Unified Patents LLC v. MasterObjects Inc

1. Case Identification

• Case #: IPR2020-01201
• Patent #: 10,311,073
• Filed: June 30, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): MasterObjects, Inc.
• Challenged Claims: 1, 2, and 4-12

2. Patent Overview

• Title: System for Asynchronous and Incremental Text-Based Searching
• Brief Description: The ’073 patent describes a client-server system for providing "autocomplete" or "instant search" functionality. The system detects incremental text input from a user on a client device, asynchronously sends incomplete queries to a server, and returns matching information from content sources for display as the user continues to type.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kamvar - Claims 1, 6-8, and 11 are obvious over Kamvar and the knowledge of a POSA.

• Prior Art Relied Upon: Kamvar (Application # 2005/0283468).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kamvar discloses all limitations of independent claim 1. Kamvar teaches a predictive search system where a client-side search assistant monitors a user's partial query entry in a browser. It automatically sends the partial query to a server system before the user finishes typing. The server matches the partial query against a cache of query strings (dictionaries) and search results (predicted query results cache) built from a "community of users." The server then retrieves corresponding results and sends them to the client for asynchronous display, without requiring the user to submit the full query. For dependent claims, Kamvar discloses asynchronously receiving updated query versions (claim 6), retrieving results from the cache (claim 7) or a document database (claim 8), and using a document database as a content source (claim 11).
  • Motivation to Combine: This is a single-reference ground. Petitioner argued that a person of ordinary skill in the art (POSA) would have found it obvious to group Kamvar's functionally described, but separately illustrated, dictionaries and predicted query results cache into a single logical cache to achieve the claimed invention, as this would be a predictable design choice.
  • Expectation of Success: A POSA would have recognized that Kamvar's functional components could be grouped into a single cache structure without changing their operation, leading to a high expectation of success.

Ground 2: Obviousness over Kamvar and Baluja - Claims 2, 4, 5, 9, 10, and 12 are obvious over Kamvar in view of Baluja.

• Prior Art Relied Upon: Kamvar (Application # 2005/0283468) and Baluja (Application # 2006/0122976).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims not fully met by Kamvar alone. Baluja, which focuses on improving search on bandwidth-limited devices, was argued to supply the missing elements. Specifically, Baluja teaches implementing search systems on a "cellular telephone handset" (claim 2) and using search results in the form of "hyperlinks" to retrieve underlying content (claim 4). Baluja also expressly discloses searching for images (claim 5) and using a client-side "predictive storage" cache to store prefetched results, which are then displayed without needing to query the server again (claim 12).
  • Motivation to Combine: A POSA would combine Kamvar's server-side predictive search with Baluja's teachings to improve Kamvar's system for mobile devices. Applying Kamvar's methods to a cellular phone as taught by Baluja was presented as a predictable extension. A POSA would also be motivated to incorporate Baluja’s client-side caching to further reduce latency in the Kamvar system, a shared goal of both references.
  • Expectation of Success: Since both references operate in the same field of predictive search and share the goal of minimizing latency, a POSA would have a reasonable expectation that implementing Kamvar's system on Baluja's mobile device platform and adding Baluja's client-side caching would predictably result in an improved, functional system.

Ground 3: Obviousness over Kravets, Porter, and Barr - Claims 1, 2, 4, 5, and 8-11 are obvious over Kravets in view of Porter and Barr.

• Prior Art Relied Upon: Kravets (Patent 6,704,727), Porter (Application # 2007/0130131), and Barr (Patent 5,873,076).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground provides an alternative invalidity theory. Kravets was used as the primary reference, disclosing a predictive search server that displays results in nearly real-time as a user types. Porter was added to teach improving the efficiency of Kravets by caching and sending the ultimate search results (e.g., URLs) directly, rather than just links to the results, and communicating via HTTP. Barr was added to solve a problem inherent in Kravets' asynchronous system by teaching the use of a "query identification number" to match incoming search results with the specific partial query that generated them.
  • Motivation to Combine: A POSA would combine these references to improve the efficiency and robustness of the system in Kravets. One would be motivated to modify Kravets with Porter’s more efficient caching and communication protocol to increase speed. It would have been further desirable to add Barr's query identifier to the Kravets/Porter combination to manage the asynchronous data flow and prevent a mismatch between multiple, rapidly sent partial queries and their corresponding results.
  • Expectation of Success: The combination represents the application of known techniques (efficient caching, standard protocols, query identifiers) to solve predictable problems in a known system (predictive search), giving a POSA a high expectation of success.

4. Key Technical Contentions (Beyond Claim Construction)

• Lack of Priority: A central argument was that the ’073 patent is not entitled to its claimed 2001 priority date. Petitioner asserted that the limitation in claim 1 requiring "a cache of query strings and search results based on content queries received from multiple users" constitutes new matter first introduced in a 2005 continuation-in-part application. According to Petitioner, the original 2001 application only disclosed a generic server-side cache, not one based on multi-user query history. This argument, if successful, would make references like Kravets (filed in 2000) and Porter (claiming priority to 2000) available as prior art.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, and 4-12 of Patent 10,311,073 as unpatentable.