Beable Education Inc v. AChiEve3000 Inc

1. Case Identification

• Case #: IPR2021-01169
• Patent #: 9,652,993
• Filed: July 19, 2021
• Petitioner(s): Beable Education Inc.
• Patent Owner(s): Achieve3000, Inc.
• Challenged Claims: 1-14

2. Patent Overview

• Title: System and Method for Providing Differentiated Content
• Brief Description: The ’993 patent describes a web-based computer system and method for automatically modifying a source text to generate multiple versions of that text, each tailored to a different reading difficulty level to accommodate the specific skill levels of different users.

3. Grounds for Unpatentability

Ground 1: Obviousness over Cappellucci, Cupp, and Tudor - Claims 1-14 are obvious over Cappellucci, Cupp, and Tudor.

• Prior Art Relied Upon: Cappellucci_949 (Application # 2003/0039949), Cappellucci_934 (Application # 2003/0078934), Cupp (Application # 2003/0068603), and Tudor (Application # 2003/0017442).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the prior art combination discloses all elements of the challenged claims. The Cappellucci references (collectively "Cappellucci") teach a foundational e-learning platform that delivers customized educational content to users based on profiles (e.g., grade level) and correlates content to a set of "master learning objectives" (MLOs) organized hierarchically with unique numerical codes. Cupp teaches a specific, computer-implemented method for analyzing a text's readability and iteratively modifying it (e.g., changing vocabulary, sentence length) to achieve a target reading level. Tudor teaches a method for creating learning objectives by analyzing official educational standards (e.g., state, national).

  Petitioner asserted that the combination addresses the key limitations of independent claims 1 and 8 as follows: Cappellucci’s platform provides the framework for obtaining unmodified content and delivering it to users. A POSITA would have integrated Cupp's automated readability modification engine into Cappellucci’s platform to analyze the unmodified content and generate multiple aligned versions, each at a different reading level. This modified content would then be delivered to users based on their skill level, as suggested by Cappellucci’s user profiling capabilities. Tudor’s teachings on analyzing educational standards would be used to generate the MLOs (the claimed "unique standards code") within the Cappellucci system, ensuring they are robust and aligned with established educational goals. Dependent claims were argued to be obvious based on additional specific teachings in the references or the general knowledge of a POSITA.

  • Motivation to Combine: Petitioner asserted multiple motivations. A POSITA would combine Cupp with Cappellucci to improve Cappellucci’s generalized content differentiation with Cupp’s specific and known methods for automated readability adjustment, a predictable way to enhance the platform’s educational efficacy. This addressed the well-known need in education to provide materials suited to students' varying reading abilities. A POSITA would combine Tudor with the Cappellucci/Cupp system because Cappellucci discloses using MLOs but is not explicit on their creation. Tudor provides the missing teaching, describing how to derive such objectives from official standards, thereby making the MLOs in Cappellucci more robust and pedagogically sound.

  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success because all references operate in the predictable field of computer-based educational software. Combining the known software modules of Cupp (readability modification) and Tudor (standards analysis) with the e-learning platform of Cappellucci involved applying known techniques to improve a similar system and achieve predictable results.

4. Key Claim Construction Positions

• Petitioner argued that two terms in the claims are typographical errors from prosecution and requested the Board correct them through interpretation.
  • "equivalent substantially similar" (Claim 1): Petitioner contended this term should be construed as "substantially similar." The applicant had amended the claim to replace "equivalent" with "substantially similar," but an Examiner's amendment later mistakenly reintroduced the word "equivalent" without underlining, indicating it was an error.
  • "algorithmically transforming" (Claim 8): Petitioner contended this term should be construed as "transforming." The applicant had deleted "algorithmically" in response to a rejection, but the term was mistakenly reintroduced in a subsequent Examiner's amendment, again without underlining.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution.
  • §314(a) (Fintiv Factors): Petitioner asserted that a co-pending district court case was in a very early stage, with no claim construction, discovery, or case schedule yet established. Therefore, the Fintiv factors weighed strongly in favor of institution to avoid wasting judicial and party resources.
  • §325(d) (Advanced Bionics Factors): Petitioner argued that denial under §325(d) was inappropriate because the prior art references and arguments asserted in the petition were never presented to or considered by the USPTO during the original prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of the ’993 patent as unpatentable.