MModal Services Ltd.

Patent Trials and Appeals Board

Jul 15, 2020

IPR2019-00496 (P.T.A.B. Jul. 15, 2020)

Trials@uspto.gov Paper No. 36
571-272-7822 Entered: July 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NUANCE COMMUNICATIONS, INC.,
Petitioner,

v.

MMODAL SERVICES LTD.,
Patent Owner.
____________

IPR2019-00496
Patent 8,412,524 B2
____________

Before JOHN A. HUDALLA, STACY B. MARGOLIES, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HUDALLA, Administrative Patent Judge.

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

Petitioner, Nuance Communications, Inc. (“Petitioner”), filed a
Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1, 5,
and 9 (“the challenged claims”) of U.S. Patent No. 8,412,524 B2 (Ex. 1001,
“the ’524 patent”). Patent Owner, MModal Services Ltd. (“Patent Owner”),
did not file a preliminary response. We determined that the information
presented in the Petition established that there was a reasonable likelihood
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that Petitioner would prevail with respect to its unpatentability challenges.
Pursuant to 35 U.S.C. § 314, we instituted this proceeding on July 18, 2019,
as to all challenged claims and all grounds of unpatentability. Paper 7
(“Dec. on Inst.”).
During the course of trial, Patent Owner filed a Patent Owner
Response (Paper 21, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner Response (Paper 25, “Pet. Reply”). Patent Owner also filed a
Sur-reply. Paper 28 (“PO Sur-reply”). An oral hearing was held on
April 20, 2020, and a transcript of the hearing is included in the record.
Paper 35 (“Tr.”).
Petitioner filed Declarations of Dr. Andrew Sears with its Petition
(Ex. 1003) and its Reply (Ex. 1017). Patent Owner filed a Declaration of
David Anderson, Ph.D., with its Response. Ex. 2003. The parties also filed
transcripts of the depositions of Dr. Sears (Exs. 2010, 2016) and
Dr. Anderson (Ex. 1022).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of
claims 1, 5, and 9 of the ’524 patent. For the reasons discussed below,
Petitioner has demonstrated by a preponderance of the evidence that
claims 1, 5, and 9 of the ’524 patent are unpatentable

I. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies Nuance Communications, Inc. as the real party-
in-interest. Pet. 1. Patent Owner identifies MModal Services Ltd., MModal
LLC, 3M Health Information Systems, Inc., Multimodal Technologies, LLC,
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3M Innovative Properties Company, and 3M Company as the real-parties-in-
interest. Paper 4, 2; Paper 6, 2; Paper 34, 1.

B. Related Proceedings
The parties identify the following proceeding related to the
’524 patent (Pet. 1; Paper 4, 2): MModal Services Ltd. v. Nuance
Communications, Inc., No. 1:18-cv-00901-WMR (N.D. Ga. filed Feb. 28,
2018).
In addition, Petitioner challenged another patent (U.S. Patent
No. 8,781,829 B2) owned by Patent Owner in IPR2019-00499. Paper 4, 2.
A Final Written Decision in that case is being issued concurrently herewith.

C. The ’524 Patent
The ’524 patent relates to editing text in draft documents. Ex. 1001,
1:33–34. The ’524 patent describes a problem where a draft of a transcript
(i.e., a draft document) produced by a human transcriptionist or an
automated speech recognition system may include a variety of errors, such
as “missing words or word sequences; excessive wording; mis-spelled,
-typed, or -recognized words; missing or excessive punctuation; and
incorrect document structure.” Id. at 1:62–64, 1:66–2:5. Thus, it is
necessary to proofread and edit such a draft document to correct the errors.
Id. at 1:64–66.
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Figure 1 of the ’524 patent is reproduced below.

Figure 1 is a dataflow diagram of system 100 for replacing a first written
form of a concept with a second written form of the concept in a draft
document. Id. at 3:24–27, 4:56–58. Automatic transcription system 104
produces draft transcript 106 of spoken audio stream 102. Id. at 4:61–63.
Transcriptionist 110 uses editing system 108 to edit draft transcript 106,
thereby producing edited transcript 112. Id. at 4:63–65.
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Figure 3 of the ’524 patent is reproduced below.

Figure 3 depicts the dataflow of Figure 1 in more detail. Id. at 4:66–5:1.
First phrase 306, representing a first written form of a concept, is identified
in draft transcript 106. Id. at 5:15–16. For example, transcriptionist 110
may identify first phrase 306 and provide editing system 108 with input 302
(such as with a text cursor or by highlighting) indicating first phrase 306. Id.
at 5:22–28. Alternatively, editing system 108 may identify first phrase 306
when it determines with reference to a dictionary that the displayed text is an
alternate written form of a concept. Id. at 5:32–39.
Transcriptionist 110 may provide instruction 304 to editing
system 108 to modify identified first phrase 306, such as by double-clicking
on first phrase 306 or by pressing a predetermined key or key combination.
Id. at 5:49–55. In response to instruction 304, second phrase identifier 312
in editing system 108 identifies second phrase 308 representing a second
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written form of the concept. Id. at 5:56–59. Editing system 108 includes
text replacer 310 to replace first phrase 306 with second phrase 308 in draft
transcript 106, thereby producing edited transcript 112. Id. at 5:65–6:2.
The ’524 patent claims priority via two continuation applications to a
U.S. patent application filed on May 25, 2006. Id., code (63). As discussed
below, Petitioner asserts that its asserted references qualify as prior art
relative to the May 25, 2006, filing date of this earliest U.S. patent
application, i.e., the earliest possible effective filing date. See Pet. 4, 7–8.

D. Illustrative Claim
Of the challenged claims, claim 1 is independent. Claims 5 and 9
depend from claim 1. Claim 1 is illustrative of the challenged claims and
recites:
1. A computer-implemented method for use with a
document tangibly stored in a first computer-readable medium,
the method comprising:
(A) accessing the first computer-readable medium to
identify a first phrase within the document, the first phrase
representing a first written form of a concept;
(B) identifying a plurality of phrases tangibly stored in a
second computer-readable medium, each of the plurality of
phrases representing an alternative written form of the concept;
(C) displaying at least some of the plurality of phrases to
a user; and
(D) receiving, from the user, an instruction to -replace
[sic] the first phrase with one of the plurality of phrases in the
document on the first computer-readable medium, wherein the
instruction does not include the one of the plurality of phrases.
Ex. 1001, 13:11–27.
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E. Prior Art
Petitioner relies on the following prior art:
U.S. Patent No. 7,881,936 B2, filed June 1, 2005, issued
Feb. 1, 2011 (Ex. 1006, “Longé”);
U.S. Patent No. 8,321,786 B2, filed June 17, 2004, issued
Nov. 27, 2012 (Ex. 1007, “Lunati”); and
U.S. Patent No. 5,027,406, filed Dec. 6, 1988, issued
June 25, 1991 (Ex. 1008, “Roberts”).

F. The Instituted Grounds
We instituted inter partes review of claims 1, 5, and 9 of the
’524 patent on the following grounds (Dec. on Inst. 30), which are all the
grounds presented in the Petition (Pet. 7):
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 5, 9 103(a)1 Longé
9 103(a) Longé, Roberts
1, 9 103(a) Lunati
5, 9 103(a) Lunati, Roberts

II. ANALYSIS
A. Legal Standards
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

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
effective filing date of the ’524 patent is before March 16, 2013 (the
effective date of the relevant amendments), the pre-AIA versions of §§ 102
and 103 apply.
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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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations.2 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We also recognize that prior art references must be “considered together
with the knowledge of one of ordinary skill in the pertinent art.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
571 F.2d 559, 562 (CCPA 1978)). We analyze Petitioner’s obviousness
contentions with the principles identified above in mind.

B. Level of Ordinary Skill in the Art
Citing testimony from Dr. Sears, Petitioner contends a person having
ordinary skill in the art would have had
a Bachelor’s degree in computer science or a closely related
field with 4-6 years of experience, or a Master’s degree and/or
PhD in computer science or a closely related field with 2-3
years of experience, the experience being in the research,
design or implementation of human-centered computing
applications, including document correction/editing in the
context of speech recognition technologies.
Pet. 8 (citing Ex. 1003 ¶ 3). Patent Owner’s proposed level of ordinary skill
is the same as Petitioner’s with two exceptions: (1) it excludes the option of

2 The record does not contain any evidence of secondary considerations of
nonobviousness.
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a Ph.D. and (2) it excludes the experience in “document correction/editing in
the context of speech recognition technologies.” PO Resp. 13.
Dr. Anderson testifies that an ordinarily skilled artisan “need not have a
PhD” because “a Master’s degree and 2-3 years’ experience would suffice.”
Ex. 2003 ¶ 13. Patent Owner also argues that Dr. Sears “modified his
opinion during his deposition” such that “speech recognition was merely ‘an
example of relevant technologies.’” PO Resp. 14 (quoting Ex. 2010, 14:8–
16).
We agree with Patent Owner that a Ph.D. was not necessary. Under
Petitioner’s proposal, a person with a master’s degree would have been
equally qualified as a person with a Ph.D., provided that the person had the
requisite 2–3 years of experience. See Pet. 8. This supports Patent Owner’s
position. We also agree with Patent Owner that experience in “speech
recognition technology” would not have been necessary. The ’524 patent is
directed to “text processing and, more particularly, to editing text in draft
documents.” Ex. 1001, 1:33–34. Although such text processing or editing
might have been applicable to documents created with speech recognition
technology, the record does not indicate that such processing or editing is
peculiar to that technology. Thus, we exclude experience in “speech
recognition technology” from the definition. Nevertheless, experience in
“document correction/editing” seems germane to the definition given the
’524 patent’s stated field of invention. See id. And, at oral argument, Patent
Owner conceded as much. See Tr. 35:11–38:16 (colloquy with Patent
Owner’s counsel regarding the level of ordinary skill in the art including
counsel’s statement that “the patent does discuss document editing, and so
that wouldn’t be incorrect to include within the level of ordinary skill in the
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art”). Thus, we retain Petitioner’s proposed experience in “document
correction/editing.” See Pet. 8.
Accordingly, we determine that a person of ordinary skill in the art
would have had a bachelor’s degree in computer science (or a closely related
field) with 4–6 years of experience, or a master’s degree in computer science
(or a closely related field) with 2–3 years of experience. The person’s
experience would have been in research, design, or implementation of
human-centered computing applications, including document
correction/editing. We are satisfied that this definition comports with the
level of skill of skill necessary to understand and implement the teachings of
the ’524 patent and the asserted prior art.

C. Claim Interpretation
Because this inter partes review is based on a petition filed after
November 13, 2018, we construe each claim “in accordance with the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019)). Accordingly, our claim construction standard is the same as that of
a district court. See id. Under the standard applied by district courts, claim
terms are generally given their plain and ordinary meaning as would be
understood by a person of ordinary skill in the art at the time of the invention
and in the context of the entire patent disclosure. Phillips v. AWH Corp.,
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415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
exceptions to this general rule: 1) when a patentee sets out a definition and
acts as his own lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during prosecution.”
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012).
Petitioner does not expressly propose constructions for any of the
claim terms. See Pet. 8–9. Patent Owner proposes constructions related to
the limitation “a plurality of phrases . . . , each of the plurality of phrases
representing an alternative written form of the concept” in claim 1 and the
limitation “context of the first phrase in the document” in claim 5. PO
Resp. 14–26; PO Sur-reply 2–13. Patent Owner’s arguments (PO Resp. 42–
43; PO Sur-reply 19) also prompt us to consider whether misspellings are
excluded from the scope of the recited “written form of a concept” in
claim 1. We now consider each of these claim construction issues.

1. Whether Each “Alternative Written Form” Must Be Different
from the “First Written Form” (Claim 1)
Patent Owner’s arguments regarding the recited “alternative written
form” relate to the interplay of the italicized language below in steps (A) and
(B) of claim 1:
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(A) accessing the first computer-readable medium to
identify a first phrase within the document, the first phrase
representing a first written form of a concept;
(B) identifying a plurality of phrases tangibly stored in a
second computer-readable medium, each of the plurality of
phrases representing an alternative written form of the concept;
Ex. 1001, 13:14–20 (emphases added). Patent Owner contends an ordinarily
skilled artisan “would have understood that an ‘alternative written form of
the concept’ must be an alternative to and different from the recited first
written form.” PO Resp. 17 (citing Ex. 2003 ¶¶ 42–46); see also PO
Sur-reply 2–3 (citing Ex. 2003 ¶¶ 39–46). Patent Owner argues “[t]he claim
language distinguishes between the ‘first written form of a concept,’ in
step (A), and the plurality of phrases, each representing an “alternative
written form of the concept” in step (B). PO Resp. 19 (citing Ex. 2003
¶¶ 33, 42). Patent Owner explains “[t]here would be no reason for a user to
replace a first written form of the concept with the exact same written form
of the concept—hence the claim language’s recitation that the plurality of
phrases are alternative written forms of the concept.” Id. at 19–21 (citing
Ex. 2003 ¶¶ 39–46); see also PO Sur-reply 7–8.
Petitioner contends “the plurality of phrases identified on the second
computer-readable medium may also include the ‘first phrase’ that is
identified in claim limitation 1(A).” Pet. 17 (Ex. 1003, 47–48). Petitioner
explains that “the plurality of phrases are alternative written forms of the
concept (exactly as the plain language of the claim requires), not alternative
written forms of the first phrase.” Id. at 18 (citing Ex. 1003, 48). In support
of its interpretation, Petitioner points to the written form dictionaries
depicted in Figures 5 and 7 of the ’524 patent. Pet. Reply 5–15.
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As an example, Petitioner notes mapping 502b in Figure 5 “may correspond
to . . . the concept of milligrams (which may be represented, for example, by
the alternate written forms ‘milligrams’ and ‘mg’).” Id. at 6 (citing 1001,
6:27–33). Petitioner depicts the example related to milligrams in an
annotated version of Figure 5, which is reproduced below.

In this annotated version of Figure 5, Petitioner has inserted in red text
“milligrams” as the first form of mapping 502b and “mg” as the second form
of mapping 502b. Id. at 7–8. Petitioner notes that “both ‘milligrams’ and
‘mg’ are phrases representing an alternative written form of the concept of
milligrams (a unit of measure), as step B requires.” Id. at 8. Petitioner also
notes how the ’524 patent implements the use of a written form dictionary:
[O]nce the “first phrase 306 has been identified (FIG. 4, step
404), the editing system 108 may identify the second phrase
308 as follows. The editing system 108 may search the
mappings 502a-n in the written form dictionary 500 for a
written form that matches the first phrase 306 (step 602).”
Pet. Reply 10–11 n.4 (quoting Ex. 1001, 6:35–39). As such, Petitioner
argues that alternative written forms could not be identified in the written
form dictionary unless the first written form is included among the plurality
of phrases. Id. at 11 (citing Ex. 1017 ¶ 6).
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We start by considering the language of claim 1 itself. Step (A)
recites that “the first phrase represent[s] a first written form of a concept.”
Step (B) recites that “each of the plurality of phrases represent[s] an
alternative written form of the concept.” Thus, the “first phrase” in step (A)
and “each of the plurality of phrases” in step (B) represent written forms of
the same concept based on antecedent basis. In addition, nothing in the plain
language of claim 1 prevents the “first written form of the concept” in
step (A) from being one of the “alternative written form[s] of the concept” in
step (B); the only thing associating all written forms is that they are related
to the same concept. Furthermore, the plurality of phrases in step (B) are
alternatives to one another insofar as they are all written forms of the same
concept. As such, and contrary to Patent Owner’s argument (PO
Sur-reply 3), the plurality of phrases in step (B) do not have to be different
from the first phrase in step (A) to give meaning to the word “alternative.”
Such an understanding is consistent with how the specification treats
various written forms of a concept. In particular, the specification describes
how a first phrase is identified by referring to “a dictionary of alternative
written forms of various concepts”:
[T]he editing system 108 may identify the first phrase 306. For
example, and as described in more detail below, the editing
system 108 may maintain a dictionary of alternate written forms
of various concepts. When the editing system 108 displays text
in the draft transcript 106 to the transcriptionist 110, the editing
system 108 may determine, by reference to the dictionary,
whether the displayed text is an alternate written form of a
concept. If so, the editing system 108 may identify the text as
the first phrase 306 in step 404.
Ex. 1001, 5:32–40. As can be seen, first phrase 306, which “represent[s] a
first written form of a concept” (id. at 5:14–15), is identified precisely
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because it is included among the alternative written forms of a concept in a
dictionary. This undermines Patent Owner’s suggestion that the plurality of
phrases must be “distinct from the first written form of the concept in claim
limitation 1(A).” PO Resp. 15.
Furthermore, we do not agree with Patent Owner’s suggestion that it
makes no sense to include the first phrase among the alternative written
forms of a concept. See PO Resp. 16. The specification mentions that the
first written form may be used as a search key into each mapping within the
dictionary. See Ex. 1001, 6:37–39 (“The editing system 108 may search the
mappings 502a-n in the written form dictionary 500 for a written form that
matches the first phrase 306 . . . .”), 8:20–29 (discussing a situation where
“the first written form in each mapping is used as a key into each mapping”).
This makes sense from a hardware perspective because, as noted by
Petitioner, “step B ‘identif[ies] a plurality of phrases tangibly stored’ in the
written form dictionary, which is [accomplished] by matching the first
written form/phrase in step A (in a first computer-readable medium) to a
sufficiently matching form/phrase in the written form dictionary (stored in a
second computer-readable medium).” Pet. Reply 10 (citing Ex. 1001, 6:14–
45; Ex. 1017 ¶ 6) (first alteration by Petitioner; second alteration added). In
this way, the search key allows interaction between the two computer-
readable mediums.
Finally, we consider Patent Owner’s arguments (PO Resp. 19–21; PO
Sur-reply 7–8) regarding whether the “first phrase” can be replaced with the
same phrase from among the plurality of phrases in step (D) of claim 1. As
noted by Petitioner (Pet. 17–18), the specification describes a situation with
“only two applicable alternate forms” wherein “cycling through alternate
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forms may have the effect of toggling between the two applicable alternate
forms.” Ex. 1001, 9:6–14. Although Patent Owner contends that such
toggling must result in replacement of the first phrase with a different phrase
(PO Resp. 20 (citing Ex. 1001, 8:65–9:2)), we agree with Petitioner that the
user’s instructions might result in replacement with “the very same phrase,
albeit coming from the second computer-readable medium.” Pet. Reply 13
(citing Ex. 1017 ¶ 15); see also Ex. 1001, 6:4–13, Figs. 9A–9C (describing
an example where the first phrase “cerebrovascular accident” is replaced by
“CVA,” which in turn is replaced by “cerebrovascular accident”), 9:10–14
(describing an example of toggling between the phrases “CVA” and
“cerebrovascular accident” in a draft transcript for the concept of a
cerebrovascular accident). This understanding is consistent with the
interplay of the two computer-readable mediums recited in claim 1, as
discussed directly above. It also is consistent with Dr. Andersen’s testimony
that the scope of claim 1 does not exclude a scenario where the user opts not
to change the first phrase identified in step (A). Ex. 1022, 34:19–23.
For these reasons, we decline to adopt Patent Owner’s proposed
construction that would require the plurality of phrases representing
alternative written forms of a concept in step (B) to be distinct from the first
written form of a concept in step (A).

2. Whether a Misspelled Word is Excluded from a “Written Form
of the Concept” (Claim 1)
The parties’ positions require us to consider whether a misspelling of
a word is excluded from the scope of the recited “written form of the
concept” in claim 1. In particular, Petitioner’s obviousness analysis for the
Lunati ground maps the recited “written form of the concept” in claim 1 to
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various misspellings of words. See, e.g., Pet. 41–42. Petitioner contends the
techniques in the specification of the ’524 patent “could be ‘used in
conjunction with mappings between any two or more written forms of a
concept,’ including ‘alternate spellings of the same concept.’” Id. at 42
(quoting Ex. 1001, 11:10–14) (emphasis by Petitioner). Citing testimony
from Dr. Sears, Petitioner explains that a misspelling may not be the
preferred written form of a concept but may “still convey the concept such
that it is a written form of a concept.” Pet. Reply 23 (citing Ex. 1003, 66–
67).
Patent Owner contends an ordinarily skilled artisan “would have
understood that a ‘concept’ is the idea or notion underlying the phrase, i.e.,
the meaning of the phrase.” PO Resp. 4 (citing Ex. 2003 ¶¶ 21–24 and
various dictionary definitions). As such, Patent Owner argues “[a]
misspelling is not properly considered a written form of a concept, unless by
accident it is a proper spelling for another concept.” Id. at 42; see also PO
Sur-reply 19 (arguing that a “misspelling itself has no independent meaning
and is not an alternative written form of any concept”). Patent Owner also
disputes that the “alternative spellings of the same concept” mentioned in the
specification of the ’524 patent can be applied to misspellings. Supported by
testimony from Dr. Anderson, Patent Owner argues that an ordinarily skilled
artisan “would have understood that an alternate spelling is not a misspelling
and that these two terms are not coextensive.” PO Resp. 43 (citing Ex. 2003
¶ 78). As an example, Patent Owner distinguishes alternate spellings such as
“grey/gray and judgment/judgement” from misspellings. Id. Patent Owner
notes that the ’524 patent “replac[es] terms with other phrases with the same
meaning, i.e., alternative forms of the concepts.” Id. (citing Ex. 1001, 2:15–
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21; Ex. 2003 ¶¶ 61–62, 75–83). Moreover, at oral argument, Patent Owner’s
counsel stated that claim 1 does not cover misspelled, mistyped, or
misrecognized words based on the fact that the Background section of the
’524 patent allegedly distinguishes these items from other types of
corrections contemplated by the ’524 patent. Tr. 39:7–43:21 (citing, inter
alia, Ex. 1001, 1:66–2:18).
We do not agree with Patent Owner that a misspelling is excluded per
se from the scope of claim 1. The ’524 patent specification does not define
the term “written form of a concept.” Although the patent gives examples of
“mappings between an abbreviation and an expanded form of a concept,” the
patent states that “alternate written forms of a concept need not be in an
abbreviation-expanded form relationship.” Ex. 1001, 11:6–10. Rather,
according to the patent, the disclosed techniques “may be used in
conjunction with mappings between any two or more written forms of a
concept,” such as “alternate spellings of the same concept and a concept
expressed in different languages.” Id. at 11:10–15. Thus, the patent broadly
refers to “any” written form of a concept. We agree with Petitioner that, as
long as a misspelling is associated with a concept, it is a “written form” of
that concept. See Pet. Reply 23–24.
Further, we have considered the arguments made by counsel for
Patent Owner at the oral hearing. See Tr. 39:7–43:21. Although we agree
with counsel that the ’524 patent contemplates editing that goes beyond
mere corrections of misspelled, mistyped, or misrecognized words, we find
no basis in the specification for excluding these types of corrections from the
scope of the claims. The description of transcription errors, including
misspelled, mistyped, or misrecognized words (Ex. 1001, 1:66–2:5), does
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not amount to a clear disavowal of a misspelled word from the scope of a
“written form of a concept.” Thus, we determine that a misspelling is not
excluded from the scope of a “written form of the concept” in claim 1 so
long as the misspelling is associated with a concept.

3. Whether the Words Surrounding a Phrase Qualify as
“Context” (Claim 5)
Claim 5 recites that step (C) in claim 1 “further comprises identifying
the at least some of the plurality of phrases to display based on a context of
the first phrase in the document.” Ex. 1001, 13:37–39. Patent Owner
contends that “context of the first phrase in the document” should be
construed as “the format, parts, and/or sections of the document surrounding
the first phrase that may shed light on the phrase’s meaning.” PO Resp. 23.
Patent Owner explains that an ordinarily skilled artisan would have
understood such context to be “directed to the position or placement of that
phrase within the document” and “distinct from the context of a word within
a phrase or sentence.” Id. (citing Ex. 2003 ¶¶ 49–51). In support of its
construction, Patent Owner contends “the clause ‘in the document’ cannot be
construed to modify ‘the first phrase’ such that claim 5 relates only to the
very first phrase that appears in a particular document.” Id. at 25 (citing
Ex. 2003 ¶¶ 49–51). Patent Owner argues that the specification “confirms
that the relevant context is that of the phrase in the document,” citing certain
sections of the specification where context is described in connection with a
transcript or a section of a transcript. Id. at 24 (citing Ex. 1001, 9:23–28,
10:30–36); PO Sur-reply 9 (citing same). Patent Owner also argues that
analyzing context in a sentence is different from analyzing context in a
document. PO Sur-reply 10 (citing Ex. 2003 ¶ 49).
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Petitioner argues that no ordinarily skilled artisan “would [have]
reasonably consider[ed] determining the context of the first phrase based on
its proximity to other phrases within a sentence as being outside the scope
of ‘context of the first phrase in the document,’ for the simple reason that the
sentence is within the document.” Pet. Reply 17 (citing Ex. 1017 ¶ 19).
Petitioner also contends Patent Owner’s cited references to the word
“section” in the specification are non-limiting examples. Id. at 17–18.
We decline to adopt Patent Owner’s proposed construction because it
would not resolve any controversy in this case. See, e.g., Nidec Motor Corp.
v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
2017) (“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Even
though Patent Owner purports to distinguish its proposed construction from
“the context of a word within a phrase or sentence,” the construction does
not actually do that. See PO Resp. 23. Specifically, the words within a
sentence and/or surrounding a phrase in a document are, at least, a “part” of
a document (see Ex. 1017 ¶ 19); thus, such words would be included in
Patent Owner’s proposed construction. See PO Resp. 23 (“the format, parts,
and/or sections of the document surrounding the first phrase that may shed
light on the phrase’s meaning” (emphasis added)). This understanding
moots the distinction Patent Owner attempts to establish with respect to
Petitioner’s patentability analysis for claim 5 and the term “context” (see PO
Resp. 49–54; PO Sur-reply 24–25), so we need not further consider Patent
Owner’s proposed construction. See Nidec, 868 F.3d at 1017.

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4. Other Terms
We determine that no other terms require construction. See id.

D. Obviousness Ground Based on Longé
Petitioner contends the subject matter of claims 1, 5, and 9 would
have been obvious over Longé in view of the knowledge of a person of
ordinary skill in the art. Pet. 9–27; Pet. Reply 20–23, 25–26. Patent Owner
disputes Petitioner’s contentions. PO Resp. 26, 32–40, 50–52; PO Sur-reply
13–19, 24–25 & n.6.

1. Longé
Longé is a U.S. patent directed to “speech recognition combined with
disambiguating systems for text input.” Ex. 1006, 1:27–29. Figure 1 of
Longé is reproduced below.
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Figure 1 depicts a system for recognizing user input on a data processing
system. Id. at 7:53–55. User 101 dictates a word, phrase, sentence, or
paragraph, whereupon digitizer 105 and decoder 109 convert the acoustic
input to phonetic data. Id. at 7:55–58. The phonetic data are analyzed by
recognition engine 111 based on the lexicon and/or language model in
linguistic databases 119. Id. at 7:58–60. The best interpretation is added to
text buffer 113 and shown to user 101 via text and list display 103. Id. at
7:62–64. User 101 may select a word or phrase for correction via text and
list display 103. Id. at 8:1–2. Disambiguation engine 115 determines
possible interpretations based on the lexicon and/or language model in
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linguistic databases 119, optimally including frequency or recency of use,
and optionally based on the surrounding context in text buffer 113. Id. at
8:6–10. Multimodal disambiguation engine 117 then presents revised
interpretations to user 101 for confirmation via text and list display 103. Id.
at 8:10–15. User 101 may select the correct interpretation from among the
revised interpretations. Id. at 11:51–53.
Figure 2 of Longé is reproduced below.

Figure 2 is a block diagram of a data processing system for recognizing user
input. Id. at 8:42–43. Processor 201 receives input from the input devices,
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including handwriting input device 202, voice input device 204, and key
input device 206, and manages output to display 203 and speaker 205. Id. at
9:1–4. Processor 201 is coupled to memory 210, which comprises a
combination of temporary storage media, such as random-access memory
(RAM), and permanent storage media, such as read-only memory (ROM),
floppy disks, hard disks, or CD-ROMs. Id. at 9:4–8. Memory 210 contains
all software routines and data necessary to govern system operation, and
typically contains operating system 211 and application programs 220. Id. at
9:8–11. Memory 210 may also include word list 214, phrase list 215, word-
based disambiguating engine 216, phrase-based recognition or
disambiguating engine 217, context-based recognition or disambiguating
engine 218, and selection module 219. Id. at 9:16–23. Longé also discloses
“a client-server feature, whereby [a user’s] utterances are preprocessed on
the device, recognized on a server connected e.g. via an available wireless
data channel and returned as N-best lists to the device for text display and
editing.” Id. at 7:15–19.
Longé describes a smart punctuation feature where the disclosed
system recognizes the user’s intention to insert a symbol rather than the
word and corrects the speech accordingly, e.g., “.” instead of “period” or
“:-)” instead of “smiley.” Id. at 7:36–39. The system may also identify a
replacement word or phrase for output, such as an abbreviation for a longer
phrase or an acceptable substitute for a term of profanity. Id. at 13:22–26.
Petitioner contends Longé qualifies as prior art under 35 U.S.C.
§ 102(e) based on its filing date. Pet. 7–8. Patent Owner does not dispute
the prior art status of Longé.
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We have no evidence of an invention date other than the earliest
possible effective filing date of the challenged claims. Thus, we determine
that Longé qualifies as prior art under 35 U.S.C. § 102(e) because Longé’s
filing date of June 1, 2005, is before the earliest possible effective filing date
of the challenged claims, which is May 25, 2006. Ex. 1001, code (63);
Ex. 1006, code (22).

2. Claim 1
a. Preamble
The preamble of claim 1 recites “[a] computer-implemented method
for use with a document tangibly stored in a first computer-readable
medium.” Ex. 1001, 13:11–13. Petitioner maps the preamble to Longé’s
“‘method for smart editing of speech recognition output’ that includes a
‘processor 201 [that] receives input from the input devices’ and is ‘coupled
to a memory 210.’” Pet. 10 (quoting Ex. 1006, 6:35–36, 9:1–5). Petitioner
notes that Longé’s memory may include application programs 220 such as a
word processor, which processes text documents. Id. (citing Ex. 1003, 38–
39; Ex. 1006, 9:10–15).
Patent Owner does not dispute Petitioner’s analysis of the preamble of
claim 1. Neither party addresses whether the preamble is limiting. Because
Petitioner has shown that Longé teaches the preamble (see, e.g., Ex. 1006,
6:35–36 (method for smart editing), 9:1–15 (memory containing word
processor)), we need not determine whether the preamble is limiting. See
Nidec, 868 F.3d at 1017.

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b. Step (A)
Claim 1 further recites “(A) accessing the first computer-readable
medium to identify a first phrase within the document, the first phrase
representing a first written form of a concept.” Ex. 1001, 13:14–16.
Petitioner cites Longé’s teachings on interpreting a user’s speech, which
results in a list of best interpretations being added to text buffer 113. Pet. 12
(citing Ex. 1003, 41; Ex. 1006, 6:39–46, 7:15–19, 7:62–67). Petitioner
contends text buffer 112 may be a random-access memory (RAM). Id. at
13–14 (citing Ex. 1003, 42–43; Ex. 1006, 9:5–8, 9:18–22). Petitioner cites
Longé’s teaching of presenting the user with a textual representation of the
interpreted speech, whereupon the user may “select[] a word or phrase for
correction via the text and list display 103.” Id. at 12–13 (citing Ex. 1006,
8:1–2). Petitioner contends that selecting the word or phrase requires
accessing a computer-readable medium (i.e., temporary storage such as
RAM), which a person of ordinary skill in the art would have understood to
be “located on the user’s client-device and/or on the server where speech
recognition was performed.” Id. at 13 (citing Ex. 1003, 42–43).
For the “first phrase representing a first written form of a concept,”
Petitioner cites, inter alia, Longé’s identification of “‘an abbreviation for a
longer phrase’ or ‘an acceptable substitute for a term of profanity.’” Id. at
15 (quoting Ex. 1006, 13:25–26). Petitioner contends a term of profanity
itself would be the identified as the “first phrase” within a document. Id.
(citing Ex. 1003, 44). Petitioner further contends an ordinarily skilled
artisan would have considered “anger, excitement, or any number of other
emotions” to be concepts associated with the profanity. Id. (citing Ex. 1003,
44–45). Dr. Sears provides an example where the first phrase is “ass” and
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“the concept could be profanity, or alternatively a body part.” Ex. 1003, 49–
50. As another example, Petitioner contends the “first phrase” would be a
longer phrase associated with an abbreviation. Pet. 15 (citing Ex. 1003, 44).
Petitioner contends the abbreviation and corresponding longer phrase may
together represent a concept depending on the specific abbreviation. Id.
at 15, 19; Ex. 1003, 44, 49; see also Ex. 1017 ¶ 21 (Dr. Sears discussing
abbreviations for “tablespoon” and “California”). Petitioner likens Longé’s
teachings to those of the ’524 patent, where “cerebrovascular accident” and
its abbreviation “CVA” are two written forms of the concept of a
cerebrovascular accident. See Pet. 17 (citing Ex. 1001, 5:15–20; Ex. 1003,
47–48).3
Patent Owner does not dispute Petitioner’s analysis for step (A).4 We
are persuaded that an ordinarily skilled artisan would have known from
Longé’s teachings that text buffer 113 is implemented as a RAM, i.e., a
“first computer-readable medium.” Ex. 1003, 42–43; Ex. 1006, 7:58–67,
9:5–8, 9:18–22. We further agree that Longé’s teachings of presenting the
user with identified words or phrases for correction would have required
accessing such a computer-readable medium. Ex. 1003, 42–43; Ex. 1006,
8:1–2, 9:18–22. Regarding the “first phrase representing a first written form
of a concept,” we are persuaded that an ordinarily skilled artisan considering
Longé’s identification of “an acceptable substitute for a term of profanity”

3 Petitioner provides further contentions regarding “smart punctuation.”
Pet. 14–15, 18–19. We do not reach those contentions because the parties’
positions regarding Longé’s teachings on profanity and abbreviations are
sufficient to dispose of the instant ground.
4 Nevertheless, as discussed below, Patent Owner disputes Petitioner’s
analysis regarding the interplay of step (B) with step (A).
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would have known that a term of profanity (i.e., “a first phrase representing
a first written form”), such as “ass,” represents the concept of that word as
profanity or, alternatively, the concept of that word as a body part.
Ex. 1003, 49–50; Ex. 1006, 13:22–26. We likewise are persuaded that an
ordinarily skilled artisan considering Longé’s identification of “an
abbreviation for a longer phrase” would have known that the long form of an
abbreviation (i.e., “a first phrase representing a first written form”), such as
“tablespoon” or “California,” represents the concept underlying the specific
abbreviation. Ex. 1003, 49–50; Ex. 1006, 13:22–26; Ex. 1017 ¶ 21. Thus,
we find that Longé teaches step (A) of claim 1 in view of the knowledge of a
person of ordinary skill in the art.

c. Step (B)
Claim 1 further recites “(B) identifying a plurality of phrases tangibly
stored in a second computer-readable medium, each of the plurality of
phrases representing an alternative written form of the concept.” Ex. 1001,
13:17–20. For the “second computer readable medium,” Petitioner cites
types of permanent storage media disclosed in Longé “such as read-only
memory (ROM), floppy disks, hard disks, or CD-ROMs.” Pet. 16 (citing
Ex. 1006, 9:7–8). Petitioner further cites Longé’s disclosure of the memory
including “a word list 214 and a phrase list 215,” which “can be used by the
phrase-based recognition or disambiguation engine 217.” Id. (quoting
Ex. 1006, 9:22–23, 9:51–52). Petitioner contends an ordinarily skilled
artisan would have understood “that the word or phrase list from which the
plurality of phrases would be chosen from would be contained on permanent
storage media, such as a hard disk located on the server (i.e., a second
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computer-readable medium), to ensure the list is preserved and always
accessible.” Id. (citing Ex. 1003, 46–47).
Petitioner further contends “[t]he plurality of phrases identified on the
second computer-readable medium each represent an alternative written
form of the concept.” Id. at 17 (citing Ex. 1003, 46–47). As examples of
alternative written forms of a concept in Longé, Petitioner cites Longé’s
teaching about identifying abbreviations for longer phrases. Id. at 15 (citing
Ex. 1006, 13:25–26), 19 & n.2 (citing Ex. 1003, 49–50); see also Ex. 1017
¶ 21 (Dr. Sears testifying that “T., tbs., or tbsp.” are abbreviations for
“tablespoon” and “Cal., Calif., Ca., or CA” are abbreviations for
“California”). Petitioner also cites Longé’s teaching of alternatives for a
term of profanity as alternative written forms of a concept. Id. at 15 (citing
Ex. 1006, 13:25–26), 19–20 (citing Ex. 1003, 49–50). For example,
Petitioner notes that “ass,” “derriere,” “backside,” and “rear end” are
alternative written forms for the concept of a body part when the “first
phrase” is the term “ass.” Id. at 19–20 (citing Ex. 1003, 49–50).
Alternatively, Dr. Sears testifies that “ass,” “jerk,” and “idiot” are alternative
written forms for the concept of profanity when the “first phrase” is the term
“ass.” Ex. 1003, 49–50.
Patent Owner argues that, as a matter of claim construction, Petitioner
is wrong to suggest that “a plurality of phrases . . . representing an
alternative written form of the concept” encompasses and includes the first
written form of the concept as an “alternative” to itself. PO Resp. 33.
Although Petitioner acknowledges that “Longé discloses one written form of
the concept that may replace the written form itself of the concept displayed
in the document,” Petitioner contends this is not sufficient to teach the
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recited “plurality of phrases” in step (B). Id. at 33–34; see also id. at 37–38
(same argument). Patent Owner also notes that Longé refers to “an
abbreviation for a longer phrase” and “an acceptable substitute for a term of
profanity,” each of which Patent Owner interprets to be singular. Id. at 37–
38 (citing Ex. 1006, 13:25–26) (emphases added by Patent Owner). Patent
Owner contends this does not teach the recited “plurality of phrases.” Id.
We do not agree with Patent Owner’s arguments. As a matter of
claim construction, we do not agree that “the plurality of phrases
representing an alternative written form of the concept” in step (B) must be
distinct from the “first written form of the concept” in step (A). See supra
§ II.C.1. Thus, to the extent Patent Owner criticizes Petitioner’s analysis
based on Longé for discussing only one alternative written form of a concept
that is different than the first written form (see PO Resp. 33–34), these
arguments do not undermine Petitioner’s showing. And, even if we did
agree with Patent Owner’s interpretation, Petitioner has established that an
ordinarily skilled artisan considering Longé’s teachings on “an abbreviation
for a longer phrase” and “an acceptable substitute for a term of profanity”
would have known of multiple alternative written forms other than the “first
written form.” Pet. 15 (citing Ex. 1003, 44–45; Ex. 1006, 13:25–26); Pet.
Reply 21–23 (citing, inter alia, Ex. 1017 ¶ 21). Specifically, Petitioner has
shown that (1) “derriere,” “backside,” and “rear end” are alternatives for
“ass” when the concept is “ass” as a body part; (2) “jerk” and “idiot” are
alternatives for “ass” when the concept is “ass” as profanity; (3) “T., tbs., or
tbsp.” are alternatives for “tablespoon” when the concept is a “tablespoon”;
and (4) “Cal., Calif., Ca., or CA” are alternatives for “California” when the
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concept is “California.” Pet. 19–20; Pet. Reply 21–23; Ex. 1003, 49–50;
Ex. 1017 ¶¶ 20–21.
Patent Owner argues “Longé includes no disclosure or discussion of
how the concept in the profanity would be matched to other (unacceptable
and/or acceptable, in context) phrases representing the same concept.” PO
Resp. 36. Patent Owner further contends an ordinarily skilled artisan
“would have understood that the process matching one written form of the
concept with other alternative written forms of the concept (like a thesaurus)
was distinct from the error-checking functionality disclosed in Longé.” Id.
As such, Patent Owner contends this would have required modification of
Longé’s disclosure that is not supported in Petitioner’s papers. Id. (citing
Ex. 2003 ¶¶ 70–74); see also PO Sur-reply 18–19.
We disagree with Patent Owner’s arguments. First, Petitioner’s
ground is based on obviousness, so Longé need not disclose expressly the
alternatives for profanity posited by Petitioner and Dr. Sears. Second, we do
not agree that any modification of Longé is required to identify “acceptable
substitute[s] for a term of profanity” (Ex. 1006, 13:22–26); rather, Petitioner
simply posits implementing the teachings of Longé in concrete examples
based on the knowledge of a person of ordinary skill in the art. See Pet. 19–
20; Ex. 1003, 49 (“With respect to Longé’s disclosure of identifying an
acceptable substitute for a term of profanity, a[n ordinarily skilled artisan]
would have understood this to refer to any number of examples where less-
profane alternatives were provided to replace a term of profanity.”).
Moreover, contrary to Patent Owner’s argument (PO Resp. 36–37),
hindsight is not necessary because Longé itself teaches identifying
replacement words for terms of profanity. Ex. 1006, 13:20–26. No present-
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day knowledge or perspective would have been required for an ordinarily
skilled artisan to implement this identification with such substitute words,
particularly given that Longé also teaches disambiguation from preexisting
word lists and/or phrase lists. See Pet. 16–17 (citing, inter alia, Ex. 1006,
7:62–67, 9:22–23, 9:51–52). Third, we are persuaded that an ordinarily
skilled artisan would have conjured numerous alternatives for terms of
profanity given that the relatively high level of ordinary skill in the art and
the artisan’s particular experience in “document correction/editing.” See
supra § II.B. We also do not agree with Patent Owner’s arguments because
they would have the effect of relegating a person of ordinary skill in the art
to being an automaton, rather than a person of ordinary creativity. See KSR,
550 U.S. at 421.
Patent Owner argues that Petitioner’s examples of substitutes for
profanity do not identify an alternative form of the same concept. PO Resp.
35–36; see also PO Sur-reply 14. Patent Owner also argues Petitioner’s
examples “do not carry the same implications as the profane terms.” PO
Sur-reply 14. We do not agree with Patent Owner’s arguments. The
persuasiveness of Petitioner’s obviousness analysis does not turn on the
perceived degree of profanity in Petitioner’s exemplary alternatives to
profanity. Instead, we are satisfied by Petitioner’s showing that an
ordinarily skilled artisan would have known how to implement alternative
written forms for profane words based on Longé’s teaching of identifying
alternatives for profanity. See Pet. 19–20; Ex. 1003, 49–50; Ex. 1006,
13:22–26. In addition, we agree with Petitioner (Pet. Reply 21) that Patent
Owner’s and Dr. Anderson’s supposed acceptable counterexample of the
concept of profanity—“##!@!@#” (PO Resp. 35–36; Ex. 2003 ¶ 70)—
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underscores, rather than undermines, Petitioner’s case by demonstrating yet
another alternative written form for the concept of profanity. See Ex. 1017
¶ 20. As stated above, a person of ordinary skill in the art with ordinary
creativity would have known to implement myriad alternatives to profanity
based on Longé’s teachings.
Patent Owner does not otherwise dispute Petitioner’s analysis for
step (B) of claim 1. We are persuaded by Petitioner’s showing that Longé’s
word list 214 and phrase list 215 would have been stored on permanent
storage media, such as a hard disk, on a server (i.e., the “second computer
readable medium”) that identifies word candidates (i.e., the “alternative
written form[s] of the concept”). Ex. 1003, 46–47; Ex. 1006, 7:62–67, 9:7–
8, 9:22–23, 9:51–52. Thus, we find that Longé teaches step (B) of claim 1 in
view of the knowledge of a person of ordinary skill in the art.

d. Step (C)
Claim 1 further recites “(C) displaying at least some of the plurality of
phrases to a user.” Ex. 1001, 13:21–22. Petitioner cites Longé’s disclosure
of a word choice list that “provides the alternate hypotheses from the speech
recognition output 404.” Pet. 20 (citing Ex. 1006, 11:45–55). According to
Petitioner, the word choices are displayed to the user so that the user may
select the correct interpretation. Id. at 20–22 (citing Ex. 1006, 5:5–7, 7:18–
19, 11:45–55). Patent Owner does not dispute Petitioner’s analysis of
step (C). We are persuaded that Longé teaches displaying some alternative
written forms to a user. See, e.g., Ex. 1006, 5:5–7 (“one or more of the word
candidates is presented for selection or editing”). Thus, we find that Longé
teaches step (C) of claim 1.
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e. Step (D)
Claim 1 further recites “(D) receiving, from the user, an instruction
to -replace [sic] the first phrase with one of the plurality of phrases in the
document on the first computer-readable medium, wherein the instruction
does not include the one of the plurality of phrases.” Ex. 1001, 13:23–27.
Petitioner cites Longé’s disclosure of “receiving [the] user[’s] choice of a
word from the revised N-best list in correction of the selected word.”
Pet. 24 (citing Ex. 1006, 16:14–15). Petitioner also cites Longé’s
description of “select[ing] the correct interpretation from the word choice
list.” Id. at 22 (citing Ex. 1006, 11:51–52, Fig. 4). Petitioner contends “the
fact that the user is selecting the choice from a list, as opposed to providing
the desired alternative written form, necessarily means that the instruction
(e.g., clicking on the word or phrase in the list) ‘does not include one of the
plurality of phrases.’” Id. at 23–24 (Ex. 1003, 55). Patent Owner does not
dispute Petitioner’s analysis of step (D). We are persuaded that Longé
teaches the user selecting an alternate hypothesis from a word choice list to
replace a particular word. See Ex. 1006, 11:45–55, Fig. 4. Thus, we find
that Longé teaches step (D) of claim 1.

f. Conclusion Regarding Claim 1
Based on the entire trial record, we are satisfied that Longé teaches all
of the limitations of claim 1 in view of the knowledge of a person of
ordinary skill in the art. Thus, we determine Petitioner has shown by a
preponderance of the evidence that the subject matter of claim 1 would have
been obvious over Longé in view of the knowledge of a person of ordinary
skill in the art under 35 U.S.C. § 103(a).
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3. Claim 5
Claim 5 depends from claim 1 and recites that step (C) “further
comprises identifying the at least some of the plurality of phrases to display
based on a context of the first phrase in the document.” Ex. 1001, 13:37–39.
Petitioner cites Longé’s teaching that “one or more word candidates are
determined based on the first input in view of word context.” Pet. 24
(quoting Ex. 1006, 4:57–59); see also id. at 24–25 (quoting Ex. 1006, 6:47–
49 (“the invention makes use of both acoustic information and word context
in offering the N-best hypotheses”), 8:6–10 (“disambiguation engine 115
determines possible interpretations . . . optionally based on the surrounding
context in the text buffer 113”)).
Patent Owner argues Petitioner’s citations to Longé relate to
identifying phrases based on the context of a phrase, rather than context in a
document. PO Resp. 50. Patent Owner explains that Longé’s system “does
not consider the document as a whole, or the context of the phrase in the
document, but instead uses the immediately surrounding words to provide a
best guess as to the word in question.” Id. (citing Ex. 2003 ¶¶ 85–87); see
also id. at 51–52 (similar arguments).
We are persuaded by Petitioner’s analysis. Longé’s system considers
surrounding word context to determine word candidates, as set forth in the
quotations from Longé reproduced above. See Ex. 1006, 4:57–59, 6:47–49,
8:6–10. Patent Owner concedes as much. See, e.g., PO Resp. 50 (stating
that Longé’s system “uses the immediately surrounding words to provide a
best guess as to the word in question”). Patent Owner only disputes
Petitioner’s analysis based on Patent Owner’s proposed construction of
“context” (i.e., “the format, parts, and/or sections of the document
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surrounding the first phrase”), which Patent Owner contends is “distinct
from the context of a word within a phrase or sentence.” Id. at 23, 50–52.
We decline to adopt Patent Owner’s construction above. See supra § II.C.3.
Because Longé’s surrounding words are “context . . . in a document,” we
determine Longé teaches the additional limitation in claim 5.
Patent Owner otherwise relies on the same arguments discussed above
with respect to claim 1. See PO Resp. 26; PO Sur-reply 25 n.6. Based on
the entire trial record, we determine Petitioner has shown by a
preponderance of the evidence that the subject matter of claim 5 would have
been obvious over Longé in view of the knowledge of a person of ordinary
skill in the art under 35 U.S.C. § 103(a).

4. Claim 9
Claim 9 depends from claim 1 and recites that step (D) “further
comprises receiving an instruction generated by the user using a single
keystroke.” Ex. 1001, 13:49–51. Petitioner cites Longé’s teaching that a
user may “select the correct interpretation from the word choice list,” but
Petitioner acknowledges Longé does not disclose whether the selection is
made using a single keystroke. Pet. 25 (citing Ex. 1006, 11:51–52).
Supported by Dr. Sears’s testimony, Petitioner contends an ordinarily skilled
artisan “would have known that this selection would be advantageously
accomplished with a single keystroke because the use of single keystrokes in
human-centered computing applications was well known by the earliest
priority date of the [’]524 Patent.” Id. (citing Ex. 1003 ¶¶ 41–45, pp. 59–
60). In further support of this contention, Petitioner cites two
contemporaneous references that demonstrate the use of a single keystroke
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to make a selection from a list of options. See id. at 25–27 (citing, inter alia,
Ex. 1009, 33; Ex. 1010, 21).
Patent Owner does not dispute Petitioner’s analysis for claim 9, and
Patent Owner relies on the same arguments discussed above with respect to
claim 1. See PO Resp. 26; PO Sur-reply 25 n.6. Based on Longé’s
teachings of selecting a correct interpretation from a word choice list
(Ex. 1006, 11:51–52), Dr. Sears’s undisputed testimony (Ex. 1003 ¶¶ 41–45,
pp. 59–60), and the contemporaneous references’ teaching of single-
keystroke selections in a user interface (Ex. 1009, 33; Ex. 1010, 21), we are
persuaded that Longé teaches the additional limitation in claim 9 in view of
the knowledge of an ordinarily skilled artisan. Thus, we determine
Petitioner has shown by a preponderance of the evidence that the subject
matter of claim 9 would have been obvious over Longé under 35 U.S.C.
§ 103(a).

E. Obviousness Ground Based on Longé and Roberts
Petitioner contends the subject matter of claim 9 would have been
obvious over the combination of Longé in view of the knowledge of a
person of ordinary skill in the art and Roberts. Pet. 27–32; Pet. Reply 26.
Patent Owner disputes Petitioner’s contentions. PO Resp. 26; PO
Sur-reply 25 n.6.

1. Roberts
Roberts is a U.S. patent directed to speech recognition and training
models for use in speech recognition. Ex. 1008, 1:6–8. The system
disclosed in Roberts seeks to “improve[] the speed and accuracy with which
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users can dictate desired text.” Id. at 2:5–7. The system makes an acoustic
model from one or more utterances of a word and enables a user to associate
a sequence of textual characters with that acoustic model. Id. at 2:37–41.
The system indicates to the user a menu of character sequences, and the user
can select a given character sequence from the menu, edit the selected
character sequence, and associate the edited character sequence with the
acoustic model. Id. at 2:41–47. For editing, Roberts discloses “pick-choice
commands” associated with function keys “f1” through “f9,” each of which
corresponds to the number of a displayed word choice. Id. at 15:31–36. The
user may press a function key to indicate that a displayed word associated
with that function key is the desired word for a particular utterance. Id. at
15:36–40. An example of pick-choice commands associated with function
keys is shown in Figure 36, which is reproduced below.

Figure 36 is an example of a computer display that is used to enter phrases
into the system of Roberts. Id. at 5:46–48. Pick-choice commands
correspond to word choices displayed in word active window 701b or word
dictionary window 702b. Id. at 32:54–60.
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Petitioner contends Roberts qualifies as prior art under 35 U.S.C.
§ 102(b) based on its issue date of June 25, 1991. Pet. 8. Patent Owner does
not contest the prior art status of Roberts.
We determine Roberts qualifies as prior art under 35 U.S.C. § 102(b)
because Roberts’s issue date of June 25, 1991, is more than one year before
the earliest possible effective filing date of the challenged claims, which is
May 25, 2006. Ex. 1001, code (63); Ex. 1008, code (45).

2. Claim 9
Claim 9 depends from claim 1 and recites that step (D) “further
comprises receiving an instruction generated by the user using a single
keystroke.” Ex. 1001, 13:49–51. Petitioner’s analysis for this ground builds
on its analysis of the Longé ground discussed above. According to
Petitioner, “Longé discloses that a user may ‘select the correct interpretation
from the word choice list,’ but does not explicitly disclose whether the
selection is made using a single keystroke.” Pet. 31. As such, Petitioner
cites Roberts for teaching “pick-choice commands” that “consist of any of
the function keys ‘f1’ – ‘f9’ . . . [,] which correspond to the number of a
word choice displayed in either the active window display 701 or the
Dictionary Window 702.” Id. at 28, 31–32 (citing Ex. 1008, 15:31–40,
Fig. 36 and quoting id. at 15:31–36). Citing testimony from Dr. Sears,
Petitioner contends an ordinarily skilled artisan “reviewing Longé’s speech
recognition system would have been motivated to look to Roberts’ teachings
regarding a pick-choice selection system for use with a speech recognition
system” so as “to assist with selecting the correct interpretation from the
word choice list.” Id. at 30, 32 (citing Ex. 1003 ¶¶ 46–49). In particular,
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Petitioner contends an ordinarily skilled artisan “would have been motivated
to look to other references for a more efficient method for selection that
required fewer key strokes in order to increase the speed with which a user
could use the system disclosed by Longé.” Id. at 29 (citing Ex. 1003 ¶ 46).
Patent Owner does not dispute Petitioner’s analysis for claim 9, and
Patent Owner relies on the same arguments discussed above with respect to
claim 1 of the Longé ground. See PO Resp. 26; PO Sur-reply 25 n.6. We
are persuaded by Petitioner’s showing that Roberts teaches the use of a
single function key to implement a “pick-choice command[].” Ex. 1008,
15:31–40, Fig. 36. Thus, Roberts teaches the additional limitation in
claim 9. We also are persuaded that an ordinarily skilled artisan would have
implemented Roberts’s pick-choice commands in Longé’s system to
improve the user interface for making selections from a word choice list.
Ex. 1003 ¶¶ 46–49. Thus, we determine Petitioner has shown by a
preponderance of the evidence that the subject matter of claim 9 would have
been obvious over Longé in view of the knowledge of a person of ordinary
skill in the art and Roberts under 35 U.S.C. § 103(a).

F. Obviousness Ground Based on Lunati
Petitioner contends the subject matter of claims 1 and 9 would have
been obvious over Lunati in view of the knowledge of a person of ordinary
skill in the art. Pet. 33–52; Pet. Reply 23–26. Patent Owner disputes
Petitioner’s contentions. PO Resp. 26, 40–49; PO Sur-reply 19–24, 25 n.6.

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1. Lunati
Lunati is a U.S. patent directed to “a web-based interface for
correcting spelling, grammar, syntax, or other errors in electronic text of an
E-mail message.” Ex. 1007, 1:8–10. Lunati discloses an “error checking
routine [that] detects errors such as spelling errors in the electronic text and
creates a correction file of the electronic text containing tags, markers and
other information allowing errors to be displayed and corrected using the
user’s graphical interface.” Id. at 2:47–51. Lunati’s routine “can be used to
modify various documents other than e-mails, including . . . documents in
word processing programs.” Id. at 9:14–17.
Figure 8 of Lunati is reproduced below.

Figure 8 depicts error correction interface 150 showing multiple errors
highlighted in a text message and a selection control. Id. at 3:12–18, 4:57–
60. Identified errors (e.g., “graet,” “insside,” and “xperience”) are
concurrently displayed on interface 150 with a different style (e.g., larger,
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different color, bolded, and/or underlined text) than words not requiring
correction. Id. at 5:13–17. Correction options are placed in suggestion
control 170 in response to the user moving a mouse pointer over an
identified error. Id. at 5:39–42. Suggestion control 170 lists spelling
options 180 and other options 182 (e.g., “Ignore,” “Learn,” and “Edit”) for
the user to select to correct the error. Id. at 5:54–66.
Petitioner contends Lunati qualifies as prior art under 35 U.S.C.
§ 102(e) based on its filing date of June 17, 2004. Pet. 8. Patent Owner
does not contest the prior art status of Lunati.
We have no evidence of an invention date other than the earliest
possible effective filing date of the challenged claims. Thus, we determine
that Lunati qualifies as prior art under 35 U.S.C. § 102(e) because Lunati’s
filing date of June 17, 2004, is before the earliest possible effective filing
date of the challenged claims, which is May 25, 2006. Ex. 1001, code (63);
Ex. 1007, code (22).

2. Claim 1
a. Preamble
The preamble of claim 1 recites “[a] computer-implemented method
for use with a document tangibly stored in a first computer-readable
medium.” Ex. 1001, 13:11–13. Petitioner maps the “computer-implemented
method for use with a document” to Lunati’s interface that can be used to
“modify various documents . . . including web page text, photo captions,
server-based source code editing, documents in word processing programs,
spreadsheets, or presentations, etc.” Pet. 35 (citing Ex. 1007, 9:14–18). For
the “computer-readable medium,” Petitioner cites Lunati’s teaching about
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computer code for implementing Lunati’s interface being “stored on a
computer-readable media [sic], such as a compact disk, a tape, stored in a
volatile or non-volatile memory, etc.” Id. (citing Ex. 1007, 9:31–34).
Patent Owner does not dispute Petitioner’s analysis of the preamble of
claim 1. Neither party addresses whether the preamble is limiting. Because
Petitioner has shown that Lunati teaches the preamble (see, e.g., Ex. 1007,
9:12–18 (“error checking routine and interface” for “modify[ing] various
documents”), 9:30–34 (“computer-readable media” for storing computer
code)), we need not determine whether the preamble is limiting. See Nidec,
868 F.3d at 1017.

b. Step (A)
Claim 1 further recites “(A) accessing the first computer-readable
medium to identify a first phrase within the document, the first phrase
representing a first written form of a concept.” Ex. 1001, 13:14–16.
Petitioner maps “identify[ing] a first phrase within the document” to the
functionality of Lunati’s error checking routine, which can identify an error
(i.e., a first phrase) in a text message. Pet. 35–36 (citing Ex. 1003, 64–65;
Ex. 1007, 3:57–60, 3:66–4:2). For the “first computer-readable medium,”
Petitioner notes that Lunati’s system includes client station 92 connected to
remote server 94, to which the text is sent for error checking. Id. at 35
(citing Ex. 1007, 3:37–38, 3:66–4:2). Petitioner contends that an ordinarily
skilled artisan would have understood that the text must be accessed on the
client station (i.e., a “first computer-readable medium”) in order to be
analyzed by the error checking routine. Id. at 35–36 (citing Ex. 1003, 64–
65). Alternatively, Petitioner contends an ordinarily skilled artisan would
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have understood that text is accessed for a discrete period of time on a
temporary computer-readable medium of the server (e.g., RAM) when it is
checked for errors. Id. at 36 (citing Ex. 1003, 65).
For the “first written form of a concept,” Petitioner points to an
annotated version of Lunati’s Figure 6, which is reproduced below.

Id. at 37 (reproducing and annotating Ex. 1007, Fig. 6). Figure 6 depicts
Lunati’s error correction interface showing multiple errors (in bold and
underlined text) in a text message. Ex. 1007, 3:12–14. Petitioner has further
highlighted in yellow the misspelling “colection,” which Petitioner contends
an ordinarily skilled artisan would have recognized to be a first written form
of “the concept of a collective, e.g., a group of things or people, which in
this specific example is a group of digital songs on a digital music library.”
Pet. 37 (citing Ex. 1003, 65–67; Ex. 1007, Fig. 6). Dr. Sears testifies that
the misspelled word “colection” is “not so badly misspelled as to lose its
meaning or association with the concept” and is “still capable of
communicating the intended meaning to a reader.” Ex. 1003, 66. Petitioner
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likens these teachings from Lunati to the ’524 patent’s disclosure that
“mappings between any two or more written forms of a concept . . . include
alternate spellings of the same concept.” Pet. 38 (quoting Ex. 1001, 11:10–
15).5
Patent Owner argues “[a] misspelling is not properly considered a
written form of a concept, unless by accident it is a proper spelling for
another concept.” PO Resp. 42. Dr. Anderson testifies similarly that
misspellings
are not written forms of a concept at all: they are errors that
must be corrected. Indeed, the spell-checker disclosed in
Lunati provides best guesses as to what the user meant to type
or say, but the suggestions are not alternative written forms of
the concept in the misspelled word. This is by necessity
because the system in Lunati cannot tell what the misspelled
word was supposed to be—it can only provide best guesses.
Ex. 2003 ¶ 76.
As a matter of claim construction, we determine that the ’524 patent
does not exclude a misspelling from being a “written form of a concept” so
long as the misspelling is associated with a concept. See supra § II.C.2.
Petitioner cites the misspelling “colection” in Lunati’s Figure 6 as
representing the concept of a collective. Pet. 37. Dr. Sears testifies that,
despite the misspelling, an ordinarily skilled artisan would have recognized
that “colection” represents the concept of a collective because it “is not so
badly misspelled as to lose its meaning or association with the concept” and

5 Petitioner provides further contentions regarding concepts expressed in
different languages. Pet. 38–39, 42–44. We do not reach those contentions
because the parties’ positions regarding Lunati’s Figure 6 and 8
embodiments are sufficient to dispose of the instant ground.
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“it is still capable of communicating the intended meaning to a reader.”
Ex. 1003, 66. We are persuaded by this reasoning. Even though “colection”
might be an error, as suggested by Dr. Anderson (Ex. 2003 ¶ 76), this fact
does not prevent “colection” from representing the concept of a collective.6
Moreover, Dr. Anderson’s testimony is based on the false premise that
Lunati must “identif[y] the concept underlying the misspelled word and then
match[] it to the correctly spelled word” in order to teach step (A) of
claim 1. See id. Yet claim 1 does not limit the process by which written
forms are associated with a concept. The ’524 patent discloses a written
form dictionary that is maintained so “the editing system 108 may
determine, by reference to the dictionary, whether the displayed text is an
alternate written form of a concept.” Ex. 1001, 5:33–39. As such, the
’524 patent contemplates that written forms are associated by a concept in a
dictionary prior to processing text. This is exactly the same process taught
by Lunati. See Ex. 1007, 5:56–59 (“[T]he user can select spelling
options 180 and determine whether the word ‘colection’ should be changed
to words identified by the dictionary of the spell checking routine.”
(emphasis added)). Given that the ’524 patent also teaches mappings with
“alternate spellings” (Ex. 1001, 11:10–15), we are persuaded that Lunati’s
association of the misspelling “colection” in a dictionary with at least one
other written form for the concept of a collective (e.g., “collection”) teaches
a “first phrase representing a first written form of a concept.” See Ex. 1003,
65–66; Ex. 1007, Figs. 6, 8.

6 We further discuss whether a misspelling and a correct spelling may be
“alternate written form[s] of the concept” in our analysis of step (B) below.
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Patent Owner does not otherwise dispute Petitioner’s analysis for
step (A). Lunati teaches identifying an error (i.e., a “first phrase”) in a text
message (i.e., a “document”). Ex. 1007, 3:59–4:4. The text message “is
sent to the disclosed error checking routine on the server or client station”
(id. at 3:66–4:1, Fig. 4), and Petitioner persuasively shows that an ordinarily
skilled artisan would have known that the text must be accessed at the client
station (i.e., “first computer-readable medium”) in order to perform such
error checking. Ex. 1003, 64–65. Thus, we find that Lunati teaches step (A)
of claim 1 in view of the knowledge of a person of ordinary skill in the art.

c. Step (B)
Claim 1 further recites “(B) identifying a plurality of phrases tangibly
stored in a second computer-readable medium, each of the plurality of
phrases representing an alternative written form of the concept.” Ex. 1001,
13:17–20. Petitioner notes that Lunati’s “error checking routine on the
server” is done with reference to “a reference file [] which can constitute a
user-selected or automatically-selected dictionary.” Pet. 40 (citing Ex. 1007,
3:67–4:4). Petitioner likens the server to the recited “second computer
readable medium” and contends an ordinarily skilled artisan would have
understood that the dictionary or reference file is “contained on a form of
non-volatile memory such as a hard disk drive, since the reference file would
need to be constantly and permanently accessible in order to identify the
plurality of alternative phrases.” Id. (citing Ex. 1003, 68). Alternatively,
Petitioner contends an ordinarily skilled artisan would have understood “the
server’s RAM to be a first computer-readable medium, and the server’s non-
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volatile memory (e.g., hard disk drive) to be a second computer-readable
medium.” Id. at 40–41 (Ex. 1003, 68).
Petitioner argues an ordinarily skilled artisan would have understood
“that the reference file disclosed by Lunati may be used to identify a
plurality of phrases that represent alternate written forms of a concept.”
Pet. 44 (citing Ex. 1003, 69–71). To explain the “alternative written
form[s]” coming from the reference file, Petitioner provides an annotated
version of Lunati’s Figure 8, which is reproduced below.

Id. at 41 (reproducing and annotating Ex. 1007, Fig. 8). Figure 8 depicts the
selection control of Lunati’s error correction interface. Ex. 1007, 3:15–18.
Petitioner has highlighted in yellow “colection” and “collection,” which
Petitioner contends are alternative forms of the concept of a collective.
Pet. 41–42 (citing Ex. 1003, 69; Ex. 1007, Fig. 8). In its Reply, Petitioner
further contends the plural form “collections” in Figure 8 is an alternative
written form of the concept of a collective. Pet. Reply 22–23. Petitioner
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likens these teachings from Lunati to the ’524 patent’s disclosure that
“mappings between any two or more written forms of a concept” may
“include alternate spellings of the same concept.” Pet. 38, 42 (citing Ex.
1001, 11:10–15).
Patent Owner argues that Petitioner at most identifies only one
alternative written form of a concept, not the recited plurality. Id. at 40, 47–
49; PO Sur-reply 20. Patent Owner also argues that a misspelling such as
“colection” is not an alternative written form of a concept. PO Resp. 42; PO
Sur-reply 19–20. Patent Owner further contends the four possible
replacements for the misspelling “colection” shown in Figure 8—
“collection,” “collections,” “collocation,” and “collocations”— “are not
alternative written forms of the same concept but rather written forms of
four different concepts that are Lunati’s best guess at what the user actually
intended.” PO Resp. 42 (citing Ex. 2003 ¶¶ 75–76); see also id. at 47 (same
argument). Patent Owner additionally disputes Petitioner’s argument (Pet.
Reply 23) that the singular “collection” and plural “collections” represent
the same concept because “they are words with similar spellings but
different meanings.” PO Sur-reply 21.
We do not agree with Patent Owner’s arguments. As discussed
above, we do not agree that the “the plurality of phrases representing an
alternative written form of the concept” in step (B) must be distinct from the
“first written form of the concept” in step (A). See supra § II.C.1. Thus, to
the extent Patent Owner criticizes Petitioner’s analysis based on Lunati for
discussing only one alternative written form of a concept that is different
than the first written form (see PO Resp. 40, 47–49), these arguments do not
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undermine Petitioner’s showing. Lunati’s example of “colection” and
“collection” in Figures 6 and 8 teaches the recited “plurality.”
Furthermore, as discussed above, we determine that a misspelling is
not excluded per se from the scope of a “written form of the concept” in
claim 1 so long as the misspelling is associated with a concept. See supra
§ II.C.1. As discussed above, Petitioner persuasively shows that Lunati’s
misspelling of “colection” is associated with the concept of a collective.
Pet. 37 (citing Ex. 1003, 65–67, Ex. 1007, Fig. 6). Petitioner likewise shows
that “collection” represents the concept of a collective. Id. at 41–42 (citing
Ex. 1003, 68–697; Ex. 1007, Fig. 8). Although Patent Owner disputes that
other written forms shown in Lunati’s Figure 8 represent a collective, Patent
Owner does not appear to dispute that “collection” does. See PO Resp. 42
(arguing only that “collection,” “collections,” “collocation,” and
“collocations” are “written forms of four different concepts”). Based on
Petitioner’s showing, we are persuaded that “colection” and “collection” in
Figures 6 and 8 of Lunati are “alternative written form[s]” of the concept of
a collective. See Ex. 1003, 68–69; Ex. 1007, Figs. 6, 8.
We also have considered Patent Owner’s argument that “it would
make no sense to identify or offer the user a misspelling as a potential
replacement for a first written form of the concept.” PO Resp. 43 (citing
Ex. 2003 ¶¶ 75–77). As discussed above (see supra § II.C.1), however, the
’524 patent teaches toggling between two alternative written forms (see
Ex. 1001, 6:4–13, Figs. 9A–9C), and Dr. Anderson testified that the scope of
claim 1 does not exclude a scenario where the user opts not to change the

7 Petitioner cites to page 69 of Dr. Sears’s declaration, but the relevant
discussion begins on page 68.
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first phrase identified in step (A). Ex. 1022, 34:19–23. This undermines
Patent Owner’s argument that it would make no sense to offer a misspelling
as one of the alternative written forms of a concept.
Patent Owner does not otherwise dispute Petitioner’s analysis for
step (B) of claim 1. We are persuaded by Petitioner’s showing that Lunati’s
error checking is performed on a server with reference to a dictionary of
alternative written forms. Ex. 1007, 3:67–4:4. We are further persuaded
that an ordinarily skilled artisan would have understood that such a
dictionary is contained in non-volatile memory (i.e., the “second computer-
readable medium”). Ex. 1003, 68. Thus, we find that Lunati teaches
step (B) of claim 1 in view of the knowledge of a person of ordinary skill in
the art.

d. Step (C)
Claim 1 further recites “(C) displaying at least some of the plurality of
phrases to a user.” Ex. 1001, 13:21–22. Petitioner cites Lunati’s teaching of
displaying to the user “a dynamic page that . . . displays all the errors in the
text.” Pet. 45 (citing Ex. 1007, 4:18–21). Petitioner points to the same
annotated version of Lunati’s Figure 8 reproduced above to establish that the
dynamic page “show[s] available options” (e.g., “colection” and
“collection”) for the plurality of phrases. Id. at 45–46 (citing Ex. 1007,
5:45–48, Fig. 8). Patent Owner does not dispute Petitioner’s analysis of
step (C). We are persuaded that Lunati’s Figure 8 display of alternative
written forms teaches step (C) of claim 1.

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e. Step (D)
Claim 1 further recites “(D) receiving, from the user, an instruction to
-replace [sic] the first phrase with one of the plurality of phrases in the
document on the first computer-readable medium, wherein the instruction
does not include the one of the plurality of phrases.” Ex. 1001, 13:23–27.
Petitioner cites Lunati’s teaching of the user “tak[ing] action to correct the
highlighted word by moving his mouse pointer 156 over any highlighted
word of his choosing (e.g., the misspelled word ‘colection’).” Pet. 47 (citing
Ex. 1007, 5:27–29). Petitioner also cites Lunati’s teaching that “the user
chooses his correction option from those displayed.” Id. at 47–49 (citing
Ex. 1007, 5:35–38, Figs. 7–9). Referencing Dr. Sears’s testimony, Petitioner
contends the user’s instruction of a correction option is accomplished by
selecting the choice from Lunati’s displayed list, so the instruction does not
include one of the plurality of phrases. Id. at 49 (citing Ex. 1003, 74–77).
Patent Owner does not dispute Petitioner’s analysis of step (D). We are
persuaded that Lunati teaches a user choosing a correction option from a list
of displayed options. Ex. 1003, 74–77; Ex. 1007, 5:27–29, 5:35–38,
Figs. 7–9. Thus, we find that Lunati teaches step (D) of claim 1.

f. Conclusion Regarding Claim 1
Based on the entire trial record, we are satisfied that Lunati teaches all
of the limitations of claim 1 in view of the knowledge of a person of
ordinary skill in the art. Thus, we determine Petitioner has shown by a
preponderance of the evidence that the subject matter of claim 1 would have
been obvious over Lunati under 35 U.S.C. § 103(a).

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3. Claim 9
Claim 9 depends from claim 1 and recites that step (D) “further
comprises receiving an instruction generated by the user using a single
keystroke.” Ex. 1001, 13:49–51. Petitioner cites Lunati’s teaching that “a
user may make ‘use of the keyboard to select a highlighted word of interest’
in connection with ‘choos[ing] his correction option from those displayed.’”
Pet. 50 (quoting Ex. 1007, 5:30–35) (alteration by Petitioner). Petitioner
acknowledges, however, that Lunati does not disclose that this involves the
use of a single keystroke. Id. Supported by Dr. Sears’s testimony, Petitioner
contends an ordinarily skilled artisan “would have known that this selection
would be advantageously accomplished with a single keystroke because the
use of single keystrokes in human-centered computing applications was well
known by the earliest priority date of the [’]524 Patent.” Id. (citing Ex. 1003
¶¶ 50–60, pp. 79–80). In further support of this contention, Petitioner cites
two contemporaneous references that demonstrate the use of a single
keystroke to make a selection from a list of options. See id. at 50–52 (citing,
inter alia, Ex. 1009, 33; Ex. 1010, 21).
Patent Owner does not dispute Petitioner’s analysis for claim 9, and
Patent Owner relies on the same arguments discussed above with respect to
claim 1. See PO Resp. 26; PO Sur-reply 25 n.6. Based on Lunati’s
teachings of choosing a correction option (Ex. 1007, 5:30–35), Dr. Sears’s
undisputed testimony (Ex. 1003 ¶¶ 50–60, pp. 79–80), and the
contemporaneous references’ teaching of single-keystroke selections in a
user interface (Ex. 1009, 33; Ex. 1010, 21), we are persuaded that Lunati
teaches the additional limitation in claim 9 in view of the knowledge of an
ordinarily skilled artisan. Thus, we determine Petitioner has shown by a
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preponderance of the evidence that the subject matter of claim 9 would have
been obvious over Lunati under 35 U.S.C. § 103(a).

G. Obviousness Ground Based on Lunati and Roberts
Petitioner contends the subject matter of claims 5 and 9 would have
been obvious over the combination of Lunati in view of the knowledge of a
person of ordinary skill in the art and Roberts. Pet. 52–58; Pet. Reply 25–
26. Patent Owner disputes Petitioner’s contentions. PO Resp. 26, 53–54;
PO Sur-reply 24–25 & n.6.

1. Claim 5
Claim 5 depends from claim 1 and recites that step (C) “further
comprises identifying the at least some of the plurality of phrases to display
based on a context of the first phrase in the document.” Ex. 1001, 13:37–39.
Petitioner’s analysis for this ground builds on its analysis of the Lunati
ground discussed above. Petitioner notes that Lunati discloses identifying a
plurality of phrases representing an alternative written form of the concept of
a first phrase, but Petitioner acknowledges that Lunati does not disclose
whether these phrases are selected based on the context of the first phrase.
Pet. 55. For selection of phrases based on context, Petitioner cites Roberts’s
teaching of the desirability of using “higher-level linguistic knowledge that
predicts which words are most probable, based on the context.” Id. at 55–56
(citing Ex. 1008, 1:25–29, 3:67–4:1). Petitioner contends an ordinarily
skilled artisan reviewing Lunati would have been motivated to look to other
references that teach methods for improving the accuracy of suggested
correction options. Id. at 52–53 (citing Ex. 1003 ¶ 61). In particular,
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Petitioner contends an ordinarily skilled artisan would have combined
Roberts with Lunati because Roberts’s “context-specific selection technique
would improve the likelihood of selecting and displaying the desired
correction options to the user.” Id. at 56 (citing Ex. 1003, 81).
Patent Owner argues Roberts does not disclose “identifying a plurality
of phrases to display based on a context of the first phrase in the document.”
PO Resp. 53. Nevertheless, Patent Owner concedes “Roberts discloses
taking the immediately preceding words into account in suggesting words to
the user.” Id. at 53 (citing Ex. 1008, 1:25–29, 3:67–4:1, 9:1–7); see also id.
at 54 (“Roberts discloses using the immediately surrounding words in a
phrase to predict the likelihood of a word in speech recognition.”).
Patent Owner’s arguments regarding claim 5 are related to its claim
construction argument that “context . . . in the document” is related to “the
format, parts, and/or sections of the document” (id. at 23–26), which we
decline to adopt above. See supra § II.C.3. As acknowledged by Patent
Owner (see PO Resp. 53–54), Roberts’s system considers context in a
document, i.e., the words surrounding a phrase, to predict words that are
presented to a user as part of an editing routine. Ex. 1008, 1:25–29, 3:67–
4:4, 9:1–7. Thus, Roberts teaches the additional limitation in claim 5. We
also are persuaded that an ordinarily skilled artisan would have been
motivated to improve Lunati’s error-checking routine by incorporating
Roberts’s teachings of word prediction based on context. Ex. 1003 ¶ 61,
p. 81. Patent Owner does not dispute Petitioner’s reasons for combing
Roberts with Lunati.
Patent Owner otherwise relies on the same arguments discussed above
with respect to claim 1 of the Lunati ground. See PO Resp. 26; PO
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Sur-reply 25 n.6. Based on the entire trial record, we determine Petitioner
has shown by a preponderance of the evidence that the subject matter of
claim 5 would have been obvious over the combination of Lunati in view of
the knowledge of a person of ordinary skill in the art and Roberts under
35 U.S.C. § 103(a).

2. Claim 9
Petitioner’s analysis for claim 9 (Pet. 56–58) and reasons to combine
Roberts with Lunati (id. at 53–55) are similar to those for claim 9 of the
Longé–Roberts ground discussed above. See supra § II.E.2. Petitioner
establishes that Roberts teaches pick-choice commands using a single
function key. Pet. 56–57 (citing Ex. 1008, 15:31–40, Fig. 36). We are
persuaded by Petitioner’s showing, as supported by Dr. Sears’s uncontested
testimony, that an ordinarily skilled artisan would have implemented
Roberts’s pick-choice commands in Lunati’s system to improve the speed
and efficiency of Lunati’s user interface. Id. at 54–55, 57–58 (citing
Ex. 1003 ¶¶ 61–65, pp. 82–83). Patent Owner does not dispute Petitioner’s
analysis for claim 9, and Patent Owner relies on the same arguments
discussed above with respect to claim 1 of the Lunati ground. See PO
Resp. 26; PO Sur-reply 25 n.6. Thus, we determine Petitioner has shown by
a preponderance of the evidence that the subject matter of claim 9 would
have been obvious over the combination of Lunati in view of the knowledge
of a person of ordinary skill in the art and Roberts under 35 U.S.C. § 103(a).

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57
III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that
(1) claims 1, 5, and 9 would have been obvious over Longé in view of the
knowledge of a person of ordinary skill in the art; (2) claim 9 would have
been obvious over the combination of Longé in view of the knowledge of a
person of ordinary skill in the art and Roberts; (3) claims 1 and 9 would have
been obvious over Lunati in view of the knowledge of a person of ordinary
skill in the art; and (4) claims 5 and 9 would have been obvious over the
combination of Lunati in view of the knowledge of a person of ordinary skill
in the art and Roberts.8

IV. ORDER
Accordingly, it is
ORDERED that claims 1, 5, and 9 of the ’524 patent are held to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

8 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).
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Patent 8,412,524 B2
58
In summary:

Claims 35 U.S.C. § References/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 5, 9 103(a) Longé 1, 5, 9
9 103(a) Longé, Roberts 9
1, 9 103(a) Lunati 1, 9
5, 9 103(a) Lunati, Roberts 5, 9
Overall
Outcome
1, 5, 9
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Patent 8,412,524 B2
59

PETITIONER:

Brian Ferguson
Robert S. Magee
Daniel Musher
WEIL, GOTSHAL & MANGES LLP
brian.ferguson@weil.com
robert.magee@weil.com
daniel.musher@weil.com

PATENT OWNER:

Jonathan M. Strang
Inge A. Osman
Surendra K. Ravula
David K. Callahan
Kevin C. Wheeler
LATHAM & WATKINS LLP
jonathan.strang@lw.com
inge.osman@lw.com
surendrakumar.ravula@lw.com
david.callahan@lw.com
kevin.wheeler@lw.com