PTAB

IPR2020-00847

Google LLC v. Parus Holdings Inc

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1. Case Identification

2. Patent Overview

  • Title: Voice Browser System
  • Brief Description: The ’084 patent discloses a system that allows users to retrieve information from websites using voice commands on devices like telephones. The system uses speech recognition to process spoken requests, accesses information from a database of websites, and provides the retrieved information back to the user in an audio format.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kurganov-262 and Chakrabarti - Claims 1-2, 4-7, 10, and 14 are obvious over Kurganov-262 in view of Chakrabarti.

  • Prior Art Relied Upon: Kurganov-262 (Application # 2001/0047262) and Chakrabarti (Patent 6,418,433).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner first argued that the ’084 patent is not entitled to the filing date of its parent application (Application 09/776,996) because that application lacks written description support for claim 1’s limitation of "periodically search[ing]... to identify new web sites and to add the new web sites" (limitation [1.i]). This lack of priority makes Kurganov-262, the publication of that parent application, §102(b) prior art. Petitioner asserted that Kurganov-262, having a description identical to the ’084 patent's first embodiment, discloses every limitation of the challenged claims except for the periodic searching for new websites. Chakrabarti allegedly supplied this missing element, as it teaches a "focussed crawler" that "periodically determines new... pages to consider" and adds relevant ones to its database.
    • Motivation to Combine: A POSITA would combine the teachings of Chakrabarti with the system of Kurganov-262 to keep the list of available information sources current and comprehensive. Petitioner argued that since the web's content constantly changes, crawling for new sites was a known and beneficial technique for maintaining an up-to-date information-retrieval database. Furthermore, Chakrabarti's "focussed" crawling, which targets pages related to predefined topics, was presented as particularly well-suited for Kurganov-262's topic-categorized database of websites.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in implementing Chakrabarti's software-based crawler functionality into Kurganov-262's computing device using ordinary skill.

Ground 2: Obviousness over Kovatch, Chakrabarti, and Neal - Claims 1-2, 4-7, 10, and 14 are obvious over Kovatch in view of Chakrabarti and Neal.

  • Prior Art Relied Upon: Kovatch (WO 2001/050453), Chakrabarti (Patent 6,418,433), and Neal (Patent 6,324,534).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Kovatch discloses a voice response system ("HeyAnita") that browses the web to retrieve information requested by a user via telephone, meeting most limitations of claim 1. However, Kovatch allegedly failed to disclose two key features: periodically searching for and adding new websites (limitation [1.i]) and sequentially accessing a list of websites until information is found (limitation [1.j]). Chakrabarti was again relied upon to teach the periodic web-crawling feature. Neal was introduced to supply the sequential search, as it teaches optimizing a search process by searching multiple data sets (e.g., suppliers) in a defined hierarchical order and terminating the search once a match is found.
    • Motivation to Combine: The motivation to add Chakrabarti to Kovatch was the same as in Ground 1: to automate the growth of the website database and keep it current. A POSITA would combine Kovatch with Neal to increase the efficiency of the search process and maximize the likelihood of finding the requested information. Since Kovatch's system already modifies its search based on user preferences, Neal's hierarchical search provided a known and beneficial method for implementing this, saving computing resources by searching preferred sites first and avoiding needless searches after information is found.
    • Expectation of Success: Petitioner argued a POSITA would have reasonably expected success in incorporating the software-based functionalities of both Chakrabarti and Neal into Kovatch's scalable server architecture.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claim 14, arguing it would have been obvious to add caching of retrieved information as taught by DeSimone (Patent 5,787,470) to the combinations of both Ground 1 (Kurganov-262/Chakrabarti) and Ground 2 (Kovatch/Chakrabarti/Neal).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d), asserting that its grounds were not cumulative of art considered during prosecution because the Examiner cited no art. It further argued its priority date challenge makes its reliance on Kurganov-262 novel compared to any other proceeding.
  • Petitioner also argued against discretionary denial under §314(a) by analyzing the General Plastic factors. It contended that its petition presented wholly different grounds and prior art than a parallel IPR filed by Apple (IPR2020-00687), that the petitioners were direct competitors with different accused products, and that the parallel district court litigation was in its infancy, with claim construction and trial dates far in the future, weighing against denial.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-7, 10, and 14 of the ’084 patent as unpatentable.