PTAB

IPR2021-00963

Sonos Inc v. Google LLC

Key Events

Petition

petition

Title: Personalized Network Searching
Brief Description: The ’375 patent describes systems and methods for synchronizing a user's browser bookmarks ("favorite items") between multiple client devices and a remote server. The system also provides personalized search results by generating a "combined search result set" that includes results from at least two sources, such as the user's synchronized bookmarks and a global search index.

Prior Art Relied Upon: Lim (International Publication No. WO 01/55909).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Lim discloses every element of the challenged claims. Lim teaches a client-server system for managing and synchronizing a user's bookmarks between multiple devices and a remote bookmark server. For the key limitation of a "combined search results set," Petitioner contended that Lim's "remote search" function accomplishes this. The remote search queries a database containing bookmarks from all users (a first global index) which necessarily includes the particular user's own synchronized bookmarks (favorite items). Therefore, a single search sub-process in Lim generates results from both claimed sources, anticipating the claims.
- Key Aspects: Petitioner asserted that Lim's disclosure of a user's bookmarks being part of the global database searched during a "remote search" meets the claim requirement for a combined result set from a single search process.

Prior Art Relied Upon: Lim (WO 01/55909) and Adar (Patent 6,493,702).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Lim teaches the majority of the claim limitations. To the extent Lim is found not to explicitly teach presenting a combined search result set from distinct sources in a single list, Adar remedies this deficiency. Adar discloses a shared bookmark manager that performs a search on both a database of public bookmarks and, at the same time, an external search engine. Adar explicitly teaches that the results from these two sources can be "incorporated into the same list" for the user. Adar also discloses that bookmarked URLs can point to various file types, including "sound files," addressing dependent claims reciting audio files.
- Motivation to Combine: A POSITA would combine Lim and Adar because they disclose very similar client-server systems for managing bookmarks and enhancing search. A POSITA would have been motivated to incorporate Adar's explicit teaching of combining external search engine results with bookmark search results into Lim's system to improve the user experience by retrieving previously unknown documents and presenting all relevant results in a single, ranked list.
- Expectation of Success: A POSITA would have a high expectation of success, as combining the functionally similar systems would involve applying Adar's known search-combining technique to improve Lim's analogous system.

Prior Art Relied Upon: Lim (WO 01/55909) and Horn (U.S. Patent Application Pub. No. 2002/0198962).
Core Argument for this Ground:
- Prior Art Mapping: This ground provides an alternative combination for obviousness. If Lim is found not to teach a combined search result set, Horn's teachings make this element obvious. Horn discloses a "OneStep" function that allows a user to simultaneously perform a search of their stored URLs (bookmarks) and submit the same keywords to external search engines. Horn teaches that the results from both search sub-processes are placed in a single "search results file" for display to the user. Additionally, Horn explicitly teaches that bookmarked web pages can be associated with multimedia objects like "sound recordings," directly supporting limitations in dependent claims.
- Motivation to Combine: A POSITA would combine Lim and Horn to add convenience and efficiency to Lim's system. Horn's "OneStep" feature addresses the shortcoming of having to perform separate searches. Applying this feature to Lim's system would be a predictable improvement, allowing a user to simultaneously perform Lim's "local search" and "remote search" with a single action.
- Expectation of Success: Given that both Lim and Horn describe systems for managing and searching bookmarks, a POSITA would have reasonably expected success in integrating Horn's combined search function into Lim's similar framework.

"Favorite Items": Petitioner argued this term should be construed to mean "bookmarks, which are Web page locations (URLs) saved by a user for quick reference." This construction is based on the patent's interchangeable use of the terms and the ordinary meaning in the art.
"[T]he combined search results set including at least two of": Petitioner asserted this phrase requires the results set to include results from any two of the three listed categories: [a] user's favorite items, [b] a first global index, or [c] a second global index. This construction is based on the plain language of the claim, rejecting any interpretation that would mandate the inclusion of favorite items in every combination.

Petitioner argued against discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors, contending that the parallel district court case is in its early stages. Key arguments included that no trial date had been set, discovery and claim construction were not substantially complete, and the petition was filed diligently. Petitioner also argued against denial under §325(d), asserting that the primary prior art references (Lim, Adar, and Horn) were not substantively considered by the examiner during prosecution for the challenged claims. Specifically, Horn was never cited, and while Lim and Adar were cited on the patent's face or in parent applications, they were not applied against the claims at issue in the manner presented in the petition.

Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-11 and 13-20 of the ’375 patent as unpatentable.