PTAB

IPR2017-01653

Google Inc v. Spring Ventures Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of WWW Page Retrieval
  • Brief Description: The 8,661,094 patent discloses methods for retrieving and displaying a web page in a browser without additional user intervention after a user inputs a non-URL text string. The invention focuses on using a "translator input window" overlaid on the browser to receive the text string, determine the most likely desired web page, and automatically display it.

3. Grounds for Unpatentability

Ground 1: Obviousness over Belfiore and Koren/Sotomayor - Claims 1, 2, 5, 8, 9, and 10 are obvious over Belfiore in view of Koren/Sotomayor.

  • Prior Art Relied Upon: Belfiore (Patent 6,009,459), Koren (an InfoWorld article from May 1997), and Sotomayor (Patent 5,842,206).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Belfiore taught the core concept of the ’094 patent: automatically handling a non-URL text entry in a browser's address field to perform a search and then redirecting the browser directly to the most relevant website without displaying a list of results. However, Belfiore used the browser's existing URL field. Petitioner asserted that Koren and Sotomayor, which describe the same "EchoSearch" software, disclosed the missing element: a separate, stand-alone application window that overlays the main browser window to provide an interface for search queries. The combination of Belfiore’s automatic redirect functionality with Koren/Sotomayor’s separate, overlaid input window allegedly rendered the independent claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to enhance browser functionality. Koren expressly taught that EchoSearch was a stand-alone application designed to communicate with a browser to display search results. A POSITA would have been motivated to integrate Belfiore's convenient "direct-to-page" feature into the more advanced, multi-engine search interface of EchoSearch to provide an improved user experience without losing functionality.
    • Expectation of Success: Petitioner contended there was a high expectation of success, as combining a browser search function (Belfiore) with a well-known type of third-party, add-on software (Koren/Sotomayor) was a common and straightforward practice in software development at the time.

Ground 2: Obviousness over Belfiore/Koren/Sotomayor and Osaku - Claims 7, 13, and 14 are obvious over Belfiore and Koren/Sotomayor in further view of Osaku.

  • Prior Art Relied Upon: Belfiore (Patent 6,009,459), Koren (InfoWorld article, May 1997), Sotomayor (Patent 5,842,206), and Osaku (Patent 6,061,738).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address limitations in claims requiring the translator entity to reside locally on the user's computer (claim 7) or interact with a domain name server (DNS) (claims 13-14). While Belfiore’s translator entity was a remote search engine, Petitioner argued that Osaku disclosed a translator entity that resides locally on the user's computer to process search strings using user-specific habits and statistics. Osaku also taught direct communication with a server functioning as a DNS to resolve simplified network addresses (aliases for URLs).
    • Motivation to Combine: A POSITA would combine Osaku's teachings with the primary combination to improve the efficiency, speed, and privacy of the search system. The petition noted that the ’094 patent itself acknowledged the existence of systems using local data to enhance searching. Adding Osaku’s client-side processing capabilities was presented as an obvious way to improve the performance of the Belfiore/Koren system.
    • Expectation of Success: The integration was described as predictable, as third-party plug-ins providing enhanced client-side processing were common methods for augmenting browser functionality.

Ground 3: Obviousness over Belfiore/Koren/Sotomayor and Breese - Claims 3, 4, 6, 11, and 12 are obvious over Belfiore and Koren/Sotomayor in further view of Breese.

  • Prior Art Relied Upon: Belfiore (Patent 6,009,459), Koren (InfoWorld article, May 1997), Sotomayor (Patent 5,842,206), and Breese (Patent 6,006,218).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims requiring the determination of the most likely web page to be based on specific statistical data. Petitioner argued that while Belfiore taught using a search engine to find the "highest scoring" web page, it was not specific about the ranking methodology. Breese allegedly supplied this teaching by disclosing a method for ranking search results based on various statistical factors, including the popularity of a web page, previous user searches, traffic volume, and the frequency of user visits to specific sites.
    • Motivation to Combine: A POSITA implementing the system of Belfiore and Koren/Sotomayor would have been motivated to use known, sophisticated search methodologies like those in Breese to refine the search results. Improving the relevance of the single, automatically-displayed web page was a primary goal, and using statistical data as taught by Breese was an obvious way to achieve this.
    • Expectation of Success: Breese's search methodologies were described as fully compatible with the remote search engine concept in Belfiore, making their integration a predictable and routine design choice for improving search quality.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 15 and 16 based on the combination of Belfiore, Koren/Sotomayor, and Osaku in further view of Breese, relying on similar theories to layer Breese's statistical ranking methods onto the DNS-related claims addressed by Osaku.

4. Key Claim Construction Positions

  • "translator input window ... overlaid on a portion of the browser window": Petitioner argued that the broadest reasonable interpretation (BRI) of this term required an input window that is separate from the browser's own window (e.g., not a field or frame within the browser's HTML content). This was based on the specification's distinction between "window" and "field" and its description of a "separate window" remaining "on top on the browser." This construction was central to the reliance on Koren/Sotomayor, which disclosed a separate, stand-alone application window.
  • "the domain name server sends the web page...": For claim 14, Petitioner contended that a literal interpretation of this phrase is technically nonsensical, as a DNS only translates domain names to IP addresses and does not host or send web pages. Petitioner proposed a functional construction: "the domain name server enables retrieval by the user's web browser of the web page," to allow for a proper comparison against the prior art.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of the 8,661,094 patent as unpatentable.