Samsung Electronics Co., Ltd.v.Black Hills Media, LLC

Patent Trial and Appeal Board

Oct 20, 2015

09034773 (P.T.A.B. Oct. 20, 2015)

Trials@uspto.gov Paper 50
Tel: 571-272-7822 Entered: October 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., and
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
and
LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
ELECTRONICS MOBILECOMM U.S.A., INC.
Petitioner,
v.
BLACK HILLS MEDIA, LLC,
Patent Owner.
_______________

Case IPR2014-00717
Case IPR2015-00335
Patent 6,108,686
_______________

Before BRIAN J. MCNAMARA, DAVID C. MCKONE,
and FRANCES L. IPPOLITO, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) to institute an inter partes review of claims 1, 2, 20, 23, 29, and 30 of
U.S. Patent No. 6,108,686 (Ex. 1001, “the ’686 patent”). Pet. 4. Samsung
Electronics America, Inc., and Samsung Telecommunications America,
LLC, are identified as real parties-in-interest. Pet. 1. Black Hills Media,
LLC (“Patent Owner”) filed a Preliminary Response (Paper 91, “Prelim.
Resp.”). Pursuant to 35 U.S.C. § 314(a), in our Decision to Institute, we
instituted this proceeding as to all of the challenged claims of the ’686
patent. Paper 18 (“Dec.”), 15.
After Samsung Electronics Co., Ltd., filed its Petition, LG
Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
MobileComm U.S.A., Inc., filed a petition (Case IPR2015-00335, Paper 2)
and a motion to join the ’335 proceeding to this proceeding (Case IPR2015-
00335, Paper 3). We granted the motion for joinder, instituting the ’335
proceeding on grounds identical to those in this proceeding. Paper 32. We
refer to the petitioners in the joined proceeding collectively as “Petitioner.”
After the Decision to Institute, Patent Owner filed a Patent Owner
Response (Paper 36, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner Response (Paper 39, “Reply”). An oral hearing was held on July 28,
2015. Paper 49 (“Tr.”).
Petitioner relies on the testimony of Kevin C. Almeroth, Ph.D.
(Ex. 1005, “Almeroth Decl.”; Ex. 1017, “2nd Almeroth Decl.”) in support of
1 Unless otherwise noted, paper numbers refer to papers filed in IPR2014-
00717.

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its contentions.2 Patent Owner relies on the testimony of William O. Putnam
(Ex. 2013, “Putnam Decl.”) in support of its contentions.
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
challenged claims. Based on the record before us, Petitioner has
demonstrated, by a preponderance of the evidence, that all of the challenged
claims are unpatentable.

B. Related Matters
The ’686 patent has been asserted against multiple defendants in
Black Hills Media, LLC v. Samsung Electronics Co., Ltd., No. 2-13-cv-
00379 (E.D. Tex.). Pet. 1; Paper 5, 2.
The ’686 patent is also at issue in Black Hills Media, LLC v. Yamaha
Corporation of America, No. 2:14-cv-00101 (C.D. Cal.); Black Hills Media,
LLC v. Sonos, Inc., No. 2:14-cv-00486 (C.D. Cal.); and Black Hills Media,
LLC v. Pioneer Electronics Inc., No. 2:14-cv-00471 (C.D. Cal.). Paper 5, 2.

2 Patent Owner argues that we should disregard Dr. Almeroth’s testimony
because he did not provide a claim limitation-by-claim limitation analysis.
PO Resp. 39–41. Although an expert witness is permitted to testify
regarding the ultimate issue in a case, Fed. R. Evid. 704(a), we are aware of
no requirement that he provide a claim-by-claim analysis. Consistent with
our rules, we assign Dr. Almeroth’s testimony appropriate weight in
consideration of the underlying facts and data on which it is based.
See 37 C.F.R. § 42.65(a).

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C. References Relied Upon
Petitioner relies upon the following prior art references:
Reilly et al., US 5,740,549, issued Apr. 14, 1998, filed June 12, 1995
(Ex. 1003, “Reilly”)
Jiri Weiss, New Places to Go Online, Vol. 14, No. 8, TECHNOLOGY &
LEARNING 109–15 (May/June 1994) (Ex. 1004, “Technology &
Learning”)

D. The Asserted Grounds
We instituted this proceeding based on the following specific grounds
(Dec. 15):
Reference(s) Basis Claims Challenged
Reilly § 102(e) 1, 2, 20, 23, 29,
and 30
Reilly and Technology &
Learning
§ 103(a) 1, 2, 20, 23, 29,
and 30

E. The ’686 Patent
The ’686 patent is directed to techniques for retrieving information
about a specific subject from remote databases. Ex. 1001, Abstract. At the
time of the invention, high speed data connections were excessively
expensive for many consumers, making it difficult to obtain information
over the Internet and World Wide Web quickly. Id. at 1:12–39. The
invention of the ’686 patent uses a search agent to retrieve information
relating to a single, predefined subject, stores that information in a local
database, and allows a user to access the locally stored information. Id. at
2:8–23. Examples of subjects on which a user can seek information include
news, cooking, weather, and sports. Id. at 3:40–43. The ’686 patent terms

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such a system a subject-specific information retrieval and viewing system
(“SIRViS”). Id. at Abstract.
A SIRViS includes a graphical user interface (“GUI”) in cooperation
with a search agent. Id. at 5:21–22. The GUI includes a control panel
component and a content viewer component. Id. at 5:22–24. Figure 4 of the
’686 patent, reproduced below, illustrates an example of a SIRViS:

Figure 4 is a block diagram illustrating the functions of a SIRViS. Id. at
2:40–41.

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A user defines a set of search rules for a subject area (e.g., sports),
using control panel 26. Id. at 5:24–28. The control panel component
includes dialog boxes and other features, which, in a Windows-based
environment, allow a user to enter, using a mouse, touchpad, etc., a set of
search rules that define the type of information the user wants to access.
Id. at 5:24–38. Control panel 26 maintains dataset 40 containing the search
rules for the user and other users. Id. at 6:50–52. For example, each
member of a family can define his or her own search rules for accessing
information on the family’s personal computer. Id. at 5:27–30. To retrieve
the subject-based information for the user, search agent 25 accesses dataset
40, selects the rules defined by the user, retrieves information relating to the
subject (e.g., sports) from remote database 34, and stores the retrieved
information in local database 30. Id. at 6:53–57.
Search agent 25 can perform the search periodically, at scheduled
times, or directly in response to a user request. Id. at 6:61–65. When the
user wants to access the information, content viewer 27 retrieves the user’s
stored information from local database 30 and displays it to the user in a
Windows-based environment. Id. at 6:14–24, 6:40–45.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device for providing a plurality of local
users with information stored remotely on a
network, the device comprising:
a rule generation unit configured to define,
for each of the plurality of local users,
a set of search rules applicable to a
predefined subject; and

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a search agent configured to retrieve
information on only the predefined
subject from a database on the
network based on each set of search
rules and to store the retrieved
information in a local database.

II. ANALYSIS
A. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278 (Fed. Cir. 2015). Claim terms generally are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
In the Decision to Institute, we determined that no term required
express construction for purposes of that Decision.3 Dec. 7. Nevertheless, it
is necessary to construe several terms that include the word “search,” as well
as the term “predefined subject,” in this Decision in order to decide the
challenges to patentability presented in the Petition. See Wellman, Inc. v.
Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
need only be construed ‘to the extent necessary to resolve the controversy.’”
3 Patent Owner argues that, because we did not adopt Petitioner’s proposed
constructions or the constructions proposed by Patent Owner, Petitioner
necessarily cannot make out a prima facie case of anticipation or
obviousness. PO Resp. 35–39. Nevertheless, we analyze the arguments and
evidence presented by Petitioner under our constructions as detailed in this
Decision.

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(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)).
Claim 1 recites “a set of search rules” and “a search agent configured
to retrieve information on only the predefined subject from a database on the
network based on each set of search rules.” Claim 20 recites “a unique set
of search criteria” and “retrieving information relating to only the
predefined subject from a database on the network based on each set of
search criteria.” Claim 29 recites “a set of search rules.”

1. “search agent”
Petitioner proposes construing “search agent” to mean “hardware
and/or software capable of retrieving information and storing it,” but does
not otherwise propose constructions for “search,” individually, or either of
the terms “search rules” or “search criteria.” Pet. 5–6.
In response, Patent Owner contends that Petitioner’s proposal does not
fully appreciate the meaning of “search.” PO Resp. 11. Patent Owner does
not propose an express construction of “search,” but does introduce technical
dictionary definitions of the term, including:
search (noun) – “The process of seeking a particular file or
specific data. A search is carried out by a program through
comparison or calculation to determine whether a match to
some pattern exists or whether some other criteria have been
met . . .”; and
search (verb) – “1. To look for the location of a file. 2. To seek
specific data within a file or data structure . . .”.
PO Resp. 12 (quoting Ex. 2014 (MICROSOFT COMPUTER DICTIONARY, 4th
ed.), 399) (emphases Patent Owner’s). From the dictionary definitions,
Patent Owner concludes that the ordinary and customary meaning of “search

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agent” is “a computer program that acts on behalf of a user to conduct a
search for (e.g., seek/locate/look for) specific information, guided by search
criteria that specify the particular information to be retrieved.” PO Resp. 12.
Patent Owner argues that “the ’686 Patent explicitly indicates that
mere retrieval (i.e., ‘gathering’) and storage (i.e., ‘download’) of information
does not constitute a ‘search’.” PO Resp. 14.
We are not persuaded by Patent Owner’s attempt to distinguish search
agents from programs that perform “gathering” or “retrieval.” Rather,
“retrieval” is precisely the function claim 1 assigns to the “search agent”: “a
search agent configured to retrieve information on only the predefined
subject from a database on the network based on each set of search rules.”
This is consistent with the Specification, which states that “[t]he agent 25 is
designed to use these sets of search rules to retrieve a specific type of
information from the predefined remote databases 34 and to store that
information in the local database 30 using the same data structure in which
the data is stored in the remote databases 34.” Ex. 1001, 6:34–38 (emphasis
added); see also id. at 3:11–13 (“The search agent may retrieve the
information periodically or at specified days or times, for example.”
(emphasis added)); 6:53–57 (“The agent 25 accesses the dataset 40, selects
the set of rules for a particular user, [and] retrieves information from the
remote database 34.” (emphasis added)).
As these passages demonstrate, searching, in the context of the ’686
patent, is retrieving a subset of the data stored on a database, the particular

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subset retrieved being determined by search rules (or search criteria).4 This
also is reflected in the structure of the independent claims. For example,
claim 1 recites “a search agent configured to retrieve information on only
the predefined subject from a database on the network based on each set of
search rules.” Claim 20 recites “retrieving information relating to only the
predefined subject from a database on the network based on each set of
search criteria.” Claim 29 recites “retrieving information relating to only
the predefined subject from a remote database on the network.”
Regarding the meaning of “agent,” we accept a dictionary definition
proposed by Patent Owner, namely “[a] program that performs a background
task for a user and reports to the user when the task is done or some
expected event has taken place.” PO Resp. 13 (quoting Ex. 2014
(MICROSOFT COMPUTER DICTIONARY, 4th ed.)), 18. Although Petitioner
protests that this excludes hardware and combinations of hardware and
software (Reply 10), Petitioner presents no persuasive contrary evidence.
Claim 1 further recites that “search rules” are defined by “a rule generation
unit” for “each of the plurality of local users.” We also accept a technical
dictionary definition of “search criteria” provided by Patent Owner, namely
“[t]he terms or conditions that a search engine uses to find items in a
database.” PO Resp. 12 (quoting Ex. 2014, 399). Considering this evidence
together, we construe “search agent” to mean “a computer program that acts
4 Claims 1 and 29 use the term “search rules,” while claims 2 and 20 use the
term “search criteria.” The Specification appears to use the terms
synonymously. Compare Ex. 1001, 2:10–11 with id. at 3:3–7. The parties
do not argue persuasively that the terms should be assigned different
meanings.

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on behalf of a user to locate and retrieve information in accordance with
search rules.”

2. Alleged Distinction over “Push” Technology
In arguing a distinction between “search” and “retrieve” or “gather,”
Patent Owner contends that the Background of the Invention section of the
’686 patent distinguishes the invention (which requires a “search”) from
“push” technology (that merely “gathers”). PO Resp. 13–14 (citing
Ex. 1001, 1:18–25). In particular, the ’686 patent states:
Another, more recently developed information access
technology is commonly referred to as “push” technology.
With push technology, a remote server generally gathers
information on various topics from remote databases, packages
the information into subject groupings called “channels”, and
automatically downloads selected channels to the user’s
computer. The user does not need to search for or request the
information. The retrieved information may be automatically
stored locally on the user’s computer, such that the user can
browse the information off-line at a time of his own choosing.
Ex. 1001, 1:18–28.
Patent Owner offers definitions of “push” and “pull” technology from
dictionaries and periodicals. PO Resp. 20–22. For example, Patent Owner
argues that “push” technologies are “designed to provide end users with
personalized Web access by having a site actively ‘push’ requested
information to a user’s desktop, either automatically or at specified
intervals,” while “pull” is “[t]he process of retrieving data from a
network server.” Id. at 20–21 (quoting Ex. 2014 (MICROSOFT COMPUTER
DICTIONARY, 4th ed.), 364–66 (emphasis Patent Owner’s)). According to
Patent Owner, “Push was developed as a means of relieving users from

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having to actively retrieve (‘pull’) information from the Web.” Id. at 21
(quoting Ex. 2014, 365–66 (emphasis Patent Owner’s)); see also Ex. 2015
(PC MAGAZINE ENCYCLOPEDIA) (characterizing “push” technology as
technology “in which selected data are automatically delivered to the user’s
computer” and “pull” technology as technology “in which the user initiates a
request for the data each time”).
Patent Owner argues that the invention of the ’686 patent is directed
to “pull” systems. PO Resp. 22. According to Patent Owner, “[t]he search
technology disclosed by ’686 Patent in which users specify search criteria
such that a search engine (e.g., search agent (25)) uses those criteria to seek
and retrieve corresponding information is inherently ‘pull’ in nature.” Id.
Patent Owner cites to Mr. Putnam’s testimony to show that “search
technology” is “inherently ‘pull’ rather than ‘push’ in nature.” Id. (citing
Ex. 2013 ¶ 44). Patent Owner, however, does not cite to any examples in
the Specification describing “pull” technology in which the user (rather than
a search agent) actively initiates requests for data.
We do not read the ’686 patent to distinguish the invention from
“push” technology or otherwise characterize the claims as limited to “pull”
technology (a term the ’686 patent does not use). Rather, in the above-
quoted passage (Ex. 1001, 1:18–28), consistent with Patent Owner’s
dictionary definitions, the patent characterizes “push” technology as data
gathering performed automatically by a remote server (rather than at the
request of a user). According to the patent’s description of the preferred
embodiments, a “search agent then automatically accesses content in the
remote databases according to the search and stores the information in a
local database.” Ex. 1001, 3:8–11. In one embodiment, “the search agent

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25 may be located remotely from the client system 1.” Id. at 5:64–65. Thus,
the ’686 patent describes a preferred embodiment of the invention
consistently with Patent Owner’s definitions of “push” technology, in the
sense that data are gathered automatically by software on a remote server
and forwarded to the user’s local computer. In contrast to Patent Owner’s
definitions of “pull” technology, the Specification describes the search agent
retrieving data without the user actively initiating a search. Id. at 6:57–61
(“In one embodiment, the agent 25 searches the remote database 34 on
behalf of one or more users regardless of whether the client system 1 is
currently in use by any user; hence, searches are generally performed
automatically.” (emphasis added)). We note that information first must be
located before it can be “pushed” or “pulled” to a user.
Although the examples it describes are consistent with Patent Owner’s
definitions of “push” technology, the ’686 patent nevertheless purports to
distinguish the invention over “conventional” push technology and web
browsers, which the patent states “do not provide a user-friendly way for a
person to access large volumes of stored information in the event that he
wishes to archive the information for later use.” Id. at 1:55–65. According
to the patent,
In contrast with conventional information access techniques,
such as Web browsers and push technology, the search agent
stores information in the local database using the same
organizational structure in which the information was stored in
the remote database. This structure is selected in advance to be
suitable for effectively conveying information on the predefined
subject area to a user in a format that can be easily assimilated.
Id. at 3:19–26. Thus, according to the Specification, the advantage of the
search agent of the preferred embodiments over conventional push

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technology is in the way that it stores information, not whether it operates in
a “push” or “pull” configuration. Patent Owner’s evidence does not show
persuasively that the claim terms “search,” “search agent,” or any other
claim language invokes a distinction between “push” and “pull”
technologies.
In sum, we are not persuaded that the claims are directed to
technology characterized as “pull,” or exclude technology characterized as
“push.”

3. “search rules,” and “search criteria”
Consistent with our construction of “search agent,” the above-cited
dictionary definitions, and the above-cited description in the Specification,
we further construe “search rules” and “search criteria” to mean “the terms
or conditions used to identify items to be retrieved from a database.”
See Ex. 1001, 3:3–11, 6:53–57; Ex. 2014, 399.

4. “predefined subject”
Claim 1 recites “a set of search rules applicable to a predefined
subject” and “a search agent configured to retrieve information on only the
predefined subject.” Neither party proposes a construction of this term.
Nevertheless, the parties dispute the application of this term to Reilly.
Petitioner, for example, contends that “news” can be a predefined
subject. Pet. 29. In another instance, Petitioner contends that “football” can
be a predefined subject. Id. at 44. Patent Owner’s declarant, Mr. Putnam,
appears to agree with Petitioner’s first contention. Ex. 2013 ¶ 41 (“The
search agents described in the ’686 Patent are designed to be specific to a

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predefined subject area, such as news, cooking, weather, or sports.”).
Mr. Putnam cites to column 3, lines 40–43, of the ’686 patent, which states
“[t]he client system 1 may have multiple users who wish to access, from
time to time, information stored in databases on the content servers 2
relating to various topics, such as news, cooking, weather, sports, etc.” The
parties appear to agree that this is the only disclosure in the ’686 patent of
examples of predefined subjects. Tr. 15:18–16:12, 28:21–29:19.
While neither party presents evidence to show the boundaries of the
term “predefined subject,” the parties appear to agree that term is broad
enough to encompass a high level topic such as “news.” This is consistent
with the Specification. Ex. 1001, 3:40–43. Accordingly, the term
“predefined subject” is broad enough to encompass “news.”

B. Asserted Grounds of Unpatentability
1. Anticipation by Reilly
Patent claims are anticipated if a single prior art reference “show[s] all
of the limitations of the claims arranged or combined in the same way as
recited in the claims.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1370 (Fed. Cir. 2008); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990).
Petitioner contends that Reilly anticipates claims 1, 2, 20, 23, 29,
and 30. Pet. 42. For the reasons given below, we agree.

a. Overview of Reilly
Reilly describes a system for matching information to subscribers’
interests, retrieving the information, and displaying the information, together

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with advertisements, in screen savers on the subscribers’ computers.
Ex. 1003, 1:4–10, 5:20–23.
Figure 1 of Reilly, reproduced below, illustrates an example:

Figure 1 is a block diagram of an information and advertising distribution
system. Id. at 3:30–32. Several subscriber computers, or clients 102, are
connected to information server 104 via the Internet 119. Id. at 4:8–10.
Additional clients are connected to local area network (“LAN”) server 108
on LAN 106, and LAN server 108 is connected to information server 104

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via the Internet 119. Petitioner focuses particularly on this LAN
embodiment, as will be explained below.
Information server 104 includes newswire interface 120 that receives
news feeds from services such as the Associated Press (“AP”), the DOW
news feed, and sports news feeds. Id. at 4:28–31. Information editor 130
edits and formats the received news items into a form suitable to distribute to
subscribers and stores the formatted items in information database 134.
Id. at 4:31–38. Information editor 130 assigns each news item to an
information category and, in some instances, a sub-category. Id. at 4:39–42.
Information database 134 also stores advertisements 138, which also are
assigned to information categories. Id. at 4:66–5:1.
Each client 102 (or in the case of clients networked together in LAN
106, the LAN server 108) includes category managers. Id. at 6:62–67.
There can be a separate category manager for each information category.
Id. at 7:3–6. Each category manager includes a category profiler, which
presents a dialog box to a subscriber to determine whether the subscriber is
interested in specific subcategories (e.g., by selecting and deselecting boxes
corresponding to specific sports or specific sports teams, as shown in
Figure 5). Id. at 7:13–18, 9:36–57. The categories selected by the
subscriber are stored in a category profile data structure. Id. at 7:18–20,
9:58–61.
A subscriber computer connects to the information server at a time
that the subscriber is not likely to be using the computer (e.g., once in the
middle of the night) or periodically (e.g., every four hours) to download
news items and advertisements, which then are stored in the subscriber
computer’s local information database. Id. at 8:19–31. In the case of a LAN

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server serving several clients, the LAN server downloads news items and
advertisements for all of the clients and stores them on its local database.
Id. at 15:19–27. When an individual subscriber on a client computer of the
LAN wants to view news items, the news items are filtered according to the
subscriber’s user profile and the subscriber is presented with only those
items and advertisements that match its profile. Id. at 15:27–39.
For a particular subscriber, a screen saver program displays news
items and advertisements (e.g., as shown in Figure 6). Id. at 11:40–52.
Advertisements are displayed on subscribers’ workstations simultaneously
with news items that have been assigned to the same category. Id. at 5:1–4.
If the subscriber wants to read a particular news item, the subscriber can
give a command (e.g., click on the news item with the mouse), after which a
data viewer (Figure 2, data viewer 208, and Figure 10) is launched to display
the full news story associated with the news item. Id. at 9:11–17, 13:29–37.

b. Claims 1, 20, and 23
Regarding claim 1, Petitioner contends that Reilly’s LAN server 108
is a “device for providing a plurality of local users with information stored
remotely on a network.” Pet. 21–22, 43. According to Petitioner, the clients
in LAN 106 are the plurality of local users. Id. Petitioner further contends
that Reilly’s category profiler is a “rule generation unit” and that the data
structure the category profiler generates is a “set of search rules.” Id. at 22,
44–45. Petitioner also contends that Reilly describes LAN server 108 as
configured to retrieve news items and advertisements relating to a category
selected by a subscriber and, thus, includes “a search agent configured to
retrieve information on . . . the predefined subject from a database on the

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network based on each set of search rules,” as recited in claim 1. Id. at 23,
45–46. Petitioner argues that because both the news items and
advertisements retrieved by LAN server 108 relate to the same subject, the
search agent of the LAN server retrieves information “on only the
predefined subject.” Id. at 22; see also Ex. 1003, 4:66–5:4 (“Advertisements
138 are also stored in the information database 134 and each advertisement
is assigned to at least one of the predefined information categories. Each
advertisement is displayed on subscribers’ workstations simultaneously with
news items assigned to the same category as the advertisement.”). Petitioner
contends that LAN server 108, when it downloads news items into its local
database, “store[s] the retrieved information in a local database.” Pet. 23,
45–46. Regarding claims 20 and 23, Petitioner makes substantially the same
contentions as it does for claim 1. Id. at 46–50.
We have considered Petitioner’s evidence (Pet. 21–24, 42–50),
including Dr. Almeroth’s testimony (Ex. 1005 ¶¶ 29–35), and agree with
Petitioner that Reilly discloses each limitation of claims 1, 20, and 23. For
the reasons below, we are not persuaded by Patent Owner’s arguments to the
contrary. With the exception of claim 2 (discussed below), Patent Owner
does not present separate arguments for each of the challenged claims.
Rather, Patent Owner presents arguments common to independent claims 1,
20, and 29.
In its Response, Patent Owner contends that Reilly does not anticipate
the challenged claims because it describes a “push” system of the type
distinguished by the ’686 patent. PO Resp. 20–23. According to Patent
Owner,
whereas the methods and systems of the ’686 Patent utilize a
search agent to identify, locate, and retrieve targeted

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information from one or more data sources, Reilly’s system
utilizes ‘push’ technology such that users of the clients (102)
merely receive content that was previously received at, edited
at, and compiled for download by the information server (104).
Id. at 22. Patent Owner also argues that PointCast, Inc., the assignee of
Reilly, utilized “push” technology in its commercial product. Id. at 23. As
explained in Section II.A.2 above, the challenged claims do not distinguish
between “push” and “pull” technologies. Thus, whether Reilly implements
“push” or “pull” technology is not dispositive of Petitioner’s challenge.
We also disagree with Patent Owner’s characterization of Reilly.
Information server 104 compiles news stories and stores them according to
categories and sub-categories. Ex. 1003, 4:23–49. Software executing on
client 102 (or LAN server 108, in a LAN configuration) locates and retrieves
only some of the news stories from information server 104. Id. at 6:46–56.
The news stories the software retrieves are determined by the categories and
sub-categories selected by a user and supplied to category managers
executing on client 102. Id. at 6:62–7:20, 9:36–61. The system described
by Reilly locates and retrieves from a remote database the subset of the data
stored on that database that corresponds to search rules provided by a user.
Thus, Reilly teaches seeking out or locating information corresponding to
search rules and retrieving the located information. As explained in Section
II.A.1 above, this is consistent with the searching described in the ’686
patent.
Patent Owner further seeks to distinguish Reilly by arguing that it
discloses “filtering” that is “passive” rather than a system that “actively
searches.” PO Resp. 24–26. Patent Owner admits that, according to Reilly,
“items to be downloaded are compared to the category preferences of a user

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profile, and items that are not excluded by the profile are transmitted to the
user’s client (102)” and that “[t]he sub-category selections and filters are
then used by the information server (104) to filter the information
downloaded to the client, so that only information of interest to the
subscribers is transmitted” to client 102. Id. at 25 (citing Ex. 1003, 14:49–
58, 15:28–33, 15:37–40, 16:20–26). Nevertheless, Patent Owner argues,
[a] person skilled in the art would appreciate that the “filtering”
disclosed by Reilly and relied upon by the Petitioner is distinct
from the ’686 Patent’s notion of searching utilizing a search
agent, search rules, and/or search criteria, and reflects the
fundamental distinction between Reilly’s “push” system and the
“pull” system disclosed and claimed in the ’686 Patent.
Id. at 26. Patent Owner cites Mr. Putnam, who, in turn, cites to a dictionary
definition of “filter.” Ex. 2013 ¶ 48 (citing Ex. 2014, 185 (“filter n. . . . 3. A
pattern or mask through which data is passed to weed out specified items.”).
Patent Owner’s argument appears to be that “searching” positively
identifies information to be retrieved and actively retrieves it while
“filtering” negatively identifies information to be excluded from retrieval
and allows the rest to pass through. The plain language of claim 1 does not
capture this distinction. Rather, it recites “a search agent configured to
retrieve information on only the predefined subject from a database on the
network,” without limiting such retrieval to any particular technique, other
than such retrieval must be “based on each set of search rules.”
Nor does Patent Owner provide any examples from the Specification
on which to base its distinction. As explained in Section II.A.1 above, the
Specification describes searching as retrieving, from a remote database,
information that corresponds to search rules. See, e.g., Ex. 1001, 6:34–36
(“The agent 25 is designed to use these sets of search rules to retrieve a

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specific type of information from the predefined remote databases 34.”).
Patent Owner does not argue persuasively that the “search rules” provide for
“active” searching or preclude “filtering.” Indeed, at the hearing, Patent
Owner could not identify any examples of “search rules” disclosed in the
’686 patent. Tr. 21:4–7 (“JUDGE McKONE: Are there any examples in the
specification of what these search rules are? MR. HAIGHT: I think the
specification refers to the search rules in a high level.”). Thus, Patent Owner
has offered no persuasive support in the Specification for its distinction
between filtering and searching. Moreover, Dr. Almeroth testifies that a
skilled artisan would have understood filtering to be a form of searching,
giving the example of search engines that allowed Boolean searches
including the “NOT” operator. Ex. 1017 ¶ 34 (citing Ex. 1018). We credit
this testimony.
Patent Owner further contends that Reilly does not disclose, for sets of
search rules defined for “each of [a] plurality of users,” “a search agent
configured to retrieve information on only the predefined subject,” as recited
in claim 1, as well as the similar recitations of claim 20. PO Resp. 27–29.
Petitioner contends that this limitation is disclosed by Reilly’s description of
a LAN server creating a group profile that represents the union of all news
category preferences of the LAN’s clients (sets of rules for each of a
plurality of users) and retrieving from the remote database news stories
(information on only the predefined subject) that correspond to the group
profile. Pet. 45–46 (citing Ex. 1003, 15:19–37). In this embodiment, the
subset of news stories corresponding to the group profile is stored on the
local database. Ex. 1003, 15:19–37. When a particular client wishes to view
the news stories corresponding to its individual profile, the LAN server

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filters out those news stories and presents them to the client. Id. Patent
Owner argues that, in this embodiment, the information retrieved from the
remote database is information related to multiple predefined subjects
because it is the union of all of the client preferences. PO Resp. 29.
Reilly refers to the content stored on its remote information database
as “news stories,” which can be categorized more finely into categories and
sub-categories such as “specific companies, geographic regions, specific
sports and sports teams, and so on, depending on the category.” Ex. 1003,
6:61–7:18; see also id. at Fig. 1 (“News Story Items” 132). As explained in
Section II.A.4 above, and as testified to by Mr. Putnam, “news” is an
example of a predefined subject described in the ’686 patent. Thus, even
though Reilly’s LAN server retrieves stories for a plurality of clients, each of
those stories corresponds to the same high-level subject of “news.” As
Petitioner argues (Reply 22), this is very similar to the ’686 patent’s example
in which multiple users each specify their own set of rules for a particular
subject area and a search agent retrieves data corresponding to all of these
sets together. Ex. 1001, 6:31–46.
At the hearing, Patent Owner argued that “news” would be “an overly
broad subject,” but conceded that it had no evidence to support that
argument. Tr. 30:3–19. We are not persuaded by Patent Owner’s argument.
Rather, we find that Reilly’s “news stories” is a predefined subject,
consistent with the description in the Specification and Mr. Putnam’s
testimony.
In sum, on the complete record, for the reasons stated in the Petition
(Pet. 21–24, 42–50) summarized above, we find that Reilly discloses each
limitation of claims 1, 20, and 23, arranged as in those claims. For the

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reasons given above, we are not persuaded by Patent Owner’s arguments.
Accordingly, we find that Petitioner has shown, by a preponderance of the
evidence, that Reilly anticipates claims 1, 20, and 23.

c. Claims 2, 29, and 30
Claim 2 recites “[a] device according to claim 1, further comprising a
user interface configured to enable each of the plurality of local users to
access, from the local database, the information on the predefined subject
associated with the corresponding set of search criteria.” Petitioner contends
that Reilly’s data viewer 208, implemented on LAN server 108, is a “user
interface” that enables Reilly’s subscribers to access the information
associated with the search rules from the LAN server’s local database.
Pet. 46. Petitioner contends that “[t]he LAN server carries out user interface
functionality for the subscriber workstations by filtering content according to
each subscriber’s preferences.” Id. at 23–24 (citing Ex. 1003, 15:19–37).
We agree with Petitioner for the reasons stated in the Petition.
Patent Owner does not dispute that Reilly’s data viewer 208 is a “user
interface” meeting the limitation of claim 2. Rather, Patent Owner contends
that Reilly’s data viewer actually is part of a client, while the components
Petitioner identifies as the “rule generation unit” and “search agent” of
claim 1 are part of the LAN server. PO Resp. 30. According to Patent
Owner, “the alleged user interface of Reilly is not a component element of
the device represented by the LAN Server (108) such that claim 2 patentably
distinguishes over Reilly for at least this additional reason.” Id. at 31. In
support of this position, Patent Owner (PO Resp. 30) cites to Mr. Putnam,
who testifies “[t]he user interface [of Reilly] is therefore not a component

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element of a single device, but rather a separately located component in a
system comprised of multiple devices.” Ex. 2013 ¶ 61.
Data viewer 208 is shown in Figure 2, which is “a schematic
representation of the subscriber’s workstation or computer 102 that is not
connected to the information server 104 via a LAN server.” Ex. 1003, 6:17–
19. In its description of the LAN server embodiment, Reilly is not clear as
to whether the data viewer 208 is software running on the LAN server or the
client. On one hand, Reilly states that “[f]or subscribers’ workstations
connected to the information server 104 via a LAN server 108, FIG. 2 is
representative of the LAN server.” Ex. 1003, 6:19–21. On the other, as
Patent Owner points out (PO Resp. 30), Reilly states that, in the LAN server
embodiment, “the display device used by each such subscriber’s computer to
view news items and advertisements is part of the subscriber’s workstation
rather than the LAN server 108.” Ex. 1003, 6:22–24.
Patent Owner’s argument assumes that claim 2 is limited to a single
physical device and excludes embodiments with multiple components
connected via a network. Patent Owner does not cite to persuasive evidence
that claim 2 is so limited. Petitioner, however, points out that the ’686
patent describes embodiments in which the components are spread across a
network, for example the search agent residing at a remote content server
and communicating across the Internet with another component (e.g., a
graphical user interface) that resides on a local computer. Reply 24 (citing
Ex. 1001, 5:64–6:3). Petitioner’s evidence shows that the broadest
reasonable interpretation of “a device” includes components that
communicate with one another over a network. With this understanding, we

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find that data viewer 208 is a user interface that is part of the same device as
the components of Reilly that correspond to the limitations of claim 1.
Based on the complete record, Petitioner has shown, by a
preponderance of the evidence, that Reilly anticipates claim 2.
Regarding claims 29 and 30, Petitioner presents substantially the same
arguments and evidence as it does for claims 1 and 2. Pet. 51–57. Patent
Owner does not present separate arguments or evidence for claims 29 and
30. Based on the complete record, Petitioner has shown, by a preponderance
of the evidence, that Reilly anticipates claims 29 and 30.

2. Obviousness over Reilly and Technology & Learning
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 such subject
matter pertains.” We resolve the question of obviousness 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;5 and (4) objective evidence of
5 Petitioner and Patent Owner essentially agree on the level of skill in the art,
although Petitioner contends a skilled artisan would have had “two or more
years of work experience,” while Patent Owner contends that the skilled
artisan would have had “about two years of work experience.” Pet. 9; PO
Resp. 9–10. The minor differences in the parties’ proposals do not affect the
outcome of this proceeding.

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nonobviousness, i.e., secondary considerations.6 Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
Petitioner contends that claims 1, 2, 20, 23, 29, and 30 would have
been obvious over Reilly and Technology & Learning. Pet. 26–27. For the
reasons given below, we agree.

a. Overview of Technology & Learning
Technology & Learning describes products offered by PRODIGY and
Scholastic on which classroom users search for and display information.
Ex. 1004, 109. Petitioner cites Technology & Learning for its description of
different business models described for presenting information in a
classroom. Pet. 20–21. In particular, according to Technology & Learning,
the Classroom PRODIGY product charged a user fee but blocked the display
of advertisements. Ex. 1004, 109, 114. In contrast, the Scholastic Network
displayed advertisements and charged a user fee, although a smaller user fee
than Classroom PRODIGY. Id. at 110.

b. Claims 1, 2, 20, 23, 29, and 30
Petitioner contends that claims 1, 2, 20, 23, 29, and 30 would have
been obvious over Reilly and Technology & Learning. Pet. 25. Petitioner
raises this ground in the event that Reilly’s “news stories” and
“advertisements” are interpreted as separate subjects (as opposed to
information corresponding to a single subject). Pet. 22, 25–26, 30–31.
Patent Owner’s Response does not distinguish Reilly from the challenged
claims on the basis of news stories and advertisements being separate
6 The record does not contain any evidence of secondary considerations.

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subjects. Nevertheless, a system that retrieves only news stories, and not
advertisements, would meet the limitations of the challenged claims for the
same reasons.
Petitioner argues that Technology & Learning explicitly describes the
revenue models used by Classroom PRODIGY and Scholastic Network.
Pet. 26–27 (citing Ex. 1004, 109–10, 114); Ex. 1005 ¶ 39. According to
Petitioner, based on the disclosure in Technology & Learning, a person of
ordinary skill in the art, applying Reilly’s system in other contexts, such as
education, would have considered other revenue models that eliminated
advertisements. Id. at 26–27. Using that model, Reilly’s LAN server would
retrieve only news and not advertisements, and, thus, would be configured to
retrieve information on “only the predefined subject,” as recited in claim 1,
and similarly recited in claims 20 and 29. Id. at 27, 34–35, 38–39.
We find that Technology & Learning gives an express reason to
eliminate advertising, namely, “barring kids from material parents and
educators may find objectionable.” Ex. 1004, 109. Dr. Almeroth also
explains that such a modification to Reilly would have been easy for a
skilled artisan to implement as it would have involved only the removal of a
feature. Ex. 1005 ¶ 41.
Regarding the remaining limitations of claims 1, 2, 20, 23, 29, and 30,
Petitioner applies Reilly in substantially the same manner as in its
anticipation allegations described above. Pet. 27–42.

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Patent Owner does not present separate arguments as to the
obviousness of the challenged claims.7 Rather, Patent Owner argues that
“Petitioner’s reliance on Technology & Learning cannot cure the
deficiencies discussed above with respect to the Petitioner’s application of
Reilly alone to the challenged claims.” PO Resp. 31. Specifically, Patent
Owner argues that “even if the advertisements of Reilly were removed as
suggested by the Petitioner, Reilly fails to disclose the remainder of the
recitations of independent claims 1, 20, and 29.” Id. at 34. For the reasons
given above, we are not persuaded by Patent Owner’s arguments as to the
alleged deficiencies of Reilly.
On the complete record, we are persuaded that Technology &
Learning teaches a reason to remove advertisements from the system
described in Reilly, i.e., in order to remove material parents and educators
would find objectionable for children. Petitioner also has shown that a
skilled artisan would have had the skill to remove the advertisements. To
the extent advertisements are not the same “predefined subject” as “news,”
the resulting system would retrieve information on only one predefined
7 In a footnote, Patent Owner states that it “respectfully maintains that the
Petitioner’s proposed modification of Reilly in view of Technology &
Learning would render Reilly unsatisfactory for its intended purpose such
that a person of ordinary skill in the art would not combine the references as
suggested by Petitioner.” PO Resp. 34 n.9. Presumably, Patent Owner
refers to arguments made in its Preliminary Response. Our rules preclude
such incorporation by reference of arguments. See 37 C.F.R. § 42.6(a)(3)
(“Arguments must not be incorporated by reference from one document into
another document.”). Accordingly, we do not consider those arguments in
this Decision. See also Paper 27 (scheduling order) (“The patent owner is
cautioned that any arguments for patentability not raised in the response will
be deemed waived.”).

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subject, “news.” We find that such a system would meet each limitation of
claims 1, 2, 20, 23, 29, and 30.
On the complete record, Petitioner has shown, by a preponderance of
the evidence, that claims 1, 2, 20, 23, 29, and 30 would have been obvious
over Reilly and Technology & Learning.

III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 2, 20, 23, 29, and 30 are anticipated by Reilly and would have been
obvious over Reilly and Technology & Learning.

IV. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, claims 1,
2, 20, 23, 29, and 30 are held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of it must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Andrea Reister
Gregory Discher
Covington & Burling LLP
areister@cov.com
gdischer@cov.com

Doris Johnson Hines
Jonathan Stroud
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
dori.hines@finnegan.com
jonathan.stroud@finnegan.com

PATENT OWNER:

Thomas Engellenner
George Haight
Andrew Schultz
Reza Mollaaghababa
Pepper Hamilton, LLP
engellennert@pepperlaw.com
haightg@pepperlaw.com
schultza@pepperlaw.com
mollaaghababar@pepperlaw.com

N. Andrew Crain
Robert Gravois
Kenneth Knox
Thomas Horstemeyer LLP
Andrew.Crain@thomashorstemeyer.com
Robert.Gravois@thomashorstemeyer.com
Kenny.Knox@thomashorstemeyer.com

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