I/P Engine, Inc. v. AOL, Inc. et al
Filing
438
Declaration re 433 Opposition, 432 Opposition, 434 Opposition, of Margaret P. Kammerud in Support of Defendants' Opposition to Plaintiff's Motions in Limine by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M)(Noona, Stephen)
EXHIBIT A
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
PO Box 1450
Alexandria, Virginia 22313-1450
Www.uspea.gov
APPLICATION NO. I
24998
7590
FIRST NAMED INVENTOR
05/24/2012
90/009,991
FILING DATE
6314420
I ATTORNEY DOCKET NO. I CONFIRMATION NO.
EXAMINER
07/18/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
4797
80217.00021P002-RE
ART UNIT
I
PAPER NUMBER
I
DATE MAILED: 07/18/2012
Please find below and/or attached an Office communication concerning this application or proceeding.
PTO-90C (Rev. 10/03)
G-IPE-0888193
Control No.
90/009,991
6314420
Examiner
Art Unit
JASON PROCTOR
Order Granting / Denying Request For
Ex Parte Reexamination
Patent Under Reexamination
3992
--The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
The request for ex parte reexamination filed 24 May 2012 has been considered and a determination has
been made. An identification of the claims, the references relied upon, and the rationale supporting the
determination are attached.
Attachments: a)n PTO - 892,
1 . El
b)Z PTOISB/08,
On Other:
The request for ex parte reexamination is GRANTED.
RESPONSE TIMES ARE SET AS FOLLOWS:
For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
is permitted.
2.
ri The request for ex parte reexamination is DENIED.
This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
37 CFR 1.183.
In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
a) E by Treasury check or,
b) LI by credit to Deposit Account No.
c) Cl
,
Or
by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
/Jason Proctor/
Primary Examiner, Art Unit 3992
cc:Reauester ( if third party requester )
U.a Patent and Trademark Office
PTOL-471 (Rev. 08-06)
Office Action in Ex Parte Reexamination
Part of Paper No. 20120703
G-IPE-0888194
Application/Control Number: 90/009,991
Art Unit: 3992
Page 2
DECISION ON REQUEST
FOR EX PARTE REEXAMINATION
A Substantial New Question of Patentability affecting claims 10, 14, 15, 25, 27, and 28 of
US Patent No. 6,314,420 issued to Lang et al. ("the '420 Patent") is raised by the Request for Ex
Parte Reexamination filed on 24 May 2012 ("the Request"). Accordingly,
ex parte
reexamination of claims 10, 14, 15, 25, 27, and 28 of the '420 Patent is ordered.
Ex Parte Reexamination is granted for claims 10, 14, 15, 25, 27, and 28.
Claims 1-9, 11-13, 16-24, 26, and 29-36 are not subject to reexamination.
References Cited
US Patent No. 6,202,058 to Rose et al. ("Rose")
US Patent No. 5,835,087 to Herz et al. ("Herz")
David Goldberg et al., "Using Collaborative Filtering to Weave an Information
Tapestry," Communications of the ACM (December 1992) ("Goldberg")
Yezdezard Lashkari, "Feature Guided Automated Collaborative Filtering," MIT Masters
Thesis (September 1995) ("Lashkari")
Paul Resnick et aL, "GroupLens: An Open Architecture for Collaborative Filtering of
Netnews," Proceedings of ACM 1994 Conference (1994) ("Resnick")
Shoshana Loeb, "Architecting Perosonalized Delivery of Multimedia Information,"
Communications of the ACM (December 1992) ("Loeb")
Prosecution History of the '920 Patent
Reasons for Allowance
G-IPE-0888195
Application/Control Number: 90/009,991
Art Unit: 3992
Page 3
The '420 Patent issued from US Patent Application 09/204,149 ("the '149 Application"),
which is a Continuation-In-Part of US Patent Application 08/627,436 which issued as US Patent
No. 5,867,799 ("the '799 Patent").
.During prosecution of the '420 Patent, the Examiner initially rejected all pending claims
over the '799 Patent under the judicially created doctrine of nonstatutory double patenting. (the
'14 . Application, Office Action entered on 6 December 2000). Applicant overcame this
rejection by filing a Terminal Disclaimer (the '149 Application, Amendment entered on 7 May
2001). In response, the Examiner entered a Notice of Allowance with the following statement of
reasons for allowance:
The following is an examiner's statement of reasons for allowance: The present invention
is directed to a search engine operated with collaborative and content-based filtering. The
closest prior art [Michael Persin, Document Filtering for Fast Ranking, ACM, July 6,
1994, pages 339-348] discloses a similar filtering method. However, Michael Persin fails
to show "storing a linked list of relevant informons as a wire andproviding a system for
returning a wire to an individual user." These limitations, in conjunction with all other
limitations of the base claims were not shown by, would not have been obvious over, nor
would have been fairly suggested by the prior art of record.
(the '149 Application, Notice of Allowability entered on 21 May 2001, emphasis in
original)
Accordingly, the Examiner relied on the "wire" aspect of the claimed invention to distinguish the
patent from the prior art.
However, none of the claims for which reexamination is requested (claims 10, 14, 15, 25,
27, and 28) recite the "wire" or "wire search" that the Examiner identified in the statement of
reasons for allowance.
Therefore, the prosecution history does not reveal a specific reason for allowance for
claims 10, 14, 15, 25, 27, or 28 of the '420 Patent. Therefore, it appears that the claimed
invention as a whole was relied upon to distinguish over the prior art of record.
G-IPE-0888196
Application/Control Number: 90/009,991
Art Unit: 3992
Page 4
Priority Date of the Claimed Inventions
Requester argues on pages 9-11 of the Request that independent claims 10 and 25 both
describe a "search engine system" which is not adequately disclosed by the parent '799 Patent for
the purposes of 35 U.S.C. § 112, first paragraph, and therefore these claims should not benefit
from the filing date of the parent '799 Patent.
Th '799 Patent appears to primarily disclose a method of filtering "informons".
•
Informons are defined in the '799 Patent and the '420 Patent as "entities of information relevant
to the user" (the '420 Patent, 3:18-19). The '799 Patent appears to discuss search engines in only
one passage:
Although databases are relatively static and can be searched using conventional network
search engines, current information filtering schemes are ill-suited to thoroughly search
the massive, dynamic stream of new information passing through the network each day.
(the '799 Patent, 1:24-28)
In contrast, the '420 Patent appears to substantially disclose a search engine and teaches
that:
The invention of this continuation-in-part application, as shown in FIGS. 8 and 9,
provides a collaborative and preferably adaptive search engine system in which elements
of the structure and principles of operation of the apparatus of FIGS. 1-7 are applied.
Accordingly, a search engine system of the invention, as preferably embodied, integrates
collaborative filtering with adaptive content-based filtering to provide improved search
engine performance. The acronym "CASE" refers to a search engine system of the
invention, i.e., a collaborative, adaptive search engine.
(the '420 Patent, 23:23-33)
The '420 Patent proceeds to disclose a search engine system and method for operating a
search engine system (the '420 Patent, columns 23-26). This disclosure is not found in the '799
Patent.
G-IPE-0888197
Application/Control Number: 90/009,991
Art Unit: 3992
Page 5
Therefore, the "search engine system" recited by claims 10 and 25 of the '420 Patent does
not appear to be adequately disclosed by parent '799 Patent for the purposes of 35 U.S.C. § 112,
first paragraph. Consequently, these claims (and their dependents) do not appear to be entitled to
the benefit of the filing date of the '799 Patent.
The priority date for claims 10, 14, 15, 25, 27, and 28 of the '420 Patent is determined to
be the filing date of the '149 Applicar:.ton, 3 December 1998.
Criteria for Deciding Request
According to MPEP 2242, the presence or absence of "a substantial new question of
patentability" determines whether or not reexamination is ordered. A prior art patent or printed
publication raises a substantial question of patentability where there is a substantial likelihood
that a reasonable Examiner would consider the prionart patent or printed publication important in
deciding whether or not the claim is patentable.
If the prior art patents and printed publications raise a substantial question of patentability
of at least one claim of the patent, then a substantial new question of patentability is present,
unless the same question of patentability ilas already been decided by (A) a final holding of
invalidity, after all appeals, or (B) by the Office in a previous examination or pending
reexamination of the patent.
In the case of claims 10, 14, 15, 25, 27, and 28 of the '420 Patent, where it appears that
the claimed invention as a whole was relied upon to distinguish over the prior art of record, there
may be many different ways to establish a substantial likelihood that a reasonable Examiner
would consider a prior art patent or printed publication important in deciding whether or not the
G-IPE-0888198
Application/Control Number: 90/009,991
Art Unit: 3992
Page 6
claim is patentable. However, where the prior art reference appears to teach the claimed
invention as a whole, there exists a substantial likelihood that a reasonable Examiner would have
considered the reference important in deciding whether or not the claim is patentable.
Analysis
The Request proposes that 11 Substantial Ncw Questions of Patentability are raised by
the six references cited in the request (Request, pages 12-13). For the purpose of this analysis,
the proposed SNQs are grouped according to the primary reference.
None of the cited references were previously considered or addressed in the prosecution
history or a final holding of invalidity of the Federal Courts. All of the cited references are "new
art". See MPEP 2258.01.
Proposed SNQ 1
Propoed SNQ 2
Rose in view of Herz
Proposed SNQ 3
•
Rose
Rose in view of Loeb
Rose discloses a method for ranking information according to a prediction of the likely
degree of relevance to the user's interests. (Rose at Abstract.) The prediction of relevance is
carried out by combining data pertaining to the content of each item of information with other
data regarding correlations of interests between users. (Id.) The ranked information may consist
•of email messages, electronic bulletin board posts, or text retrieved from static databases. (Rose
at 3:26-28; see generally id. at 1:16-40.)
G-I PE-0888199
Application/Control Number: 90/009,991
Art Unit: 3992
Page 7
More specifically, Rose discloses filtering incoming information using user-aided
content-based filtering. The content of the document is analyzed to derive a "document vector,"
which is a measure of the various words appearing in the document and their statistical
relevance. (Rose at 6:11-19.)
Rose also discloses supplementing the content-based rating with a collaborative feedback
mechanism. Independent of the content of the document, Rose store -b' a table containing all users
and their responses (if any) to all available documents. (Rose at 6:59-63; Fig. 6.) This table is
then transformed into a correlation matrix, which tracks how often two users agree. (Rose at 6:64
to 7:6; Fig. 6.) When evaluating a prospective document for a user, Rose computes a "correlation
value" based on how various other users responded to the document, multiplied by the degree of
agreement (or disagreement) between each other user and the prospective user. (Rose at 7:7-19.)
This correlation-based prediction is combined with the content-based prediction to arrive at a
final score. (Rose at 7:35-50.)
When used with text retrieved from static databases (Rose at 3:26-28), Rose discloses "a
search engine operated with collaborative and content-based filtering."
Rose, either alone or in combination with Herz or Loeb, appears to teach the claimed
invention as a whole. Therefore, it is AGREED that Rose, Rose in view of Herz, and Rose in
view of Loeb raises a Substantial New Question of Patentability with respect to at least claims 10
and 25 of the '420 Patent.
Proposed SNQ 4
Herz
G-IPE-0888200
Page 8
Application/Control Number: 90/009,991
Art Unit: 3992
Herz discloses customized filtering of documents according to a user profile. (Herz at
Abstract.) Users can enter search profiles directly by submitting keywords. (Id. at 56:23-25.)
Herz computes target profiles for each potential document, then compares the target profiles to
the search profiles. (Id. at 56:53-62.) Matching articles are then presented to the user, and the
user's interactions with those articles monitored. (Id. at 58:30-38; 58:58-62.) The user's profile is
then adjusted based on the user's estimated degree of interest in the article. (Id.
a
58:62 to
59:10.)
Target profiles are computed using a combination of content-based and collaborative
filtering. For the content-based analysis, Herz discloses breaking up the content of a document
• into words or n-grams, computing Term Frequency / Inverse Document Frequency (TF/IDF) for
those words, and representing the document as a vector corresponding to the TF/IDF scores.
(Herz at 13:6-28.) On the collaborative side, Herz tracks each user's score for each document,
under the rationale that "if the user has often liked movies that Customer C17 and Customer
• C190 have rented, then the user may like other such movies." (Id. at 10:45-47; 14:3-19.) When
comparing the search profile to the target profile, Herz compares textual (content-based)
attributes by comparing their respective content vectors, and compares associated (collateral)
attributes by comparing their respective association vectors. (Id. at 14:59 to 15:10.)
Herz accordingly discloses "a search engine operated with collaborative and contentbased filtering."
Herz appears to teach the claimed invention as a whole. Therefore, it is AGREED that
Herz raises a Substantial New Question of Patentability with respect to at least claims 10 and 25
of the '420 Patent.
G-I PE-0888201
Application/Control Number: 90/009,991
Art Unit: 3992
Proposed SNQ 5
Page 9
Goldberg
Goldberg discloses a mail system termed "Tapestry." Rather than overwhelming users
with all incoming mail messages, or filtering messages based solely on the content of the
message, Tapestry allows users to use both content-based and collaborative filters to weed out
uninteresting messages. (Goldberg at 61.) Tapestry is not limited to e-mail systems: "it is
designed to handle any incoming stream of electronic documents," including newswire stories
and NetNews articles. (ld. at 63 (emphasis added).)
More specifically, Tapestry allows users to set complex filters on the incoming stream of
documents. Some filters may be content-based, e.g. "documents with the subject line 'Next
Tapestry Meeting." (Goldberg at 65.) Other filters may be collaborative, e.g. "documents replied
to by Smith, Jones, or O'Brien." (Id. at 62.) Users may also combine both types of filters, e.g.
"documents that contain the word 'filtering' and received at least three endorsements." (Id. at 63.)
Tapestry also supports ad hoc queries, allowing users to access information on the document
server independent of their existing filters. (Id. at 64.)
Goldberg accordingly discloses "a search engine operated with collaborative and contentbased filtering."
Goldberg appears to teach the claimed invention as a whole. Therefore, it is AGREED
that Goldberg raises a Substantial New Question of Patentability with respect to at least claims
10 and 25 of the '420 Patent.
Proposed SNQ 6
Lashkari
G-IPE-0888202
Application/Control Number: 90/009,991
Art Unit: 3992
Proposed SNQ 7
Lashkari in view of Herz
Proposed SNQ 8
Page 10
Lashkari in view of Loeb
Lashkari discloses Webhound, a filtering system designed for use with existing search
engines. Webhound uses collaborative filtering, which it terms "automated collaborative
filtering" or "ACF." As Lashkari states, collaborative filtering "relies on a deceptively simple
idea: if a person A correlates strongly with person B in rating a set of items then it is possible to
predict the rating of a new item for A, given B's rating for that item." (Lashkari at 14.)
Webhound then extracts the words from the preferred documents and generates scores
based on term frequency inverse document frequency (TF/1DF), which are then combined to
create a user profile. (Id. at 62-64.) Users can then request new documents using collaborative
filtering alone (ACF) or using content-based collaborative filtering (FGACF). (Id. at 59-60.)
Furthermore, Lashkari contemplates using Webhound to filter search results from search engines
like Lycos, Webcrawler, and Yahoo. (Id. at 78.)
Lashkari accordingly discloses 'l a search engine operated with collaborative and contentbased filtering."
Lashkari, either alone or in combination with Herz or Loeb, appears to teach the claimed
invention as a whole. Therefore, it is AGREED that Lashkari, Lashkari in view of Herz, and
Lashkari in view of Loeb raises a Substantial New Question of Patentability with respect to at
least claims 10 and 25 of the '420 Patent.
Proposed SNQ 9
Resnick
Proposed SNQ 10 Resnick in view of Herz
G-IPE-0888203
Application/Control Number: 90/009,991
Art Unit: 3992
Page 11
Proposed SNQ 11 Resnick in view of Loeb
Resnick discloses the GroupLens system for filtering articles from netnews. As Resnick
states:
GroupLens provides a new mechanism to help focus attention on interesting articles. It
draws on a deceptively simple idea: people who agreed in their subjective evaluation of
past articles are likely to agree again in the future. After reading articles, users assign
them numeric ratings. GroupLens uses the ratings in two ways. First, it correlates the
ratings in order to determine which users' ratings are most similar to each other. Second,
it predicts how well users will like new articles, based on ratings from similar users.
(Resnick at 2.)
GroupLens was designed to work with existing netnews systems. (Resnick at 1.) Many
news readers include string search capabilities; for example, a user can retrieve all articles that
mention "collaborative filtering." (Resnick at 2.) News readers may also include "kill files,"
which identify text strings that are not interesting to a particular user. (Id.; see also id. at 3:
"Cognitive, or content-based filtering techniques select documents based on the text in them. For
example, the kill files and string search features provided by news clients perform content
filtering.") Accordingly, incoming news articles may be filtered first by the news reader's
content-based filtering, followed by the additional collaborative filtering provided by
GroupLens.
Resnick accordingly discloses "a search engine operated with collaborative and contentbased filtering."
Resnick, either alone or in combination with Herz or Loeb, appears to teach the claimed
invention as a whole. Therefore, it is AGREED that Resnick, Resnick in view of Herz, and
Resnick in view of Loeb raises a Substantial New Question of Patentability with respect to at
least claims 10 and 25 of the '420 Patent.
G-IPE-0888204
Application/Control Number: 90/009,991
Art Unit: 3992
Page 12
Conclusion
Ex Parte Reexamination is granted for claims 10, 14, 15, 25, 27, and 28.
Claims 1-9, 11-13, 16-24, 26, and 29-36 are not subject to reexamination.
Extensions of Time
Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination
proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extensions of time in
ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
Waiver of Right to File Patent Owner Statement
In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530
to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proof of service in
the manner provided by 37 C.F.R. 1.248, if the request for reexamination was made by a third
party requester, see 37 C.F.R 1.550. The Patent Owner may consider using the following
statement in a document waiving the right to file a Patent Owner Statement:
Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
G-IPE-0888205
Application/Control Number: 90/009,991
Art Unit; 3992
Page 13
Amendment in Reexamination Proceedings
Patent owner is notified that any proposed amendment to the specification and/or claims
in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally
presented pursuant to 37 CFR § 1.52(a) and (b), and must contain any fees required by 37 CFR §
1.20(c). See MPEP § 2250(IV) for examples to assist in the preparation of proper proposed
amendments in reexamination proceedings.
Service of Papers
Any paper filed with the USPTO, i.e., any submission made, by either the Patent Owner
or the Third Party Requester must be served on every other party in the reexamination
proceeding, including any other third party requester that is part of the proceeding due to merger
of the reexamination proceedings. As proof of service, the party submitting the paper to the
Office must attach a Certificate of Service to the paper, which sets forth the name and address of
the party served and the method of service. Papers filed without the required Certificate of
Service may be denied consideration. 37 CFR 1.550; MPEP 2266.03.
Notification of Concurrent Proceedings
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to
•
apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
Patent No. 6,314,420 throughout the course of this reexamination proceeding. The third party
requester is also reminded of the ability to similarly apprise the Office of any such activity or
G-I PE-0888206
Application/Control Number: 90/009,991
Art Unit: 3992
Page 14
proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
and 2286.
All correspondence relating to this ex parte reexamination proceeding should be directed
as follows:
By U.S. Postal Service Mail to:
Mail Stop Ex Parte Reexam
ATTN: Central Reexamination Unit
Commissioner for Patents P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand to: Customer Service Window
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By EFS-Web:
Registered users of EFS-Web may alternatively submit such correspondence via the
electronic filing system EFS-Web, at .
https://efs.uspto.gov/efile/myportal/efs-registered
EFS-Web offers the benefit of quick submission to the particular area of the Office that
needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
electronically uploaded) directly into the official file for the reexamination proceeding, which
offers parties the opportunity to review the content of their submissions after the "soft scanning"
process is complete.
G-IPE-0888207
Application/Control Number: 90/009,991
Art Unit: 3992
Page 15
Any inquiry concerning this communication or as to the status of this proceeding should
be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
/Jason Proctor/
Primary Examiner, Art Unit 3992
Conferees:
/Adam L Basehoar/
Primary Examiner, Art Unit 3992
ALEXANDER J. KOSOWSKI
Supervisory Patent Reexamination Specialist
CRU -- Art Unit 3992
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12
DAVID GOLDBERG et al, "Using Collaborative Filtering to Weave an
Information Tapestry," Communications of the ACM (December 1992)
.....
YEZDEZARD LASHKARI, "Feature Guided Automated Collaborative Filtering,"
MIT Masters Thesis (Sept. 1995)
PAUL RESNICK et al., "GroupLens: An Open Architecture for Collaborative
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UP./
SHOSHANA LOEB, "Architecting Personalized Delivery of Multimedia
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1 Examiner
Signature
/Jason Proctor/
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1 Date
07/05/2012
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