42 for 47: Claim Construction Takes Center Stage in Grant of Inter Partes Review Trial No. 42

In a claim construction-centric decision by the PTAB, Oracle was successful in getting all 10 of the challenged claims of an Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00073), involving U.S. Pat. No. 6,738,799. The ’799 patent relates to a method of synchronizing files using a signature list. More specifically, the ‘799 patent discloses a method for synchronizing local copies of files on a given set of computers with current versions of the files on a network drive.

The Board began with a claim construction analysis that covered several claim terms in dispute. First, in what turned out to be the only instance of the Board adopting Patent Owner’s interpretation, the Board resolved the differences between the parties’ proposed interpretations of the term “signature list.” The Board declined to adopt Patent Challenger’s narrow interpretation in favor of Patent Owner’s construction, finding that the specification did not require the more narrow definition provided by Patent Challenger.

Several other phrases were also evaluated by the Board, the group consisting of “update,” “command to copy,” and “command to insert,” among others. With respect to all these terms, the Board declined to adopt Patent Owner’s narrow interpretations, relying at times on dictionary definitions (Order at 10), the doctrine that it is improper to import limitations from the specification into the claims (Order at 10, 15), pointing to claim language to assist in the interpretation (Order at 11), and considering the preambles of the challenged claims (Order at 16).

The Board then analyzed Patent Challenger’s seven grounds of unpatentability. Patent Challenger alleged four obviousness grounds and three anticipation grounds. Three of the four obviousness challenges were found by the Board to meet the reasonable likelihood standard, with the last one being denied as redundant. Further, in relying upon Patent Challenger’s expert testimony, the Board found that the challenged claims were anticipated by two of the three different combinations of references, with the final one being denied as redundant.

It is worth noting that the Board again discounted the fact that one of the challenged grounds was already considered in the original prosecution of the underlying patent.  The Board has, invariably, provided little deference to prior Patent Office actions.  Order at 22-23.

In the end, the Board granted trial for all challenged claims based on multiple anticipation grounds as well as grounds of obviousness over several combinations of references.