EXHIBIT B 

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Trials@uspto.gov Paper No. 48

Tel: 571-272-7822 Entered: July 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_______________

EBAY INC.,

Petitioner,

v.

MASTEROBJECTS, INC.,

Patent Owner. 

_______________ 

Case IPR2017-00740

Patent 8,539,024 B2

_______________

Before KARL D. EASTHOM, ROBERT J. WEINSCHENK, and

CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

FINAL WRITTEN DECISION 

35 U.S.C. § 318(a)

37 C.F.R. § 42.73

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I. INTRODUCTION

We have authority to hear this inter partes review under 35 U.S.C. 

§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and 

37 C.F.R. § 42.73. For the reasons discussed herein, we determine that 

eBay, Inc. (“Petitioner”)1 has not shown, by a preponderance of the 

evidence, that claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 of U.S. 

Patent No. 8,539,024 B2 (Ex. 1001, “the ’024 patent”) are unpatentable. See

35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).

A. Procedural History

Petitioner filed a Petition for inter partes review of claims 1–3, 6, 7, 9, 

12, 15–17, 21, 24–26, and 32–37 of the ’024 patent (Paper 2, “Petition” or 

“Pet.”), and MasterObjects, Inc. (“Patent Owner”)2subsequently filed a 

Preliminary Response (Paper 6, “Prelim. Resp.”). In addition, Petitioner 

filed an authorized Reply to Patent Owner’s Preliminary Response. Paper 7. 

On July 27, 2017, we instituted an inter partes review of all claims and all 

grounds presented in the Petition, namely claims 1–3, 6, 7, 9, 12, 15–17, 21, 

24, 25, 32, 33, 35, and 36 of the ’024 patent as unpatentable under 35 U.S.C. 

§ 102(e) as anticipated by Kravets3and under 35 U.S.C. § 103(a) as obvious 

over Kravets, and claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 of 

the ’024 patent as unpatentable under 35 U.S.C. § 103(a) as obvious over the 

 

1 Petitioner identifies itself as the as real party in interest, pursuant to 37 

C.F.R. § 42.8. Paper 2, 65.

2 Patent Owner identifies itself as the as real party in interest, pursuant to 37 

C.F.R. § 42.8. Paper 5, 2.

3 U.S. Patent No. 6,704,727 B1 (Ex. 1003, “Kravets”).

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combination of Kravets and Bauer.

4

 Pet. 2; Paper 8, 39 (“Institution 

Decision” or “Inst. Dec.”).

After institution, Patent Owner filed a Response. Paper 15

(“Response” or “PO Resp.”).

5

 Petitioner thereafter filed a Reply to Patent 

Owner’s Response. Paper 25 (“Reply”).6

Patent Owner also filed a Conditional Motion to Amend [Claims] 

Under 37 C.F.R. § 42.121, which proposes substitute claims 38 and 39 as 

substitutes for claims 16 and 36, respectively, should we determine 

claims 16 and 36 are unpatentable. Paper 17 (“Motion to Amend” or 

“Mot.”). Petitioner thereafter filed an Opposition to Patent Owner’s Motion 

to Amend. Paper 27 (“Opposition” or “Opp.”). Patent Owner subsequently 

filed a Reply to Petitioner’s Opposition. Paper 31 (“Reply to Petitioner’s 

Opposition” or “Reply to Opp.”). 

An oral hearing was held on May 2, 2018. A transcript of the hearing 

is included in the record. Paper 47 (“Tr.”). 

 

4 U.S. Patent No. 6,751,603 B1 (Ex. 1005, “Bauer”).

5 Patent Owner filed both a confidential (Paper 16) and non-confidential 

(Paper 15) version of its Response. This Final Written Decision need not, 

and does not, rely on or cite to information designated as confidential. 

Therefore, herein, we cite to the non-confidential version of Patent Owner’s 

Response.

6 Petitioner filed both a confidential (Paper 26) and non-confidential 

(Paper 25) version of its Reply. This Final Written Decision need not, and 

does not, rely on or cite to information designated as confidential. 

Therefore, herein, we cite to the non-confidential version of Petitioner’s 

Reply to Patent Owner’s Response.

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B. Additional Proceedings

According to the parties, Patent Owner has asserted the ’024 patent 

against Petitioner in MasterObjects, Inc. v. eBay Inc., Case No. 4:16-cv06824 (N.D. Cal.). Pet. 66; Paper 5, 2. Patent Owner also has asserted the 

’024 patent, in other district court proceedings that are no longer pending, 

against non-parties to this case. Pet. 66; Paper 5, 2–3. Also, Patent Owner 

has asserted patents related to the ’024 patent in district court. Pet. 66. 

C. The ’024 Patent

The application leading to the ’024 patent, Application No. 

13/366,905 (“the ’905 Application”), was filed on February 6, 2012. 

Ex. 1001, [21], [22]. The ’905 Application is a continuation of Application 

No. 9/933,493, filed on August 20, 2001. Id. at [63]. Patent Owner does not 

assert an earlier priority date than the filing date of the ’905 Application. 

Accordingly, for purposes of this Final Written Decision, the earliest priority 

date is August 20, 2001. 

The ’024 patent’s specification (the “Specification”) states that

the invention provides a session-based bi-directional multitier client-server asynchronous information database search 

and retrieval system for sending a character-by-character 

string of data to an intelligent server that can be configured 

to immediately analyze the lengthening string character-bycharacter and return to the client increasingly appropriate 

database information as the client sends the string.

Ex. 1001, 8:31–38.

According to the Specification, one advantage of early client-server 

systems was that data could be stored centrally, i.e., at the server, yet could 

be worked with locally, i.e., at the client. Id. at 2:5–17. The Specification 

states that early client-server systems had a problem, however, because 

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“changes to data on the server weren’t updated immediately on the client.” 

Id. at 2:18–30. As a result, the client could be manipulating data that is no 

longer current. See id. The Specification also states that most client-server 

systems using Internet protocols are “session-less,” which has both 

advantages and disadvantages. Id. at 2:47–65. An alleged disadvantage of 

session-less connections is that “there is no totally reliable way for the server 

to automatically update the client display once the server data change[s].” 

Id. at 2:51–54. Furthermore, in a session-less environment, the server only 

checks the validity of input at the client after the client submits an entire 

input form. The Specification states that the invention “offers a highly 

effective solution to the aforementioned disadvantages of both client-server 

and Internet systems by providing a way to synchronize the data entered or 

displayed on a client system with the data on the server system.” Id. at 

5:66–6:3. Furthermore, “[d]ata input by the client are immediately 

transmitted to the server, at which time the server can immediately update 

the client display.” Id. at 6:3–5.

The Specification discloses a purportedly improved client-server 

system that facilitates an improved “sophisticated ‘auto-completion’ or ‘type 

ahead’ function that is extremely useful when filling out forms.” Id. at 6:27–

30. The Specification alleges that early client-server systems, unlike the 

system of the invention, did not enable servers to generate auto-complete 

suggestions as the user entered characters into an input string. Id. at 6:45–

48. Another alleged drawback of prior art systems was that the data used to 

generate auto-complete suggestions was stored on a client, which limited the 

flexibility, power and speed of the system. Id. at 9:25–40.

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Figure 1 of the Specification, reproduced below, illustrates a clientserver system.

Ex. 1001, Fig. 1. Figure 1 depicts clients 101, servers 103, and services 105. 

Id. Clients 101 “use a communication protocol 102 to send information, 

including but not limited to single characters, and to receive information, 

including but not limited to lists of strings and corresponding metadata.” 

Id. at 12:51–55. “At least one Server 103 receives information from the 

Client and sends information to the Client.” Id. at 12:55–56. Server 103 

sends requests for information to Service 105, and Service 105 returns 

responses to Server 103, which may be returned to the client. Id. at 14:12–

19. The communication protocol “is optimized for sending single characters 

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from a Client to the Server, and lists of strings from the Server to the 

Client.” Id. at 11:58–61. 

The Specification states that the disclosed “system is bi-directional 

and asynchronous, in that both the Client and the Server can initiate 

communications at any moment in time. The functionality of the system is 

such that it can run in parallel with the normal operation of clients.” Id. at 

12:24–27. The Specification describes an exemplary embodiment of the 

event flow associated with an auto-complete Service with reference to 

Figure 4. Id. at 18:18–20. When a user types the character “a” into a 

Questlet, i.e., a user interface element, a character event is generated to 

indicate the user’s action. Id. at 10:60–62, 18:45–47. A client “Quester” 

sends a message to the client controller telling it to append the character “a” 

to the client Quester’s input buffer. Id. at 18:48–49. The client controller 

then uses a protocol to synchronize the input buffer in the server Quester 

with the buffer in the client Quester. Id. at 18:53–55. The server controller 

may then look up query “a” in its Result Set cache, and if there is a previous 

Result Set in the cache, the Result Set is sent to the client without having to 

access the service. Id. at 18:55–63. When the user types a second character 

“b” into the Questlet, a corresponding event arrives at the server Quester, 

and the server Quester may, rather than search its Result Set cache, send an 

appropriate query message “ab” to the service. Id. at 18:64–19:2. The 

service executes the query and returns an appropriate Result Set for the “ab” 

query to the client. Id. at 19:2–7. The server Quester may be set up to autorepeat query “ab” and continue to send updated Result Sets to the client. 

Id. at 19:13–14. When a user types a third character “c” into the Questlet, 

while character “c” is being sent to the server, a second and possibly third 

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Result Set from query “ab” query may still be on route to the client. Id. at 

19:15–18. When the client controller determines that an incoming Result 

Set for query “ab” does not match the current input string “abc,” the 

incoming Result Set is not forwarded to the Active Component, i.e., user 

interface, and therefore is not displayed to the user. Id. at 19:18–21. Also, 

the server Quester receives notice that character “c” has been appended to its 

input buffer, and the server Quester sends a new query “abc” to the service. 

Id. at 19:28–30. The server Quester then stops repeating execution of query 

“ab” and executes new query “abc.” Id. at 19:30–33.

The Specification states that the client Quester “is intended to be 

multi-threaded, so that it can continue providing its services to its Active 

Component while it waits for results from the [] Server.” Id. at 20:24–26. 

Results may be received not just from the most recent query, but also from 

an earlier query, “because the system is multi-threaded and multi-tier.” 

Id. at 20:26–34. On the server side, separate execution threads are used for 

processing query requests, and processing and sending query results to the 

client. Id. at 20:61–21:21. Accordingly, these threads can execute in 

parallel.

D. Challenged Claims

Of the challenged claims noted above, claims 1, 32, 35, 36, and 37 are 

independent. Claim 1, reproduced below, is illustrative:

1. A system comprising: 

a server system, including one or more computers, which is 

configured to receive query messages from a client object, the 

server system asynchronously receiving and responding to the 

query messages from the client object over a network;

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the client object that, while a user is providing input comprising 

a lengthening string of characters, sends query messages to the 

server system;

whereby the query messages represent the lengthening string as 

additional characters are being input by the user; and

wherein the server system, while receiving said query messages, 

uses the input to query data available to the server system and 

send return messages to the client object containing results in 

response to the input; and

wherein, upon receiving a return message of the return messages 

from the server system, the client object tests the usability of the 

results in the return message by checking that the return message 

corresponds to the latest query, and if usability is established, the 

client object displays or returns at least some result data to the 

user.

Ex. 1001, 31:52–32:7.

II. DISCUSSION

A. Level of Ordinary Skill in the Art

Factors that may be considered in determining the level of ordinary 

skill in the art include, but are not limited to, the types of problems 

encountered in the art, the sophistication of the technology, and educational 

level of active workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579 

(Fed. Cir. 1995).

Petitioner’s declarant, Richard N. Taylor, Ph.D., opines that a person 

of ordinary skill in the art in the field of the ’024 patent

would have been someone with a good working knowledge 

of data retrieval and at least one application level networking 

protocol. The person also would likely be familiar with 

Internet standards related to communications, programming 

languages, database systems, and a variety of client-server 

systems and technologies. The person would have gained 

this knowledge either through education (e.g., a Bachelor of 

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Science in Computer Science) and training, several years of 

practical working experience, or through a combination of 

these.

Ex. 1007 ¶ 48.

Patent Owner’s declarant, George Edwards, Ph.D., concurs with Dr. 

Taylor’s “characterization of a person of ordinary skill in the art, and “would 

add that the relevant field of study of the ’024 Patent is software engineering 

generally and distributed systems particularly.” Ex. 2002,7¶ 18.

We determine that the differences between the declarants’ assertions 

are immaterial to our analysis and that both assessments are consistent with 

the ’024 patent and the referenced prior art. For purposes of our 

determination below, we adopt Dr. Taylor’s description of the level of 

ordinary skill in the art. However, our analysis would have been the same 

had we adopted Dr. Edward’s description.

B. Claim Construction

In an inter partes review, claim terms in an unexpired patent are 

interpreted according to their “broadest reasonable construction in light of 

the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); 

see also Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2141–46 

(2016). We interpret claim terms using “the broadest reasonable meaning of 

the words in their ordinary usage as they would be understood by one of 

ordinary skill in the art, taking into account whatever enlightenment by way 

 

7 Patent Owner filed both a confidential and non-confidential version of 

Exhibit 2002. This Decision need not, and does not, rely on or cite to

information designated as confidential. Therefore, herein, we cite to the 

version of Exhibit 2002 filed as non-confidential.

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of definitions or otherwise that may be afforded by the written description 

contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 

1054 (Fed. Cir. 1997). “Under a broadest reasonable interpretation, words 

of the claim must be given their plain meaning, unless such meaning is 

inconsistent with the specification and prosecution history.” Trivascular, 

Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). We apply these 

standards, and we determine no claim terms require express construction.

See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 

2011) (“[C]laim terms need only be construed ‘to the extent necessary to 

resolve the controversy.’”) (quoting Vivid Techs. v. Am. Sci. Eng’g, Inc., 200 

F.3d 795, 803 (Fed. Cir. 1999)).

C. Principles of Law

To prevail in its challenges to the patentability of the claims, 

Petitioner must prove its propositions of unpatentability by a preponderance 

of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).

Under 35 U.S.C. § 102, “[a] claim is anticipated only if each and 

every element as set forth in the claim is found, either expressly or 

inherently described, in a single prior art reference.” Verdegaal Bros., Inc. 

v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Also,

Section 103 forbids issuance of a patent when “the differences 

between the subject matter sought to be patented and the prior 

art are such that the subject matter as a whole would have been 

obvious at the time the invention was made to a person having 

ordinary skill in the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. 

§ 103).

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D. Unpatentability In View of Kravets

Petitioner asserts that claims 1–3, 6, 7, 9, 12, 15–17, 21, 24, 25, 32, 

33, 35, and 36 of the ’024 patent are unpatentable under 35 U.S.C. § 102(e) 

as anticipated by Kravets. Pet. 2, 15–55; Reply 1–21. Petitioner relies on

declarations of Dr. Taylor to support its contentions. Exs. 1007, 1028, 1031. 

In our Decision on Institution, we also instituted inter partes review on 

grounds that claims 1–3, 6, 7, 9, 12, 15–17, 21, 24, 25, 32, 33, 35, and 36 of 

the ’024 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over 

Kravets. Id. at 38–39. Patent Owner disputes Petitioner’s contentions, 

arguing that Kravets discloses neither the “asynchronous” claim limitations 

nor the claimed “usability test.” PO Resp. 9–24, 31–46. Patent Owner relies 

on declarations of Dr. Edwards to support its contentions. Exs. 2002, 2004, 

2014. We have reviewed the full record from trial, and we determine that 

Petitioner has not shown by a preponderance of the evidence that claims 1–

3, 6, 7, 9, 12, 15–17, 21, 24, 25, 32, 33, 35, and 36 of the ’024 patent are 

unpatentable as anticipated by Kravets or as obvious over Kravets.

1. Overview of Kravets (Ex. 1003)

Petitioner asserts Kravets is prior art under 35 U.S.C. § 102(e). 

Pet. 15. Patent Owner does not dispute Petitioner’s assertion that Kravets is 

prior art. Kravets issued from a patent application filed January 31, 2000. 

Ex. 1003, [22]. Based on the earliest possible priority date of the ’024 patent 

(see supra Section I.C), for purposes of this Final Written Decision, we 

conclude that Kravets is prior art to the ’024 patent under 35 U.S.C. 

§ 102(e).

Kravets discloses a method and system for providing a set of search 

terms in response to a user input. Ex. 1003, Abstract. Figure 1 of Kravets, 

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reproduced below, depicts the disclosed system.

Id. at Fig. 1. Figure 1 depicts client 20, client cache 22, website server 30, 

predictive search server 40 (“PSS”), PSS cache 42, database 50, and event 

system 70. Id. at Fig. 1, 3:10–5:54. With respect to Figure 2, Kravets 

discloses an exemplary method in which a user utilizes a web browser 

operating on client 20 to search for information available on the World Wide 

Web. Id. at 5:56–59. Figures 3 through 11 provide additional detail 

regarding the method depicted in Figure 2.

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Id. at Fig. 2. Represented in Figure 2, at step 110 a user inputs a character 

string on a keyboard, preferably comprising three alphanumeric characters, 

but the string can consist of any number of characters. Id. at 5:66–6:3. 

When the user enters the input string, client 20 generates and transmits a 

request to website server 30, which forwards the request to PSS 40. Id. at 

6:10–12, 6:15–16. The request includes the input string and requests a 

response from PSS 40. Id. at 6:13–14. At step 120, after PSS 40 receives 

the request, PSS 40 uses the input string to identify a first set of search terms 

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from a master set of search terms maintained by PSS 40. Id. at 4:16–17, 5: 

63–65, 6:20–24; see id. Figs. 3, 4. The first set of search terms may be 

stored in PSS 40’s cache memory 42. Id. at 6:26–28. Alternatively, the first 

set of search terms can be transmitted to client 20 and stored in client 20’s 

cache memory 22. Id. at 6:34–37. The second alternative is referred to as 

aggressive read ahead caching because it may limit the amount of 

information that must be transmitted from PSS 40 to client 20 in response to 

subsequent requests. Id. at 6:40–44. In step 130, PSS 40 selects a second 

set, i.e., a subset, of search terms from the first set of search terms based on 

value scores assigned to each search term in the first set of search terms. 

Id. at 7:27–32; see id. Fig. 5. In step 140, PSS 40 transmits to client 20 a 

precomputed HTML/JavaScript for each search term in the second set of 

search terms so that the second set of search terms may be displayed at the 

client to the user. Id. at 7:42–46. In an alternative embodiment, the 

precomputed HTML/JavaScript for the second set of search terms need not 

be transmitted to client 20 because it is already in client 20’s cache 

memory 22 as a result of aggressive read ahead caching. Id. at 7:46–50. 

“The second set of search terms can be displayed to the user in nearly real 

time while the user is providing the input. For example, the second set of 

search terms can be displayed to the user before the user finishes typing all 

of the characters of the search term.” Id. at 7:50–55.

Kravets discloses that the method of Figure 2 can be repeated if the 

user provides additional characters as input. Id. at 8:13–14. If a user 

provides an additional, fourth character, a revised set of search terms can be 

identified from the first set of search terms “as described herein.” Id. at 

8:14–26. The method described “herein” refers to the method of Figure 2, 

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and therefore, the first set of search terms is stored either in client 20’s cache 

memory 22 or PSS 40’s cache memory 42. Id. at 6:26–28, 6:34–37. 

Alternatively, a revised set of search terms can be identified from the master 

set of search terms “as described herein.” Id. at 8:18–21. The method 

described “herein” refers to Figure 2, and therefore, the master set of search 

terms is stored in PSS 40’s cache memory 42. Id. at 4:16–17.

Pursuant to 37 C.F.R. 1.52(e), Kravets also incorporates by reference 

Appendices A and B (Ex. 1004), which comprise exemplary client 

(Appendix A) and server (Appendix B) source code. Id. at 1:14–25; see also

Ex. 1007 ¶ 99.

2. Discussion

With regard to the challenges in view of Kravets alone, each of the 

challenged independent claims of the ’024 patent, claims 1, 32, 35, and 36, 

recites a usability test. Ex. 1001, 32:2–5 (claim 1, “the client object tests the 

usability of the results in the return message by checking that the return 

message corresponds to the latest query”), 34:37–39 (claim 32, “the client 

object tests the usability of each return message by checking that the return 

message corresponds to the latest query”), 34:63–65 (claim 35, “the client 

object checks the usability of the results of the one of the return messages 

using a more recent version of the input”), 35:19–23 (claim 36, “the client 

object tests the usability of the results in the return message by comparing 

the return message to the then-current input or matching it with a request 

identification maintained on the client object”).

For reasons discussed below, we find that Petitioner has not shown 

sufficiently that Kravets discloses or teaches the claimed usability test. 

Accordingly, we determine Petitioner has not demonstrated by a 

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preponderance of the evidence that the challenged claims are unpatentable as 

anticipated by Kravets or that the challenged claims are unpatentable as 

obvious over Kravets. Because the issue concerning the usability test is 

dispositive with regard to these grounds, we do not reach the parties’ 

evidence and arguments regarding the remaining limitations of the 

challenged claims.

For claim 1’s recitation of a “server system” Petitioner relies on 

Kravets’ website server 30 and predictive search server (“PSS”) 40. 

Pet. 17–19. For claim 1’s recitation of a “client object” Petitioner relies on 

Kravets’ client 20. Id.

Claim 1 recites that the client object “while a user is providing input 

comprising a lengthening string of characters, sends query messages to the 

server system.” Ex. 1001, 31:58–60. Petitioner relies on Kravets’ disclosure 

of a user entering a three character input string at client 20, and while the 

user enters a fourth character to the input string at client 20, client 20 

sending a request (which Petitioner alleges is a “query message”) to web 

server 30, which is subsequently forwarded to PSS 40, containing the three 

character input string. Pet. 20–22 (citing Ex. 1003, 8:37–40, 5:63–6:3, 6:8–

16, 8:13–25). Kravets incorporates by reference an appendix containing 

exemplary JavaScript code that Petitioner argues is an implementation of 

Kravets’ technique of sending requests while a user enters additional 

characters to an input string. Id. at 22 (citing Ex. 1007 ¶¶ 108, 151); see also

Ex. 1004 (Appendices A and B of Kravets, which comprise JavaScript 

code). Petitioner relies on Dr. Taylor’s testimony that the JavaScript code’s

change() function composes and sends a request to PSS 40 if there are at 

least three significant characters of search text in the search box. Id. (citing 

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Ex. 1003, Fig. 2; Ex. 1007 ¶¶ 108, 151); see Ex. 1007 ¶¶ 143–149. 

According to Dr. Taylor, the change() function is called anytime the text in 

Kravets’ search box changes, including when a user lengthens the text string 

by inputting an additional character. Ex. 1007 ¶ 108. Because the change()

function is called and sends a request to PSS 40 when a user enters an 

additional character in the search box, Petitioner argues Kravets discloses 

sending a query message to a server system while a user is providing input 

comprising a lengthening string of characters. Pet. 20–22.

Claim 1 further recites that the server system “while receiving said 

query messages, uses the input query data available to the server system and 

send[s] return messages to the client object containing results in response to 

the input.” Ex. 1001, 64–67. Petitioner relies on Kravets’ disclosure of 

PSS 40 receiving a request containing an input string and using the input 

string to identify responsive matching terms to return to client 20 for 

potential display to the user as suggestions. Pet. 23–24 (citing Ex. 1003, 

4:35–48). Petitioner contends the matching terms returned to client 20 are in 

response to a corresponding input string. Id. at 24. 

Claim 1 requires that the return messages be tested by the client object 

for usability: “the client object tests the usability of the results in the return 

message by checking that the return message corresponds to the latest 

query.” Ex. 1001, 32:1–5. Petitioner does not provide sufficient contentions 

that Kravets discloses this limitation, either expressly or inherently. Pet. 25–

29. In particular, even though Petitioner states that Kravets discloses this 

limitation, Petitioner does not provide sufficient arguments that Kravets 

discloses checking that a return message corresponds to the latest query. 

Petitioner instead argues Kravets teaches this feature by virtue of its 

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description of displaying appropriate terms to a user. Id. at 25. For reasons 

explained further below, we find Kravets does not disclose the feature or 

render it obvious. 

With respect to the term “return message,” Petitioner argues this 

“could reasonably be interpreted as one or more data packets, or a portion of 

those data packets containing result data.” Pet. 25. For disclosure of this 

claim term, Petitioner relies on Kravets’ disclosure of a response that is sent 

from PSS 40 to client 20 and includes a second set of search terms 

(comprising 6 terms in one embodiment). Id. at 27–28. For the term 

“query,” Petitioner argues this term “may be nothing more than a character

string.” Id. at 25–26. Petitioner relies on the current input string in Kravets’ 

search box, also referred to as current prefix by Petitioner, for disclosure of 

“the latest query.” Id at 26. Accordingly, under Petitioner’s arguments, 

Petitioner must show Kravets discloses or teaches checking that the response 

sent from PSS 40 to client 20 corresponds to the current input string in the 

search box.

Petitioner relies on Kravets’ disclosure that when a user enters an 

additional, fourth, character to the input string in the search box, a request 

for suggestions is sent to PSS 40. PSS 40 identifies a first set of search 

terms (whose first four characters match the four-character input string) 

from a master set, and selects a subset of the first set which is sent to 

client 20 as a response to the request. Id. at 26 (citing Ex. 1003, 8:12–24, 

Fig. 6, block 300; Ex. 1007 ¶¶ 160–162). “[A] subset of appropriate terms 

(e.g. five or six suggestions) are then displayed to the user.” Id. (citing 

Ex. 1003, 8:20–24, Fig. 6 (block 300); Ex. 1007 ¶¶ 160–162).

The disclosed technique in Kravets for determining which terms to 

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display to the user includes 1) PSS 40 identifying a first set of search terms, 

which preferably comprises 500 search terms, where the first n characters of 

each search term matches the n-character input string in the request

(Ex. 1003, 6:17–36); and 2) PSS 40 selecting a second set of search terms, 

such as 6 terms, from the first set of search terms by selecting the 6 terms 

that have the highest value scores (Ex. 1003, 7:26–40). This disclosure does 

not describe a client object testing for usability by checking that a return 

message corresponds to the latest query.

First, this disclosure relates to actions performed by the server, rather 

than the client. Id. at 6:17–36, 7:26–40 (describing PSS 40 performing this 

technique). But claim 1 requires the client object perform the test for 

usability. Ex. 1001, 32:2–3 (“the client object tests the usability of the 

results in the return message”) (emphasis added).

Next, with regard to identifying a first set of search terms based on 

finding terms whose first n characters match the n-character input string in a 

specific request received by PSS 40, Kravets does not describe checking to 

see whether the n-character input string in the specific request corresponds 

the current input string (which may have changed since the sending of the 

specific request) in the search box.

With regard to selecting a second set of search terms, Petitioner does 

not present evidence or argument that selection in Kravets of a subset of 

terms (for example, 6 terms) from the first set of terms (preferably 500 

terms) based on value scores has anything to do with checking that the first 

set of search terms corresponds to the current input string in the search text 

box.

Accordingly, the technique described in Kravets for determining 

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which search terms to display neither discloses nor teaches the claimed 

usability test. 

As an attempt to show Kravets discloses the usability test, Petitioner 

provides an exemplary scenario it argues would have occurred in a system 

implementing the JavaScript in Kravets’ Appendix A to arrive at the display 

illustrated in Figure 6 of Kravets. Pet. 26–27. Figure 6 of Kravets is 

reproduced below.

Ex. 1003. Figure 6 depicts a search engine input screen with a search box in 

which a user enters an input string. Id. at 7:55–58, Fig. 6. The search box 

comprises the character string “Toile.” A second set of search terms 300, 

i.e., a subset of the first set of search terms selected based on value scores 

(id. at 7:26–40), is displayed to the user in the search engine input screen. 

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Id. at 7:58–61, Fig. 6. Each search term 300 displayed to the user begins 

with the string “toile,” i.e., the current string in the search box. Id. Fig. 6.

Petitioner argues that a skilled artisan would have understood Kravets 

teaches the following scenario depicted in the table below to arrive at the 

arrangement shown in Figure 6.

Pet 27 (citing Ex. 1007 ¶¶ 164–166). This table, which appears in the 

Petition, depicts what Petitioner asserts is the timing of events leading to the 

display shown in Figure 6 of Kravets. In this scenario, Petitioner contends 

suggestion results for a particular input string, e.g., the input string “toi,” 

received by a client from a server at time T4, are returned in a “return 

message,” R1. Id. at 27–28. Petitioner further contends that the results for 

the input string “toil,” e.g., the input string resulting from a user adding the 

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character “l” to the input string “toi,” results in the client receiving a revised 

set of suggestion results from the server at time T11, and therefore results in a

second “return message,” R2. Id. Petitioner argues that the test for usability 

takes place at steps occurring at times T6 and T12 because the JavaScript in 

Kravets’ Appendix A “teaches that the list of [suggestion results] is 

compared against the current input string, discarding entries that do not 

match the current input string.” Id. at 29 (citing Ex. 1007 ¶¶ 112–122, 171). 

Petitioner contends it is the client that performs this comparison. Id. at 27 

(e.g., “Client trims revised set of results for ‘toil’”).

In support of the argument that Kravets’ JavaScript teaches the client 

performing a usability test at times T6 and T12, Petitioner relies on portions 

of Dr. Taylor’s declaration that describe the following program functions: 

setCache() and scrollCache(). Ex. 1007 ¶¶ 112–122. Dr. Taylor opines that 

setCache() executes when a response is received from a PSS, and, if the 

response is received within a specified time, executes the function 

scrollCache(). Id. ¶ 112. According to Dr. Taylor, scrollCache() “builds the 

list of candidates that will be displayed to the user” by “cycl[ing] through the 

list of candidates in the cache.” Id. ¶ 115. Dr. Taylor states that “all entries 

that do not begin with the current prefix as well as those which are shorter 

than the prefix” will be skipped. Id. If there are 5 or more suggestions, then 

the 5 results with the highest value scores are selected for display, according 

to Dr. Taylor. Id. ¶ 119.

Patent Owner does not dispute Petitioner’s argument that Kravets 

discloses scrolling through the client cache and skipping search terms that do 

not correspond to the current input string in the search box. PO Resp. 20; 

Tr. 45:1–22. Patent Owner disputes, however, that Kravets uses the same 

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technique as recited in claim 1. PO Resp. 21–22 (the claim limitation

“do[es] not merely require a usability test to be performed, but also 

specif[ies] how that test must be performed” and “A client object that . . . 

does the test in a different way . . . would not fall within the scope of 

claim 1”); Tr. 45:1–22.

Patent Owner argues that the local cache that is scanned in Kravets 

includes results from several queries. PO Resp. 23 (“The cached results may 

include results contained in numerous previously received server 

messages.”). According to Patent Owner, scanning a cache that includes

multiple results from multiple queries is not tantamount to checking that a 

particular return message corresponds to the latest query. Id. at 23–24.

We agree with Patent Owner that Petitioner has not shown Kravets 

discloses, teaches, or renders obvious, the technique recited in claim 1 for 

testing usability. Claim 1 specifies that the client object tests usability “by 

checking that the return message corresponds to the latest query.” Ex. 1001, 

32:2–5 (emphasis added). Petitioner has not shown that Kravtes checks that 

what Petitioner contends are return messages, messages R1 or R2, correspond 

to the current input string in the search box. Rather, according to Petitioner, 

the function scrollCache() is called when the client receives a return message 

to determine which terms to display to the user. Petitioner has shown at best

that the system in Kravets teaches checking that individual entries in the 

client cache correspond to the latest query, but not that a return message 

corresponds to the latest query. For example, a call to scrollCache() upon 

receipt of return message R2, under Dr. Taylor’s analysis of how the system 

in Kravets works, would have resulted in cycling through the client cache 

and skipping search terms that do not begin with the string “toil” (the latest 

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query). However, Patent Owner argues, and Petitioner does not disagree, 

that the search terms in the cache includes results from both return messages 

R1 and R2. PO Resp. 23; see also Tr. 23:16–24:5 (Petitioner’s counsel 

agreeing that scroll cache does not limit its search to data in the HTML 

payload, which Petitioner contends is the return message, but also searches 

the cache for data from previous payloads (e.g., what Petitioner contends are 

previous return messages)). Petitioner provides no evidence or argument 

that the system in Kravets distinguishes between cache entries returned with 

message R1 from those returned with message R2. We find that cycling 

through a cache, which includes search terms from multiple return messages, 

where there is no indication which message each search terms belongs to, 

fails to disclose or teach checking for correspondence between a return 

message and the latest query.

Our finding is consistent with the disclosure of the ’024 patent. One 

embodiment of the ’024 patent, in connection with Figure 6, describes this 

claimed feature. A Client Quester waits for and receives an event (step 604). 

Id. at 19:63. If the event is a character event, i.e., a user has entered a 

character to add to an input string, an input buffer is updated accordingly 

(step 607). Id. at 20:2–3. The client-side cache is checked to determine 

whether results for the updated input buffer is present, and may therefore be 

retrieved from, the client-side cache. Id. at 20:7–11. If corresponding 

results are not present in the client-side cache, a new query is executed and 

sent to the Server Quester by the Client Quester (step 611). Id. at 20:11–14. 

The Client Quester “is intended to be multi-threaded,” so that it can continue 

to send new queries upon additional character events (e.g., when additional 

characters are added to the input string) while it waits for results from the 

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Server Quester for previous queries. See id. at 20:24–26. Because new 

queries may be sent before results from previous queries have returned, 

results may no longer correspond to the most recent query, and therefore 

might not be usable. A Result Retriever waits for results from the Server 

Quester (step 613), and checks whether received results are usable (step 615) 

by determining whether the results correspond to the latest query. Id. at 

20:30–32. Even if results do not correspond to the latest query, they may 

still be usable if the Client Quester can filter the results to match to the latest 

input buffer. Id. at 20:34–36. The disclosure regarding Figure 6 does not 

provide details regarding how the Result Retriever determines whether 

results correspond to the latest query. However, the disclosure 

accompanying Figure 8 of the ’024 patent describes an embodiment of the 

alleged invention that describes a technique for making such a determination 

by associating an identifier with each query, wherein the identifier is copied 

into the corresponding result. Id. at 21:30–31. In pertinent part, the ’024

patent discloses

[e]very time a Client Quester . . . send[s] something new to the 

Server Quester that may result in a new QuestObjects Result Set, 

it includes a request identifier. This identifier is then copied in 

the resultSetId when the QuestObjects Result Set is sent to the 

Client Quester. In this way Client Questers know which request 

the QuestObjects Result Set belongs to. (This is important 

because the system is asynchronous and on occasions it may 

occur that a newer QuestObjects Result Set is sent to the client 

before an older one. The request identifier and QuestObjects 

Result Set identifier allow the Client Quester to detect and handle 

this.). 

Id. at 23:30–41. During the hearing, Patent Owner acknowledged that this 

disclosure describes testing the usability of the results in the return message 

by checking that the return message corresponds to the latest query. 

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Tr. 52:9–25. Claim 36 of the ’024 patent suggests another technique for 

determining usability by comparing the return message to “the then current 

input” string. Ex. 1001, 35:19–21. In both instances, the return message is 

compared or checked. Claims 1 and 36 even distinguish between the results 

contained in the return message and the return message itself. Id. at 32:2–5 

(claim 1, “the client object tests the usability of the results in the return 

message by checking that the return message corresponds to the latest 

query”), 35:19–22 (claim 36, “the client object tests the usability of the 

results in the return message by comparing the return message to the thencurrent input or matching it with a request identification”).

We find that, consistent with the ’024 patent disclosure, the plain 

language of claim 1 requires checking that the return message corresponds 

to the latest query. It is insufficient to check suggestion results in the cache, 

where there is no indication which return message each suggestion in the 

cache is associated with. Such checks do not amount to checking that a 

particular return message corresponds to a particular input string.

Independent claim 32 recites a similar usability test to that of claim 1, 

namely “the client object tests the usability of each return message by 

checking that the return messages corresponds to the latest query.” 

Ex. 1001, 34:37–39. Petitioner notes that claim 32 requires checking more 

than one return message, because it recites testing the usability of “of each 

return message.” Pet. 47. Petitioner argues Kravets teaches this limitation 

because Kravets teaches sending at least two query messages. Id. However, 

for reasons discussed above, Petitioner does not show checking that the 

return message corresponds to the latest query.

Independent claim 36 similarly requires comparing the return message 

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to a then current-input string or matching it with a request identification. 

Ex. 1001, 35:19–23 (“the client object tests the usability of the results in the 

return message by comparing the results in the return message by comparing 

the return message to the then-current input or matching it with a request 

identification”). For reasons discussed above, Petitioner has not shown 

comparing or matching a return message.

Independent claim 35 recites “upon receiving one of the return 

messages . . . the client object checks the usability of the results of the one of 

the return messages using a more recent version of the input.” Id. at 34:62–

65. Petitioner has not shown scrolling terms in a cache is tantamount to 

checking the usability of the results of one of the return messages where, as 

in Kravets, there is no indication which return message each scrolled cache 

entry belongs to. Petitioner also does not provide a sufficient reason, if any, 

for modifying Kravets to reach the claimed invention.

With respect to dependent claims 2, 3, 6, 7, 9, 12, 15–17, 21, 24, 25, 

and 33 of the ’024 patent, Petitioner does not provide additional argument or 

evidence regarding the usability test. 

Upon review of the record in this proceeding, we determine that 

Petitioner has not demonstrated by a preponderance of the evidence that any 

one of claims 1–3, 6, 7, 9, 12, 15–17, 21, 24, 25, 32, 33, 35, and 36 of the 

’024 patent is unpatentable under § 102(e) as anticipated by Kravets or 

unpatentable under § 103(a) as obvious over Kravets.

E. Unpatentability Over the Combination of Kravets and Bauer

Petitioner asserts that claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 

32–37 of the ’024 patent are unpatentable under 35 U.S.C. § 103(a) as 

obvious over the combination of Kravets and Bauer. Pet. 55–65; Reply 21–

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26. Petitioner relies on declarations of Dr. Taylor to support its contentions. 

Exs. 1007, 1028, 1031. Patent Owner disputes Petitioner’s contentions. PO 

Resp. 47–60. Patent Owner relies on declarations of Dr. Edwards to support 

its contentions. Exs. 2002, 2014. We have reviewed the full record from 

trial, and we determine that Petitioner has not shown by a preponderance of 

the evidence that claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 of the 

’024 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the 

combination of Kravets and Bauer.

Of the challenged claims against which Kravets and Bauer are 

asserted, claims 1, 32, 35, 36, and 37 are independent. With regard to the 

usability test recited in independent claims 1, 32, 35, and 36, Petitioner does 

not provide additional arguments and evidence that the claimed test would 

have been obvious over the combination of Kravets and Bauer. 

Accordingly, for reasons we discussed above, Petitioner has not made a 

sufficient showing with regard to the usability test limitation recited in these 

claims. See supra Sec. II.D.2.

Independent claim 37 also recites a usability test: “the client object 

tests the usability of the results in the return message by matching an ID 

associated with the input sent to the server system with an ID maintained in 

the client object.” Ex. 1001, 36:18–21. For this limitation, Petitioner argues 

Kravets teaches that PSS 40 has the ability to identify the user who entered 

the input string. Pet. 64–65. In support of this argument, Petitioner relies on 

Kravets’ disclosure that in alternative embodiments two factors used by 

PSS 40 in calculating a value score may include psychographic and 

demographic profiles of the user. Id. at 65 (citing Ex. 1003, 5:20–41; 

Ex. 1007 ¶¶ 294–295). Kravets discloses “[t]he demographic profile 

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preferably represents certain characteristics or features of a user” and “[t]he 

psychographic profile preferably represents certain preferences or tendencies 

of a user.” Ex. 1003, 5:34–38. Even if we were to accept Petitioner’s 

argument that Kravets teaches the ability of PSS 40 to identify a user 

associated with a particular request, Petitioner has not articulated how 

Kravets teaches including an identifier in a return message that would allow 

client 20 to identify a user associated with the input sent to PSS 40, as 

required by claim 37 which recites “the client object tests the usability 

. . . by matching an ID.” Ex. 1001, 36:18–21.

Petitioner also argues “[c]hecking an identifier to provide continuity 

and/or security was notoriously well known prior to 1999,” relying on Dr. 

Taylor’s unsupported conclusion in which he copies verbatim the statement 

in the Petition. Pet. 65 (citing Ex. 1007 ¶ 296). Dr. Taylor cites to an earlier 

paragraph of his declaration, but this, too, fails to cite any evidence or 

explain why checking an identifier was notoriously well known prior to 

1999. Ex. 1007 ¶ 296 (citing id. at ¶ 273). The paragraph to which Dr. 

Taylor refers states that client-side caching is an exemplary technique for 

reducing data transmission, which may be useful in low bandwidth or high 

latency networks. Ex. 1007 ¶ 273. There is no discussion of checking an 

identifier to provide continuity or security, or for any reason. Id.

Petitioner also argues a skilled artisan would have been motivated to 

implement an identifier “that allows the system to match request/response 

pairs to improve system security and reliability.” Pet. 65 (citing Ex. 1011, 

15–16). Petitioner does not adequately explain why a skilled artisan would 

have been motivated to do so. Petitioner cites a two-page excerpt of a 

textbook titled, “Security for Computer Networks,” but does not explain the 

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relevance of the textbook to the field of the invention, or why a skilled 

artisan would have considered the textbook and applied its teachings to the 

combination of Kravets and Bauer. Petitioner does not even identify any 

particular disclosure or teaching in the two-page excerpt. We find Petitioner 

has not provided sufficient argument and evidence with regard to its 

motivation argument.

For the foregoing reasons, Petitioner’s evidence and argument 

regarding the usability test with regard to independent claim 37 is 

insufficient.

With respect to dependent claims 2, 3, 6, 7, 9, 12, 15–17, 21, 24–26, 

33, and 34 of the ’024 patent, Petitioner does not provide additional 

argument or evidence regarding the usability test. 

Upon review of the record in this proceeding, we determine that 

Petitioner has not demonstrated by a preponderance of the evidence that any 

one of claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 of the ’024 

patent is unpatentable under § 103(a) as obvious over the combination of 

Kravets and Bauer.

F. Patent Owner’s Contingent Motion to Amend

Patent Owner requests, should claims 16 and 36 be determined to be 

unpatentable, that the ’024 patent be amended to include proposed substitute 

claims 38 and 39, respectively. Mot. 1. Having determined Petitioner has 

not shown claims 16 and 36 are unpatentable, we need not address Patent

Owner’s contingent Motion to Amend. Accordingly, we dismiss Patent 

Owner’s Motion to Amend as moot.

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G. Motions to Exclude

1. Petitioner’s Motion

Petitioner filed a Motion to Exclude (Paper 40), Patent Owner filed an 

opposition thereto (Paper 43), and Petitioner filed a reply (Paper 45). 

Petitioner seeks to exclude Exhibits 2002, 2004, paragraphs 4, 7, 12, and 14 

of Exhibit 2006, and Exhibits 2010, 2014, 2015 and 2016. Paper 40, 1.

Exhibit 2006 is the declaration of Mark H. Smit, a named inventor of 

the ’024 patent, filed by Patent Owner in support of Patent Owner’s 

Response. Mr. Smit’s declaration regards secondary indicia of 

nonobviousness, which we need not, and do not, address in this Final 

Written Decision regarding the unpatentability of the challenged claims. 

Exhibit 2010 appears to be a publication, and is written in German. 

Petitioner alleges, and Patent Owner does not dispute, that no English 

translation of this document has been provided to Petitioner or entered in 

this proceeding. Paper 40, 5; Paper 43, 2–3. In any event, this exhibit 

relates to arguments we need not, and do not, address in this Final Written 

Decision regarding the unpatentability of the challenged claims.

Exhibits 2015 and 2016 are online references that include a definition 

for the term “primary key,” a term that we need not, and do not address in 

this Final Written Decision regarding the unpatentability of the challenged 

claims.

As we discussed above, Exhibits 2006, 2010, 2015, and 2016 relate to 

arguments we need not, and do not, address regarding the unpatentability of 

the challenged claims. Because we do not rely on or reference these exhibits

in our Final Written Decision, we dismiss as moot Petitioner’s request to 

exclude these exhibits.

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Exhibits 2002, 2004, and 2014 are declarations of Patent Owner’s 

expert, Dr. Edwards. Petitioner argues we should exclude Dr. Edwards’ 

declarations on grounds that his testimony is unreliable and more prejudicial 

than probative. Paper 40, 7–8. Petitioner argues Dr. Edwards is not

qualified to testify regarding the level of ordinary skill in the art as of the 

date of alleged invention, August 20, 2001, because Dr. Edwards was not 

himself a person of ordinary skill in the art in 2001. Id. at 8–9. Dr. Edwards 

did not complete high school until 2000, according to Petitioner, and 

therefore could not have had a bachelor of science and the requisite years of 

experience by 2001 to be a person of ordinary skill in the art at that time. Id. 

Dr. Edwards states in his first declaration that he did not receive his 

Bachelor of Science degree until 2003. Id. at 9 (citing Ex. 2002 ¶ 3). Dr. 

Edwards also confirmed during his deposition that as of the alleged 

invention date, he had only worked part-time in the relevant field for 

approximately 15 hours per week. Id. at 10 (citing Ex. 1030, 24:2–6).

Patent Owner responds that Dr. Edwards’ level of experience as of the 

date of invention goes toward the weight to be given to his testimony, rather 

than to its admissibility. Paper 43, 4. Patent Owner also responds that 

personal knowledge is not a requirement for providing expert testimony 

under Federal Rule of Evidence 702 and 703. Id. at 4 (citing Fed. R. 

Evid. 602). As such, according to Patent Owner, Dr. Edwards need not have 

been a person of ordinary skill in the art at the time of alleged invention in 

order to provide testimony regarding the level of ordinary skill at the time. 

Id.

We agree with Patent Owner that Rules 702 and 703 do not require an 

expert declarant to have been a person of ordinary skill in the art at the time 

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of alleged invention in order to opine regarding the level of ordinary skill at 

the time. In determining the level of ordinary skill, an expert may rely on art 

available at the time, and may consider the types of problems encountered in 

the art, the sophistication of the technology, and educational level of active 

workers in the field. See In re GPAC, Inc., 57 F.3d at 1579. An expert is 

not required to rely on personal knowledge. Petitioner’s arguments 

regarding Dr. Edwards’ level of experience as of the alleged invention date 

may be relevant to determining the amount of weight to be accorded to Dr. 

Edwards’ testimony, but do not warrant its exclusion.

Petitioner also argues that a number of Dr. Edwards’ statements are 

conclusory, and unsupported by evidence. Petitioner argues that such 

testimony should be excluded because it is more prejudicial than probative. 

Paper 40, 11–13. Petitioner’s grievance goes to the weight to be accorded 

Dr. Edwards’ testimony. The Board is capable of ascertaining the weight to 

be accorded to unsupported declarant testimony.

Exhibit 2014 is Dr. Edwards’ declaration regarding proposed 

substitute claims 38 and 39 presented in Patent Owner’s Motion to Amend, 

which Petitioner separately argues should not be admitted. Id. at 13–15. 

Because we find Petitioner has not demonstrated unpatentability of the 

challenged claims, we need not, and do not consider proposed substitute 

claims 38 and 39. Accordingly, we dismiss as moot Petitioner’s request to

exclude Dr. Edwards’ testimony regarding these substitute claims. 

Accordingly, we deny Petitioner’s request to exclude Exhibits 2002, 

2004, and 2014.

For the foregoing reasons, Petitioner’s Motion to Exclude is deniedin-part, and dismissed-in-part.

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2. Patent Owner’s Motion

Patent Owner filed a Motion to Exclude Evidence (Paper 38), 

Petitioner filed an opposition thereto (Paper 42), and Patent Owner filed a 

reply (Paper 44). Patent Owner seeks to exclude Exhibits 1031, 1035, 1036, 

1037, 1040, and 1041. Paper 38, 1. 

Exhibit 1031 is a declaration of Dr. Taylor. Paragraphs 22–26 of this 

exhibit relate to the claimed usability test. Ex. 1031 ¶¶ 22–26. We 

discussed the usability test above in determining Petitioner has not shown 

unpatentability of the challenged claims. See supra Sec. II.D.2. The 

remainder of Exhibit 1031 relates to matters we need not, and do not, 

address in this Final Written Decision. With regard to paragraphs 22–26 of 

Exhibit 1031, Patent Owner does not provide any specific arguments 

concerning why we should exclude this testimony. Petitioner broadly asserts 

Dr. Taylor’s opinions lack sufficient basis, and specifically identifies 

paragraphs 4–8, 11, and 27, none of which relate to the usability test. 

Paper 38, 1–3. Patent Owner does not set forth specific reasons why we 

should exclude paragraphs 22–26. Accordingly, with regard to paragraphs 

22–26, we deny Patent Owner’s request to exclude Exhibit 1031, and we 

dismiss as moot Patent Owner’s request regarding the remainder of this

exhibit.

Exhibits 1035, 1036, 1037, 1040, and 1041, relate to arguments we 

need not, and do not, address in this Final Written Decision. Because we do 

not rely on these exhibits, we dismiss as moot Patent Owner’s request to 

exclude Exhibits 1035, 1036, 1037, 1040, and 1041.

For the foregoing reasons, Petitioner’s Motion to Exclude is deniedin-part, and dismissed-in-part.

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III. SUMMARY

For the foregoing reasons, we determine that Petitioner has not 

demonstrated, by a preponderance of the evidence, that claims 1–3, 6, 7, 9, 

12, 15–17, 21, 24, 25, 32, 33, 35, and 36 of the ’024 patent are unpatentable 

under 35 U.S.C. § 102(e) as anticipated by Kravets or under 35 U.S.C. 

§ 103(a) as obvious over Kravets, or that claims 1–3, 6, 7, 9, 12, 15–17, 21, 

24–26, and 32–37 of the ’024 patent are unpatentable under 35 U.S.C. 

§ 103(a) as obvious over the combination of Kravets and Bauer.

IV. ORDER

Accordingly, it is

ORDERED that claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 

of the ’024 patent have not been shown to be unpatentable; 

FURTHER ORDERED that Petitioner’s Motion to Exclude 

(Paper 40) is denied-in-part and dismissed-in-part as moot;

FURTHER ORDERED that Patent Owner’s Motion to Exclude 

(Paper 38) is denied-in-part and dismissed-in-part as moot; and

FURTHER ORDERED that, because this Decision is final, parties to 

the proceeding seeking judicial review of the decision must comply with the 

notice and service requirements of 37 C.F.R § 90.2.

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PETITIONER:

Todd Siegel

todd.siegel@klarquist.com

Richard McLeod

law@rickmcleod.com

John Lunsford

john.lunsford@klarquist.com

PATENT OWNER:

John Ferrell

jsferrell@carrferrell.com

James Nachtwey

jnachtwey@carrferrell.com

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