Apple, Inc. v. Motorola Mobility LLC, APPEAL 2014-002485

• Decision Date: 14 May 2014
• Docket Number: APPEAL 2014-002485
• Parties: APPLE, INC., Patent Owner and Appellant v. MOTOROLA MOBILITY LLC, Requester and Respondent Inter Partes Reexamination Control 95/000, 685 United States Patent 8, 086, 604 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

APPLE, INC., Patent Owner and Appellant
v.
MOTOROLA MOBILITY LLC, Requester and Respondent

Inter Partes Reexamination Control 95/000, 685 United States Patent 8, 086, 604 B2 Technology Center 3900

APPEAL 2014-002485

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 14, 2014

FILING DATE: 08/16/2012

Before JOHN A. JEFFERY, MARC S. HOFF, and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

DECISION ON APPEAL

JEFFERY, Administrative Patent Judge.

Patent Owner Apple, Inc. appeals under 35 U.S.C. §§ 134 and 315 the Examiner's decision to reject claims 1-21. We have jurisdiction under 35 U.S.C. §§ 134 and 315, and we heard the appeal on May 7, 2014. We affirm.

STATEMENT OF THE CASE

This proceeding arose from a request for inter partes reexamination filed on behalf of Requester, on August 16, 2012, of United States Patent 8, 086, 604 B2 ("the '604 patent"), issued to Arrouye et al. on December 27, 2011.

The '604 patent describes a universal interface that uses plural heuristic algorithms to identify an item of information (e.g., document, application, or Internet web page) responsive to at least one information descriptor. Candidate items are located and displayed for selection and/or removal. See generally '604 patent, Abstract; col. 1, ll. 15-21. Claim 1 is illustrative of the invention and is reproduced below with our emphasis:

Claim 1: A method for locating information in a network using a computer, comprising

receiving by the computer an inputted information descriptor from a user-input device

providing said information descriptor received from the user-input device to a plurality of heuristic modules wherein

each heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm corresponding to said respective area to search the area for information that corresponds to the received information descriptor, and

the search areas include storage media accessible by the computer;

searching by the heuristic modules, based on the received information descriptor, the respective areas of search using the predetermined heuristic algorithms corresponding to each respective area of search;

providing at least one candidate item of information located by the heuristic modules as a result of said searching; and

displaying by the computer a representation of said candidate item of information on a display device.

RELATED PROCEEDINGS

This appeal is said to be related to various proceedings involving the '604 patent, namely (1) Apple Inc. v. Samsung Electronics Co., Ltd., 877 F.Supp.2d 838 (N.D. Cal. 2012) and (2) Apple Inc. v. Samsung Electronics Co., Ltd., 695 F.3d 1370 (Fed. Cir. 2012). See App. Br. 1, Rel. Proc. App'x; see also Resp. Br. 1, Rel. Proc. App'x.^[1]

THE APPEALED REJECTIONS

Patent Owner appeals the Examiner's rejections summarized below:

Claims 1-16, 18, and 20 under 35 U.S.C. § 102(e) as anticipated by Singhal (US 6, 370, 527 B1; issued Apr. 9, 2002; filed Dec. 29, 1998).

Claims 1, 2, 5-7, 10-12, 15, 16, 18, and 20 under 35 U.S.C. § 102(b) as anticipated by Spencer (US 5, 826, 261; issued Oct. 20, 1998).

Claims 3, 4, 8, 9, 13, and 14 under 35 U.S.C. § 103(a) as obvious over Spencer and Singhal.

Claims 17, 19, and 21 under 35 U.S.C. § 103(a) as obvious over Singhal and Schmitt (US 5, 983, 220; issued Nov. 9, 1999).

Claims 17, 19, and 21 under 35 U.S.C. § 103(a) as obvious over Singhal and Mike O'Brien, The New Domino R5 Directory Catalog: An Administrator's Guide, The View (Nov./Dec. 1998) ("R5 Catalog").

Claims 17, 19, and 21 under 35 U.S.C. § 103(a) as obvious over Spencer and R5 Catalog.

THE ANTICIPATION REJECTION OVER SINGHAL

The Examiner finds that Singhal discloses every recited element of claim 1 including providing a received information descriptor to plural "heuristic modules, " namely search engine devices 140-160. RAN 4-12, 36-46. Each such "heuristic module" is said to not only correspond to a respective area of search by covering only part of a network, but also employs different, predetermined heuristic algorithms corresponding to respective search areas by each search engine determining its own related search terms to search different locations. RAN 4-10, 39-41. Requester concurs with these findings. See Resp. Br. 2-12.

Patent Owner argues that Singhal does not disclose different, predetermined heuristic algorithms as claimed. App. Br. 12-13; Reb. Br. 6-7. According to Patent Owner, Singhal does not teach that each search engine must search differently as the Examiner asserts, let alone use a different, predetermined heuristic algorithm. Id Patent Owner adds that Singhal also does not disclose a heuristic module or algorithm that corresponds to a respective area of search-an area that is said to refer to a particular type of information, not a storage location as the Examiner asserts. App. Br. 13; Reb. Br. 3-4, 7. Lastly, Patent Owner argues that because Singhal's alleged "heuristic modules" are external to the user's device, they are not part of the computer recited in independent claims 1 and 11, or the apparatus recited in independent claim 6. App. Br. 14; Reb. Br. 4-5, 7-8.

ISSUES

(1) Under § 102, has the Examiner erred in rejecting claims 1, 6, and 11 by finding that Singhal provides a received information descriptor to plural heuristic modules, where each module (a) corresponds to a respective area of search and (b) employs a different, predetermined heuristic algorithm corresponding to the respective search area?

(2) Does the computer recited in independent claims 1 and 11 or the apparatus recited in independent claim 6 preclude Singhal's search engine devices from corresponding to the recited heuristic modules?

ANALYSIS

We begin by construing a key recited term central to this dispute, namely a "heuristic algorithm." As the district court noted in related litigation, the '604 patent is "not particularly illuminating" regarding the construction of this term. Apple, 877 F.Supp.2d at 864. Notably, the court emphasized that apart from referring frequently to using heuristics to conduct searches within each module's search area, the '604 patent did not further explain how "heuristics" is defined. Id.

Nevertheless, based on the intrinsic record, the court construed a heuristic algorithm as "a search algorithm that employs some 'rule of thumb' and does not consist solely of constraint satisfaction parameters." Apple, 877F.Supp.2d at 866.

Although the court's construction informs our understanding of heuristic algorithms, we are not bound by this interpretation, for like the Examiner, we apply a different standard to interpret claims, namely the broadest reasonable interpretation. Accord In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1371 (Fed. Cir. 2004) ("[I]t is error for the Board to 'appl[y] the mode of claim interpretation that is used by courts in litigation, when interpreting the claims of issued patents in connection with determination of infringement and validity.'" (quoting In re Zletz, 893 F.2d 319, 321 (Fed.Cir.1989))).

Recognizing this distinction, and in light of the intrinsic...