PTAB

IPR2017-01653

Google Inc. v. SPRING VENTURES, LTD.

Log In

1. Case Identification

2. Patent Overview

  • Title: Web Page Retrieval via Non-URL Text Entry
  • Brief Description: The ’094 patent is directed to methods for retrieving and displaying a webpage on a user's computer in response to a non-URL text entry. The core claimed method involves a user entering a text string into a "translator input window" that is overlaid on the browser; software then determines the most likely desired webpage and displays it directly, "without any additional user intervention" like selecting from a list of search results.

3. Grounds for Unpatentability

Ground 1: 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), and Sotomayor (Patent 5,842,206). Petitioner presented Koren and Sotomayor as a composite reference describing the same "EchoSearch" software.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Belfiore taught the core functionality of automatically handling a non-URL text entry by performing a search and redirecting the user’s browser directly to the most relevant website, without displaying intermediate search results. However, Belfiore used the browser's existing URL address field. The Koren/Sotomayor references were argued to supply the missing limitation of a "translator input window to be overlaid on a portion of the browser window," as they explicitly disclosed the EchoSearch software, which ran as a stand-alone application in a separate window that overlaid the main browser window to provide an interface for search queries.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings to enhance Belfiore's functionality. Koren/Sotomayor disclosed a software add-on designed to augment existing browsers. A POSITA would integrate Belfiore’s convenient "direct-to-page" redirect feature into the more advanced, multi-engine search interface of EchoSearch to provide an improved user experience that retained the benefits of both systems.
    • Expectation of Success: A POSITA would have a high expectation of success as the combination involved the integration of two known software concepts—a browser-based redirect and a separate search application window—to achieve the predictable result of an enhanced search interface.

Ground 2: 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/Sotomayor, 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 claims requiring a locally resident translator entity and interaction with a domain name server (DNS). Petitioner asserted that Osaku taught a search system where the translator entity resides locally on the user's computer (as in claim 7) to improve search results using user-specific habits and statistics. Osaku also disclosed an embodiment where its local translator entity communicates with a server functioning as a DNS to resolve simplified network addresses (aliases for URLs), thus teaching the limitations of claims 13 and 14.
    • Motivation to Combine: A POSITA would be motivated to modify the Belfiore/Koren/Sotomayor system with Osaku's teachings to improve the efficiency and speed of the search process. Allowing for client-side application of locally stored data was a known method for enhancing performance and privacy, and Osaku provided an express teaching for doing so.
    • Expectation of Success: Integrating Osaku's client-side processing into the base system would be a predictable modification for a POSITA seeking to optimize search performance.

Ground 3: 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/Sotomayor, and Breese (Patent 6,006,218).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims requiring specific statistical methods for ranking results. While Belfiore taught selecting the "most relevant" or "highest scoring" result, it was silent on the specific ranking algorithms. Petitioner argued that Breese supplied these missing details by teaching a method of ranking search results using "knowledge probability estimates" based on various statistical factors. These factors included statistical data from a user's previous web searches (claim 3), the overall popularity of a webpage, traffic volume, and previous visits by other users (claim 4), and the frequency/number of a user's own previous visits (claims 11 and 12).
    • Motivation to Combine: A POSITA implementing the system of Belfiore and Koren/Sotomayor would naturally look to known search methodologies to refine the ranking and selection of the top search result. Breese provided well-understood techniques for personalizing search results, making it an obvious and logical addition to improve the core system's relevance.
    • Expectation of Success: Applying Breese's known statistical ranking algorithms to the search results generated by the base combination was a straightforward application of a known technique to improve a known system, yielding predictable improvements.

  • Additional Grounds: Petitioner asserted a final ground that claims 15 and 16 are obvious over Belfiore, Koren/Sotomayor, and Osaku in further view of Breese. This ground combined the teachings of all prior art references, arguing it would have been obvious to apply the statistical ranking methods of Breese to the DNS-based, locally-processed system of Ground 2.

4. Key Claim Construction Positions

  • "translator input window": Petitioner argued that the broadest reasonable interpretation (BRI) of this term requires an input window that is separate from the browser window itself (e.g., a distinct dialog box). This construction was based on the specification's language distinguishing between a "window" and a "field," its description of a "separate window [that] remains on top on the browser," and the prosecution history. Petitioner contrasted this with the Patent Owner's litigation position that an HTML <input> field within a webpage could qualify as a "window."
  • "overlaid on a portion of the browser window": Consistent with the above, Petitioner argued this term means one separate window graphically overlaying another. This was supported by the specification and the examiner's reliance during prosecution on a prior art patent (Busey) that disclosed a separate chat window opening on top of browser content.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inoperability of Claim 14: Petitioner contended that the language in claim 14—"the domain name server sends the web page responsive to the URL address"—is technically nonsensical and describes an inoperable method. Petitioner's expert explained that a DNS translates a domain name to an IP address; it does not host or send actual webpages. For the purpose of the IPR, Petitioner proposed construing the phrase to mean the DNS "enables retrieval" of the webpage to render the claim operable for comparison against the prior art.

6. Relief Requested

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