Vibrant Media, Inc.v.General Electric Company

Patent Trial and Appeal Board

Jul 28, 2014

09021331 (P.T.A.B. Jul. 28, 2014)

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

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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.
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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
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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
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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).
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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
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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.
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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.
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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
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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
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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.
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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.
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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).
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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.
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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.
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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.
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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
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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.
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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.
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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
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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.
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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.
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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
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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.”
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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.
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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
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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.
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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,
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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,
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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.”)).
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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
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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
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¶¶ 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
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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
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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.
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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
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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
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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”
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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.
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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.
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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
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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
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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.
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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.

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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.
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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.

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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.
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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.
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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.
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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”
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(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.
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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.
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PETITIONER
Matthew Lowrie
mlowrie@foley.com

Christopher McKenna
cmckenna@foley.com

PATENT OWNER
Michael Casey
mcasey@dbjb.com

John Davidson
jsd@dbjb.com