Ohio Farmers Insurance Co v. Guada Technologies LLC

1. Case Identification

• Case #: IPR2022-00217
• Patent #: 7,231,379
• Filed: November 22, 2021
• Petitioner(s): Ohio Farmers Insurance Company and Pregis LLC
• 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 navigating a hierarchical network of nodes (e.g., an automated telephone menu) by allowing a user to input a keyword and "jump" directly to a corresponding, non-adjacent node without traversing intervening nodes. The patent also describes using a thesaurus to handle synonyms and learn new keywords.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wesemann - 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, taught all limitations of the independent claims. Wesemann disclosed a voice-enabled user interface for navigating a hierarchical telephone menu system of "menu states" (nodes). Critically, Wesemann explicitly taught a method to "jump from one menu state to another menu state... without having to enter input for every 'in between' menu state." For example, a user at a main menu could say "home computer support" to jump directly to that node, bypassing parent nodes like "sales" and "computer support." Petitioner contended that Wesemann’s use of a "template" that maps user voice inputs to specific menu states was analogous to the ’379 patent's claimed "index" that maps keywords to nodes.
  • Key Aspects: Petitioner emphasized that Wesemann's system performed the jump automatically based on voice commands, aligning with the core novelty asserted for the ’379 patent.

Ground 2: Obviousness over Wesemann in view of Rajaraman - 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: This ground built upon Wesemann as the base system for claim 1 and added Rajaraman to address the thesaurus-related limitations of dependent claims 3-6. Petitioner argued that Rajaraman taught a hierarchical search system that used a "special terms file" (a thesaurus) to correlate keywords with synonyms. For instance, Rajaraman’s system could recognize "blouse" as a synonym for the "women's shirts" classification. Furthermore, Rajaraman disclosed a "log analyzer" that could identify failed search queries (e.g., misspellings like "aparel") and allow an analyst to add them to the thesaurus as learned synonyms for existing keywords (e.g., "apparel"), thus teaching the "learning" limitations of claims 5 and 6.
  • Motivation to Combine: A POSITA would have been motivated to combine Rajaraman's thesaurus functionality with Wesemann's navigation system to improve usability. Adding synonym recognition would provide greater flexibility for users unaware of the exact, predetermined keywords. Petitioner noted that Wesemann itself suggested that additional data could be stored in its template to expand keyword scope, providing an express motivation to incorporate a system like Rajaraman's.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success because combining a known thesaurus function with a hierarchical menu system was a predictable application of known technologies to improve a known system.

Ground 3: Obviousness over Fratkina - Claims 1, 2, and 7 are obvious over Fratkina

• Prior Art Relied Upon: Fratkina (Patent 7,539,656).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Fratkina as an alternative primary reference that taught the core "jumping" invention. Fratkina, also not cited during prosecution, disclosed a dialogue engine for navigating hierarchical "taxonomies" using an interactive voice response (IVR) system. Petitioner argued that Fratkina's "autocontextualization" feature explicitly taught jumping to a specific, non-adjacent node. The feature allowed a dialog designer to specify a place to jump to, enabling a user to bypass intermediate steps in a conversational flow. For example, a user at a "breakfast" node could say "scrambled eggs" and jump directly to that node without first traversing through the intermediate "eggs" node. Fratkina also taught providing verbal prompts to the user at each node, meeting the limitations of claim 2.
  • Key Aspects: The argument centered on Fratkina's express disclosure that its system "may jump to a node (or set of nodes) more than one edge away from the previous focus," which Petitioner contended directly mapped onto the ’379 patent's "jumping" limitation.

• Additional Grounds: Petitioner asserted that claims 3-6 are obvious over Fratkina in view of Rajaraman, relying on the same thesaurus and learning teachings from Rajaraman as described in Ground 2, but applying them to Fratkina’s base system.

4. Key Claim Construction Positions

• "jumping": Petitioner adopted the Patent Owner's prior construction of "jumping" as "a direct traversal from one node or vertex to another node or vertex that is not directly connected to it." The core of the petition was that the prior art met this specific definition.
• "keyword": Petitioner argued for a construction of "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 supported the argument that the "acceptable inputs" in Wesemann and "concept node" identifiers in Fratkina functioned as keywords.
• "node" / "vertex": Petitioner argued these terms were used interchangeably in the patent to mean "a specific choice or option in a hierarchy."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion under §314(a) to deny institution, despite this being the fifth petition filed against the ’379 patent. Key arguments included:
  • The current Petitioners are unrelated to any prior petitioners and only filed this petition after being threatened with infringement allegations by the Patent Owner.
  • Prior proceedings were terminated due to settlement before a Final Written Decision, meaning the Board has not yet reached a final conclusion on the merits of the asserted prior art.
  • Institution would be efficient as the Board has previously found these same grounds sufficient for institution in a prior IPR, and it serves the public interest to resolve the validity of a patent that has been serially asserted against dozens of entities.

6. Relief Requested

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