ElasTic NV v. Guada Technologies LLC

1. Case Identification

• Case #: IPR2021-00875
• Patent #: 7,231,379
• Filed: May 3, 2021
• Petitioner(s): Elastic N.V.
• Patent Owner(s): Guada Technologies LLC
• Challenged Claims: 1-7

2. Patent Overview

• Title: Keywords for Searching a Hierarchical Network
• Brief Description: The ’379 patent discloses a method for searching a hierarchical network (e.g., a menu tree) where keywords correspond to specific nodes or vertices. The purported novelty is allowing a user to "jump" directly to a destination node based on a keyword input, without traversing intervening nodes, and using a thesaurus to handle synonyms for those keywords.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 7 are obvious over Wesemann

• Prior Art Relied Upon: Wesemann (Patent 6,731,724).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wesemann, which was not cited during prosecution, teaches a voice-enabled user interface for navigating a hierarchical menu of a telephone service system. Wesemann explicitly discloses enabling a user to "jump over 'in between' menu states" with a single input. For example, a user at a main menu can speak "home computer support" to jump directly to that submenu, bypassing intermediate parent nodes like "sales" and "computer support." Petitioner contended this functionality is the same "jumping" recited in independent claims 1 and 7 of the ’379 patent. Wesemann's system also provides audible menu prompts ("verbal descriptions") at each node, which Petitioner asserted meets the limitations of dependent claim 2.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner asserted Wesemann alone renders the claims obvious.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 3-6 are obvious over Wesemann in view of Rajaraman

• Prior Art Relied Upon: Wesemann (Patent 6,731,724) and Rajaraman (Patent 6,366,910).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Rajaraman teaches a "general purpose search" for hierarchically classified data that explicitly addresses user frustration in navigation by using keyword searching. Critically, Rajaraman discloses using a "special terms file," or thesaurus, to correlate user input with classification names (claims 3 and 4). For example, a search for "blouse" would map to the "women's shirts" category. Rajaraman further teaches a "log analyzer" that identifies failed searches (e.g., misspellings like "aparel") and allows an analyst to add them to the thesaurus as new synonyms for existing keywords, thereby "learning" new terms (claims 5 and 6).
  • Motivation to Combine (for §103 grounds): A POSITA would combine Wesemann's efficient "jumping" navigation with Rajaraman's known thesaurus functionality to improve the system. This would provide greater flexibility and a more user-friendly experience for users who might be unaware of the exact pre-determined keywords, a common problem in the field. Wesemann itself suggests adding data to its template to associate "common correlating inputs," expressly motivating the inclusion of synonym functionality like that in Rajaraman.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining a known navigation method (Wesemann) with a well-understood thesaurus search function (Rajaraman) involves applying predictable solutions to solve a known problem and would not render any feature of Wesemann inoperable.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 1, 2, and 7 over Fratkina (Patent 7,539,656) and for claims 3-6 over Fratkina in view of Rajaraman. These grounds relied on similar theories, with Fratkina providing an alternative basis for a hierarchical dialogue system that teaches "jumping" to specific subgoals via "autocontextualization."

4. Key Claim Construction Positions

• "jumping": Petitioner adopted the Patent Owner's construction from prosecution: "a direct traversal from one node or vertex to another node or vertex that is not directly connected to it (i.e., without traversal through any intervening nodes or vertices...)." Petitioner emphasized that this was the key feature stressed by the applicant to overcome prior art rejections and argued that both Wesemann and Fratkina taught this exact functionality.
• "keyword": Petitioner argued a "keyword" should be construed as "one or more words or pieces of information, such as a specific data pattern, that is associated with at least one node or vertex." This construction is based on the patent's specification and is important for mapping user inputs in the prior art (e.g., "acceptable responses and inputs" in Wesemann) to the claimed term.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion under 35 U.S.C. §314(a) to deny institution, even though this was the fifth petition filed against the ’379 patent. The primary arguments were:
  • Petitioner Elastic is unrelated to any of the prior petitioners and only filed this IPR after being threatened by the Patent Owner.
  • The prior proceedings were terminated due to settlements before a Final Written Decision was issued. Therefore, the Board has not yet had the opportunity to reach a final conclusion on the merits of the asserted prior art, and institution would increase Board efficiency by resolving challenges on which it has already invested resources.
  • Denying institution would be unfair to Elastic and would insulate the patent from review on art that the Board previously found reasonably likely to invalidate the claims.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 of Patent 7,231,379 as unpatentable.