Vibrant Media, Inc.v.General Electric CompanyDownload PDFPatent Trial and Appeal BoardJul 28, 201409021331 (P.T.A.B. Jul. 28, 2014) Copy Citation Trials@uspto.gov Paper 50 571-272-7822 Entered: July 28, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ VIBRANT MEDIA, INCORPORATED, Petitioner, v. GENERAL ELECTRIC COMPANY, Patent Owner. ____________ Case IPR2013-00172 Patent 6,092,074 ____________ Before JONI Y. CHANG, JAMES B. ARPIN, MITCHELL G. WEATHERLY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge Chang. Opinion Dissenting-in-Part filed by Administrative Patent Judge Weatherly. CHANG, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 IPR2013-00172 Patent 6,092,074 2 I. INTRODUCTION Vibrant Media Corporation (“Vibrant Media”) filed a Petition on February 27, 2013, requesting an inter partes review of claim 1–12 of Patent No. US 6,092,074 (Ex. 1001; “the ’074 patent”). Paper 1 (“Pet.”). General Electric Company (“GE”) did not file a Patent Owner Preliminary Response. We determined that the information presented in the Petition demonstrated that there was a reasonable likelihood that Vibrant Media would prevail with respect to claims 1–12. Pursuant to 35 U.S.C. § 314, we instituted this trial as to those claims. Paper 8 (“Dec.”). After institution, GE filed a Patent Owner Response (Paper 19, “PO Resp.”), but elected not to file a Motion to Amend Claims. In response, Vibrant Media filed a Reply to the Patent Owner Response (Paper 25, “Pet. Reply”). Oral hearing was held on February 24, 2014. 1 We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a). We conclude that claims 1–12 of the ’074 patent are unpatentable under 35 U.S.C. § 103(a). A. Related Proceeding Vibrant Media indicates that the ’074 patent is the subject of litigation titled General Electric Co. v. Vibrant Media, Inc., No. 1:12-cv-00526-UNA (D. Del.). Pet. 1. Vibrant Media also filed another Petition in IPR2013- 1 This proceeding and IPR2013-00170 involve the same parties and similar issues. The oral arguments for both inter partes reviews were merged and conducted at the same time. A transcript of the oral hearing is included in the record as Paper 49. IPR2013-00172 Patent 6,092,074 3 00170, seeking inter partes review of Patent No. US 6,581,065 B1, which is a continuation of the ’074 patent. B. The ’074 patent The ’074 patent relates to a computer system for providing hypertext anchor codes and destination addresses for a user-readable text file. Ex. 1001, 1:7–9. At the time of the invention, hypertext was a common method of linking related computer files or pages. Id. at 1:19–23. According to the ’074 patent, it would be desirable to provide a system that automatically enters hypertext links into a computer file, such as a news article or other sequence of user-readable character strings. Id. at 3:35–38. C. Illustrative Claim Of the challenged claims, claims 1, 3, 6, 7, 9, and 12 are independent claims. Claim 7, reproduced below, is illustrative: 7. A method for providing hypertext links for a plurality of character strings including a first character string, said method comprising the steps of: providing an annotation database associated with a primary computer which comprises a plurality of linkable character strings; providing a destination database associated with said primary computer which comprises a plurality of destination addresses; determining a matching linkable character string for said first character string, if present, in said annotation database; wherein said matching linkable character string is associated with at least one of said destination addresses; wherein said annotation database further comprises a plurality of class codes which are associated with said plurality IPR2013-00172 Patent 6,092,074 4 of linkable character strings; the matching linkable character string has a plurality of class codes associated therewith; and said destination database comprises a plurality of destination addresses corresponding to said plurality of class codes of the matching linkable character string; said method comprising the further steps of: querying said destination database to obtain the plurality of destination addresses corresponding to the associated plurality of class codes; and providing a plurality of anchor codes which relate said matching linkable character string to said corresponding plurality of destination addresses to provide a corresponding plurality of hypertext links for said first character string. D. Prior Art Relied Upon Vibrant Media relies upon the following prior art references: van Hoff US 5,822,539 Oct. 13, 1998 (Ex. 1004) Anthony US 5,815,830 Sep. 29, 1998 (Ex. 1005) Kleinberg US 6,112,202 Aug. 29, 2000 (Ex. 1006) Borden US 5,495,606 Feb. 27, 1996 (Ex. 1007) Logue US 5,935,207 Aug. 10, 1999 (Ex. 1008) E. Grounds of Unpatentability We instituted the instant trial based on the following grounds of unpatentability: Claim Basis References 1–5, 7–11 § 103(a) van Hoff and Anthony 6, 12 § 103(a) van Hoff, Anthony, Kleinberg, and Borden 9 § 103(a) van Hoff, Anthony, and Logue IPR2013-00172 Patent 6,092,074 5 II. ANALYSIS A. Claim Construction Consistent with the statutory language and legislative history of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), we interpret claims using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). This is true even if a district court has construed the patent claims. See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, Final Rules, 77 Fed. Reg. 48,680, 48,697(Aug. 14, 2012) (citing In re NTP, Inc., 654 F.3d 1269, 1274 (Fed. Cir. 2011)); see also SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, slip op. 7–19 (PTAB June 11, 2013) (Paper 70). Under the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). IPR2013-00172 Patent 6,092,074 6 In its Patent Owner Response, GE argues that applying the broadest reasonable construction standard in the instant proceeding is improper, because GE “has neither elected to make any amendments nor reopen prosecution itself.” PO Resp. 7–8. That argument is unpersuasive. GE had the opportunity to file a motion to amend its claims, but chose not to seek to amend its claims. The mere fact that GE did not choose to seek to amend its claims is not sufficient reason to justify changing the claim construction standard. Petitioner submitted in its Petition its patentability analysis and support evidence based on the broadest reasonable construction standard. We also determined whether to institute an inter partes review based on the broadest reasonable construction standard. Dec. 5–23. For the foregoing reasons, we are not persuaded by GE’s argument that we should deviate from the broadest reasonable construction standard under 37 C.F.R. § 42.100(b). System claims that include method steps As noted in the decision on institution (Dec. 6–7), claim 9 is a system claim that includes a method step: 9. A computer system for providing hypertext links for a plurality of character strings including a first character string, said computer system comprising: defining means associated with said central computer for defining a plurality of linkable character strings; an annotation database associated with said central computer for storing said plurality of linkable character strings; assigning means associated with said central computer IPR2013-00172 Patent 6,092,074 7 for assigning at least one corresponding destination address to each of said linkable character strings; a destination database associated with said central computer for storing the assigned destination addresses; transmitting means associated with said central computer for transmitting specific ones of said plurality of linkable character strings and specific ones of said destination addresses to said plurality of primary computers via said communication network in an intermittent maintenance mode; receiving means associated with said central computer for receiving hit count data from said primary computers via said communication network; wherein each of said linkable character strings in said annotation database has an associated major class code, comprising the further steps of: qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code. Ex. 1001, 27:1–32 (emphasis added). Claims 10 and 11 directly depend from claim 9. Rather than referring back to the computer system of claim 9, each of those dependent claims refers back to “the method of claim 9” and requires an additional method step. Claims 10 and 11 are reproduced below: 10. The method of claim 9, comprising the further steps of: receiving an administrator input which designates said preferred major class code. 11. The method of claim 9, comprising the further step of: receiving a signal indicative of said preferred major class code from a central computer via a communication network. IPR2013-00172 Patent 6,092,074 8 Id. at 27:33–28:4 (emphases added). In its Patent Owner Response, GE maintains that claim 9 is directed to a system and that, in light of the Specification and file history (Ex. 1002), one of ordinary skill in the art could have interpreted the method step as a means-plus-function limitation—“further comprising: qualifying means for qualifying the matching linkable character string.” PO Resp. 4–5 (citing Ex. 2013 ¶ 45). According to GE’s expert witness, claim 9 should be read consistently with claim 3, which actually recites a means-plus-function limitation. Ex. 2013 ¶ 45. GE also argues that the method steps recited in claims 10 and 11 should be interpreted as means-plus-function limitations—“interface means for receiving an administrator input,” and “receiving means for receiving a signal,” respectively. PO Resp. 5–7 (citing Ex. 2013 ¶¶ 48–49). We are not persuaded by GE’s arguments. GE had an opportunity in this proceeding, pursuant to 37 C.F.R. § 42.121, to file a motion to amend the claims to clarify the ambiguity, but chose not to seek to amend its claims. Each of claims 9–11 deliberately recites “comprising the further steps of.” We decline to rewrite the aforementioned method steps, on Patent Owner’s behalf, as means-plus-function limitations to invoke 35 U.S.C. 112, ¶ 6. 2 See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (The U.S. Court of Appeals for the Federal Circuit “repeatedly 2 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296-07 (2011). Because the ’074 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of 35 U.S.C. § 112, in this decision. IPR2013-00172 Patent 6,092,074 9 and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity.”). We are cognizant that courts may correct a patent claim in certain situations where the correction is minor, and one of ordinary skill in the art would have recognized the correction. See, e.g., Ultimax Cement Manuf. Corp. v. CTS Cement Manuf. Corp., 587 F.3d 1339, 1353 (Fed, Cir. 2009). Here, we observe, however, that rewriting a method step as a means-plus- function limitation is a material change, and not a minor one. In fact, it is well settled that the use of the word “means” creates a rebuttable presumption that the patentees intended to invoke § 112, ¶ 6, whereas failure to use the word “means” creates a rebuttable presumption that the patentees did not intend to invoke § 112, ¶ 6. Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). More importantly, “the presumption flowing from the absence of the term ‘means’ is a strong one that is not readily overcome.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). For the foregoing reasons, we decline to interpret the aforementioned method steps recited in claims 9–11, as means-plus-function limitations. Although we recognize that a claim reciting an apparatus and method steps would not be in compliance with § 112, ¶ 2, for infringement purposes (Dec. 7), we will analysis claims 9–11 in this decision to determine the patentability of those claims based on the obviousness grounds of unpatentability asserted by Vibrant Media, rather than terminating the IPR2013-00172 Patent 6,092,074 10 proceeding as to those claims. The main issue in this decision is whether Vibrant Media has demonstrated by a preponderance of evidence that the challenged claims would have been obvious over the cited prior art references (e.g., van Hoff and Anthony). Dec. 29. Put simply, we decide on the patentability of those claims based on the grounds of unpatentability asserted by Vibrant Media, rather than infringement of those claims. See 35 U.S.C. § 318(a). It is not necessary for us to determine whether each of claims 9–11 complies with § 112, ¶ 2, for infringement purposes in this decision. More importantly, we maintain our focus on the issue of patentability based on the evidence before us. In addition, an indefiniteness determination in this proceeding would not have prevented us from deciding whether the claims would have been obvious over the cited prior art. We recognize that, in certain situations where the claim scope could not be ascertained without requiring considerable speculation, the prior art ground of unpatentability would be reversed, pro forma. For example, the court in In re Steele stated: Our analysis of the claims indicates that considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims were made by the examiner and the board. We do not think a rejection under 35 U.S.C. [§] 103 should be based on such speculations and assumptions. 305 F.2d 859, 862 (CCPA 1962) (emphasis added). In other situations, the court, however, has decided the prior art ground of unpatentability on the merits, rather than pro forma reversing the prior art rejection, even after determining that the claim does not comply IPR2013-00172 Patent 6,092,074 11 with § 112, ¶ 2. See, e.g., In re Collier, 397 F.2d 1003, 1005–1006 (CCPA 1968) (The court affirmed the obviousness rejection based on the prior art of record, even when the claim was determined to be indefinite, failing to comply with § 112, ¶ 2.). In this proceeding, we can ascertain the scope of each claim limitation with reasonable certainty, in view of the Specification and mindful of the inventor’s actions during the prosecution of the ’074 patent. 3 See Ex. 1002, 160 (amendment of method claim 50, renumbered as independent claim 9, to describe a computer system). We interpret claims 9–11, for the purposes of this decision, as requiring both the recited apparatus claim elements and the recited method steps. Means-Plus-Function Limitations In the Decision on Institution, we set forth the claim constructions for eleven means-plus-function elements under 35 U.S.C. § 112, ¶ 6. Dec. 11– 23. Neither GE nor Vibrant Media disputes our claim constructions for those elements. PO Resp. 9; Pet. Reply 2–3. We will apply our claim 3 We acknowledge the dissent to this decision, as to claims 9–11, but respectfully disagree. We are unpersuaded that the interpretation of those claims requires considerable speculation, or our obviousness determination here is based on less than all of the claimed elements. We discern no reason why the patentability of those challenged claims cannot be determined under 35 U.S.C. § 318(a), based on the prior art of record. Further, because the majority addresses all claim elements, we believe that the dissent’s concerns about a speculative construction are unwarranted. IPR2013-00172 Patent 6,092,074 12 constructions set forth in the Decision on Institution for those means-plus- function elements also in this Final Written Decision. Other Claim Terms The parties proposed claim constructions for several other terms. Pet. 5–8; PO Resp. 9–10. For the purposes of this Final Written Decision, we find it necessary to interpret expressly only the following claim terms: “destination addresses,” “class codes,” “major class code,” and “preferred major class code.” 1. “Destination addresses” (claims 1, 3, 6–7, 9, 12) The term “destination addresses” is recited, for example, in claim 1— “a destination database associated with said primary computer which comprises a plurality of destination addresses” (emphasis added). As Vibrant Media points out, the Specification of the ’074 patent defines the term “destination address” as “a variable that designates the location of a network resource such as a Web page; may take the form of a URL.” Pet. 15 (citing Ex. 1001, 11:15–17). GE agrees with Vibrant Media’s claim construction. PO Resp. 9. As the definition is set forth with sufficient clarity in the Specification, we also agree with Vibrant Media’s construction, and adopt it as the broadest reasonable interpretation for the claim term “destination addresses.” See Paulsen, 30 F.3d at 1480. IPR2013-00172 Patent 6,092,074 13 2. “Class codes” (claims 1 and 7), “major class code” (claims 3–5 and 9–11), and “preferred major class code” (claims 3–5 and 9–11) The claim term “class codes” is recited, for example, in claim 1— “wherein said annotation database further comprises a plurality of class codes which are associated with said plurality of linkable character strings” (emphasis added). The claim term “major class code” is recited, for example, in claim 3—“wherein at least some of said linkable character strings in said annotation database have an associated major class code” (emphasis added). The claim term “preferred major class code” is recited, for example, in claim 3—“qualifying means associated with said annotation database for qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code” (emphasis added). The parties proposed the following claim constructions: Claim Terms Vibrant Media’s proposed claim constructions GE’s proposed claim constructions Class code Identifiers or descriptors (including descriptive metadata) or any form, each identifying or referring to (i) a particular area or type of subject or topic, and/or (ii) a category or function of an associated destination address. Pet. 5–6 (citing, e.g., Ex. 1001, 13:43–48). Codes that can designate or identify a particular context or subject area or control the number and type of a destination address. PO Resp. 10 (citing, e.g., Ex. 1001, 5:5–22, 8:29–43, 13:43–48, 18:2–30). IPR2013-00172 Patent 6,092,074 14 Major class code An identifier that references or identifies a topic area that (i) may be broader, or of less specificity, relative to some other class codes, and/or (ii) encompasses certain other class codes or types of class codes. Pet. 7 (citing Ex. 1001, e.g., 18:9–16). Class codes that can designate or identify a particular context or subject area. PO Resp. 10 (citing Ex. 1001, 6:28–35, 7:62–67, 18:2–30, 19:41– 20:13). Preferred major class code An identifier that represents a “major class code” that is desired or otherwise is given priority over others, for example, one having a topic area known to be relevant or related to a particular article. Pet. 7 (citing Ex. 1001, 18:9–16). Major class code that is desired so as to bypass matching linkable character strings with other major class codes. PO Resp. 10 (citing Ex. 1001, 6:28–41, 9:34–43, 20:3–13). Vibrant Media disagrees with GE’s proposed claim constructions for the claim terms “class code” and “major class code.” Pet. Reply 2–3. Nevertheless, we observe that GE’s constructions for those claim terms do not present a difference from Vibrant Media’s constructions that would affect the outcome of the prior art analysis. Vibrant Media agrees. See Pet. Reply 13; Tr. 8:23–10:14. Moreover, because GE’s claim constructions for those terms appear consistent with the Specification and do not import limitations from the Specification into the claims, we adopt those constructions as the broadest reasonable interpretations. See Ex. 1001, 5:5– 22, 6:28–35, 7:62–67, 8:29–43, 13:43–48, 18:2–30, 19:41–20:13, 20:33–41. IPR2013-00172 Patent 6,092,074 15 However, we decline to adopt GE’s proposed construction for the claim term “preferred major class code”—“major class code that is desired so as to bypass matching linkable character strings with other major class codes” (PO Resp. 10 (emphasis added))—as it would import improperly a limitation from the Specification into the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). GE has not directed our attention to a special definition in the Specification. Nor does GE allege that the inventors of the ’074 patent acted as their own lexicographer and provided a special definition in the Specification for the claim term that is different from its recognized meaning to one of ordinary skill in the art. It is well settled that, if a feature in the specification is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). Accordingly, we construe the claim term “preferred major class code” as a major class code that is desired or given priority, consistent with the ordinary and customary meaning of the term as would be understood by one of ordinary skill in the art in the context of the Specification of the ’074 patent. See, e.g., Ex. 1001, 6:28–41, 9:34–43, 18:9–16, 20:3–13. IPR2013-00172 Patent 6,092,074 16 B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also Translogic, 504 F.3d at 1259. A prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We analyze the instituted grounds of unpatentability in accordance with the above-stated principles. IPR2013-00172 Patent 6,092,074 17 C. Claims 1–5 and 7–11 – Obvious over van Hoff and Anthony Vibrant Media asserts that claims 1–5 and 7–11 are unpatentable under 35 U.S.C. § 103(a) over van Hoff and Anthony. Pet. 18–40, 46–51. As support, Vibrant Media provides detailed explanations as to how each claim limitation is met by the cited prior art reference, and proffers the Declaration of Dr. Eric Hellman. Pet. 46–54 (citing Ex. 1003). However, GE responds that the combination of van Hoff and Anthony fails to disclose certain claim features. PO Resp. 16–19, 23–28. GE also advances several arguments under the premise that there is insufficient reason to combine the teachings of van Hoff and Anthony. Id. at 14–15. GE further proffers objective evidence of nonobviousness (Exs. 2001–08, 2015–21), and directs our attention to the Declaration of Dr. Ketan Mayer- Patel (Ex. 2013). Id. at 19–23. Upon consideration of the parties’ contentions and supporting evidence, we determine that Vibrant Media has demonstrated by a preponderance of evidence that claims 1–5 and 7–11 are unpatentable over the combination of van Hoff and Anthony. In our analysis below, we address GE’s arguments presented in the Patent Owner Response, focusing on the deficiencies alleged by GE with regard to the challenged claims. van Hoff In general, van Hoff describes both a system and a method for annotating automatically a document so as to interconnect that document via hypertext links to a set of documents known to contain supplemental IPR2013-00172 Patent 6,092,074 18 information. Ex. 1004, Abs., 1:8–11, 2:7–11. Figure 1 of van Hoff, reproduced below, depicts van Hoff’s distributed computer system: As shown in Figure 1 of van Hoff, distributed computer system 100 includes many client computers 102 connected to information server computer 104 via Internet 106. Each client computer 102 includes communication interface 103, RAM 105, CPU 106, user interface 107, and memory 108. Id. at 4:1–21. In a preferred embodiment of van Hoff, annotation proxy server 119 is located on the same platform as client computer 102. Id. at 5:3–5. IPR2013-00172 Patent 6,092,074 19 Figure 2 of van Hoff is reproduced below with our annotation: As shown in Figure 2 of van Hoff, annotation proxy server 118, 119 having a plurality of annotation directories 191, 192. Each annotation directory includes a plurality of paired entries (e.g., 192a through 192d), and each entry includes: (1) cross-reference document source field 194, which identifies the unique location of a cross-reference document; (2) match pattern field 195, which defines a character pattern; and (3) other optional fields, such as relevance indicator field 196 to indicate the relevance or importance of associated match pattern 195 or cross-reference source 194. Id. at 5:27–40, 5:50–55. IPR2013-00172 Patent 6,092,074 20 If a character pattern is found in a requested document, an annotation linking the portion of the document associated with the matching pattern to the paired cross-reference source is inserted into the requested document. Id. at 5:41–54, 6:65–7:11. For instance, if a match pattern is the phrase “JAVA!” and the paired cross-reference source is SUN.COM.JAVAINFO, then a hyperlink annotation “” is added to the requested document in association with the “JAVA!” phrase pattern. Id. In a preferred embodiment, van Hoff describes that the hyperlink annotation also may be provided in a hierarchical format. Id. at 8:49–50. For example, when a term in the document satisfies the match pattern in the annotation directory, the link may reflect a hierarchical cross-reference list in order of increasing specificity, such as “medical,” “oncology,” “melanoma,” “treatment,” and radiation.” Id. Furthermore, in the situation in which a relevance indicator field is used, the hyperlink annotation includes a relevance index (RI) (e.g., “”). Id. at 9:5–12 (emphasis added). The system allows the user to set a threshold during viewing to indicate which relevance indicator levels are to be displayed. Id. at 9:61–63. Anthony Anthony discloses a computer system and method for generating hyperlinks automatically in a text document, to facilitate cross-referencing documents, and to allow fast and easy access to relevant information. Ex. 1005, Abs, 1:6–8, 1:35–40, 2:34–43. In particular, Anthony describes a IPR2013-00172 Patent 6,092,074 21 system for creating associations between links and data, referred to as “Auto_Hyperlinking TM .” Id. at 5:4–11. The system finds a word or phrase in a text document that matches a topic name, and then automatically hyperlinks the word or phrase to the topic. Id. The link is made with reference to a database that stores the topic text, reference name, the location of the information for each topic, and the navigational links for the hypertext jumps. Id. at 5:14–18. A plurality of class codes Claim 1 recites “the matching linkable character string has a plurality of class codes associated therewith,” and “said destination database comprises a plurality of destination addresses corresponding to said plurality of class codes of the matching linkable character string.” Claim 7 recites similar features. In its Petition, Vibrant Media asserts that the combination of van Hoff and Anthony would have rendered the aforementioned “class codes” claim features obvious to one of ordinary skill in the art at the time of the invention. Pet. 28–31, 34–37; Ex. 1003 ¶¶ 52–61. In particular, Vibrant Media asserts that the use of topic or reference names (i.e., class codes) to identify topic area was known in the art at the time of invention, as evidenced by Anthony. Id. at 29 (citing Ex. 1005, 4:10–20, 4:60–65, 5:8– 18). Vibrant Media notes that Anthony discloses storing topic or reference names (class codes) with identifiers for locations of corresponding data in a database, and providing the navigational links for the hypertext jumps. IPR2013-00172 Patent 6,092,074 22 Ex. 1005, 2:64–3:1, 5:8–18. Anthony also describes using a topic or reference name (class codes) to search for matching character strings in the “Auto_Hyperlinking TM ” process. Id. at 4:16–28, 4:63–65. As Vibrant Media explains, van Hoff discloses that a document term matching a match pattern may be hyperlinked with a hierarchical cross- reference list of document sources arranged in order of specificity over a number of topics. Pet. 30 (citing Ex. 1004, 8:49–54). According to Vibrant Media, “van Hoff teaches a plurality of topics that is both associated with a plurality of document sources as well as with a corresponding match pattern.” Id. Dr. Hellman testifies that van Hoff, in combination with Anthony, discloses “that these topics are associated with topic names (class codes), which are in turn associated with the matching document term and corresponding cross-reference document sources.” Ex. 1003 ¶ 61. In its Patent Owner Response, GE counters that the combination of van Hoff and Anthony fails to teach or suggest the aforementioned class code claim features. PO Resp. 16–17. In particular, GE argues that one of ordinary skill in the art would not have “appreciated that a character string may be associated with a number of topics of different specificity, corresponding to different cross-reference source documents.” Id. at 17–18 (emphasis added). GE further alleges that “each linkable character string only appears once in the database and with at most one relevance indicator.” Id. GE also contends that the “topics” of Anthony are not class codes, but linkable character strings. Id. at 18–19. IPR2013-00172 Patent 6,092,074 23 We are not persuaded by GE’s arguments. Contrary to GE’s assertion that “[t]here is no indication that multiple links would be stored for the same term” (PO Resp. 18), van Hoff clearly discloses that an annotation for a matched term includes a plurality of hypertext links. Ex. 1004, 8:49–54. Specifically, van Hoff discloses that: The annotation including hypertext links may be provided in a hierarchical format. For example, when a term in the document satisfies the match pattern in the annotation directory, the link may reflect a hierarchical cross-reference list in order of increasing specificity such as: “medical,” “oncology,” “melanoma,” “treatment,” and “radiation.” Id. (emphases added). As Dr. Hellman testifies, the cited portion of van Hoff describes that “a single match pattern in the annotation directory can be associated with a number of topics of different specificity arranged in a hierarchy.” Ex. 1014 ¶ 17 (emphasis added). We credit Dr. Hellman’s testimony, as it is consistent with the express disclosure of van Hoff. See Ex. 1004, 8:49–54. We also are not persuaded by GE’s argument that “each linkable character string is only associated with a single portion of the hierarchy.” See PO Resp. 17–18 (emphasis added). GE’s argument narrowly focuses on the term “the link” used in van Hoff’s example (id. at 18), and ignores the first sentence of the cited paragraph—“The annotation including hypertext links may be provided in a hierarchical format.” Ex. 1004, 8:49–50 (emphasis added). Importantly, van Hoff’s example also refers to a hierarchical cross-reference list of topics—in order of increasing specificity IPR2013-00172 Patent 6,092,074 24 such as: “medical,” “oncology,” “melanoma,” “treatment,” and “radiation.” Ex. 1004, 8:49–54. Further, GE’s argument that Anthony’s topic or reference names are not “class codes” is unavailing. Even under GE’s proposed claim construction which, as discussed above, we adopt as the broadest reasonable interpretation, the claim term “class code” reads on Anthony’s topic or reference names. GE specifically states that the claim term “class code” includes a code that identifies a particular subject area. PO Resp. 10. That construction is consistent with the Specification of the ’074 patent which provides that class codes can be assigned to various subject areas such as business, sports, travel, books, and compact discs (e.g., # 100 = business). Ex. 1001, 13:43–48, 18:5–10. Although the Specification of the ’074 patent provides numerical class codes as examples, GE’s expert witness, Dr. Mayer-Patel, testifies that a class code may be a linkable character string (e.g., “sports”). Ex. 1015, 94:12–23, 96:12–20. In fact, Dr. Mayer-Patel testifies that “[t]here’s nothing in [the ’074 patent] that prevents the major class codes from being strings instead of numerical numbers.” Id. at 96:6–8. Anthony specifically states that a reference name “is a unique, meaningful name which indicates the subject matter of the data portion to which it refers,” and “may be a word, a phrase, or other string indicative of the topic of the data portion.” Ex. 1005, 4:10–20 (emphases added). Therefore, Anthony’s topic or reference names fall within the scope of “class codes.” IPR2013-00172 Patent 6,092,074 25 For the foregoing reasons, we determine that Vibrant Media has shown sufficiently that a person of ordinary skill in the art would have found it obvious to modify van Hoff’s system in light of Anthony’s teachings of topic or reference names to arrive at the “class code” claim features. Reasons to combine van Hoff and Anthony In its Petition, Vibrant Media submits several rationales for modifying van Hoff’s system in light of Anthony’s disclosure to arrive at the claimed “class code” features. Pet. 28–31; Ex. 1003 ¶¶ 56–58. Notably, Vibrant Media indicates that combining the use of class codes as a known technique taught by Anthony, with known elements from van Hoff, according to known database methods, yields the predictable result of achieving dynamic hyperlinking based on related topics. Pet. 28. By adding a plurality of class codes (e.g., topic or reference names) to van Hoff’s annotation directory (e.g., utilizing van Hoff’s optional fields in the annotation directory, similarly to relevance indicator field 196), in light of Anthony’s teachings, van Hoff’s match patterns would have a plurality of class codes associated therewith, and van Hoff’s annotation directory would have a plurality of cross-reference document sources corresponding to the plurality of class codes. Furthermore, in doing so, van Hoff’s annotation proxy servers 118, 119 could obtain the plurality of cross-reference sources corresponding to the associated plurality of class codes, and a user could qualify the match pattern according to the relevance index associated with the class code or the hierarchical cross-reference list. IPR2013-00172 Patent 6,092,074 26 Vibrant Media also points out that the prior art would have directed one of ordinary skill in the art to make the combination of van Hoff and Anthony, because van Hoff describes the goal of linking a character string of a document with one or more documents related by subject or topic. Pet. 28–31; Ex. 1003 ¶ 56 (citing Ex. 1004, 1:6–2:11). Indeed, van Hoff states that “[i]t is a goal of the present invention to provide a system and method for automatically annotating a received document so as to interconnect that document via HYPERTEXT LINKS to a set of documents known to contain supplemental information related to the topic of the received document.” Ex. 1004, 2:7–11 (emphasis added). However, in its Patent Owner Response, GE counters that one of ordinary skill in the art would not have combined van Hoff and Anthony. PO Resp. 14–15 (citing Ex. 2013 ¶ 20). In particular, GE alleges that the topologies—the patterns of connections between the computers that are participating in the system—used in van Hoff and Anthony are quite different, and that Anthony’s system is “self-contained while van Hoff’s system is not.” Id. at 14. GE also contends that one would need to change the principle of operation of Anthony to combine it with van Hoff, because Anthony’s text to be annotated is stored directly in a database, whereas van Hoff’s text to be annotated is not stored in the local database, but rather a link to the text is stored. Id. at 15. We are not persuaded by GE’s arguments, as they narrowly focus on small differences between van Hoff and Anthony and fail to consider the collective teachings of van Hoff and Anthony from the perspective of one of IPR2013-00172 Patent 6,092,074 27 ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”); In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983); In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968). More importantly, a prior art reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). As noted by Vibrant Media, there is significant consistency and overlap between the systems in van Hoff and Anthony. Pet. 18–19, 24; Pet. Reply 4. For instance, van Hoff’s proxy server and annotation directory may be located on the same platform as the client or on a computer, such as Web server 104, different from the client on which the document request was initiated. Ex. 1004, 5:3–10, figs. 1–2. Anthony describes a computer system in a network, in which “the store of data in the form of a database may be centrally located, with each network user having access to the information therein.” Ex. 1005, 3:36–48. Further, Anthony discloses that: [T]he invention advantageously provides links, known as Auto_Hyperlinks TM , meaning that the word or phrase in the text found to be a match with a topic name is highlighted on the display, and linked to the topic to which the topic name refers. . . . The link is made with reference to the database which stores the topic text, reference name and other identifiers. IPR2013-00172 Patent 6,092,074 28 Such identifiers note the location of the data for each topic, and provide the navigational links for the hypertext jumps. Pet. 24–27, Pet. Reply 5 (citing Ex. 1005, 5:5–18 (emphases added)). Therefore, GE’s arguments do not undermine Vibrant Media’s rationales to combine the teachings of van Hoff and Anthony, because the cited references pertain to storing hyperlinks in a database and achieving dynamic hyperlinking automatically. GE also relies on the principle set forth in In re Ratti, 270 F.2d 810, 813 (CCPA 1959), to substantiate its position that “one would be changing the principle of operation of Anthony in order to combine it with van Hoff.” PO Resp. 15, 19 (“If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious” (emphasis added)). That argument, however, is inapposite in the context of the particular facts in the instant proceeding. Notably, Vibrant Media proposes to modify van Hoff (the primary reference, i.e., “the prior art invention being modified”), in light of Anthony’s teaching of topic or reference names (i.e., class codes—a code that identifies a particular subject area). GE does not explain sufficiently why using class codes in the van Hoff’s annotation directories would change impermissibly van Hoff’s principle of operation—adding hyperlinks into documents automatically. In fact, the proposed modification would improve van Hoff’s system to provide hyperlinks (destination addresses) dynamically based on topics that are relevant to the content in the documents. See In re Umberger, IPR2013-00172 Patent 6,092,074 29 407 F.2d 425, 430–31 (CCPA 1969) (finding Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). GE also argues that “there is no evidence to support a finding that one of ordinary skill in the art would have combined van Hoff and Anthony,” because van Hoff already provided pattern matching, and Anthony’s topics also corresponded to linkable character strings. PO Resp. 15. However, that argument incorrectly assumes that Vibrant Media’s proposed combination is merely to solve the problem of inserting destination addresses in documents automatically. As noted by Vibrant Media, the combination of van Hoff and Anthony would have provided dynamically destination addresses that are also relevant to the content in the documents. Pet. Reply 6; Pet. 27–30. For the foregoing reasons, we agree with Vibrant Media that one of ordinary skill in the art at the time of the invention would have recognized that a combination of Anthony’s topic or reference names (class codes) with van Hoff’s association of a character string to multiple topics and source documents is no more than a combination of familiar elements that would yield “predictable results of achieving dynamic hyperlinking and making those hyperlinks relevant” (Pet. Reply 7). Put simply, such a combination merely is a predictable use of prior art elements according to their established functions—an obvious improvement. KSR, 550 U.S. at 417. Major class code Claim 3 recites: wherein at least some of said linkable character strings in said annotation database have an associated major class code, IPR2013-00172 Patent 6,092,074 30 further comprising: qualifying means associated with said annotation database for qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code. Ex. 1001, 25:46–53 (emphases added). Claims 4–5 and 9–11 recite similar features. Id. at 25:54:62, 27:1–28:5. In its Petition, Vibrant Media asserts that van Hoff, in combination with Anthony, describes “an associated major class code” because van Hoff discloses “[t]he annotation including hypertext links” and “the link may reflect a hierarchical cross-reference list in order of increasing specificity such as: ‘medical’ . . . .” Pet. 39 (citing Ex. 1004, 8:49–54 (emphasis added)). Vibrant Media further maintains that van Hoff, in combination with Anthony, discloses “the use of relevance indicators for indicating the closeness or relevance of match patterns to a topic area, and a merger procedure for qualifying a match pattern as having a relevance indicator that meets a relevance threshold of a broad topic area (preferred major class code).” Id. at 39–40 (citing Ex. 1004, 8:39–40 (“Hypertext links may also contain a hierarchy of relevance indicators based on predetermined relevance rules.”); id. at 10:65–11:16 (“[T]he document merger procedure 122 looks for partial matches . . . that meet[] a threshold match requirement . . . only annotations with an assigned relevance value equal to or higher than the relevance threshold . . . are added to user requested documents.”)). IPR2013-00172 Patent 6,092,074 31 In response, GE argues that the combination of references does not teach a “major class code” and a “preferred major class code” because the relevance indicator of van Hoff is not a major class code. PO Resp. 24–25 (citing Ex. 2013 ¶ 37). In particular, GE alleges that “Dr. Hellman is using the terminology of ‘major’ and ‘broad’ to improperly connote a hierarchy where ‘major class code’ does not connote a hierarchy as ‘major class codes’ can be used without minor class codes and are therefore not defined by any relationship to minor class codes.” Id. at 25 (citing Ex. 1001, 19:41–42). Although we agree with GE that a major class code does not connote a hierarchy and it can be used without minor class codes, we observe that neither the claim term “major class code” nor other claim language precludes an annotation including hypertext links provided in a hierarchical format. As discussed above, we have adopted GE’s proposed construction as the broadest reasonable interpretation for the claim term “major class codes”—“class codes that can designate or identify a particular context or subject area” (PO Resp. 10 (emphasis added)). The topic “medical” as disclosed in van Hoff is a subject area, and, therefore, meets the definition of the claim term “major class code.” In addition, we agree with Vibrant Media that “van Hoff’s relevance threshold can be a user-defined relevance value, set as a high relevance threshold for instance which would be the ‘preferred major class code,’” and “van Hoff’s merger procedure applies this relevance threshold to qualify a corresponding topic’s relevance value for a matching character string.” Pet. Reply 13; Pet. 39–40 (citing Ex. 1004, 8:39–40, 10:65–11:16). Indeed, van IPR2013-00172 Patent 6,092,074 32 Hoff describes that, when the user specifies a relevance threshold to the merger procedure, only annotations with an assigned relevance value equal to or higher than the relevance threshold are added to user requested documents. Ex. 1004, 11:10–16. For the foregoing reasons, we determine that Vibrant Media demonstrates sufficiently that van Hoff, in combination with Anthony, describes the “major class code” features, as recited in claims 3–5 and 9–11. Objective evidence of nonobviousness Factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the ’074 patent’s invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one of ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–1472 (Fed. Cir. 1984). Secondary considerations may include any of the following: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. Here, GE takes the position that the commercial success of Vibrant Media’s products shows that the subject matter of GE’s claims would not have been obvious over the proposed combination of van Hoff and Anthony. PO Resp. 23. As support, GE proffers seven of Vibrant Media’s press releases (Exs. 2001–2008), the Declaration of Dr. Mayer-Patel (Ex. 2013 IPR2013-00172 Patent 6,092,074 33 ¶¶ 28–34), and other evidence (Exs. 2015–2019). PO Resp. 19–23. Vibrant Media responds that GE has not shown commercial success of any system. Pet. Reply 11. Vibrant Media also alleges that GE has not shown a nexus between the purported commercial success and Vibrant Media’s system allegedly practicing the claims of the ’074 patent. Id. at 12. We agree with Vibrant Media. GE’s supporting evidence does not add sufficiently to the record to warrant a conclusion of nonobviousness, because the evidence before us does not demonstrate adequately that Vibrant Media’s system was commercially successful. To substantiate its position that Vibrant Media’s system was commercially successful, GE directs our attention to several of Vibrant Media’s press releases. PO Resp. 20–22 (Exs. 2001–2008). According to GE, Vibrant Media’s press releases show that: (1) Vibrant Media has “over 6,600 premium publishers and more than 300 million unique users per month by 2013” (id. at 20 (citing Ex. 2006)); (2) “69% [of the 500 women surveyed] report[ed] being more likely to pay attention to ads relevant to what they are reading” (id. at 21 (citing Ex. 2002)); and (3) “online video ad spending is projected to reach $ 7.1 billion by 2015 up from $ 2.2 billion spent in 2011” (id. (citing Ex. 2003)). That evidence does not establish sufficiently, however, that the alleged sales numbers constitute commercial success when considered in relation to overall market share. In particular, it is unclear whether the numbers of publishers and users are “sales numbers” or revenue amounts. GE does not provide the fee amounts that Vibrant Media charges the IPR2013-00172 Patent 6,092,074 34 publishers and users. More importantly, there is no indication that the alleged numbers of publishers and users represent a substantial quantity in the overall market share. Accordingly, GE’s objective evidence is accorded little weight. See Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026–27 (Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal showing of commercial success because “without further economic evidence . . . it would be improper to infer that the reported sales represent a substantial share of any definable market”); see also In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”). After weighing the evidence of obviousness and nonobviousness of record, on balance, we conclude that the strong evidence of obviousness outweighs the weak evidence of nonobviousness. Conclusion For the foregoing reasons, we determine that Vibrant Media has demonstrated by a preponderance of evidence that claims 1–5 and 7–11 would have been obvious over the combination of van Hoff and Anthony. D. Claims 6 and 12 – Obvious over van Hoff, Anthony, Kleinberg, and Borden Vibrant Media asserts that claims 6 and 12 are unpatentable under 35 U.S.C. § 103(a) over van Hoff, Anthony, Kleinberg, and Borden. Pet. 18, 40–46, 51. In support of the asserted ground of unpatentability, Vibrant Media provides detailed explanations as to how each claim element is met IPR2013-00172 Patent 6,092,074 35 by the combination of van Hoff, Anthony, Kleinberg, and Borden. Id. Vibrant Media also directs our attention to the Declaration of Dr. Hellman. Id. (citing Ex. 1003 ¶¶ 74–85). In its Patent Owner Response, GE relies upon essentially the same arguments presented with respect to claims 1–5 and 7–11, alleging that one of ordinary skill in the art would not have combined van Hoff and Anthony. PO Resp. 28. As discussed above, we have addressed those arguments and determined that they are unavailing. GE further maintains that the combination of prior art references does not describe the “filtering” features, as recited in claims 6 and 12. PO Resp. 28–30. For the reasons stated below, we are not persuaded. Rather, we determine that, in light of the evidence before us, Vibrant Media has demonstrated sufficiently that the combination of van Hoff, Anthony, Kleinberg, and Borden would have suggested the “filtering” features to a person of ordinary skill in the art. Claim 6 recites the following features: said assigning means is adapted to communicate with a search engine for searching an information network using particular ones of said linkable character strings as search terms to obtain particular ones of said corresponding destination addresses; and a destination filter associated with said assigning means for filtering destination addresses obtained from said search engine according to preference criteria to obtain said destination addresses which are assigned to said linkable character strings. Ex. 1001, 26:17–27 (emphases added). Claim 12 recites similar features. IPR2013-00172 Patent 6,092,074 36 In its Petition, Vibrant Media asserts that van Hoff, in combination with Anthony, Kleinberg, and Borden, “teaches a directory generator in communication with a web information server 104 (FIG. 1), that generates a cross-reference directory based on documents that passes through the web information server 104.” Pet. 44 (citing Ex. 1004, 10:20–28, 10: 2–6). Vibrant Media also asserts that Kleinberg discloses that search engines using keywords or character strings as search terms for obtaining web pages and their destination addresses (e.g., from the Internet) were known in the art. Pet. 45 (citing Ex. 1006, 3:19–29, 3:40–51, 4:34–36, 4:43–48). Given the disclosures of van Hoff and Kleinberg, Vibrant Media maintains that “it would have been obvious to a person of ordinary skill in the art to have web information server 104 be a search engine that employs keyword search techniques to track or obtain addresses of such documents, especially when van Hoff already discloses that character/word-based search strategies and search engines are known.” Pet. 45 (citing Ex. 1004, 7:1–7, 7:43–55). Vibrant Media further contends that van Hoff provides reasons to “combine with known elements according to known methods (search engine and character/word-based search strategies) from Kleinberg, to yield the predictable result of obtaining relevant web pages and addresses.” Id. Vibrant Media also submits that “van Hoff teaches that each cross reference document source 194 (destination address) can be assigned a relevance indicator (RI),” and that “the use of a relevance threshold with the assigned relevance indicators, to ‘filter’ candidate destination addresses and their IPR2013-00172 Patent 6,092,074 37 match patterns for actual annotation.” Id. at 45–46 (citing Ex. 1004, 10:65– 11:16; Ex. 1003 ¶¶ 83–84). In response, GE argues that the claims are directed to filtering what is being put into the database, but the relevant indicators in van Hoff operate on the processing of what is read out. PO Resp. 29. According to GE, the claims require that “the destination addresses are obtained from the search engine, filtered, and the filtered ones ‘are assigned to said linkable character strings.’” Id. We are not persuaded by GE’s arguments. As Vibrant Media notes, Dr. Hellman did not cite the relevant indicators in van Hoff for the narrow context of filtering addresses that are read out from a database, as alleged by GE. Pet. Reply 14–15 (citing Ex. 1003 ¶¶ 81–82). Indeed, Dr. Hellman relies upon the teaching of van Hoff’s relevant indicators as an exemplary way to filter destination addresses of web pages obtained from the search engine to be put into the directories (i.e., the database), according to preference criteria that include a relevance threshold. Id. As Dr. Hellman points out, Kleinberg recognizes the common problem that search results often yield a large set of destination addresses. Ex. 1003 ¶ 82; see also, e.g., Ex. 1006, 3:40–54 (“[A] search based on term- matching can easily return several thousand pages . . . . This results in a volume of output much greater than a human user can digest”)). Kleinberg specifically describes techniques to identify relevant web pages from the entire set of web pages obtained from the search engine. Ex. 1006, 3:19–29, 3:40–51, 4:34–36, 4:43–48. In addition, van Hoff discloses that the IPR2013-00172 Patent 6,092,074 38 relevance indicator may identify the information as having high relevance or low relevance, such as a relevance indicator based on a numerical scale (e.g., relevance from 1–10, where relevance 1 is the highest relevance). Ex. 1004, 8:39–44. In light of those prior art teachings, one of ordinary skill in the art at the time of the invention would have appreciated that the result obtained from the search engine would be filtered—such as reducing several thousand pages to ten relevant web pages, a number that the user can digest—when the directory is generated. Based on the record before us, including the evidence of non- obviousness presented by GE and the evidence of obviousness presented by Vibrant Media, we conclude that Vibrant Media has demonstrated by a preponderance of the evidence that claims 6 and 12 would have been obvious over the combination of van Hoff, Anthony, Kleinberg, and Borden. E. Claim 9 – Obvious over van Hoff, Anthony, and Logue Vibrant Media asserts that claim 9 is unpatentable under 35 U.S.C. § 103(a) as obvious over van Hoff, Anthony, and Logue. Pet. 18, 40–44, 48–50. In support of the asserted ground of unpatentability, Vibrant Media provides detailed explanations as to how each claim element is met by the combination of van Hoff, Anthony, and Logue. Id. Vibrant Media also directs our attention to the Declaration of Dr. Hellman. Id. (citing Ex. 1003 ¶¶ 74–80). In response, GE essentially presents the same arguments in connection with Vibrant Media’s asserted ground based on the combination of van Hoff and Anthony, against claim 3–5 and 9–11, regarding the “major class code” IPR2013-00172 Patent 6,092,074 39 features and reasons to combine the teachings of van Hoff and Anthony. Compare PO Resp. 30–31 with PO Resp. 24–25. As discussed above, we have addressed those arguments and determined that they are unavailing. Based on the record before us, including the evidence of non- obviousness presented by GE and the evidence of obviousness presented by Vibrant Media, we conclude that Vibrant Media has demonstrated by a preponderance of the evidence that claim 9 would have been obvious over the combination of van Hoff, Anthony, and Logue. F. Vibrant Media’s Motion to Exclude Vibrant Media seeks to exclude GE’s objective evidence of nonobviousness (Exs. 2001–08, 2015–21, 2023–34, 2013 ¶¶ 30–34, 2036 ¶¶ 6–8). Paper 30 (“Pet. Mot.”). GE opposes Vibrant Media’s Motion to Exclude Evidence. Paper 39. In response, Vibrant Media filed a Reply to GE’s Opposition to its Motion to Exclude Evidence. Paper 42. On this record, it is not necessary for us to assess the merits of Vibrant Media’s Motion to Exclude. GE filed press releases, HTML codes, screenshots, and Dr. Mayer-Patel’s testimony (Exs. 2001–08, 2015–21, 2023–34, 2013 ¶¶ 30–34, 2036 ¶¶ 6–8) as evidence of nonobviousness to rebut Vibrant Media’s assertion that claims 1–5 and 7–11 would have been obvious over the various combinations of van Hoff, Anthony, Kleinberg, Borden, and Logue. PO Resp. 19–23. As discussed above, even without excluding GE’s supporting evidence, we have determined that Vibrant Media has demonstrated by a preponderance of the evidence that claims 1– 12 are unpatentable over the combinations of cited prior art. IPR2013-00172 Patent 6,092,074 40 Accordingly, Vibrant Media’s Motion to Exclude Evidence is dismissed as moot. G. GE’s Motion to Exclude GE seeks to exclude numerous portions of Dr. Hellman’s Rebuttal Declaration (Ex. 1014). Paper 33 (“PO Mot.”). Vibrant Media opposes GE’s Motion to Exclude Evidence. Paper 38 (“Opp.”). In response, GE filed a Reply to Vibrant Media’s Opposition to its Motion to Exclude Evidence. Paper 43 (“PO Reply”). As the movant, GE has the burden of proof to establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). For the reasons stated below, GE’s Motion to Exclude Evidence is denied. 1. Rebuttal Declaration In its Motion to Exclude Evidence, GE essentially argues that Dr. Hellman’s Rebuttal Declaration is improper rebuttal evidence that should have been presented with the Petition. PO Mot. 1–4. GE further argues that Dr. Hellman’s Rebuttal Declaration should be excluded under Federal Rules of Evidence 403 and 602 4 because GE’s expert did not have an opportunity to address the new testimony. PO Mot. 4. Vibrant Media counters that Dr. Hellman’s Rebuttal Declaration should not be excluded, arguing that his testimony merely elaborates on his earlier opinions and responds to GE’s arguments. Opp. 1–9. 4 As stated in 37 C.F.R. § 42.62, the Federal Rules of Evidence generally apply to an inter partes review. IPR2013-00172 Patent 6,092,074 41 Having considered the parties’ contentions and evidence, we are not persuaded that Dr. Hellman’s Rebuttal Declaration should be excluded. At the outset, GE’s motion contains improper arguments. PO Mot. 1–4. Notably, GE argues that “[p]ortions of paragraphs 4, 10, 13, 14, 15, 18, 20, 26, 28 and 30 [of Dr. Hellman’s Rebuttal Declaration] are untimely . . . as they belatedly present opinions which were required to be disclosed in Petitioner’s original petition.” Id. A motion to exclude evidence is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. A motion to exclude evidence, for instance, must state why the evidence is inadmissible (e.g., based on relevance or hearsay), identify the corresponding objection in the record, and explain the objection. See 37 C.F.R. § 42.64(c); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. In any event, the mere fact that the Rebuttal Declaration cites to evidence that was not discussed specifically in the Petition is insufficient to establish the impropriety of such evidence, much less inadmissibility under the Federal Rules of Evidence. The very nature of a reply is to respond to the Opposition, which in this case is the Patent Owner Response. See 37 C.F.R. § 42.23(b). The need for relying on evidence not previously discussed in the Petition may not exist until a certain point has been raised in the Patent Owner Response. Much depends on the specific arguments made in the Patent Owner Response. As the movant, GE has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Here, GE’s motion does not contain any meaningful discussion of the IPR2013-00172 Patent 6,092,074 42 arguments that GE has made in its Patent Owner Response, which reasonably might or might not have triggered Vibrant Media’s reliance on the testimony GE now seeks to exclude. Without such discussion, GE has not shown that Dr. Hellman’s Rebuttal Declaration exceeds the proper scope of reply evidence. In addition, GE does not articulate a persuasive reason why we should exclude paragraph 4 of Dr. Hellman’s Rebuttal Declaration (PO Mot. 2). Dr. Hellman’s rebuttal testimony simply addresses GE’s argument presented in the Patent Owner Response (PO Resp. 4) that Dr. Hellman’s initial Declaration does not use the “preponderance of the evidence” standard. Moreover, we do not agree with GE that 35 U.S.C. § 316(e) requires an expert declaration to recite or apply the “preponderance of the evidence” standard expressly in order for the expert testimony to be accorded weight. Rather, it is within our discretion to assign the appropriate weight to be accorded to evidence based on whether the expert testimony discloses the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.64(a). To support its view that we should exclude paragraphs 18 and 20 of Dr. Hellman’s Rebuttal Declaration, GE argues that “what could have been implemented” or “how things ‘can be configure[d]’ that are not actually disclosed in the references” are irrelevant to the proceeding. PO Mot. 4. We do not find that argument persuasive. Dr. Hellman’s testimony (Ex. 1014 ¶¶ 18, 20) was submitted appropriately to respond to GE’s arguments presented in its Patent Owner Response—“[o]ne of ordinary skill IPR2013-00172 Patent 6,092,074 43 in the art, in fact, would not have ‘appreciated that a character string may match.’” (PO Resp. 17–19). Dr. Hellman’s testimony provides examples to show that a one-to-many relationship was well known to a person of skill in the art, and explains what van Hoff actually discloses and what a person of skill in the art at the time of the invention would have understood in light of van Hoff’s teachings. Ex. 1014 ¶¶ 18, 20. Dr. Hellman’s testimony merely confirms the level of ordinary skill in the art—an issue that was raised by GE in its Patent Owner Response (PO Resp. 17–19). For the foregoing reasons, we decline to exclude paragraphs 4, 10, 13, 14, 15, 18, 20, 26, 28, and 30 of Dr. Hellman’s Rebuttal Declaration. 2. Whether Dr. Hellman is Qualified as an Expert GE asserts that paragraph 13 of Dr. Hellman’s Rebuttal Declaration should be excluded under Federal Rules of Evidence 701 and 702 because Dr. Hellman is not qualified as an “advertising expert” to provide testimony regarding advertisement—“it is of course a common market demand that an advertisement be placed in a relevant location.” (Ex. 1014 ¶ 13 (emphasis added)). PO Mot. 4–5. In response, Vibrant Media counters that Dr. Hellman merely “illustrates a well-known problem by noting the common knowledge that advertisers have always sought to place advertisement in relevant location, whether that is the location of a physical billboard or a destination address.” Id. at 9–10. Upon consideration of the parties’ contentions and evidence on the record before us, we disagree with GE that an expert could not resort to common sense or common knowledge of one of ordinary skill in the art. IPR2013-00172 Patent 6,092,074 44 According to Dr. Hellman’s curriculum vitae, he earned a Bachelor of Arts in Electrical Engineering and Computer Science, and a Master of Science in Electrical Engineering, as well as a Doctor of Philosophy in Electrical Engineering. Ex. 1003 ¶ 7. Furthermore, Dr. Hellman has 17 years of experience in the electronic publishing and library technology industries, including research and development that involved hyperlinked technology. Id. ¶ 5. As noted by Vibrant Media, Dr. Hellman simply provides an example to illustrate that “one problem to be solved was providing destination addresses that are relevant to the content of the article” and a person of ordinary skill in the art would have understood that problem. Opp. 9–10. On this record, we determine that Dr. Hellman is qualified to provide an opinion that “it is of course a common market demand that an advertisement be placed in a relevant location.” Ex. 1014 ¶ 13. For the foregoing reasons, we decline to exclude Dr. Hellman’s testimony regarding placing advertisement in a relevant location. 3. Expert’s Choice of Words GE argues that paragraphs 12, 13, 16, 20, and 22 of Dr. Hellman’s Rebuttal Declaration should be excluded because his testimony includes certain wordings—“within the grasp of one of ordinary skill in the art,” “being deterred,” and being “not excluded”—that are not applicable legal standards under 35 U.S.C. § 103(a). PO Mot. 5. Vibrant Media counters that expert testimony should not be excluded for using words that are not used in 35 U.S.C. § 103(a). Opp. 11–12. IPR2013-00172 Patent 6,092,074 45 We agree with Vibrant Media. An expert may express his or her opinion using words that are not used expressly in the statute. Here, Dr. Hellman’s testimony, concerning whether a person of ordinary skill in the art would have combined the cited prior art references, and what such an artisan would have appreciated in light of the prior art teachings, was submitted appropriately in response to GE’s arguments (PO Resp. 14–18). Dr. Hellman’s choice of words for formulating his opinion on the level of ordinary skill in the art is an issue directed to sufficiency of evidence to prove a particular fact, and not an issue of admissibility. A motion to exclude is not the proper vehicle to challenge the sufficiency of the evidence to prove a particular fact. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Rather, it is within our discretion to assign the appropriate weight to be accorded to evidence. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). For the foregoing reasons, we decline to exclude paragraphs 12, 13, 16, 20, and 22 of Dr. Hellman’s Declaration. IPR2013-00172 Patent 6,092,074 46 4. Legal Opinions GE argues that paragraphs 5, 6, and 7 of Dr. Hellman’s Rebuttal Declaration should be excluded under Federal Rules of Evidence 701 and 702, because Dr. Hellman provides legal opinions. PO Mot. 5–6. That argument is not persuasive. We recognize that expert testimony on the ultimate “legal conclusion of obviousness is neither necessary nor controlling.” Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988). Nevertheless, it is within our discretion to assign the appropriate weight to be accorded to evidence. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1942) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). We are capable of taking into account the support for and the reliability and persuasiveness of a witness’s testimony on a particular issue, if any, when weighing all of the testimony of the witness. For the foregoing reasons, we decline to exclude any portion of Dr. Hellman’s Rebuttal Declaration. 5. Conclusion For the reasons stated above, GE has not met its burden to demonstrate that Dr. Hellman’s Rebuttal Declaration (Ex. 1014) is inadmissible. GE’s Motion to Exclude Evidence is denied. IPR2013-00172 Patent 6,092,074 47 III. CONCLUSION Vibrant Media has met its burden of proof by a preponderance of the evidence in showing that claims 1–12 the ’074 patent are unpatentable based on the following grounds of unpatentability: Claim Basis References 1–5, 7–11 § 103(a) van Hoff and Anthony 6, 12 § 103(a) van Hoff, Anthony, Kleinberg, and Borden 9 § 103(a) van Hoff, Anthony, and Logue IV. ORDER In consideration of the foregoing, it is ORDERED that claims 1–12 of the ’074 patent are held unpatentable; FURTHER ORDERED that Vibrant Media’s Motion to Exclude Evidence is dismissed as moot; FURTHER ORDERED that GE’s Motion to Exclude Evidence is denied; and FURTHER ORDERED that, because this is a final written decision, parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. IPR2013-00172 Patent 6,092,074 48 WEATHERLY, Administrative Patent Judge, dissenting-in-part. I concur in the majority’s reasoning and conclusion that claims 1–8 and 12 are unpatentable, but I respectfully dissent from the majority’s decision regarding the unpatentability of claims 9–11. Briefly, because I conclude that claims 9–11 are indefinite under 35 U.S.C. § 112, second paragraph, I would terminate the proceeding with respect to claims 9–11, rather than finding the claims unpatentable under 35 U.S.C. § 103. We previously noted that whether claims 9–11 are directed to an apparatus or a method is unclear and that these claims, therefore, may be indefinite. Dec. 6–7. We suggested that GE “should provide sufficient explanation or evidence as to why those claims are not indefinite.” Id. at 7. We identified In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) and IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) as standing for the proposition that claims that recite both apparatus and method of use steps are indefinite, and thus, unpatentable under 35 U.S.C. § 112, second paragraph. Dec. 7. GE responded by asserting that a skilled artisan would interpret claims 9–11 to be directed solely to a system. PO Resp. 4–7. More specifically, GE contends that a skilled artisan would interpret the claims by reading recited method steps as elements of the claimed system that were written in a means-plus-function format. Id. The table below illustrates the manner in which GE contends that a skilled artisan would interpret the problematic claim language with GE’s suggested alterations highlighted for emphasis. IPR2013-00172 Patent 6,092,074 49 Actual claim language GE’s suggested interpretation 9. A computer system . . . comprising the further steps of: qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code. 9. A computer system . . . further comprising: qualifying means for qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code. 10. The method of claim 9, comprising the further steps of: receiving an administrator input which designates said preferred major class code. 10. The method of claim 9, further comprising: interface means for receiving an administrator input which designates said preferred major class code. 11. The method of claim 9, comprising the further step of: receiving a signal indicative of said preferred major class code from a central computer via a communication network. 11. The method of claim 9, further comprising: receiving means for receiving a signal indicative of said preferred major class code from a central computer via a communication network. PO Resp. 5–7. GE argues that, because claim 9 “is directed to a system,” a skilled artisan “would have understood that the only way that” the claim language in the left hand column of the table “could have been interpreted” would be as shown in the right hand column. Id. (citing Ex. 2013 ¶¶ 45, 48, and 49). GE concludes, without discussing IPXL or Katz, that claims 9–11 should be interpreted “to be definite.” PO Resp. 5–7. IPR2013-00172 Patent 6,092,074 50 In Katz, the claims at issue recited “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.” Katz, 639 F.3d at 1318. The district court found the claims to be invalid as indefinite under § 112, second paragraph. Id. (citing IPXL, 430 F.3d at 1384). The Federal Circuit affirmed noting that “Katz’s claims, however, create confusion as to when direct infringement occurs because they are directed both to systems and to actions performed by ‘individual callers.’ Katz’s claims therefore fall squarely within the rationale of IPXL and are indefinite.” Katz, 639 F.3d at 1318. Here, claims 9–11 also fall within the rationale of IPXL and Katz and, thus, are indefinite. Claim 9 is directed to “[a] computer system including a central computer adapted to communicate with a plurality of primary computers via a communication network.” Ex. 1001, 27:1–3. Claim 9 also recites six components of the system, but concludes with the following method step: “comprising the further steps of: qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code.” Id. at 27:5–31. Although claim 9 does not explicitly recite who or what performs the “qualifying” step, the claim also fails to specify which of the previously recited system elements, if any, performs this step. Claims 10 and 11 begin by reciting “[t]he method of claim 9, comprising the further step of” and then recite steps of “receiving an administrator input which designates said preferred major class code” IPR2013-00172 Patent 6,092,074 51 (claim 10, id. at 27:34–35) and “receiving a signal indicative of said preferred major class code from a central computer via a communication network” (claim 11, id. at 28:2–4). These claims also fail to specify who or what performs the recited “receiving” steps. Therefore, the claims reach any person or instrumentality that performs the recited method steps. Each of Katz and IPXL related to claims directed to a system that further recited method steps performed by a human actor. IPXL, 430 F.3d at 1384 (reciting “[t]he system of claim 2 [including an input means] wherein . . . the user uses the input means”); Katz, 639 F.3d at 1318 (reciting a system wherein “certain of said individual callers digitally enter data”). The method steps recited in claims 9–11, therefore, encompass any person or system that performs those steps. Because claims 9–11 are broad enough to reach users who perform method steps, I conclude that IPXL and Katz require that I determine that claims 9–11 are indefinite. My determination that claims 9–11 are indefinite prevents me from analyzing the patentability of those claims under § 103. When analyzing unpatentability under § 103, “[t]he first step involves the proper interpretation of the claims. The second step involves determining whether the limitations of the claims as properly interpreted are met by the prior art.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1333 (Fed. Cir. 2002). Because I interpret claims 9–11 to be indefinite, I cannot perform the second step of the unpatentability analysis, determining whether the limitations of the claims are met by the prior art. Thus, I cannot evaluate Vibrant Media’s challenge to the patentability of claims 9–11 under § 103. IPR2013-00172 Patent 6,092,074 52 The majority interprets claims 9–11, “for the purposes of this decision, as requiring both the recited apparatus claim elements and the recited method steps.” Supra at 9. I disagree with the majority’s interpretation because the obviousness determinations must be directed to the claimed invention as a whole, not to any partial invention that does not include all of the limitations of the claim. 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Furthermore, an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims. See In re Steele, 305 F.2d 859, 862– 63 (CCPA 1962) (the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims). Without ascertaining the proper claim scope, I cannot conduct a necessary factual inquiry for determining obviousness— ascertaining differences between the claimed subject matter and the prior art. See Graham, 383 U.S. at 17–18. Because I cannot compare claims 9–11 to the prior art that Vibrant Media contends to render those claims unpatentable, I would terminate the proceeding with respect to claims 9–11 under 37 C.F.R. § 42.72, and not issue a final written decision on those claims. For these reasons, I respectfully dissent from the portion of the majority decision that finds claims 9–11 unpatentable under § 103. IPR2013-00172 Patent 6,092,074 53 PETITIONER Matthew Lowrie mlowrie@foley.com Christopher McKenna cmckenna@foley.com PATENT OWNER Michael Casey mcasey@dbjb.com John Davidson jsd@dbjb.com Copy with citationCopy as parenthetical citation