36 for 41: Workmanlike Board Decision Gets Patent Challengers Back in the Winning Column

iStock_000007197208XSmallIn a decision lacking in its typical flair, the Board has instituted an inter partes review trial for all challenged claims in a case styled Midland Radio Corp. of Florida v. Cobra Electronics Corp. (IPR2013-00021), involving US Pat. No. 6,584,306. Patent Challenger asserted 39 separate grounds of unpatentability, but the Board only authorized the trial on three grounds.  The Patent Owner did not file a Preliminary Response in this case.

The ‘306 patent is drawn to a “point-to-point” two-way radio system in which hand held walkie-talkies communicate without using a base station. Each walkie-talkie has a transmitter that transmits a call announcement signal and a separate voice signal. The voice signal is different from the call announcement signal and is transmitted over a fixed frequency range. Each walkie-talkie also has a receiver that receives the voice communications signal, a vibrator responsive to the call announcement signal, a vibrator responsive to the call announcement signal, an audible notification means responsive to the call announcement signal, and a switch for selecting an audible call announcement and a vibrational call announcement.

Starting with a claim construction analysis, the Board agreed with Patent Challenger that “switch” means a device for choosing among at least two options, and that none of the claim  terms should be construed as “means-plus-function” even though the term “means” appears in the claim. Taken in context, the claim is not limited to any particular structure disclosed in the specification. Order at 9. The Board also raised its own claim construction analysis for a term in the patent, relying on Webster’s New Collegiate Dictionary (1977) to define “separate” as “set apart or kept apart: not shared with another; dissimilar in identity” and “different” as “partly or totally unlike in nature, form or quality.” (It seems the Board’s decision may have erroneously listed the year as 1977 instead of 1997 – the priority date of the patent is February 1998, so a 1997 dictionary would be significantly more appropriate than one from 1977).

The Board then turned to an obviousness analysis, finding that two of the asserted references were missing a key limitation of the claims.  As such, the Board denied all other grounds that used either reference as the primary reference. In the end, the Board’s analysis did not contain any other notable tidbits, except the fact that the vast majority of grounds were denied as redundant.