Google Inc v. Arendi SARL

1. Case Identification

• Case #: IPR2014-00450
• Patent #: 7,921,356
• Filed: February 20, 2014
• Petitioner(s): Google Inc.
• Patent Owner(s): Arendi S.A.R.L.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method and apparatus for contact information handling
• Brief Description: The ’356 patent discloses a system for computerized handling of contact information. It describes methods that facilitate interaction between document editing programs (e.g., word processors) and external contact databases, allowing a user to select textual information in a document, execute a command, and have the system automatically search a database for related contact information to insert into the document.

3. Grounds for Unpatentability

Ground 1: Obviousness over Pandit and Luciw - Claims 1, 3-4, 9, 12, 14, 18, and 20 are obvious over Pandit in view of Luciw.

• Prior Art Relied Upon: Pandit (Patent 5,859,636) and Luciw (Patent 5,644,735).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pandit taught the core functionality of the independent claims: a system within a document editing program that allows a user to select text, recognizes that text as a specific type of contact information (e.g., email address, phone number), and performs context-dependent operations like adding the information to an address book. Petitioner contended that Luciw taught the missing element: using information entered or found in a document (first contact information) to search an external database for related data (second contact information) and then inserting that second information back into the document, such as completing a last name from an entered first name.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Pandit and Luciw because Pandit was explicitly designed as a flexible, modular, and extensible system intended to integrate with other programs and databases. Luciw's functionality—using recognized text to query a database and retrieve related information—was precisely the type of logical and sensible extension for which Pandit's architecture was designed.
  • Expectation of Success: The combination involved applying known techniques (Luciw's database search-and-retrieval) to a known system designed for such extensions (Pandit). A POSITA would have had a reasonable expectation that integrating these functionalities would work predictably to achieve the claimed invention.

Ground 2: Obviousness over Tso and Pandit - Claims 1, 7, 10, 12, 16, and 20 are obvious over Tso in view of Pandit.

• Prior Art Relied Upon: Tso (Patent 6,085,201) and Pandit (Patent 5,859,636).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Tso disclosed a system for helping users write emails by allowing a user to select a text string, which the system then analyzes to find keywords. These keywords are used to search a database and retrieve predefined email templates (second information) for insertion into the email document. While Tso teaches analyzing selected text to find and insert related information, Petitioner argued that Pandit supplied the more specific teaching of recognizing particular classes of contact information (names, addresses, phone numbers) within the selected text and taking actions based on that classification.
  • Motivation to Combine: Petitioner contended that Tso and Pandit described fundamentally similar and technically compatible systems, both using DLL plugins to integrate with text processing programs. A POSITA would have been motivated to incorporate Pandit's more sophisticated contact-information recognition capabilities into Tso's system to enhance its functionality. For instance, this would allow Tso's system to retrieve templates based not just on general keywords but on recognized contact information, such as inserting a template containing a full address after a user selects a person's name.
  • Expectation of Success: Petitioner argued the combination was merely the application of a known technique (Pandit's information recognition) to a similar system (Tso) to improve its operation, a modification that would have yielded predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges against other dependent claims by adding further references to the primary combination of Pandit and Luciw. These included using Goodhand (Patent 5,923,848) to teach notifying a user when a search term is not found, Hachamovitch (Patent 6,377,965) to teach automatic word completion features, and Bonura (a 1998 journal article) to teach adding newly identified contact information (name and address) to an address book.

4. Key Claim Construction Positions

• "Contact Information": Petitioner proposed the construction "information related to a person (including a legal person)." This broad interpretation was argued to be consistent with the specification's exemplary disclosures, which included not only names and addresses but also phone numbers, fax numbers, email addresses, and mailing lists.
• "Updating the document": Because the patent did not explicitly define this term, Petitioner argued that under the broadest reasonable interpretation standard, "updating" should include replacing existing information in a document. This construction was important for mapping Luciw, which discloses replacing a partial name with a full name retrieved from a database.
• "Input Device": Petitioner noted that the specification discloses an input device can be either hardware or a graphical user interface (GUI) element on a screen, supporting a broad construction covering both physical and software-based inputs.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of Patent 7,921,356 as unpatentable.