Apple Inc v. Parus Holdings Inc

1. Case Identification

• Case #: IPR2020-00687
• Patent #: 9,451,084
• Filed: March 18, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Parus Holdings, Inc.
• Challenged Claims: 1-7, 10, and 14

2. Patent Overview

• Title: System for Acquiring Information from an Information Source
• Brief Description: The ’084 patent discloses a voice browsing system that receives spoken commands from a user to retrieve information from a network. The system maintains a database of ranked websites and sequentially accesses them until the requested information is found or all sites have been checked.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ladd, Kurosawa, and Goedken - Claims 1-6, 10, and 14 are obvious over Ladd in view of Kurosawa and Goedken.

• Prior Art Relied Upon: Ladd (Patent 6,269,336), Kurosawa (Japanese Application No. JP H9-311869), and Goedken (Patent 6,393,423).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination teaches all limitations of the challenged claims. Ladd, the primary reference, disclosed the foundational interactive voice response (IVR) system that receives speech commands, retrieves an electronic address (URL) from a database, connects to the information source, and provides a spoken response. Kurosawa was asserted to teach using a database of multiple URLs that are prioritized and searched based on keywords to find desired information, as well as periodically updating this URL list with a web crawler. Goedken was added to teach the specific search procedure of claim 1(k): sequentially accessing a plurality of information sources (files in Goedken) and stopping the search once the requested information is found or after all sources have been accessed.
  • Motivation to Combine: A POSITA would combine Ladd's IVR system with Kurosawa's multiple-website search capability to increase the likelihood of finding up-to-date information, a goal mentioned in Ladd. A POSITA would further incorporate Goedken's sequential search-and-stop procedure to provide an efficient, rapid response to a user's query, which is a known objective for improving user experience in IVR systems. The combination simply applied known search strategies to a known type of voice-retrieval system.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining these elements involved applying well-known programming and database management techniques to achieve the predictable result of a more robust and efficient voice-search system.

Ground 2: Obviousness over Ladd, Kurosawa, Goedken, and Rutledge - Claims 1-6, 10, and 14 are obvious over the combination of Ladd, Kurosawa, Goedken, and Rutledge.

• Prior Art Relied Upon: Ladd (Patent 6,269,336), Kurosawa (Japanese Application No. JP H9-311869), Goedken (Patent 6,393,423), and Rutledge (Patent 6,650,998).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented Rutledge as an alternative or supplement to Kurosawa for teaching claim 1(j), which requires periodically searching for and adding new websites to the system’s list. Petitioner asserted that Rutledge expressly taught a web crawler that autonomously populates a database by searching the internet, finding new sites, and adding them to the database. This autonomous operation, Petitioner argued, would be understood by a POSITA to include periodic searching.
  • Motivation to Combine: The motivation was to improve the system by ensuring the list of searchable websites remained current and comprehensive. A POSITA would recognize that adding new websites, as taught by Rutledge's web crawler, is a typical and expected behavior for any internet search system to maintain its utility and would have been motivated to configure the Kurosawa crawler to add newly found sites.
  • Expectation of Success: Success was expected as it involved implementing a standard feature (adding new sites via a crawler) into an existing internet search architecture.

Ground 3: Obviousness over Ladd, Kurosawa, Goedken, and Madnick - Claim 7 is obvious over the combination of Ladd, Kurosawa, Goedken, and Madnick.

• Prior Art Relied Upon: Ladd (Patent 6,269,336), Kurosawa (Japanese Application No. JP H9-311869), Goedken (Patent 6,393,423), and Madnick (Patent 5,913,214).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted dependent claim 7, which adds the limitation of a "content descriptor associated with each web site address" that pre-defines a portion of the website where information is located. Petitioner argued Madnick taught this feature through its disclosure of a "specification file." This file acts as a template for retrieving data from a web page by specifying where the desired information is located (e.g., the stock price is found after the word "Last").
  • Motivation to Combine: A POSITA would be motivated to include Madnick’s specification file in the combined system to retrieve information more quickly and efficiently. Instead of searching an entire webpage, the system could directly access the pre-defined location, which would further the overall goal of providing a rapid response to the user.
  • Expectation of Success: This modification required simple and routine programming to add location data to the instruction set and was well within the skill of a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Houser (Patent 5,774,859) to explicitly teach analyzing phonemes for speech recognition (claims 5-6).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on a parallel district court proceeding, asserting that the court case was in its early stages with no significant investment in prior art analysis or claim construction. Petitioner contended that denying institution would be improper because the validity standards differ (preponderance of the evidence in IPR vs. clear and convincing in court) and would contradict Congressional intent for IPRs to be an efficient alternative to litigation.
• Petitioner also argued against discretionary denial under §325(d), stating that the core prior art references central to its petition (Kurosawa, Goedken, Rutledge, Madnick, Houser) were never considered by the Examiner during prosecution. Furthermore, while Ladd was cited in an Information Disclosure Statement (IDS), it was never applied as the basis for any rejection, meaning its teachings were not substantively evaluated in the context of the claimed invention.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7, 10, and 14 of the ’084 patent as unpatentable under 35 U.S.C. §103.