronic-device user in
response to the user's spoken request, comprising:
receiving speech information from the mobile-electronic-
device user;
storing the transcript of the spoken request and metadata
associated with the spoken request comprising at
least a location associated with the user during the
spoken request;
automatically selecting a plurality of social-network-
provided information records with at least one
automated processor, by searching the social-
network for information records using both the
location and the transcript;
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ranking the plurality of selected social network-provided
information records with the at least one
automated processor, dependent on at least one
social network ranking factor and
communicating at least a portion of the selected social-
network-provided information records to the user in
a manner dependent on the at least one social network
ranking factor.
Ex. 1001, 17:4–26.

C. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–19 of the
’981 patent on the following grounds (Pet. 7):

Claims Challenged 35 U.S.C. § References
1–6, 8–10, 12–18 103 Evermann1
1–18 103 Evermann, Yoo2
1–19 103 Ramer3, Hayashi4
In addition, Petitioner relies on declarations of Dr. Ali Khosh (“Khosh
Decl.”, Ex. 1015; “Khosh 2nd Decl.”, Ex. 1018) in support of the asserted
grounds of unpatentability.

1 Evermann, US 2008/0154612 A1, filed Feb. 12, 2007, published June 26,
2008 (Ex. 1002, “Evermann”).
2 Yoo, US 2009/0281988 A1, filed May 6, 2008, published Nov. 12, 2009
(Ex. 1003, “Yoo”).
3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004,
“Ramer”).
4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1,
2007 (Ex. 1005, “Hayashi”).
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In response, Patent Owner relies on the Declaration of Dr. Jose Luis
Melendez (“Melendez Decl.”, Ex. 2017).
D. Real Parties in Interest
The parties identify themselves as real parties in interest. Pet. 77;
Paper 15, 2.
E. Related Matters
The parties identify the following matters as related to this case: Mimzi,
LLC v. Foursquare Labs, Inc., Case No. 1:18-cv-01767 (D. Del.); Mimzi, LLC
v. TripAdvisor, Inc. et al., Case No. 1:18-cv-01768 (D. Del.); Mimzi, LLC v.
Acer, Inc., Case No. 1:19-cv-00272 (D. Del.); Mimzi, LLC v. ASUSTek
Computer Inc., Case No. 1:19-cv-00273 (D. Del.); Mimzi, LLC v. HTC
Corporation, Case No. 1:19-cv-00274 (D. Del.); TripAdvisor, LLC v. Mimzi,
LLC, IPR2019-01080 (PTAB); Microsoft Corp. et al. v. Mimzi, LLC,
IPR2019-01516 (PTAB). Pet. 77; Paper 15, 2–3.
III. ANALYSIS
A. Legal Standards — Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). As
discussed further in Section III.D below, pursuant to the Leahy-Smith
America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), the
obviousness determination is as of the “effective filing date of the claimed
invention.” AIA 35 U.S.C. § 103; MPEP § 2158.
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The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations, including commercial success, long-felt but
unsolved needs, failure of others, and unexpected results (“the Graham
factors”). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” KSR, 550 U.S. at 418. Such a showing requires “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In general, obviousness entails an inquiry that is “expansive and
flexible” and takes into account “the inferences and creative steps that a
person of ordinary skill in the art would employ” when presented with the
teachings of the prior art. KSR, 550 U.S. at 415–18. Under this flexible
approach, 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 claimed. Takeda Chem. Ind., Ltd. v. Alphapharm Pty., Ltd., 492
F.3d 1350, 1356–57 (Fed. Cir. 2007). Such reason may 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
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knowledge, creativity, and common sense of the person of ordinary skill.”
ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (internal
quotations and citations omitted); see also KSR, 550 U.S. at 419–20.
Moreover, “‘if 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.’” Unwired Planet, LLC v.
Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016) (quoting KSR, 550 U.S. at
417).
“[A] 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. “[I]n many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces of a
puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 420–421.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
B. Level of Ordinary Skill in the Art
Petitioner contends a person of ordinary skill in the art at the relevant
time would have had (1) “a Bachelor of Science Degree in Computer Science,
Electrical Engineering, Computer Engineering or equivalent, and about one to
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two years of practical experience”; or (2) “a Master’s Degree in Computer
Science, Electrical Engineering, Computer Engineering or a closely related
field.” Pet. 10 (citing Khosh Decl. ¶ 47).
Patent Owner argues that a person of ordinary skill in the art “must have
some familiarity with social network databases (the technology at issue) in
addition to Petitioner’s proposed general experience in Computer Science.” PO
Resp. 14.
We adopt Petitioner’s description, which we determine to be consistent
with the level of skill reflected in the asserted prior art references. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Although the claims of the
ʼ981 patent recite searching a social network database, we find the fields of
Computer Science, Electrical Engineering, and Computer Engineering would
have provided knowledge related to social networks and database searches at a
level commensurate with the disclosure of the ʼ981 patent, and, thus, we adopt
Petitioner’s proposed definition of the level of ordinary skill in the art. As
discussed further below, we do not adopt Patent Owner’s construction of the term
“social networking,” a consequence of which is that adding the requirement of
familiarity with social network databases is not substantially different from
knowledge regarding database technology in general.
C. Claim Construction
The Petition was accorded a filing date of June 28, 2019. Paper 4, 1.
In an inter partes review for a petition filed on or after November 13, 2018,
a claim “shall be construed using the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” 37 C.F.R. § 42.100(b); see Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
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and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective Nov. 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)). Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc).
Under that standard, claim terms generally are given their ordinary
and customary meaning, which is “the meaning that the term would have to
a person of ordinary skill in the art in question at the time of the invention.”
Phillips, 415 F.3d at 1312–13. “Importantly, the person of ordinary skill in
the art is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.” Id. at 1313. “In determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17). However, in construing the claims,
care should be taken to avoid improperly importing a limitation from the
specification into the claims. See Cont’l Circuits LLC v. Intel Corp., 915
F.3d 788, 797–98 (Fed. Cir. 2019) (“[m]ere criticism of a particular
embodiment . . . is not sufficient to rise to the level of clear disavowal”; “use
of the phrase ‘present invention’ or ‘this invention’ is not always . . .
limiting, such as where the references . . . are not uniform, or where other
portions of the intrinsic evidence do not support applying the limitation to
the entire patent” (citations omitted)). An inventor may provide a meaning
for a term that is different from its ordinary meaning by defining the term in
the specification with reasonable clarity, deliberateness, and precision. In re
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Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms need only be
construed to the extent necessary to resolve the controversy. Wellman, Inc.
v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011).
1. “social network database”
Petitioner proposes that “social network database” should mean “an
information storage system for data regarding one or more groups of people
that is accessible for search via a central service or platform.” Pet. 11 (citing
Khosh Decl. ¶ 55). Petitioner relies on the fact that the ’981 patent
“parenthetically defined” social-network in the Abstract as a “Centralized
Community Search database.” Id. (citing Ex. 1001, Code (57)).
Patent Owner proposes that a “social network database” is “a
centralized database that stores the interpersonal relationships among
multiple members of the community and the content they contributed to the
database.” PO Resp. 18–19 (citing Melendez Decl. ¶¶ 52–62). Patent
Owner argues “social network database” cannot be construed as inclusive of
any database and that the term “social network” should be given due regard.
Id. at 17–18. According to Patent Owner, a “social network” is a
community of individuals connected by interpersonal relationships. Id. at
18.5 Like Petitioner, Patent Owner relies on the Abstract of the ʼ981 patent,

5 In support of this definition of the term “social network,” Patent Owner
provides a link to a webpage that Patent Owner contends supports their
proposed construction. PO Resp. 18; see Ex. 2020. As Petitioner points out,
the webpage is dated 2020, and is insufficiently probative of how one of
ordinary skill in the art would have understood the term “social network” as
of any possible effective filing date of the ’981 patent. Reply 5. (As stated
in Section III.D, footnote 9, the effective filing date is no earlier than May
22, 2013 and no later than March 21, 2015.) There is not a sufficient
sampling of general dictionary definitions or a general dictionary definition
from an appropriate time frame. Also, the Specification is the primary basis
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characterizing it as “unambiguously defin[ing] a social network database as
‘a centralized community search database.’” Id. (citing Ex. 1001, Code
(57)).
Patent Owner further argues that the term “social network” is not
directed to the content of information, but rather to limitations regarding
contributions by multiple members, accessibility by multiple members, and
the relationships between them. Id. at 19 (citing Melendez Decl. ¶¶ 52–62);
Sur-Reply 3.
We agree with Petitioner that the ’981 patent does not support Patent
Owner’s attempt to narrow the scope of the claims to require a social
network database to store “interpersonal relationships among multiple
members of the community and the content they contributed to the
database.” Reply 3–5; Khosh 2nd Decl. ¶ 9. The ʼ981 patent explains that a
user may wish to transmit their “text messages, photos, videos, call and
voice annotations or synopsis (with speech-recognized text and location
data), to a Centralized Community Search database” and that the user may
designate this content to be public and “be shared with anyone via the
Internet.” Ex. 1001, 14:64– 15:6. The ʼ981 patent calls the public sharing
of information “Location Blogging.” See Ex. 1001, 15:1–6. The ’981 patent
does not describe databases storing interpersonal relationships among
community members. The most detailed description of a social network
database in the patent does not involve interpersonal relationships, but rather
is a “community of users” who share vehicle identification data wirelessly

for construing the claims. Standard Oil Co. v. Am, Cyanamid Co., 774 F.2d
448, 452 (Fed. Cir. 1985). For these reasons, we accord the single very
recent dictionary definition little weight.
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transmitted from automobiles that have tire pressure monitoring systems, in
order to map the locations of detected vehicles. Id. at Fig. 6, 6:22–42,
14:31–56. Significantly, there is no discussion of interpersonal relationships
between the “community of users.” Id. Other examples of database content
include restaurant and business reviews and road hazard warnings — none
of which necessarily involve “interpersonal relationships.” Id. at 15:10–26.
In addition, as Petitioner argues, dependent claim 4 requires that “the
‘social-network-records’ . . . comprise user reviews of a plurality of
restaurants,” which, again, does not require any interpersonal relationships
between persons submitting reviews. Reply 4; Khosh 2nd Decl. ¶ 12; Ex.
1001, 16:47–50. In response, Patent Owner argues that the requirement that
social-network records “comprise” user reviews nevertheless still means that
social-network records also must store interpersonal relationships. Sur-
Reply 4. This argument misapprehends the meaning of the word “comprise”
in the context of the claims. The use of “comprise” means that a social
network database may store interpersonal relationships in addition to, or as
part of, restaurant reviews — i.e., “comprising” in this context would allow
interpersonal relationship content. See MPEP § 2111.03 (“The transitional
term ‘comprising’ . . . is inclusive or open-ended and does not exclude
additional, unrecited elements or method steps”). However, the use of
“comprising” in the claim cannot be used to require such additional
elements. Patent Owner has not provided sufficient argument or evidence to
establish that this additional information should be construed to be a
necessary part of the social network database. Therefore, having considered
the parties’ arguments and evidence and the fully developed trial record, we
do not agree with Patent Owner’s construction.
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Nor do we see the need to adopt Petitioner’s proposed construction of
social network database as “an information storage system for data regarding
one or more groups of people that is accessible for search via a central
service or platform.” We do not find this proposed construction to be
helpful to our analysis of the issues presented by the parties’ arguments. It is
sufficient for our analysis here to note that both parties point to and rely on
the only example in the ’981 patent of a “social network database”: a
“Centralized Community Search database.” Ex. 1001, Code (57).
Accordingly, we determine that we need not construe “social network
database.”
2. “social network ranking factor”
Patent Owner builds upon its proposed construction of “social
network database,” discussed above, to propose that “social network ranking
factor” should be construed as “an interpersonal metric, based upon
relationships between members, that is derived from a social network
database.” PO Resp. 19 (citing Melendez Decl. ¶¶ 52–62). Patent Owner
argues that the term should not be construed as broadly encompassing any
ranking factor, but rather the claims require the social network ranking
factor be derived from the social network database. Id. at 20.
Petitioner argues that Patent Owner’s construction “is unsupported by
the specification, which never describes any database storing interpersonal
relationships among community members.” Reply 3. According to
Petitioner, Patent Owner instead relies solely on conclusory expert testimony
that is improperly incorporated by reference, in breach of 37 C.F.R.
§ 42.6(a)(3). Id. at 5. Petitioner also points to the examples in the
Specification and dependent claims, which describe ranking factors as
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comprising user review ratings of restaurants, distance from the phone user’s
current location, or ranking by reverse chronological order, none of which
would necessarily involve an interpersonal metric based upon relationships
between members. Reply. 4, 6; Khosh 2nd Decl. ¶¶ 10–11; Ex. 1001, 15:27–
37, claims 4, 7, 11, 12, 15, 16. For example, as Petitioner argues, Patent
Owner’s proposed construction would not be broad enough to include the
ranking factor of claim 4 that depends from claim 1 and recites the “social
network ranking factor comprising user review ratings of respective
restaurants,” which would not satisfy Patent Owner’s construction because it
does not require any sort of interpersonal relationship. Reply 4 (citing
Khosh 2nd Decl. ¶ 12).
In response, Patent Owner repeats its argument, discussed above, that
the use of “comprises” in dependent claim 4 undercuts Petitioner’s
arguments that user review ratings of restaurants can be a social network
ranking factor. Sur-Reply 4–5.
We agree with Petitioner. The ‘981 patent describes ranking factors
as comprising user review ratings of restaurants, distance from the phone
user’s current location, or ranking by reverse chronological order, none of
which would necessarily involve an interpersonal metric based upon
relationships between members. For example, language of claim 4 explicitly
states that “the social network ranking factor compris[es] user review ratings
of respective restaurants.” Claim 4 is directly dependent on claim 1 and, as
noted above, the comprising language does not require the inclusion of
unrecited elements. As such, no other ranking factors are required to meet
the limitations of either claim 1 or claim 4 other than the user review ratings.
Thus, we disagree with Patent Owner’s argument that claim 4 requires some
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other social network ranking factor in addition to user review ratings, or that
the user review ratings must somehow include or be dependent on
interpersonal metrics. The ʼ981 patent is devoid of any such description.
In sum, we determine that for the purposes of this Decision we need
not further construe the “social network ranking factor.”
3. “metadata associated with the spoken request”
Patent Owner proposes the term “metadata associated with the spoken
request” be construed as “information related to the spoken request attached
to the request, such as time and location.” PO Resp. 14 (citing Melendez
Decl. ¶¶ 45–49). Patent Owner argues that “[t]he word ‘associated’ signifies
a tighter integration than being merely ‘related.’”6 Id. at 15. Patent Owner
argues that a person of ordinary skill in the art “would understand that
metadata associated with the spoken request, in the context of the
specification and claim language, requires a greater connection between the
metadata and spoken request (association) than the mere fact that a transcript
and location metadata may exist or be used contemporaneously, without
association.” Id. at 15 (citing Melendez Decl. ¶¶ 45–49). Patent Owner
argues that subsequent claim limitations in claim 1, such as those that recite
“transmit[ing] a request to mine information . . . based on the transcript and

6 Patent Owner provides a link to a webpage with a definition for the word
“associated” that Patent Owner contends supports their proposed
construction. PO Resp. 15. Patent Owner did not, however, file an exhibit
of the linked webpage so that the definition would be entered into the record.
Because the definition is not in the record, we do not consider it in our
analysis. Alternatively, if we were to consider it, it would not help the
Patent Owner, because one of the meanings of “associated” as quoted by
Patent Owner includes “related,” contradicting Patent Owner’s assertion that
“associated” cannot mean “related.” Id.
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the metadata, and to receive social network information . . . based on the
transmitted request,” support its construction. Id. at 15–16. Patent Owner
argues that Figures 1 and 2 of the ʼ981 patent show time and location
metadata “are associated with the spoken request by association of the
corresponding metadata with the transcript of the speech at the ‘Add
Absolute Time,’ and ‘Add location’ steps indicated.” Id. at 16. Patent
Owner contends that the “the claim interpretation does not simply require
metadata associated with the spoken request to be information related to the
spoken request, but rather it must be associated with (joined or connected) to
the spoken request, such that it may be available to form and transmit a
request ‘dependent on at least the transcript and the metadata.’” Id.
Petitioner argues “[t]he claim language is clear that metadata only
needs to be ‘associated’ with (i.e., related to) the request and does not
mention the metadata being attached to the request.” Reply 1. Petitioner
points out that the dictionary entry of “associated” that Patent Owner cites
includes “related” in the definition. Id.; see also PO Resp. 15 (purportedly
quoting a dictionary definition that include the term “related”). Petitioner
cites testimony by Patent Owner’s expert that “admitted . . . that metadata
could be ‘associated’ without being attached to a request.” Id. (citing Ex.
1016, 33–34). Petitioner argues that the example from the Specification on
which Patent Owner relies “describes an optional feature that associates time
stamps with lines of a transcript” but that “this example is merely one
embodiment where actual time spoken for each word populating a database
is important.” Id. at 2 (citing Khosh 2nd Decl. ¶¶ 3–4). Petitioner points out
that the claim requires the metadata to be associated with the spoken request,
but Patent Owner relies on passages of the Specification that describe
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metadata being attached to the transcript. Id. Petitioner’s expert, Dr.
Khosh, testifies:
Patent Owner’s proposal does not explain how it would be
possible to join or connect metadata with an instance of speech.
In fact, it would be illogical to construe “metadata associated
with the spoken request” to mean “attached,” as Person having
Ordinary Skill in The Art (“POSITA”) would not readily
appreciate how this would be accomplished, even in light of the
specification of the ’981 Patent.
Khosh 2nd Decl. ¶ 2.
Having considered the parties’ arguments and the fully developed trial
record, we do not agree with Patent Owner’s proposed construction. The
ʼ981 patent describes metadata as data that includes “date data, time data,
name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981
patent list several examples of metadata, including, “Date of call, dictation
or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone #
other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start
time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,”
“Location start,” “Location time 1,” “Location at end,” “Loc. Start
synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 patent
describes metadata broadly as encompassing a variety of data associated
with various uses of the mobile device, such as calls, texts, dictation, photos,
and the like.
Patent Owner does not provide sufficient evidence that the word
“associated” means “attached” in the context of the claim. The ʼ981 patent
does not use the term “attached” anywhere to describe the metadata
associated with the spoken request, nor has Patent Owner identified the use
of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1
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and 2 of the ʼ981 patent as supporting its construction, but Figures 1 and 2
show that a time offset and location may be added to the transcript for each
word in the transcript. In these embodiments, the transcript itself includes
the time and location information. The claim, however, recites that metadata
be associated with the spoken request, not that it be added to the transcript.
In light of the parties’ arguments regarding unpatentability, we
determine that we need not further construe the term “metadata associated
with the spoken request.”
4. “transcript”
Patent Owner argues that “the ʼ981 patent requires that a ‘transcript’
be searchable electronically and generated as a conversion of speech by a
speech recognition engine, where speech is received through the data input
port.” PO Resp. 17 (citing Melendez Decl. ¶¶ 50–51). According to Patent
Owner this is distinct from “any mere text representation of speech.” Id.
Petitioner does not propose a construction for this term, but argues
that Patent Owner seeks to “add extraneous limitations by asserting that
‘transcript’ means an electronically-searchable text generated as a
conversion of speech by a speech recognition engine.” Reply 2. Petitioner
argues that “[c]laim 1 has no requirement for how the spoken request
becomes a transcript or that the spoken request transcript be searchable.” Id.
at 2–3.
We agree with Petitioner that Patent Owner’s construction adds
extraneous limitations that are not supported by the record. For the purposes
of analyzing the issues before us, we see no need to further construe this
term, which is neither a term of art nor a creation of the patentees, but rather
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an ordinary word that one of ordinary skill in the art would have understood
without further elaboration.
5. “searching”; “mining”
The ’981 patent states that a “database… may be searched or mined.”
Ex. 1001, 15:22–24. Independent claims 1 and 16 require “transmit[ing] a
request to mine information of the social network database” and “mining
information from a social network database,” respectively, while
independent claim 10 requires “searching the social-network for
information,” which information is “from a social network database.” Id. at
16:21–22, 17:56, 17:17, 18:7–8. Although Patent Owner does not formally
propose claim constructions for the terms “mining” or “searching” as such, it
argues that a person of ordinary skill “would understand the difference
between searching a database and mining a database,” and that the “plain
and ordinary meaning of ‘mining’ is ‘to extract from a source,’ while
‘search’ means merely ‘to look into or over carefully or thoroughly in an
effort to find or discover something.’” PO Resp. 7 (citing Melendez Decl.
¶¶ 40, 85–86; Exs. 2021, 2022). Patent Owner further argues that “search
implies receiving information as it is stored for formatting and display,
whereas mining implies adding additional value to the retrieved stored data
to reveal further insights into the data.” Id.
Petitioner argues that the statement in the ’981 patent, that the
“database… may be searched or mined,” would have disclosed to one of
ordinary skill that the terms were interchangeable in the context of the ’981
patent. Reply 10. Petitioner further argues that Patent Owner “cites no
relevant evidence and makes no argument to show the proposed distinction”
between “searched” and “mined.” Id. Petitioner contends that “even
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assuming a distinction between ‘searched’ and ‘mined,’ Evermann and Yoo
render obvious the claimed features because they add the very sort of
‘additional value’ which Patent Owner urges.” Id. (citing Khosh 2nd Decl.
¶22–23).
We are not persuaded that Patent Owner’s proposed embellishment of
the meaning for “mining” as “adding additional value to the retrieved stored
data to reveal further insights into the data,” or its attempt to limit
“searching” to “receiving information as it is stored,” are appropriate. In the
context of the ‘981 patent, we agree with Petitioner that “mining” and
“searching” are used interchangeably and there is no meaningful difference
between searching a database and mining a database in the context of the
Specification of the ‘981 patent insofar as the issues presented here are
concerned. The ‘981 patent specification only mentions mining twice, once
as noted above equating searching and mining and once in the abstract,
referring to a “request to mine information,” that provides no detail or
discussion to indicate that mining should be viewed different from
searching. There is no support in the intrinsic evidence that would suggest
that these two terms were other than different ways of saying that a database
is searched. In either case, as claim 16 confirms, whether a database is
searched or mined, information is obtained from the social network database
in response to a “query of a . . . search engine” — i.e., that a database is
searched in response to a query. Ex. 1001,18:7, 14–15. We also note that
prior art reference Yoo describes its “search device” as “mining information
from sources such as data files and web pages.” Ex. 1003 ¶ 52. We
conclude that in the context of the Specification, and in the record before us,
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“mining” means the same as “searching,” and there is no need to expressly
construe “search.”
D. The AIA Status of the ’981 Patent
As stated above in Section III.A, whether the subject matter of the claims
would have been obvious to one of ordinary skill in the art is determined as of
the time of invention, or as of the effective filing date of the claimed
invention, depending on whether the patent is subject to the pre-AIA or post-
AIA provisions. KSR, 550 U.S. at 406; Pre-AIA 35 U.S.C. § 103(a); AIA 35
U.S.C. § 103; MPEP § 2158.
If the ’981 patent were to be accorded pre-AIA status, the invention
date would be pertinent for purposes of determining whether references are
accorded prior art status — a patent would not qualify as prior art under pre-
AIA 35 U.S.C. § 102(e) if it was not “filed in the United States before the
invention” by the named inventor. In particular, Patent Owner argues that Yoo
(which is relied on for one of Petitioner’s asserted grounds of unpatentability
as discussed in Section III.F below) does not qualify as prior art, because the
’981 patent is pre-AIA, and the invention date (alleged to be April 23, 2008)
precedes the effective date of that reference (Yoo was filed May 6, 2008).
PO Resp. 20–26; Ex. 1003, code (22). Thus, a threshold question to our
consideration of Yoo is whether claims of the ’981 patent is entitled to pre-
AIA or post-AIA status.
The amendments to 35 U.S.C. §§ 102 and 103 of the AIA became
effective on March 16, 2013. See AIA § 3(n)(1). They apply to “any
application for patent, and to any patent issuing thereon, that contains or
contained at any time . . . a claim to a claimed invention that has an effective
filing date . . . that is on or after [March 16, 2013].” Id. In our Decision
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Granting Institution of Inter Partes Review, as confirmed in our Decision
Denying Patent Owner’s Request for Rehearing, we preliminarily determined,
based on the record then before us, that claims of the ’981 patent recite
limitations that are not supported by the written description of U.S. Patent
Application No. 12/181,956, filed July 29, 2008 (“the ’956 application”), the
only application in the alleged priority chain of the ’981 patent filed prior to
March 16, 2013. Paper 11, 13–19; Paper 20, 6–12. Accordingly, we
determined that the provisions of the AIA would apply to the ’981 patent. Id.
Petitioner relies on those determinations and further supplements the record
in support of this determination with the testimony of its expert Dr. Khosh.
Reply 6–7 (citing Khosh 2nd Decl. ¶¶ 15–18).
The focus of the AIA inquiry here is on the limitations of ’981
independent claims 1 and 10, which require that a request for information or a
search be made on a social network or social network database “based on” or
“using” a transcript of a user’s spoken request and metadata (e.g., location)
associated with the spoken request. See Ex. 1001, 16:20–23 (claim 1 reciting
“an interface port to a social network database, configured to transmit a
request to mine information of the social network database based on the
transcript and the metadata”), 17:17–18 (claim 10 reciting “searching the social-
network for information records using both the location and the transcript”).
According to Petitioner’s expert, Dr. Khosh, “the concept of voice querying
(i.e., requesting information or a search be made on a social network or
social network database ‘based on’ or ‘using’ a transcript of a user’s spoken
request) is not disclosed in the [’956 application].” Khosh 2nd Decl. ¶ 15.
Dr. Khosh testifies that, although the ’956 application discloses storing
transcripts of conversations, and associated metadata, in a centralized
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community database, which database can then be searched, it does not
disclose using transcripts of spoken requests and associated metadata to
search the database. Id.
In support of its argument that the ’981 patent should be accorded pre-
AIA status, Patent Owner has cited paragraph 197 of the ’956 application:7
Referencing FIG. 2, for calls and dictation, the appended
time-location transcript 253, along with attached call audio 121,
attached synopsis audio 122, attached video 124, attached photos
125, and metadata 127 which may be recorded on or streamed live
from Mobile Handset Phone 110a, Voice Over IP (VOIP) Phone
110b or land line phone 110C may be transmitted via the Internet
or intranet, e.g., using TCP/IP for nearly lossless or at least high-
quality data transmission, to the Centralized Community Search
database, FIG. 6, 170 c.
Paper 10, 2; Melendez Decl. ¶ 41; see Ex. 3001 ¶ 197.8 Patent Owner also
cites paragraph 192 of the ’956 application, characterizing it as
“unambiguously stat[ing] that the Centralized Community Search database
‘may be searched or mined’ ‘with speech-recognized text and location data.’”
PO Resp. 23 (citing Melendez Decl. ¶ 41). Patent Owner further relies on
Figure 6 of the ’956 application, which it characterizes as showing “voice
inputs for spoken requests.” Id. at 24.

7 Various references by the parties to this paragraph erroneously specified
paragraph 198, although we understand that 197 is the intended number.
Paper 14, 6 n.6.
8 Neither party submitted the ’956 application as an exhibit. Nonetheless, as it
is a document publicly available from the Office and it is apparent that both
parties had access to it for their briefs, we deem that failure to be harmless. For
the benefit of the public, at the time of institution, we entered the published
version of the ’956 application as Exhibit 3001 for a complete record for this
proceeding.
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From this record, Patent Owner’s expert, Dr. Melendez, opines that,
because the ’956 application discloses searching the Centralized Community
Search Database, and because the application does not “constrain the content or
purpose of the user speech,” one of ordinary skill would “know that the phone
speech would comprise a search or request.” Melendez Decl. ¶ 42. Dr.
Melendez also cites an example in the ’956 application “where the ‘time-
location transcript’ is used to search an ad server database when the user has
mentioned a ‘100 inch Panasonic TV.’” Id. (citing Ex. 3001 ¶ 170). In
addition, Dr. Melendez cites the statements in the ’956 application: “[i]deally, a
person should be able to record and search, with one query, anything discussed
in their phone calls”, and “[t]he present invention may use the speech
recognized text” in search of clues. Id. (citing Ex. 3001 ¶¶ 7, 134).
In response, Petitioner’s expert, Dr. Khosh, testifies that paragraph
197 of the ’956 application does not describe any searching or requesting
information from the “Centralized Community Search database,” much less
searching or requesting such information based on, or using, a transcript of a
spoken request and associated metadata such as location. Khosh 2nd Decl.
¶ 16. Rather, this disclosure describes information (including transcripts and
associated metadata) that is submitted to become part of the database. Id.; see
Ex. 3001 ¶¶ 186–192 (describing the submission of “speech- recognized text
and location data” to a “Centralized Community Search database,” e.g., a
message about a traffic jam or road hazard, or a review of a restaurant or
business). Likewise, Figure 6 of the ’956 application does not show “voice
inputs for spoken requests,” despite Patent Owner’s mischaracterization.
Khosh 2nd Decl. ¶ 16.
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As to paragraph 192 of the ’956 application, Dr. Khosh testifies that,
rather than disclosing that the database may be searched with speech-
recognized text and location data, the paragraph “actually states that the
database includes speech recognized text and location data, which is searched
‘based on social network or type of information.’” Khosh 2nd Decl. ¶ 18.
We agree with Petitioner’s and its expert’s interpretation of these
portions of the ’956 application. There is no disclosure in that application of
one of the key requirements of the ’981 patent claims — the requirement that a
request for information or a search be made on a social network or social
network database “based on” or “using” a transcript of a user’s spoken
request and metadata (e.g., location) associated with the spoken request. The
notion of searches based on a transcript and metadata was an afterthought
inserted into the chain of applications as some point after the filing of the
’956 application. Dr. Melendez’s opinion that, because the ’956 application
does not “constrain the content or purpose of the user speech,” therefore one of
ordinary skill would “know that the phone speech would comprise a search or
request,” is a conclusory leap that is not justified by the record. For example,
Dr. Melendez’s reliance on the statement in paragraph 134 of the ’956
application, that “[t]he present invention may use the speech recognized text”
in search of clues, takes that statement out of context — the “clues” referred to
are clues to the identity of the speaker, which are not used to search the
database, but rather facilitate the speech recognition process, making use of
“trained” speech recognition in which each speaker trains the system for their
own speech. Ex. 3001 ¶¶ 113, 129–134. And the reference to obtaining an ad
from an ad server when the user has mentioned a keyword (e.g., “100 inch
Panasonic TV”) is in the context of inserting the ad into the search database
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along with the transcript of the speech and associated metadata, not using that
keyword to formulate a search request. Id. at Fig. 5, ¶¶ 174, 177.
Accordingly, having considered the parties’ arguments and the fully
developed trial record, we determine that Patent Owner has not shown that
claims 1 and 10, and the claims that depend therefrom, of the ’981 patent are
supported by the written description of the ’956 application and, thus, can
benefit from its priority date. Therefore, the earliest effective filing date of the
challenged claims is the May 22, 2013 filing date of application
No. 13/900,495, which is after the AIA effective date. Ex. 1001, code (60).9
Accordingly, we determine that Petitioner has shown that the ’981 patent
claims are subject to the post-AIA provisions of Section 102 and 103.
For completeness of the record, we also consider Patent Owner’s
argument, based on the premise that the ’981 patent is entitled to pre-AIA status
(a premise that we have rejected), that the invention date of the ’981 patent is
April 23, 2008, prior to May 6, 2008 filing date of Yoo. PO Resp. 20–26.
Under pre-AIA 35 U.S.C. § 102(e), Patent Owner could disqualify Yoo as prior
art by demonstrating that the named inventor of the ’981 patent, James L. Geer,
invented the claimed invention before Yoo was filed — i.e., prior conception
(and subsequent diligence in reducing to practice). See, e.g., Taurus IP, LLC
v. Daimler Chrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013).10

9 The parties have not presented evidence one way or the other as to whether
the May 22, 2013 application supports the ‘981 patent claims, but it is
unnecessary to do so for purposes of this Decision. But see Tr., 6:22–7:3
(Petitioner’s counsel asserting that the March 21, 2015 filing date of the ‘981
application is the earliest effective date).
10 As stated above, under AIA 35 U.S.C. § 102, the invention date does not
affect the prior art status of Yoo — Yoo is § 102(a)(2) prior art as long as it was
filed before the effective filing date of the ’981 patent, regardless of prior
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Specifically, Patent Owner contends that Mr. Geer conceived of the invention
recited in the challenged claims by April 23, 2008, and worked diligently until
reducing it to practice by filing a patent application for the invention on July 29,
2008. PO Resp. 21, 25.
To demonstrate prior conception, Patent Owner must show that Mr.
Geer had “a definite and permanent idea of the complete and operative
invention.” See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1376 (Fed. Cir. 1986). Conception must include every feature of the claimed
invention. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). Thus,
Patent Owner must show that Mr. Geer’s prior conception included the same
limitations discussed above that, on the present record, were not shown to be
sufficiently disclosed in the ’956 application.
Mr. Geer cites to three documents to corroborate his testimony that he
conceived of “all of the elements of the ’981 patent’s claims” by April 23,
2008. Ex. 2007 ¶¶ 11, 14–15; Exs. 2008, 2010, 2012.11 For the relevant
limitations, he cites to only two of these documents. E.g., Ex. 2007, 19 (citing
“Appendix B,” i.e., Ex. 2010, and “Appendix C,” i.e., Ex. 2012). For Exhibit
2010, Mr. Geer specifically identifies a disclosure described as “Idea Six” in

conception. It is undisputed that Yoo was filed on May 6, 2008 (Ex. 1003,
code (22)), which is before the earliest possible filing date for the ’981 patent,
i.e., June 29, 2008, or any of the other filing dates (Ex. 1001, code (60)).
11 Petitioner moves to exclude Exhibits 2007-2015, “as well as any portions
of the record relying on these exhibits,” given our determination that the
‘981 patent is not to be accorded pre-AIA status. Paper 28, 1, 9–12.
Because, as discussed herein, we have determined that this evidence fails to
establish the asserted invention date of the ‘981 patent even if the patent is
accorded pre-AIA status, the motion to exclude this evidence is dismissed as
moot.
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the document: “Cell phone barcode recognition for wine reviews, book
reviews, price comparisons, etc., integrated with Google search, Froogle,
Google maps.” Ex. 2010, 7. For Exhibit 2012, Mr. Geer identifies a drawing
labeled “Figure 6,” which appears to be identical to Figure 6 of the ’956
application. Ex. 2012, 4.
In response, Petitioner submits the testimony of its expert, Dr. Khosh:
[T]he evidence submitted in support of an earlier effective filing
date, including the Appendices A-C (Exs. 2008, 2010 and 2012)
do not pertain to the invention as claimed in the ’981 Patent. The
table within Mr. Greer’s declaration . . . merely points to
disconnected concepts, without sufficient detail to disclose to
POSITA that the claimed invention was contained there. Ex.
2007, 16–26. For example, there is no evidence of voice-queries,
user reviews and/or user ratings within the citations of the table.
In sum, such disconnected, broadly described concepts do not
add up to the specific features of the claims, as understood by
POSITA.
Khosh 2nd Decl. ¶ 14.
We agree with Petitioner. Neither Mr. Geer nor Patent Owner explains
how the portions of the documents relied on show conception of a search or
request for information based on, or using, a transcript of a spoken request.
For Figure 6 of Exhibit 2010, neither Mr. Geer nor Patent Owner explain how
this figure shows conception where no spoken request or transcript thereof is
depicted, similar to Figure 6 of the ’956 application discussed above.
In addition, inventor testimony as to prior invention must be
corroborated by more than the inventor’s own records. See ABB Inc. v. Roy-
G-Biv Corp., IPR2013-00062, Paper 84 at 10–12 (PTAB Apr. 11, 2014).
This applies not only to testimony concerning conception, but also
concerning diligence. Id. Here, Patent Owner has only submitted testimony
from the purported inventor and his own documents. There is no
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independent corroboration of the testimony. As a result, for this additional
reason, the testimony is insufficient to “swear behind” the Yoo reference.
“Conception must be proved by corroborating evidence which shows
that the inventor disclosed to others his completed thought expressed in such
clear terms as to enable those skill in the art to make the invention.”
Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). The requirement for
corroboration of inventor’s testimony arose out of a concern that inventors
testifying at trial would be tempted to remember facts favorable to their case
by the lure of protecting their patent or defeating another’s patent.
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). A rule of
reason applies to determine whether the inventor’s testimony has been
corroborated. Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). “The
rule of reason, however, does not dispense with the requirement for some
evidence of independent corroboration.” Coleman, 754 F.2d at 360.
Thus, on this record, we are not persuaded that Patent Owner has
sufficiently demonstrated prior conception, even if pre-AIA § 102(e)
applied. Therefore, Petitioner has shown that Yoo would qualify as prior art
even if pre-AIA § 102(e) were applicable.12

12 Even if it were determined that Yoo was not prior art to the ‘981 patent,
there is no basis for Patent Owner’s assertion that, in such event, the Board
would lack jurisdiction to decide this case. PO Resp. 26–27. Patent
Owner’s reliance on SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) is
misconceived — in compliance with SAS, we instituted trial on all claims
and all grounds asserted by Petitioner, and each of those grounds is based on
obviousness in view of patents, as required by 35 U.S.C. § 311(b).
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E. Objective Indicia of Non-Obviousness
Patent Owner submits evidence that it argues demonstrates the
presence of objective indicia of non-obviousness, applicable to all three
asserted grounds of unpatentability. PO Resp. 56–62. Factual inquiries
for an obviousness determination include secondary considerations
based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to one with ordinary
skill in the art at the time of the invention, the totality of the evidence
submitted, including objective evidence of nonobviousness, may lead to
a conclusion that the claimed invention would not have been obvious to
one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–
1472 (Fed. Cir. 1984).
Patent Owner relies on two pieces of evidence as establishing long felt
need and industry praise for its invention.13 First, Patent Owner contends
that a September 10, 2008 blog post by a Google executive, Marissa Mayer,
demonstrates a long-felt, but unmet, need for the invention claimed in the
’981 patent. Id. at 56–57 (citing Ex. 2001). The Mayer blog stated:
Search needs to be more mobile — it should be available and
easy to use in cell phones and cars and on handheld . . .
[O]ne far-fetched idea: how about a [device] that does searches
in the background based on the words it picks up from
conversations . . .

13 Petitioner moves to exclude Exhibits 2001–2005, “as well as any portions
of the record relying on these exhibits,” as not authenticated and as
inadmissible hearsay. Paper 28, 1–9. Because, as discussed herein,
consideration of this evidence does not lead to a result favorable to Patent
Owner, the motion to exclude this evidence is dismissed as moot.
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Why can’t I capture a snippet of audio and have the search engine
identify and analyze it (a song or a stream of conversation) and
tell me any relevant information about it? Services that do parts
of that are available today, but not in an easy-to-use, integrated
way…
(Ex. 2001, 3). The blog also referred to location data as useful for a search,
stating that “incorporating user location and context will be pivotal in
increasing the relevance and ease of search in the future.” Id. at 5. In
addition, the blog referred to “users’ social graphs,” as a tool “to make
‘friend-augmented’ search easy [and] make search more efficient and more
relevant.” Id. at 5–6.
Patent Owner argues that these Mayer blog entries express a long-felt
need for “exactly what was provided by the ’981 Patent’s invention.” PO
Resp. 56. Patent Owner submits a chart purporting to map portions of the
blog to the “novel combination” of the patent: speech recognition on a
mobile device, location awareness, social networks, and social network
ranking factors. Id. at 59. Patent Owner also asserts that these blog
statements represent an expressed need that was long-felt, because “Mayer’s
words . . . show the need . . . is one that she has encountered extensively
over nine years of experience at Google . . . .” Id. at 57 (quoting Ex. 2001,
2, 10).
Patent Owner also contends that a 2011 presentation given by Apple
about one of its products, Siri, demonstrates industry praise for the invention
of the challenged claims. PO Resp. 58–60 (citing Ex. 2004). Patent owner cites
a portion of the presentation demonstrating, for example, the ability to speak
into an iPhone and get social network reviews of a Greek restaurant. Id. at 60
(citing Ex. 2004, 40:18–19). Patent Owner cites a statement made by an Apple
executive during the product presentation: “Now I’ve been in the AI field for a
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long time, and this still blows me away, the fact that it understands the words,
the concepts, and even now ranks it by Yelp’s ordering.” PO Resp. 61; see Ex.
2004, 40:22–24. As it did for the Google blog, Patent Owner’s chart compares
statements in the video to features of the patent. Id. at 60. Patent Owner
asserts that the Apple presentation not only praised the ability of Siri to perform
speech recognition, which was admittedly well known in the prior art, but also
touted the other features asserted by Patent Owner to characterize the inventive
combination of the ’981 claims: use of location metadata, social networks, and
ranking of search results based on user reviews. Id. at 61–62.
Patent Owner also asserts the Apple presentation establishes a long-felt
need. PO Resp. 59 (citing Ex. 2004, 38:4–7 (“[F]or decades, technologists have
teased us with this dream that you’re going to be able to talk to technology, and
it’ll do things for us. Haven’t we seen this before, over and over? But it never
comes true.”)).
Petitioner challenges Patent Owner’s reliance on the Mayer blog as
failing to establish a long-felt need. Reply 27. Petitioner argues that the
blog’s general references to Mayer’s nine-year tenure at Google do not
establish that the 2008 statements about searches relate to any particular
long-felt or persistent need that existed in the previous nine years. Id.
Petitioner also argues that the statements in the Apple presentation provide
no information about when a need was identified for the claimed invention.
Id.
Petitioner also challenges the nexus chart submitted by Patent Owner.
Reply 27–28. Petitioner argues that the fact that the Apple rollout praises
the AI capabilities for speech recognition is not material given that the ’981
patent describes transcribing a spoken request as a known prior art
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technique. Id. (see Ex 1001, 7:3–4 (referring to speech recognition engines,
“such as the Nuance Communications speech recognition engine”)). Also,
Petitioner points out that the Apple presentation refers to a search for “a
great Greek restaurant in Palo Alto,” which refers to a location, but not to
the user’s device location during the spoken request, as required by the ’981
claims. Id. at 28.
As a threshold matter, Patent Owner’s evidence of objective indicia of
non-obviousness are nonprobative, given our determination that the ’981
patent is subject to the provisions of the AIA, under which the obviousness
determination is as of the “effective filing date of the claimed invention.”
Our determination that the earliest possible filing date of the ’981 patent is May
22, 2013, renders ineffective Patent Owner’s evidence of a 2008 Google
blog and a 2011 Apple presentation, given that, as Patent Owner asserts,
both exhibits show that the four alleged notable “features” of the ’981 patent —
speech recognition on a mobile device, location awareness, social networks,
and social network ranking factors — all predated the post-AIA effective
date of the patent. In other words, if there was a long-felt need, that was
satisfied in 2008 or 2011, prior to the invention of the ‘981 patent. And if
there was industry praise, it was praising what was pre-existing to the
invention of the ‘981 patent.14

14 As Petitioner states:
Patent Owner’s assertion that the 2011 Apple product
embodies the claimed invention demonstrates that in 2013 (the
next earliest effective filing date Patent Owner could assert after
July 29, 2008), POSITA would have known how to combine
prior art elements to achieve the claimed invention and would
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Moreover, even if considered from the standpoint of Patent Owner’s
asserted April 23, 2008 invention date, this evidence is very weak as
objective indicia of nonobviousness. In order to show a long-felt but unmet
need for the claimed invention, the objective evidence must show that the need
was a persistent one that was recognized by those of ordinary skill in the art at
the time of the invention. In re Gershon, 372 F.2d 535, 538 (CCPA 1967).
The 2008 date of the blog post itself cannot establish a long felt persistent
but unmet need. We are not persuaded by Patent Owner’s speculation that the
general references in the blog to Ms. Mayer’s nine-year tenure at Google is
sufficient evidence of how long the needs expressed by Ms. Mayer existed.
These statements are too general and disconnected to show sufficiently a
long felt and persistent need. Instead, when read in the context of the blog
post, Ms. Mayer’s statement that she had worked at Google for nine years,
was more likely intended as an introductory statement showing that she has
a strong interest in search technology. See Ex. 2001, 2 (“I am a search
addict. I’m naturally inquisitive – I’ve always liked finding things out. Plus,
I’ve worked at Google on search for the past 9 years and 3 months. Of
course I search a lot.”)
The Apple presentation suffers from similar problems in that its date
alone cannot be used to establish long-felt but unmet need. As before,
Patent Owner does not present any evidence relating to this presentation
indicating that the need was long felt and persistent. Patent Owner relies on
a statement during the presentation:

have been motivated to do so, since the claimed invention was
already made by Apple.
Reply 9 n.1 (citing Khosh 2nd Decl. ¶ 19).
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[F]or decades, technologists have teased us with this dream that
you’re going to be able to talk to technology, and it’ll do things
for us. Haven’t we seen this before, over and over? But it never
comes true.”
PO Resp. 59 (quoting Ex. 2004, 38:4–7). Like the statements in the Google
blog, this statement is too general to sufficiently show a long felt persistent
need. Other than mentioning the desire to “talk to technology,” the
statement fails to provide any information regarding specific needs identified
by Apple, what they wanted the technology to deliver (other than “it’ll do
things for us”) and when such needs were specifically identified.
Thus, based on the evidence and arguments presented, we give little
weight to Patent Owner’s evidence purporting to demonstrate long-felt, but
unmet, need.
In regard to Patent Owner’s reliance on the Apple presentation as
industry praise for the invention, such evidence may show non-obviousness
where the record demonstrates that the industry praise has the requisite nexus to
the merits of the claimed invention. See Geo. M. Martin Co. v. Alliance Mach.
Sys. Intern. LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010); Asyst Tech’n, Inc. v.
Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008). “[T]here is no nexus
unless the evidence presented is ‘reasonably commensurate with the scope
of the claims.’” ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir.
2016) (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)).
A patentee is entitled to a presumption of nexus “‘when the patentee shows
that the asserted objective evidence is tied to a specific product and that
product “embodies the claimed features, and is coextensive with them.”’”
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019)
(quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed.
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Cir. 2018) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris
Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000))).
The nexus chart provided by Patent Owner is not a claim-element-by-
element analysis of the submitted evidence, and Patent Owner has not
otherwise demonstrated that the subject matter of the Apple presentation is
coextensive (or nearly coextensive) with the challenged claims. We,
therefore, find that a presumption of nexus is inappropriate. However, “[a]
finding that a presumption of nexus is inappropriate does not end the inquiry
into secondary considerations.” Fox Factory, 944 F.3d at 1375. “To the
contrary, the patent owner is still afforded an opportunity to prove nexus by
showing that the evidence of secondary considerations is the ‘direct result of
the unique characteristics of the claimed invention.’” Id. at 1373–74
(quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). On the other
hand, “where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention,” meaning that “there must be a
nexus to some aspect of the claim not already in the prior art.” In re Kao,
639 F.3d 1057, 1068–69 (Fed. Cir. 2011) (emphasis in original); Institut
Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347
(Fed. Cir. 2013).
Even taking at face value the nexus chart submitted by Patent Owner, at
most the chart establishes that the Apple demonstration covered four alleged
“features” of the ’981 patent: speech recognition on a mobile device, location
awareness, social networks, and social network ranking factors.
PO Resp. 60. As we discuss below, each of these features are disclosed in the
prior art of record. And as Petitioner points out, even the ’981 patent recognizes
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that speech recognition was a well-established technique at the time of the
invention. Reply 27–28; Ex 1001, 7:3–4. Also, the “location awareness”
reflected in the presentation is not tied to the user’s device location during the
spoken request, as required. Patent Owner provides nothing that differentiates
the purported industry praise expressed during the Apple presentation from the
explicit disclosures of the cited references — i.e., the “praise” accorded Siri at the
presentation would have equally applied to the subject matter disclosed in the
cited references. Moreover, a substantial emphasis of the “praise” relied on by
Patent Owner is directed to features that are not required by the claims, such
as Siri’s artificial intelligence capabilities of being able to understand the words
and concepts being spoken, and not just its ability to transcribe them.
Even if we were to assume a nexus between the comments in the
Apple presentation and the ʼ981 Patent, we still find the comments to be
weak support for industry praise. The comments fail to show, for example,
that any praise for the concepts described was shared industry-wide, rather
than by Apple itself. Further, Apple’s praise for its own products, at Apple’s
own product launch event, is self-congratulatory and insufficiently
persuasive of industry praise for the invention claimed in the ʼ981 Patent.
See Bayer Healthcare v. Watson Pharms., 713 F.3d 1369, 1377 (Fed. Cir.
2013) (explaining that bare journal citations and self- referential
commendation fall short of demonstrating industry praise).
In sum, on this record we find Patent Owner’s evidence of alleged long-
felt need or industry praise as very weak and not significantly supportive of
non-obviousness.
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F. Obviousness of Claims 1–6, 8–10, and 12–18 Over Evermann; and
Obviousness of Claims 1–18 Over Evermann and Yoo
Petitioner challenges claims 1–6, 8–10, and 12–18 as unpatentable
over Evermann. Pet. 12–37. Petitioner also challenges claims 1–18 as
unpatentable over the combination of Evermann and Yoo. Id. at 37–43.
1. Evermann
Evermann, titled “Local Storage And Use Of Search Results For
Voice-Enabled Mobile Communications Devices,” was filed February 12,
2007, and published June 26, 2008. Ex. 1002, codes (54), (22), (43).
Evermann discloses a system with speech recognition functionality that
involves recognizing a search request spoken at a mobile device,
transmitting the request to a server, converting the request to text, and
sending the text request along with metadata such as location to a content
provider to retrieve search results responsive to the request. Id. at Code
(57), ¶¶ 39–40. Figure 1 of Evermann is reproduced below.

Figure 1 depicts a block diagram of a system architecture that implements
the invention of Evermann. Id. ¶ 14. As shown in Figure 1, mobile device
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102 includes voice-mediated search application (VMSA) 106, which
recognizes when a spoken command from the user constitutes a search
request and determines whether it must be sent to a remote server for
processing, in which case it opens data connection 108 to do so. Id. ¶¶ 23,
27, 33–34, 37–39. The audio of the spoken request is sent to transaction
server 110 along with metadata, such as the geographical location (via GPS
functionality) of device 102. Id. ¶¶ 39–40. Transaction server 110 passes
the audio information and metadata to automatic speech recognizer (ASR)
server 112, which performs speech recognition on the audio and returns text
and other information to transaction server 110. Id. ¶¶ 42–43, 48, 53, 61.
Search management software 118 on transaction server 110 uses the
metadata and other information to select one or more content providers
114a, b, c to service the search request, and sends the request in the form of
the text and metadata to the selected content provider. Id. ¶¶ 42–43, 62–63.
The content providers retrieve the requested content and send it to
transaction server 110, which selects and prioritizes the received content
using the metadata and sends it to mobile device 102. Id. ¶¶ 43, 64–65, 67,
71. VMSA 106 then presents them to the user. Id. ¶¶ 43, 70–73.
Examples of the search functionality disclosed in Evermann include
general purpose searches serviced by Google, searches for sports news
serviced by an ESPN server, and searches for a type of business in a
particular location, with the results displayed on a map (e.g., “Search Coffee
in Manhattan” or “searching for clothing stores”). Id. at Fig. 3, ¶¶ 53, 62–
65.
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2. Yoo
Yoo, titled “Systems And Methods To Provide Search Based On
Social Graphs And Affinity Groups,” was filed May 6, 2008, and published
November 12, 2009. Ex. 1003, codes (54), (22), (43). As discussed above
in Section III.D, we have determined that Yoo is prior art to the ’981 patent
under either pre-AIA or AIA law. Yoo discloses ranking search results
based on relationship-based recommendations or preferences specified by
related people in social networks or affinity groups. Id. at Code (57).
Figure 1 of Yoo is reproduced below.

Figure 1 is a diagram of an embodiment of Yoo for performing a
search. Id. ¶ 6. As shown in Figure 1, user devices 140 and 150 are
connected to social networks 120 and 130 via the Internet 110. Id. ¶ 17.
Yoo identifies Facebook, MySpace, and LinkedIn as examples of social
networks. Id. ¶ 18. The user devices and social networks also are connected
to search device 100, to perform searches in response to search queries from
the user devices. Id. ¶ 27. Search device 100 interacts with social networks
120 and 130 to aggregate information on the social networks, such as
recommended businesses and information about the users of the social
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networks (e.g., user relationships). Id. ¶¶ 16, 28. Users can submit search
requests at a user device using voice input, which request is submitted, along
with the location of the user, to the search device, which can search the
social networks. Id. ¶¶ 30, 35–36, 45. Search results are presented to the
user ranked by such criteria as user recommendations, expertise, user
relationships, popularity, credibility, and proximity of location. Id. ¶¶ 30–
34, 39, 56, 62, 65, 75. Examples of searches disclosed in Yoo include
searches for recommended businesses (such as restaurants, “coffee shops,”
and “Porsche mechanic”), service providers, products, information,
entertainment programs, and merchants. Id. at Fig. 4, ¶¶ 4, 16, 28, 30, 39,
64.
3. The Combination of Evermann and Yoo
Petitioner cites its expert Dr. Khosh’s testimony to support its
contention that a person of ordinary skill would have been motivated to
apply various pertinent teachings of Yoo, regarding the use of social
networks to prioritize or rank search results, to the system of Evermann.
Pet. 38–40 (citing Khosh Decl. ¶¶ 182–184). Dr. Khosh notes that, like
Evermann, Yoo also is directed to mobile device query platforms, including
location-based queries and voice-activated query inputs. Khosh Decl. ¶ 182.
Dr. Khosh further testifies that a skilled artisan would have recognized the
benefits available by implementing Yoo’s teachings in the Evermann
system, such as personalizing search results, expanding access to
information for other geographic areas, and improving relevancy of results.
Khosh Decl. ¶ 183.
Patent Owner’s expert Mr. Melendez testifies that “Evermann’s stated
goal with respect to using social network information is ‘for receiving
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information from a trusted source,’” whereas Yoo “has the entirely opposite
goal of aggregating information from any source,” regardless of trust, and
therefore, Yoo teaches against the combination. Melendez Decl. ¶¶ 92, 170,
201. However, Dr. Melendez relies on a portion of Evermann unrelated to
the disclosures regarding searches directed to Google and ESPN, which do
not depend on a trusted relationship. Ex. 1002 ¶ 87. Thus, we find this
argument of Patent Owner unpersuasive, and Patent Owner does not
otherwise address the issue of whether one of ordinary skill would have been
motivated to combine the teachings of Evermann and Yoo. See PO Resp.
28–43.
Accordingly, based on our review of the record, we determine that
Petitioner sufficiently has persuaded us that one of ordinary skill would have
been motivated to apply, and would have a reasonable expectation to
succeed in applying, the search aggregation techniques taught in Yoo to the
search system discussed in Evermann.
4. Independent Claim 1
The preamble of claim 1 provides for:
A system for presenting social-network-provided outputs
to a mobile-electronic-device user at a location associated with
the user in response to the user's spoken request.
Ex. 1001, 16:9–13. Petitioner’s obviousness grounds rely on the disclosure
in Evermann of a system for querying and presenting results to a user via a
mobile device, upon spoken request. Pet. 13 (citing Ex. 1002, Figs. 1–6,
¶¶ 7, 42–44; Khosh Decl. ¶ 93).15

15 Because Petitioner has shown that the recitation in the preamble is
satisfied by the prior art, there is no need to determine whether the preamble
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As discussed further below for the third limitation of claim 1,
Petitioner also relies on the disclosures in Yoo of mobile devices sending
search queries to social networks such as Facebook, Myspace, and LinkedIn,
as presenting social-network-provided outputs. Pet. 37–38.
Also as discussed in connection with the third limitation, Patent
Owner argues that Evermann does not disclose social networks, which
argument we do not find persuasive. PO Resp. 28. Patent Owner also
argues that there is no showing that “the locations of Evermann or Yoo are
the claimed location associated with the user in response to the user’s
spoken request.” Id. However, Petitioner’s reliance on the fact that, in
Evermann, the user makes a search request spoken at a mobile device, which
device has GPS location determination capabilities, is a sufficient showing
for this aspect of the preamble. Pet. 13; Ex. 1002 ¶ 90.
The first limitation of claim 1 requires:
a data input port configured to receive speech information
from the mobile-electronic-device user.
Ex. 1001, 16:14–15. Petitioner relies on the disclosure in Evermann of
circuitry (ASIC 614 and audio CODEC 616) and Voice-Mediated Search
Application (VMSA) software 106 of mobile device 102, that receives and
processes voice information and data connection 108 that communicates the
audio to transaction server 110. Pet. 13–14 (citing Ex. 1002, Figs 1, 7, ¶¶
21, 37, 39, 43, 45, 89; Khosh Decl. ¶¶ 94–97). Patent owner does not
directly address this limitation of the claim, and our review of the record
confirms Petitioner’s analysis.

is in fact limiting. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999).
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The second limitation of claim 1 requires:
a memory configured to store a transcript of the spoken
request and metadata associated with the spoken request
comprising at least the location during the spoken request.
Ex. 1001, 16:16–19. Petitioner relies on various disclosures in Evermann
that it alleges teach this limitation. Pet. 14–15. In particular, Evermann
discloses that speech information is received by transaction server 110 from
mobile device 102, is sent by transaction server 110 to ASR server 112 and
converted to text (i.e., a transcript), and sent back to the transaction server,
and then the transcript and associated metadata, such as the current location
of the user device, are then sent from the transaction server to content
providers 114a–c. Ex. 1002, Fig. 1, ¶¶ 39–40, 43, 53, 55–56, 61–63; Khosh
Decl. ¶¶ 100, 103. Evermann discloses that its servers include “conventional
memory subsystems, for example, disk storage devices, RAM, and ROM.”
Ex. 1002 ¶ 94; Khosh Decl. ¶ 99. Accordingly, Petitioner’s expert testifies
that it would have been obvious to one of ordinary skill that, in order for the
servers to function as disclosed, the transcript and metadata would be stored
in memory. Khosh Decl. ¶¶ 98–104; Khosh 2nd Decl. ¶ 21.
Petitioner also relies on the disclosure in Yoo of location-based
queries, which teach the use of location metadata that is the location of the
user at the time of the search request. Pet. 38–39 (citing Khosh Decl.
¶¶ 182, 190; Ex. 1003 ¶¶ 4, 30, 65); Reply 8. As discussed above, Petitioner
argues that one of ordinary skill would have been motivated to adapt the
system of Evermann to use location metadata as taught by Yoo. Pet. 38–40.
Patent Owner argues that there is no showing of a memory in
Evermann that stores both a transcript and associated metadata, including the
location during the spoken request. PO Resp. 28–29 (citing Melendez Decl.
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¶¶ 74–80); Sur-Reply 6–8. As to a transcript, Patent Owner’s expert Dr.
Melendez admits that transaction server 110 receives text from ASR server
112, which text is generated from the spoken request. Melendez Decl. ¶ 75;
see Ex. 1002 ¶¶ 47. We are persuaded by Petitioner and its technical witness
Dr. Khosh that, given that this text is provided to transaction server 110, it
must be stored in server memory. Khosh Decl. ¶ 101; Khosh 2nd Decl. ¶ 21;
see Ex. 1002 ¶¶ 21, 33, 48, 53. Nonetheless, Dr. Melendez opines that the
text received from ASR server 112 is edited by transaction server 110 before
it is sent to the content provider, and therefore it is not a “transcript of the
spoken request.” Melendez Decl. ¶ 76. Dr. Melendez apparently relies on
an example described in Evermann, where “some editing” is performed on
the received text, “such as removing prepositions and articles,” before
transmittal to the content provider. Ex. 1002 ¶ 62. However, this does not
negate the fact that the text received by transaction server 110 from ASR
server 112 is a transcript of the search request, and it confirms that the
received text is stored prior to editing, because the text must be stored in
memory in order to edit it. Khosh Decl. ¶ 103. In addition, nothing in the
claims requires an unedited transcript to be sent to the content provider —
the third limitation set forth below only requires the search request to be
“based on” the transcript and metadata. Id. ¶ 108. The fact that the search
request uses an edited transcript still satisfies the requirement that the search
be based on the transcript.
Dr. Melendez also asserts that the location metadata is not stored in
the transaction server memory with the transcript. Melendez Decl. ¶ 75.
However, Evermann explicitly discloses that, at least for some searches,
transaction server 110 sends both the text of the search request (possibly
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edited) and metadata, including location metadata, to the content provider,
and thus, both must be stored in the transaction server memory. Khosh 2nd
Decl. ¶ 31; Ex. 1002 ¶¶ 43, 55, 63–64. In addition, Yoo teaches including in
a search request “a location of the searching user is provided . . . so that the
search service can prioritize relevant businesses based at least in part by
distance from the searching user.” Ex. 1003 ¶ 30, see also ¶ 65 (“The
location of the user device may be automatically determined using a global
positioning system (GPS) or other position determining apparatus integrated
into or communicatively coupled with the user device”). Dr. Melendez
further questions whether the location metadata of Evermann is “the location
during the spoken request,” as required by the claim. Melendez Decl. ¶ 75.
However, Evermann teaches that its location metadata is the location of the
device and the user at the time of the spoken request. Khosh 2nd Decl. ¶ 7
(citing Ex. 1002 ¶¶ 39–40, 47). In particular, Evermann’s disclosure that the
location metadata is used to improve recognition accuracy during the
conversion of the spoken request to text establishes that the location in
question is indeed the location of the user at the time the request is spoken.
Reply 7; Khosh 2nd Decl. ¶ 21; Ex. 1002 ¶¶ 47, 56, 90.
In addition, Patent Owner argues that no metadata is “associated” with
the spoken request because it is not “attached” to the request. PO Resp. 29
(citing Melendez Decl. ¶ 75); Sur-Reply 7. However, this argument is
premised on Patent Owner’s proposed construction of “associated,” as
requiring attachment. PO Resp. 14–16. As set forth above in Section
III.C.3, we do not adopt that construction.
Finally, Patent Owner argues that the memory of claim 1 must be
located in the mobile device, rather than the transaction server, in order to
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satisfy the claim. Sur-Reply 7. However, claim 1 is directed to a system,
with no requirement of where in the system the claimed memory is located.
We note further that illustrative embodiments disclosed in the ‘981 patent
have the transcript and metadata stored on a computer server separate from
the mobile device. Ex. 1001, Fig. 1.
The third limitation of claim 1 requires:
an interface port to a social network database, configured
to transmit a request to mine information of the social network
database based on the transcript and the metadata, and to receive
social network information from the social network database
based on the transmitted request.
Ex. 1001, 16:20–25. Petitioner relies on the disclosure in Evermann of
connections between transaction server 110 and content providers 114a–c,
which enable Search Management Software 118 (part of the transaction
server) to send search requests including the text of the requests and the
location metadata to content providers 114a–c, and receive the search results
back. Pet. 15–16 (citing Ex. 1002 ¶¶ 40, 42–43, 53, 62–65, 67, 68, 77, 94;
Khosh Decl. ¶¶ 106–110); Reply 8–9.
Petitioner also relies on the disclosures in Yoo of mobile devices
sending search queries to social networks such as Facebook, Myspace, and
LinkedIn, and argues, as discussed above, that one of ordinary skill would
have been motivated to use the system of Evermann to search for and
retrieve information for such social networks as described in Yoo. Pet. 37–
38 (citing Ex. 1003, Figs. 1, 3, ¶¶ 16–19, 27–28, 30, 31, 35–39, 56, 64;
Khosh Decl. ¶ 180).
Patent Owner argues that Evermann does not disclose or suggest a
social network database. PO Resp. 28, 30–32 (citing Melendez Decl. ¶¶ 69,
82–83, 90); Sur-Reply 8. Patent Owner’s argument hinges on its proposed
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narrow definition of “social network database,” requiring a database that
“stores the interpersonal relationships among multiple members of the
community and the content they contributed to the database.” As discussed
in Section III.C.1 above, we do not adopt that construction. The ‘981 patent
discloses that a “centralized community search database” is an example of a
“social network database,” consistent with Evermann’s references to
searches directed to general-purpose content providers Google and ESPN,
and Yoo’s references to Facebook, Myspace, and LinkedIn. Reply 8–9; Ex.
1001, Code (57); Khosh Decl. ¶¶ 109, 180.
Patent Owner repeats its argument that neither Evermann nor Yoo
teach use of a transcript associated with metadata. PO Resp. 32–33. That
argument is unpersuasive for the reasons discussed above in connection with
the second limitation of claim 1.
Also, Patent Owner argues that the system of Evermann does not
“mine information” as required by the claim. PO Resp. 33–34; Sur-Reply 9.
However, as set forth in Section III.C.5 above, we agree with Petitioner that
the terms “search” and “mine” in the context of the ‘981 patent are
interchangeable and do not mean anything beyond “search,” and we have
not adopted Patent Owner’s narrow definition of “mine.” Evermann’s
disclosure of sending searches to content providers satisfies the claim
requirement, “to mine information of the social network database.” Reply
9–10; Khosh 2nd Decl. ¶ 22.
The fourth limitation of claim 1 requires:
at least one processor configured to transmit the request
through the interface port dependent on at least the transcript and
the metadata, to receive the social network information from the
interface port.
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Ex. 1001, 16:26–29. Petitioner relies on the fact that transaction server 110
of Evermann includes a processor, which would perform as required.
Pet. 17 (citing Ex. 1002 ¶ 94 (“servers mentioned herein can be implemented
on commercially available servers that include single or multi-processor
systems”); Khosh Decl. ¶¶ 111–113). Patent owner does not directly
address this limitation of the claim, and our review of the record confirms
Petitioner’s analysis.
The fifth limitation of claim 1 requires:
a communication port configured to communicate at least
a portion of the social-network information to the user.
Ex. 1001, 16:30–31. Petitioner relies on the connection in Evermann
between transaction server 110 and user device 102, through which the
search results are transmitted to the user. Pet. 17–18 (citing Ex. 1002 ¶¶ 8,
21, 27, 29, 41, 43, 44, 70, 72; Khosh Decl. ¶¶ 114–116). Patent owner does
not directly address this limitation of the claim, and our review of the record
confirms Petitioner’s analysis.
The closing “wherein” clause of claim 1 requires:
wherein the social network database comprises a plurality
of social network records, the at least one processor being further
configured to rank the received social network information
comprising a plurality of received social network records
dependent on at least one social network ranking factor, the
communication port being further configured to output at least a
portion of the social network records in a manner dependent on
the at least one social network ranking factor.
Ex. 1001, 16:32–40. Petitioner relies on the disclosure in Evermann of
content providers 114a–c, such as Google and ESPN, containing a plurality
of records, and the functioning of transaction server 110 to rank search
results received from the content providers according to factors such as
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responsiveness, targeting, and/or relevance, and provide the ranked result to
the user device. Pet. 18–21 (citing Ex. 1002 ¶¶ 42–43, 53, 62–63, 65, 67,
70–71; Khosh Decl. ¶¶ 117–126).
Petitioner also relies on the disclosures in Yoo of ranking query
results based on such factors as recommendations from users closely-linked
with the inquiring user, credibility, and popularity, and argues, as discussed
above, that one of ordinary skill would have been motivated to adopt the
system of Evermann to rank searches as taught by Yoo. Pet. 38 (citing
Ex. 1003, Figs. 3–5, ¶¶ 16, 31, 34, 54, 58–62, 67–68, 70–71, 74–75; Khosh
Decl. ¶ 181).
Patent Owner argues that neither Evermann nor Yoo teach the
required “social network ranking factor.” PO Resp. 35–36 (citing Melendez
Decl. ¶¶ 94–105); Sur-Reply 8–9. Patent Owner relies on its construction of
social network ranking factor as “an interpersonal metric, based upon
relationships between members, that is derived from a social network
database.” PO Resp. 25.
As set forth above in Section III.C.2, we do not adopt Patent Owner’s
construction of “social network ranking factor.” We agree with Petitioner
that both Evermann and Yoo teach criteria for ranking search results, each of
which are reasonably characterized as social network ranking factors
because the ranking taught by these criteria order the search results of the
social network (e.g., Google searching Facebook) in a manner that comports
with the ranking described in the ’981 patent. Reply 10–12; Khosh Decl. ¶¶
119–120; Khosh 2nd Decl. ¶¶ 24–25. Therefore we determine that Evermann
alone, and Evermann in combination with Yoo, teaches the requirements
within the wherein clause of claim 1.
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In sum, we have considered the entirety of the evidence including the
objective indicia of nonobviousness first discussed above, and weighed the
entirety of the evidence as a whole. We determine that Petitioner has proved
by a preponderance of the evidence that claim 1 would have been obvious
over Evermann alone, and claim 1 also would have been obvious over
Evermann and Yoo.
5. Independent Claim 10
Claim 10, reproduced at Section II.B above, is a method claim
counterpart to system claim 1, and for all purposes here its limitations are
substantially the same as those of claim 1, albeit from the perspective of
performing a method rather than specifying a system which performs the
corresponding functions. C.f., Ex. 1001, 16:11–49, with 17:4–26. In
support of the challenge to claim 10, Petitioner and its expert rely on
substantially the same portions of Evermann and Yoo, and make essentially
the same arguments, as for claim 1. Pet. 27–31, 37–40 (citing Khosh Decl.
¶¶ 147–157, 180–185). Patent Owner makes essentially the same arguments
in response. PO Resp. 39–41. Our reasoning provided in the context of
claim 1 equally applies to claim 10 and need not be repeated here. For the
essentially same reasons as those discussed above for claim 1, Petitioner has
proved by a preponderance of the evidence that claim 10 would have been
obvious over Evermann alone, and that claim 10 also would have been
obvious over Evermann and Yoo.
6. Dependent Claims 4 and 15
Claim 4 depends from claim 1 and additionally requires:
the social-network records comprise user reviews of a plurality
of restaurants, the social network ranking factor comprising user
review ratings of respective restaurants, the communication port
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being further configured to output at least a portion of the user
reviews of the plurality of restaurants dependent on the
respective user review ratings and a geographical distance of the
restaurants from the user.
Ex. 1001, 16:47–54. Claim 15 depends from claim 10 and has a similar
requirement. Id. at 18:1–6. Petitioner relies on the disclosures in Evermann
of formulating queries related to restaurants (e.g., a user’s “favorite Italian
restaurant,” “SEARCH BARS IN LAS VEGAS . . .,” sharing reviews and
ratings of business among different users, and “location-related . . . search
requests,” including searching for a particular type of business in a specific
location (“SEARCH BOSTON HOTELS”). Pet. 23, 31, 34 (citing Ex. 1002,
Fig. 3, ¶¶ 9, 40, 41, 53, 55–56, 64, 80, 87). This record includes Figure 3 of
Evermann, which “displays a map in response to a search for a particular
type of business in a specific location” — specifically, “Search Coffee in
Manhattan”), with the ability to obtain “DIRECTIONS” to the search result.
Ex. 1002, Fig. 3, ¶ 64. Petitioner also relies on additional teachings in
Evermann, discussed above for claim 1, of the use of the location of the user
during the spoken request as metadata associated with requests. Pet. 14.
Petitioner further relies on the disclosures in Evermann of ranking search
results (“prioritizes the received content,” “prioritize its results,” “displays a
small number of the top-ranked results,” “prioritize the content it receives,”
“display the received search result items in rank order, with the most
responsive result at the top of the list of displayed results”). Pet. 19, 23, 34
(citing Ex. 1002, ¶¶ 43, 63, 65, 67, 71). Based on these disclosures,
Petitioner’s expert, Dr. Khosh testifies that it would have been obvious to
one of ordinary skill to search and rank based on user reviews and distance
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from location as required by claims 4 and 15. Pet. 23–24 (citing Khosh
Decl. ¶¶ 133–135, 161–162).
Petitioner also relies on the disclosures in Yoo which teach ranking by
user recommendations and proximity to the user location: “query for ‘Italian
restaurants’ to identify Italian restaurants in a specified area,”
“recommendations of businesses, service providers, products, information,
entertainment programs, merchants, etc.,” “rank businesses based . . . on the
number of recommendations from recommending users,” “only restaurant
recommendations of the restaurant critics . . . might be incorporated into the
search results,” “search result including one or more selected businesses . . .
in the ranked order,” “a location of the searching user is provided . . . so that
the search service can prioritize relevant businesses based at least in part by
distance from the searching user,” “prioritize businesses in part based on
how close the business is to this location . . . . location of the user device
may be automatically determined using a global positioning system (GPS).”
Pet. 38–42 (citing Ex. 1003 ¶¶ 4, 16, 30–31, 39, 62, 65; Khosh Decl. ¶¶ 190–
192).
Patent Owner argues for claim 4 that neither Evermann nor Yoo
disclose user review ratings of respective restaurants, or geographical
distance of restaurants, as social network ranking factors. PO Resp. 37–38
(citing Melendez Decl. ¶¶ 125–134). Patent Owner’s expert Dr. Melendez
asserts that, while Evermann can search for reviews that may relate to
restaurants, but does not disclose the use of the review as ranking factors.
Melendez ¶ 127. Dr. Melendez argues Evermann does not discuss distances,
but rather discusses locations, and therefore does not suggest ranking search
results based on distance from the user and user review ratings. Id. ¶ 128.
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Dr. Melendez discounts the relevance of Figure 3 of Evermann, noting that
no actual distance is shown. Id. at ¶ 129. Dr. Melendez also opines that
Yoo fails to disclose these features. Id. at ¶¶ 131–133.
For claim 15, Patent Owner additionally argues that its scope differs
from claim 4 in that, rather than requiring, as ranking factors, a physical
distance from the location and user ratings, claim 15 requires a physical
distance from the location and distance from a user review, which
requirement, according to Dr. Melendez, is not taught by the asserted
references. PO Resp. 41 (citing Melendez Decl. ¶ 191–193); Sur-Reply 12–
13.
In response to Dr. Melendez, Petitioner reiterates the evidence
discussed above, supplemented by Dr. Khosh’s testimony that Evermann
alone, and in combination with Yoo, would have taught searching for
restaurants based on “transcript and location,” and in particular would have
taught searching and ranking based on “distance from the location and a
factor dependent on user ratings.” Reply 14, 17–18; Khosh 2nd Decl. ¶¶ 30–
31. Petitioner further argues that Patent Owner’s interpretation of claim 15,
to require ranking based on distance from a user review, is contrary to the
plain meaning of the claim, which as a matter of logic refers to ranking
based on distance of the restaurant from the user, not the review. Reply 17
(citing Khosh 2nd Decl. ¶ 37).
We agree with Petitioner that the disclosures of Evermann alone, and
also in combination with Yoo, render obvious claims 4 and 15. As
demonstrated above, both references provide ample teachings of a variety of
searches for businesses, including restaurants, based on a variety of criteria,
including reviews and distance of the business from the user. Both teach
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ranking search results using a variety of factors, including distance from the
users, reviews, recommendations, “top-ranks,” “recommendations of the
restaurant critics,” and the like. Petitioner’s expert Dr. Khosh provides
persuasive testimony that these disclosures, whether considering Evermann
alone or in combination with Yoo, would have taught or suggested to one of
ordinary skill the subject matter of claims 4 and 15. Khosh Decl. ¶¶ 133–
135, 161–173, 184, 190–192. We do not find the testimony of Dr. Melendez
persuasive, as substantially relying on Patent Owner’s claim construction
proposals that we have not adopted, and failing to take into account the
ability of an ordinarily skilled artisan to “be able to fit the teachings of
multiple patents together like pieces of a puzzle” because the skilled artisan
is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
420–21. We also are not persuaded that Patent Owner’s interpretation of
claim 15, requiring ranking based on distance from a user review, has any
merit, because we see nothing in the specification that would support such a
view of the claim language.
Having considered the entirety of the evidence including the objective
indicia of nonobviousness first discussed above, and weighed the entirety of
the evidence as a whole, we determine that Petitioner has proved by a
preponderance of the evidence that claims 4 and 15 would have been
obvious over Evermann alone, and claims 4 and 15 also would have been
obvious over Evermann and Yoo.
7. Independent Claim 16
Claim 16 is a method claim that is similar to claim 10, but includes
additional requirements essentially similar to those of dependent claim 4,
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discussed above, relating to the use of “user ratings” and distance from the
location to search and retrieve records from a database — viz.:
automatically generating a query of a social information
search engine comprising user ratings of places . . . .
automatically ranking the plurality of social network
records corresponding to the query . . . according to at least one
social network ranking factor comprising at least a physical
distance from the location and a factor dependent on the user
ratings . . . .
Ex. 1001, 18:14–23 (emphasis added). Petitioner’s evidence and arguments
for these aspects of claim 16 are essentially the same as for claims 4 and 15.
Pet. 32–36, 38–40 (citing Khosh Decl. ¶¶ 163–173). Likewise, Patent
Owner makes essentially the same arguments for ranking factor
requirements of claim 16 as it makes for claim 4. PO Resp. 42–43 (citing
Melendez Decl. ¶¶ 206–212).
For the same reasons as discussed above for claim 4, we agree with
Petitioner that the disclosures of Evermann alone, and also in combination
with Yoo, render obvious claim 16. As demonstrated above, both references
provide ample teachings supporting the requirements of searching and
ranking based on reviews and distance of the business from the user.
Petitioner’s expert Dr. Khosh provides persuasive testimony that these
disclosures, whether considering Evermann alone or in combination with
Yoo, would have taught or suggested to one of ordinary skill the subject
matter of claim 16. Khosh ¶¶ 133–135, 163–176, 180–185, 190–192. We
do not find the testimony of Dr. Melendez persuasive, for the reasons
discussed above.
Having considered the entirety of the evidence including the objective
indicia of nonobviousness first discussed above, and weighed the entirety of
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the evidence as a whole, we determine that Petitioner has proved by a
preponderance of the evidence that claim 16 would have been obvious over
Evermann alone, and claim 16 also would have been obvious over
Evermann and Yoo.
8. Dependent Claims 2, 3, 12, and 17
Claims 2–3, 12, and 17 of the ’981 patent depend from independent
claims 1, 10 and 16, and further require the claimed ranking factor to be
“social network credibility” (claim 2), “social network popularity” (claim 3),
or one or both of the same (claims 12, 17).16 Ex. 1001, 16:41–46, 17:30–35,
18:28–33.
Petitioner challenges these claims as unpatentable over Evermann,
and also as unpatentable over the combination of Evermann and Yoo.
Pet. 21–22, 31, 36–37, 40. Petitioner relies on the disclosures in Evermann
of ranking based on responsiveness, targeting, relevance, business reviews,
wealth and status, and ratings from trusted friends, which it argues relate to,
and teach or suggest, the use of ratings based on credibility and popularity.
Id. at 21–22, 40 (citing Ex. 1002 ¶¶ 42–43, 49, 63, 65, 67, 70–71, 80–81, 87;
Khosh Decl. ¶¶ 129–132, 158, 177, 186); Reply 12 (citing Khosh 2nd Decl.
¶ 26).
Petitioner further relies on the disclosures in Yoo of ranking based on
“popularity ranking,” “credibility,” degrees of closeness, relationship graphs,
and identity of recommending users which, in combination with Evermann,
it argues render obvious the claim limitations based on credibility or

16 Claim 12 is also satisfied by ranking factors based on “reverse
chronological order” or “type of social information,” which are discussed in
Section III.F.9 below.
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popularity. Pet. 40–41 (citing Ex. 1003, Figs. 2, 4, 5, ¶¶ 16, 21, 28, 44, 55–
56, 70–71, 74–75; Khosh Decl. ¶¶ 186–189); Reply 12–13 (citing Khosh 2nd
Decl. ¶ 27).
For these claims, Patent Owner reiterates its argument that neither
Evermann nor Yoo disclose “social network ranking factors,” and further
that they do not disclose use of “social network credibility,” or “social
network popularity.” PO Resp. 36, 41 (citing Melendez Decl. ¶¶ 106–114,
115–124, 215–218). Patent Owner also challenges Petitioner’s reliance on
Evermann’s use of information from trusted sources, arguing that it is based
on the user’s determination of trust, rather than a determination made by a
social network. Id. Petitioner argues that Yoo’s “degree of closeness,” is
not credibility or popularity. Id. Patent Owner further criticizes Petitioner’s
reliance on the same disclosures in Evermann and Yoo as teaching both the
credibility requirement of claim 2 and the popularity requirement of claim 3.
Id. at 37–37.
In response, Petitioner argues “Evermann discloses that credibility
and/or popularity is important to providing ‘highly sifted, targeted results.’
Reply 12 (citing Ex. 1004 ¶ 67; Khosh Decl. ¶¶ 129–130). Petitioner argues
that consideration of trusted friends is a measure of credibility and
popularity. Id. (citing Khosh 2nd Decl. ¶ 26). Petitioner also argues that
“Yoo expressly ranks results according to the ‘degree-of-closeness’ of the
user’s relationships to the recommending party,” which suggests credibility.
Id. (citing Ex. 1005 ¶¶ 44. 55, 59–74; Khosh 2nd Decl. ¶ 27). In addition,
Yoo expressly ranks by popularity. Id. at 12–13 (citing Ex. 1005 ¶ 56;
Khosh 2nd Decl. ¶ 27). Petitioner also submits that there is no contradiction
in relying on the same portions of Evermann and Yoo for both the credibility
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and popularity requirements, because the terms are not mutually exclusive,
and allow some overlap. Id. at 13.
We are persuaded by Petitioner that the disclosures of Evermann
alone, and also in combination with Yoo, render obvious claims 2–3, 12, and
17. As demonstrated above, both references provide ample teachings
supporting the requirements of ranking by credibility and popularity.
Although Evermann does not explicitly disclose credibility or popularity
ranking, its teachings directed to a wide variety of closely related ranking
criteria reasonably teach that subject matter. For example, Evermann refers
to “optimiz[ing] the quality of the content of information that is retrieved”
(¶ 42), “prioritiz[ing] the received content by using the metadata and
commerce information” (¶ 43), “optimiz[ing] the quality and responsiveness
of the search results” (¶ 49), “return[ing] results that are better targeted to
the user” (¶ 63), “return highly sifted, targeted results to the user” (¶ 67),
“search[ing] result items that have a degree of responsiveness greater than a
threshold degree of responsiveness” (¶ 70), “display[ing] the received search
result items in rank order, with the most responsive result at the top of the
list of displayed results” (¶ 71), and “receiving information from a trusted
source” (¶ 87).
Likewise, Yoo discloses ranking using “relationship graphs” based on
“affinity groups” and “users . . . directly related as friends” (Fig. 3, ¶¶ 28,
44, 61), “[d]iscover trusted businesses from your friends” (Fig. 4), business
recommendations (¶ 16), use of Facebook (¶¶ 18, 55), “perception of the
relevant expertise” (¶ 32), “closeness of the relationship” (¶ 34), “popularity
ranking” (¶ 56), and “credibility that the searching user attributes the users”
(¶ 75).
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In light of these disclosures, Patent Owner’s arguments are
unpersuasive as grounded on its proposed constructions of “social network
database” and “social network rating factor,” which we have not adopted.
We also agree with Petitioner that ranking by credibility or popularity are
closely related concepts that are not mutually exclusive, and there is no
contradiction in relying on the same portions of Evermann and Yoo for both
the credibility and popularity requirements. Reply 13.
Accordingly, having considered the entirety of the evidence including
the objective indicia of nonobviousness first discussed above, and weighed
the entirety of the evidence as a whole, we determine that Petitioner has
proved by a preponderance of the evidence that claims 2–3, 12, and 17
would have been obvious over Evermann alone, and those claims also would
have been obvious over the combination of Evermann and Yoo.
9. Dependent Claims 5 and 6
Claims 5 and 6 of the ’981 patent depend from independent claim 1
and require outputting the mined information based on “chronological order”
(claim 5), or “type of social information” (claim 6). Ex. 1001, 16:55–60.
Petitioner challenges these claims as unpatentable over Evermann,
and also as unpatentable over the combination of Evermann and Yoo. Pet.
24–26, 42–43. For claim 5, Petitioner relies on the disclosures in Evermann
involving “time-sensitive information such as weather, traffic, and sports” as
having taught or suggested teaching ordering results chronologically. Pet.
24–25 (citing Ex. 1002 ¶ 86; Khosh Decl. ¶¶ 137–138).
For claim 5, Patent Owner argues that Petitioner’s reliance on time-
sensitive information does not teach chronological order because the claim
requires “output [of] the oldest, outdated information first.” PO Resp. 38
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(citing Melendez Decl. ¶¶ 135–143). In response, Petitioner argues that it
would have been a routine modification to one of ordinary skill to arrange
search results in chronological order, given the disclosures in Evermann of
time-sensitive information such as the examples in Evermann of information
related to sports, weather, and traffic. Reply 14 (citing Khosh Decl. ¶¶ 136–
138);
We are persuaded by Petitioner’s expert Dr. Khosh’s testimony that
the disclosures in Evermann of “time-critical . . . search requests” and
retrieval of “time-sensitive information” would have taught or suggested
teaching ordering results chronologically. Ex. 1002 ¶¶ 55, 86; Khosh Decl.
¶¶ 137–138. We also agree with Dr. Khosh that ranking based on ascending
or descending chronology is merely a reversal of order that would have been
obvious to one of ordinary skill. Khosh Decl. ¶ 158.
For claim 6, Petitioner relies on the disclosures in Evermann of
categorization of query results by the type of returned content, which it
argues would have rendered obvious outputting search results based on the
type of social information that was retrieved. Pet. 25–26 (citing Ex. 1002
¶¶ 12, 64; Khosh Decl. ¶¶ 139–141). Petitioner also argues that disclosures
in Yoo of categorizing the retrieved recommendations by type render
claim 6 obvious in light of the combination of Evermann and Yoo. Id. at
42–43 (citing Ex. 1003 ¶¶ 39, 67–68; Khosh Decl. ¶¶ 193–195).
For claim 6, Patent Owner argues that Petitioner’s reliance on
“categories” of information is not a teaching of “type of social information.”
PO Resp. 38–39 (citing Melendez Decl. ¶¶ 144–150). Petitioner responds
that Evermann teaches that its categories are determined “based on the type
of returned content,” and that in any event Yoo would suggest to one of
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ordinary skill to adapt Evermann to sort by type. Reply 15 (citing Ex. 1002
¶ 64, Ex. 1003 ¶¶ 67–68; Khosh Decl. ¶¶ 193–195).
We are persuaded by Petitioner’s expert Dr. Khosh’s testimony that
the disclosures in Evermann and Yoo of the categorization of query results
would have taught or suggested outputting based on type of social
information to provide efficient presentation, instill confidence in results,
and provide quick and convenient presentation on mobile devices. Khosh
Decl. ¶¶ 193–194.
Accordingly, having considered the entirety of the evidence including
the objective indicia of nonobviousness first discussed above, and weighed
the entirety of the evidence as a whole, we determine that Petitioner has
proved by a preponderance of the evidence that claims 5 and 6 would have
been obvious over Evermann alone, and those claims also would have been
obvious over the combination of Evermann and Yoo.
10. Dependent Claims 7 and 11
Claims 7 and 11 of the ’981 patent depend from independent claims 1
and 10, respectively, and require the claimed ranking factor to be “physical
distance from the location” (claim 7) or “physical distance from the mobile-
electronic-device user’s location” (claim 11). Ex. 1001, 16:61–63, 17:29–
30.
Petitioner challenges these claims as unpatentable over the
combination of Evermann and Yoo. Pet. 41–42. Petitioner relies on the
disclosures in Evermann and Yoo of ranking search results based on the
distance from the user’s location discussed in Section III.F.6 above in
connection with claims 4 and 15. Pet. 41–42 (citing Ex. 1003 ¶¶ 30, 65;
Khosh Decl. ¶¶ 190–192); Reply 15 (citing Khosh 2nd Decl. ¶ 28).
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In response, Patent Owner argues that Petitioner’s reliance on the use
of distance in Yoo has not been shown to be a “physical distance.” PO
Resp. 39. Petitioner counters that one of ordinary skill “would clearly
understand Yoo to address physical distance, and not emotional or other
distance.” Reply 15 (citing Yoo ¶ 30; Khosh 2nd Decl. ¶ 28). We agree with
Petitioner for the same reasons as discussed above in Section III.F.6 above
for claims 4 and 15
Accordingly, having considered the entirety of the evidence including
the objective indicia of nonobviousness first discussed above, and weighed
the entirety of the evidence as a whole, we determine that Petitioner has
proved by a preponderance of the evidence that claims 7 and 11would have
been obvious over Evermann and Yoo.
11. Dependent Claims 8–9, 13–14, and 18
Claims 8, 13, and 18 depend from independent claims 1, 10 and 16,
and further require communicating or presenting the search results on “a
location mapping user interface platform” (claims 8, 13) or “within a spatial
mapping user interface” (claim 18). Ex. 1001, 16:64–67, 17:36–39, 18:34–
36. Also claims 9 and 14, which depend from independent claims 1 and 10,
respectively, require providing search results within or on “Google maps.”
Id. at 17:1–3, 17:40–42.
Petitioner challenges these claims as unpatentable over Evermann,
and also as unpatentable over the combination of Evermann and Yoo. Pet.
26–27, 31, 37, 42–43. Petitioner relies on the disclosure in Evermann of
displaying search results on maps, including Google maps. Id. (citing Ex.
1002, Fig. 3, ¶¶ 41, 53, 64; Khosh Decl. ¶¶ 142–146); Reply 15–16, 18–19
(citing Khosh ¶¶ 29, 32).
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Patent Owner argues Evermann does not disclose “communicating the
social-network information within [a] map” or “on [a] map” because
“Evermann only maps the name of the business and its location (not social-
network-information).” PO Resp. 39 (citing Melendez Decl. ¶¶ 158–163).
Patent Owner also argues that claim 18 requires outputting the ranked
plurality of records within spatial mapping user interface, which is not
taught by Evermann or Yoo. Id. at 43. In response, Petitioner cites the fact
that Figure 3 of Evermann depicts a clickable link to “Directions,”
demonstrating more than merely name and location mapping. Reply 15–16
(citing Ex. 1002, Fig. 3, ¶ 41; Khosh 2nd Decl. ¶ 29). For claim 18,
Petitioner argues Evermann broadly taught adapting the map display as
appropriate to the content to be displayed, and that in any event the “ranked
plurality of records” refers to the records of claim 16, not the appearance of
the “mapping user interface” of claim 18. Id. at 18–19 (citing Ex. 1002 ¶¶
31, 64; Khosh 2nd Decl. ¶ 32).
We agree with Petitioner that the disclosures in Evermann alone, and
in combination with Yoo, render obvious claims 8–9, 13–14, and 18. As
demonstrated above, Evermann provides ample teachings of the map-based
presentation required by the claims. Petitioner’s expert Dr. Khosh provides
persuasive testimony that these disclosures, whether considering Evermann
alone or in combination with Yoo, would have taught or suggested to one of
ordinary skill the subject matter of the claims. Khosh ¶¶ 142–146; Khosh
2nd Decl. ¶¶ 29, 32.
Accordingly, having considered the entirety of the evidence including
the objective indicia of nonobviousness first discussed above, and weighed
the entirety of the evidence as a whole, we determine that Petitioner has
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proved by a preponderance of the evidence that claims 8–9, 13–14, and 18
would have been obvious over Evermann alone, and claims 8–9, 13–14, and
18 would have been obvious over Evermann and Yoo.
12. Summary
In sum, for each element of claims 1–6, 8–10, and 12–18, Petitioner
has cited disclosures in Evermann that, taken together, teach each
requirement of the claims, as confirmed by the testimony of Petitioner’s
expert Dr. Khosh, who persuasively articulates why one of ordinary skill in
the art would have been taught the claimed subject matter. For Petitioner’s
ground based on obviousness of claims 1–18 over the combination of
Evermann and Yoo, Patent Owner’s evidence of nonobviousness and
Petitioner’s evidence of obviousness have been considered collectively and
weighed against each other. The evidence of obviousness is strong and the
evidence of nonobviousness is weak. We conclude that one of ordinary skill
would have been motivated to adopt the pertinent teachings of Yoo to those
of Evermann, as proposed by Petitioner, and that the combination would
have taught the subject matter of each of claims 1–18 to one of ordinary
skill.
For both grounds, we have taken into account the proper construction
of the claim, the level of ordinary skill in the art, and Patent Owner’s
submission of evidence directed to indicia of nonobviousness. We are not
persuaded by Patent Owner’s arguments of nonobviousness, which are in
substantial part based on claim construction contentions that we have not
adopted, and which discount the creative abilities of one of ordinary skill in
the art to be taught subject matter not explicitly disclosed.
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Accordingly, based on our review of the record and the parties’
submissions as discussed above, we determine that Petitioner has proved by
a preponderance of the evidence that claims 1–6, 8–10, and 12–18 of the
’981 patent would have been obvious over Evermann, and also that
Petitioner has proved by a preponderance of the evidence that claims 1–18
would have been obvious over Evermann and Yoo.
G. Obviousness of Claims 1–19 Over Ramer and Hayashi
Petitioner challenges dependent claims 1–19 as unpatentable under 35
U.S.C. § 103(a) over the combination of Ramer and Hayashi. Pet. 43–76.
Because, as set forth above, we have determined that claims 1–18 are
unpatentable as obvious on light of Evermann alone and/or in light of the
combination of Evermann and Yoo, we do not address Petitioner’s
challenges to the claims based on the combination of Ramer and Hayashi,
except that we consider claim 19, which is only challenged based on the
combination of Ramer and Hayashi, as well as claims 16 and 18, given that
claim 19 depends from those claims.
1. Ramer
Ramer, titled “Location Influenced Search Results,” was filed January
19, 2006 (with related continuation-in-part applications filed in November,
2005), and published March 15, 2007. Ex. 1004, codes (54), (22), (63), (43).
Ramer relates to improved mobile advertisement syndication for mobile
communication facilities. Ex. 1004 ¶ 3. The system of Ramer may receive
a search request from a mobile communication facility as well information
about the location of the mobile communication facility. Id. ¶ 5. The
system presents search results responsive to the request, which are
prioritized according to relevancy wherein relevancy is based in part on
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location. Id. The search request may be entered as a voice command to the
mobile communication facility. Id. ¶ 6. Figure 1 of Ramer is reproduced
below.

Figure 1 depicts a wireless search platform including Mobile
Communications Facility 102, which can be a mobile phone, to process user-
initiated queries via query entry system 120, which includes voice entry
function 122. Id. ¶¶ 37, 40, 44. Mobile Communications Facility 102 can
access Mobile Search Host Facilities 114, which includes Search Facility
142, used to initiate a search, and Voice Recognition Facility 160 to carry
out spoken commands, assisted by Disambiguation Facility 140 to reduce
ambiguity as to the meaning of a query entered by a user. Id. ¶¶ 39, 57–59,
80, 109, 258. Mobile Communications Facility 102 also can be linked to
Locator Facility 110 to identify the geographical location of the user and
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proximity to other locations, which can be combined with the user query.
Id. ¶¶ 37, 51–53. Searches can be directed to servers 134 and databases 138
connected to the Internet to retrieve information about businesses and other
subjects. Id. ¶¶ 83, 103. The system has the ability to order and display
search results, organized by type of content, date, or concept. Id. at ¶ 75.
The system may be used to search for restaurants, including searching
“by the location of the mobile communication facility to recommend only
those restaurants that are in the user’s immediate vicinity and further filtered
. . . to recommend only that subset or restaurants serving . . . in the user’s
current vicinity that have received high ratings by restaurant patrons with a
demographic profile similar to the user’s.” Id. ¶ 119.
2. Hayashi
Hayashi, titled “Contextual Mobile Local Search Based On Social
Network Vitality Information,” was filed April 28, 2006, and published
November 1, 2007. Ex. 1005, codes (54), (22), (43). Hayashi relates to
performing contextual mobile searches based, at least in part, on social
networking information. Ex. 1005 ¶ 1. As described in Hayashi
the terms “social network” and “social community” refer to a
concept that an individual’s personal network of friends, family
colleagues, coworkers, and the subsequent connections within
those networks, can be utilized to find more relevant
connections for a variety of activities, including, but not limited
to dating, job networking, service referrals, content sharing,
like-minded individuals, activity partners, or the like.
Id. ¶ 17.
Searches based on social networking information may account for
“where the mobile user may be physically located,” “whether members of
the mobile user’s social network are nearby,” and “aggregated information
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from other social networking members.” Id. ¶¶ 21, 25. Hayashi indicates
that by applying social networking information to a search request, the
results of the search may be made more relevant to the user. Id.; see also id.
¶ 101 (“Moreover, the list of possible restaurants may be ordered based on
social networking information, such as which restaurants a friend, family
member, close contact (first degree of separation), or the like has
recommended. The list might also provide a review from a friend, family
member, or the like.”). Examples includes verbal entry of a search request
for restaurants, resulting in displaying search results by restaurants location
and review. Id. at Fig. 7, ¶¶ 97–103.
3. The Combination of Ramer and Hayashi
Petitioner provides testimony of its expert, Dr. Khosh, that one of
ordinary skill would have been motivated to incorporate social networking
features disclosed in Hayashi into the search system of Ramer to enrich the
user experience and enhance relevancy of search results. Pet. 57–58 (citing
Khosh Decl. ¶¶ 272–273). Specifically, Dr. Khosh persuasively opines that
an artisan of ordinary skill “would have appreciated refining Ramer’s results
using social network features, as suggested by Hayashi” in order to
provid[e] ease, speed, and/or user confidence in evaluating the
results presented, would accommodate the application on
mobile devices, for example, by reducing the amount of user
input required in order to receive context-enhanced results,
would accelerate the visibility of emerging information whether
the feedback is successful or unsuccessful, and/or would
generally increase the chances of presenting desirable results
and/or presenting the results most likely to success early in the
queue.
Khosh Decl. ¶ 272. Patent Owner does not address this issue. See PO Resp.
43–56.
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Based on our review of the record, including the evidence that one of
ordinary skill would have appreciated refining Ramer with attributes of
Hayashi such as ease and speed in evaluating search results, facilitating user
input, and other improvements, we determine that the preponderance of the
evidence supports Petitioner’s expert’s testimony that one of ordinary skill
would have been motivated to apply, and would have had a reasonable
expectation to succeed in applying, the social networking teachings of
Hayashi to the search system of Ramer.
4. Claims 16, 18, and 19
For the preamble of claim 16, Petitioner relies on the disclosures in
Ramer of a system including mobile devices for receiving voice commands
to activate query requests, and presenting results to the user, taking into
account the user’s location. Pet. 44–45, 71 (citing Ex. 1004 ¶¶ 5–9, 37, 40,
44; Khosh Decl. ¶¶ 197–203).
For the first, “receiving,” limitation of claim 16, Petitioner relies on
the disclosures in Ramer of receiving user-generated speech via a
microphone and/or via communication for processing and/or querying, and
receiving location information associated with speech. Pet. 45, 71–72
(citing Ex. 1004 ¶¶ 5–9, 37, 41, 44, 52, 55, 57, 59, 80, 86, 109, 143, 157,
158, 201, 207, 739; Khosh Decl. ¶¶ 205–206, 346, 349).
For the second, “automatically transcribing,” limitation of claim 16,
Petitioner relies on the disclosures in Ramer of voice entry 122 providing
voice/speech recognition to generate text queries, and associating the
transcript with location as metadata to improve the query. Pet. 45–46, 72
(citing Ex. 1004 ¶¶ 94, 114, 126–128, 253, 287, 328, 455, 482, 508; Khosh
Decl. ¶¶ 209–222, 351).
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For the third, “automatically generating,” limitation of claim 16,
Petitioner relies on the disclosures in Ramer of automatically handling query
requests and results between host facility 112 and various data resources to
request records, including social network records such as products/services,
entertainment, blogs, and/or highly-rated restaurants. Pet. 48–49, 73 (citing
Ex. 1004 ¶¶ 42, 50, 57, 59, 62, 65, 71, 74, 82, 87, 89–91, 99, 100, 118–119,
142, 148, 158, 163, 234, 281, 309, 340; Khosh Decl. ¶¶ 224–226, 352).
For the fourth, “automatically ranking,” limitation of claim 16,
Petitioner relies on the disclosures in Ramer of ranking results based on
popularity, frequency, sales, rates-of-change, freshness, among others, each
indicating social network factors, including restaurants in the user’s vicinity
that have received high ratings. Pet. 73–74 (citing Ex. 1004 ¶¶ 72, 106, 164,
166, 217–218, 232, 234, 251, 285, 298, 326, 330; Khosh Decl. ¶¶ 353–354).
Petitioner also relies on the disclosure in Hayashi of ranking by distance. Id.
(citing Khosh Decl. ¶ 355).
For the last, “outputting,” limitation of claim 16, Petitioner relies on
the disclosures in Ramer of ordering and displaying search results content
via display 172 based on mobile subscriber characteristics, location, and/or
filter results. Pet. 74 (citing Ex. 1004 ¶¶ 60, 75, 500, 506–508, 509, 864–
866). Petitioner also relies on the disclosure in Hayashi of listing restaurants
based on social network factors such as user reviews, ratings, and location.
Pet. 75 (citing Ex. 1005, Fig. 7, ¶¶ 99–103; Khosh Decl. ¶¶ 357–358).
For the mapping interface limitation of dependent claim 18, which
depends from claim 16, Petitioner relies on the disclosure in Ramer of
displaying various results within maps. Pet. 64–65, 76 (citing Ex. 1004,
¶¶ 74, 210, 298; Khosh Decl. ¶ 318).
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Dependent claim 19, which depends from claim 18, and indirectly
from claim 16, requires “automatically searching a set of persistently stored
transcripts and associated metadata with the at least one automated
processor.” Petitioner relies on the disclosure in Ramer of archival-type
transcript and metadata storage within mobile subscriber characteristics
database 112, including storage of transcript queries, as well as location
metadata. Pet. 76 (citing Ex. 1004, ¶¶ 207, 225, 551, 552, 877; Khosh Decl.
¶¶ 333, 363).
In response, for claim 16, Patent Owner refers to arguments it makes
in connection with claims 1 and 10 in light of Ramer and Hayashi. PO Resp.
54 (referencing Sections IX(a)–(b), and (k), at PO Resp. 43–45, 52–53,
which in turn further incorporate Sections IX(c)–(d), at PO Resp. 52).
Patent Owner thereby argues, regarding the preamble of claim 1, that there is
no showing that Ramer or Hayashi discloses or suggests “presenting social-
network-provided-outputs” or “a location associated with the user in
response to the user’s spoken request.” Id. at 43–44 (citing Melendez Decl.
¶¶ 223–232).
Patent Owner also argues (in the incorporated discussion of the
“memory” limitation of claim 1 and the second, “storing,” limitation of
claim 10) that Petitioner has failed to show that Ramer or Hayashi disclose
or suggest a memory that stores both the transcript and metadata, which
metadata is associated with the spoken request and comprises the location
during the spoken request. Id. at 44–45, 52–53 (citing Melendez Decl. ¶¶
233–245).
Patent Owner repeats (in the incorporated discussion of the “interface
port” limitation of claim 1) the argument that neither Ramer nor Hayashi
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teaches an association of a transcript of a spoken request with metadata
identifying the location of the spoken request, or a social network database.
Id. at 45–46. Patent Owner also argues that Hayashi teaches receiving social
network information before performing a search, whereas the claim requires
the opposite. Id. at 46. In addition, Patent Owner argues that Petitioner has
not shown that the combination of Ramer and Hayashi show a “request to
mine information.” Id.
Patent Owner argues, (in the incorporated discussion of the sixth,
“wherein” limitation of claim 1) that the references do not teach a “social
network ranking factor.” PO Resp. 47. Also, Patent Owner argues (in the
incorporated discussion of claim 10) that Petitioner “ignores that ‘the
transcript’ in this limitation [the third limitation of claim 10] manifestly
refers to ‘the transcript of the spoken request and metadata associated with
the spoken request’ in the immediately preceding limitation [in the second
limitation of claim 10].” Id. at 53.
In addition to the incorporated arguments directed to claims 1 and 10,
Patent Owner further argues that Petitioner fails to address the additional
requirement, in the fourth limitation of claim 16, of ranking based on
physical distance from the location and user ratings. PO Resp. 54.
In response, Petitioner references the arguments made in connection
with Grounds 1 and 2, discussed above, to the effect that Patent Owner’s
construction of “social network database,” “social network ranking factor,”
“associated, and “mining” are without merit, and therefore Patent Owner’s
arguments directed to alleged lack of “social-network-provided-outputs,”
“social network ranking factors,” a memory that stores both the transcript
and associated location metadata, and “mining” the database, are based on
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an incorrect premise. Reply 19–22. Petitioner also cites the disclosure in
Ramer of the use of a user’s geographic location at the time the query was
initiated as providing the required “location associated with the user in
response to the user’s spoken request.” Id. (citing Ex. 1004 ¶ 37; Khosh
Decl. ¶¶ 215–216). Petitioner further cites Ramer’s teachings of archival-
remote storage, and local storage of transcript and memory on the device.
Id. at 20 (citing Ex. 1003 ¶¶ 201, 227; Khosh Decl. ¶¶ 218–221).
In regard to Patent Owner’s argument that Hayashi discloses receiving
social network information before performing a search, Petitioner points out
that although Hayashi does include disclosures to that effect, it also discloses
the required querying of social network databases for social network results
for ranking and ordering. Id. (citing Ex. 1005 ¶¶ 100–102; Khosh 2nd Decl.
¶ 35. In response to Patent Owner’s argument directed to the claim 16
requirement of ranking based on physical distance from the location and user
ratings, Petitioner cites the extensive disclosures in Ramer and Hayashi of
the use of ranking based on both distance and user ratings. Id. at 25. In
addition, Petitioner cites its expert Dr. Khosh’s testimony that, given those
disclosures, it would have been obvious to one of ordinary skill that both
location distance and user ratings would have been used together as rating
factors. Id. (citing Khosh 2nd Decl. ¶¶ 39–40).
For claim 18, Patent Owner argues Petitioner fails to explain how the
prior art outputs the ranked records within a spatial mapping user interface.
PO Resp. 54 (citing Melendez Decl. 353–355). In response, Petitioner cites
portions of Ramer disclosing displaying its ranked results within a spatial
mapping interface such as provided by Google, and points out that the
reference to “ranked” results in claim 18 refers to the earlier recitation of
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ranked results in claim 16, and not that claim 18 requires displaying the
results in ranked fashion. Reply 24–25 (citing Ex. 1004, ¶¶ 74, 369, 451,
210, 298; Khosh Decl. ¶ 318); Khosh 2nd Decl. ¶ 38).
For claim 19, Patent Owner argues that claim 16 does not require just
generating a query from a transcript, but instead is structured to require first
generating a transcript, and then separately generating a query.
PO Resp. 55. Based on this interpretation, Patent Owner argues that
claim 19 requires searching persistently stored transcripts of user reviews,
not searching persistently stored transcripts of queries, and that Petitioner
has not shown that Ramer or Hayashi disclose such a search. Id. at 55–56.
Petitioner responds that, although claim 16 may be broadly interpreted to
cover separate query generation, it does not require it, and in any event claim
19 simply requires “searching a set of persistently stored transcripts and
associated metadata,” and imposes no requirement for searching persistently
stored transcripts of queries. Reply 26–27 (citing Khosh 2nd Decl. ¶¶ 41,
44). Petitioner’s reading is more persuasive.
From our review of the record, Petitioner has provided ample and
persuasive support for its argument that the disclosures of Ramer and
Hayashi teach or suggest the limitations of claim 19, including those of
claims 16 and 18 from which claim 19 depends. Patent Owner’s arguments
track those made in connection with Petitioner’s challenge based on
Evermann and Yoo, which heavily rely on claim construction arguments that
we do not accept. Also, Patent Owner incorporates by reference arguments
made for claims 1 and 10 which do not pertain to claim 16 (and likewise
claims 18 and 19) — viz., the requirement for a memory to store the
transcript and associated location metadata, and an alleged failure to address
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the fact that “the transcript” in the third limitation of clam 10 refers to the
transcript in the second limitation. PO Resp. 52–53. Moreover, Patent
Owner’s arguments do not sufficiently recognize the abilities of one of
ordinary skill in the art to be taught subject matter not explicitly disclosed.
The Patent Owner arguments are unpersuasive for the reasons explained by
Petitioner.
As to the argument that the preamble is not taught by the cited art, we
are persuaded that regardless of whether the preamble is limiting the cited
art teaches or at least suggests all elements of the preamble. See PO Resp.
43–44. Claim 16’s preamble recites “[a] computer-implemented method of
mining information from a social network database, comprising.” Ex. 1001,
18:7–9. As discussed above, we are persuaded that in the context of the
’981 patent the terms “searching” and “mining” are interchangeable. See
§ III.C.5. Petitioner correctly points to Ramer’s discussion of system that
allows users to perform searches using mobile devices and Hayashi’s
discussion of social networking. See Pet. 43–44, 54; see also Reply 20
(noting that Hayashi is relied upon to teach the social network database “by
its querying of social network databases for social network
information/records such as family recommended restaurants.”). We are
persuaded that these disclosures are sufficient to meet Petitioner’s burden to
show that this aspect of the claim would have been obvious to a person of
ordinary skill in the art.
We also are unpersuaded by Patent Owner’s argument that claim 16’s
limitation “comprising at least a physical distance from the location and a
factor dependent on the user ratings,” was not shown to be taught by the
prior art. PO Resp. 54. Petitioner argues that
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Hayashi discloses listing restaurants with recommendations and
physical distance from the user. Ex. 1005, Fig. 7, ¶¶101-02.
Hayashi teaches to order the list “based on social networking
information such as which restaurants a friend, family member,
close contact (first degree of separation), or the like has
recommended, […or] how busy the restaurant may typically be,
how much time the mobile user has available as indicated by
their calendar, or the like.” Id., ¶101. Hayashi further discloses
the list “might also provide a review from a friend, family
member, or the like,” and may enable providing comments to
be shared among the social network of the user. Id., ¶¶101-102.
Pet. 60; see also id. at 73 (incorporating arguments from claim 4 into the
discussion of claim 16). Thus, contrary to Patent Owner’s argument,
Petitioner does not “ignore[] the claim’s express requirement to factor in
both physical distance from the location and a factor dependent on the user
ratings.” See PO Resp. 54. We find Petitioner’s arguments and evidence to
be persuasive and as such, we agree with Petitioner’s argument that this
element is taught by Ramer and Hayashi.
In sum, for each element of claims 16, 18 and 19, Petitioner has cited
disclosures in Ramer and Hayashi that, taken together, teach each
requirement of the claims, as confirmed by the testimony of Petitioner’s
expert Dr. Khosh, who persuasively articulates why one of ordinary skill in
the art would have been taught the claimed subject matter. We have taken
into account the proper construction of the claim and the level of skill in the
art, and we have considered the totality of the evidence as a whole including
the objective evidence of nonobviousness submitted by Patent Owner. We
therefore determine that Petitioner has proved by a preponderance of the
evidence that claims 16, 18, and 19 of the ’981 patent would have been
obvious over Ramer and Hayashi.
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IV. CONSTITUTIONAL CHALLENGE
Patent Owner argues the Board should terminate or stay this
proceeding because Administrative Patent Judges (“APJs”) are
unconstitutionally appointed. PO Resp. 62 (citing Lucia v. SEC, 138 S. Ct.
2044, 2049 (2018); Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020
WL 6037206 (Oct. 13, 2020)). Patent Owner argues that although the
Federal Circuit attempted to cure this constitutional defect in Arthrex by
severing Title 5’s removal protections, the solution is insufficient because
IPR proceedings are formal adjudications under the APA. PO Resp. 57
(citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).
Under 5 U.S.C. § 556(b), Patent Owner argues, formal adjudications must be
conducted by administrative law judges appointed under 5 U.S.C. § 3105
and such judges may be removed only for good cause. PO Resp. 57 (citing 5
U.S.C. § 7521). Because APJs are now removable, Patent Owner argues
they lack the authority to preside over formal adjudications such as the
present proceeding, and thus, Patent Owner requests the Board to dismiss or
stay this proceeding pending review of the Arthrex decision. Id. at 64. Such
a stay would not result in undue prejudice according to Patent Owner. Id.
We decline to consider Patent Owner’s constitutional challenge. The
Federal Circuit has addressed this issue in Arthrex, 941 F.3d at 1325, 1337–
38 (“This as-applied severance . . . cures the constitutional violation.”); see
also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir.
2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs
were constitutionally appointed as of the implementation of the severance,
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inter partes review decisions going forward were no longer rendered by
unconstitutional panels.”).
V. MOTION TO EXCLUDE
Petitioner has filed a Motion To Exclude, Patent Owner has filed an
Opposition to the Motion To Exclude, and Petitioner has filed a Reply to the
Opposition to the Motion To Exclude. Papers 28, 31, 32. Petitioner seeks to
exclude Exhibits 2001–2005, which relate to Patent Owner’s arguments on
objective evidence of nonobviousness, and Exhibits 2007–2015, which
relate to Patent Owner’s effort to establish a date of invention prior to the
effective filing date of the ’981 patent. Petitioner also seeks to exclude any
portion of the record relying on those exhibits.
Even without excluding Exhibits 2001–2005 and 2007–2015, and
without excluding any portion of the record relying on those exhibits,
Petitioner has proved unpatentability of all challenged claims. Therefore,
The Motion to Exclude is dismissed as moot.
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VI. CONCLUSION17
In summary:

VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that claims 1–19 of the ’981 patent are unpatentable;
ORDERED that Petitioner’s Motion To Exclude is dismissed as moot,
and

17 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).
18 As stated above, because we have determined that claims 1–18 are
unpatentable as obvious based on Ground 1 and 2, for Ground 3 we only
address claim 19 (and claims 16 and 18 from which claim 19 depends), and
do not address Petitioner’s challenges to claims 1–15 and 17 based on
Ramer and Hayashi.
Claims 35 U.S.C. § References
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–6, 8–10,
12–18
103(a) Evermann 1–6, 8–10,
12–18

1–18 103(a) Evermann, Yoo 1–18
1–19 103(a) Ramer, Hayashi 16, 18, 1918
Overall
Outcome
1–19
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FURTHER ORDERED that, because this is a Final Written Decision,
any party to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER
Michael Carrillo
Steven Shipe
Joseph Paquin
BARNES & THORNBURG, LLP
michael.carrillo@btlaw.com
steven.shipe@btlaw.com
jpaquin@btlaw.com

PATENT OWNER

Minghui Yang F.
Brad Liddle
CARTER ARNETT PLLC
myang@carterarnett.com
bliddle@carterarnett.com

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