PTAB

IPR2014-00452

Google Inc v. Arendi SARL

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1. Case Identification

2. Patent Overview

  • Title: Method for information handling
  • Brief Description: The ’853 patent describes a computerized method for handling contact information within a document. The system allows a user to input information (e.g., a person's name) into an application like a word processor, and upon a single command, the system analyzes the input, searches an information source (e.g., an address book), and uses the retrieved information to display, insert, or complete associated contact details (e.g., a full address) in the document.

3. Grounds for Unpatentability

Ground 1: Obviousness over Goodhand - Claims 1-9, 11, 13-29, 38-45, 57-64, 66, 68-75, 77, and 79 are obvious over Goodhand.

  • Prior Art Relied Upon: Goodhand (Patent 5,923,848).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Goodhand teaches a system for "address resolution" in an email application that performs the core steps of the challenged claims. In Goodhand, a user enters unresolved text (e.g., "sm henry") into an email's "To:" field. Upon an execute command (like tabbing out of the field or clicking "check names"), the system analyzes this first information, searches a centralized address book for associated second information (the full name "Henry Smith" and email alias), and automatically inserts the correct information back into the document. This process of analyzing, searching, and completing/displaying/inserting information maps directly to the limitations of independent claim 1.
    • Motivation to Combine (for §103 grounds): This ground was presented under 35 U.S.C. §103 to preemptively address potential arguments that Goodhand does not explicitly teach a separate "record retrieval program" or the step of "analyzing the document." Petitioner contended that Goodhand's system, which uses a "contact manager" module and Messaging Application Programming Interface (MAPI) functions to access a remote address book, teaches or renders obvious a separate record retrieval program. Furthermore, Petitioner argued that analyzing the document to identify the display names is inherent or at least a trivially obvious step required for the system to function as described.
    • Expectation of Success: A person of ordinary skill in the art (POSITA) would have a high expectation of success in implementing the minor modifications, if any were needed, to Goodhand's system, as it involved well-understood software modularization and data parsing techniques.

Ground 2: Obviousness over Goodhand and Padwick - Claims 6, 10, 12, 21, 27, 30-37, 42, 46-56, 61, 65, 67, 72, 76, and 78 are obvious over Goodhand in view of Padwick.

  • Prior Art Relied Upon: Goodhand (’848 patent) and Padwick (a 1996 book titled "Using Microsoft Outlook 97").
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that Padwick supplies specific functionalities for claims not fully addressed by Goodhand alone. For claim 10, which requires using a word processing program, Padwick explicitly teaches that Microsoft Outlook can be configured to use Microsoft Word as its email editor (the "WordMail" function). For claims 6 and 12, which involve identifying and using a "list of addressees," Padwick teaches creating and using distribution lists in Outlook to send an email to multiple people at once.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Goodhand and Padwick because Goodhand expressly recommends Microsoft Outlook as the preferred platform for its invention. Padwick is a user manual for that exact software. A POSITA seeking to implement Goodhand’s address resolution system would naturally consult a reference like Padwick to understand the features of the recommended platform, such as its email editor options and its handling of distribution lists. The combination involved applying a known improvement (Goodhand's resolution) to a known, recommended system (Outlook as described by Padwick).
    • Expectation of Success: Success was expected, as the combination involved integrating known software features for their intended purposes with no unpredictable results.

Ground 3: Anticipation over Allen - Claims 1, 2, 7-11, 13-17, 22-23, 28-30, 35-38, 43-46, 57, 62-66, 68, 73-77, and 79 are invalid under 35 U.S.C. §102(e) over Allen.

  • Prior Art Relied Upon: Allen (Patent 6,026,410).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Allen anticipates every limitation of the challenged claims. Allen discloses an "intelligent note editor" where a user's text ("keynote") is analyzed in real-time. Each keystroke acts as an "execute command" that triggers a parser ("record retrieval program") to analyze the text for keywords ("first information"). The parser then searches a keyword dictionary ("information source") to find linked information objects, such as a full contact name ("second information"). This linked information is then displayed to the user in a "shadow region" adjacent to the input text. Petitioner mapped these features directly to the elements of claim 1, including the single entry of an execute command (the keystroke), analyzing the document, searching an information source, and displaying the retrieved information.

4. Key Claim Construction Positions

  • "input device": Petitioner argued this term should be construed to include not only hardware but also on-screen graphical user interface (GUI) elements, consistent with its use in the ’853 patent’s specification.
  • "first information includes an identification of a list of addressees" (claims 6, 12, etc.): Petitioner proposed that under the broadest reasonable interpretation, this phrase means the first information is sufficient to identify multiple addressees, rather than requiring the name of a formal list.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-79 of the ’853 patent as unpatentable.