Shoe Wars Reach PTAB as Inter Partes Review Brought by Adidas is Granted Against Nike Patent

Pair of sneakersChallenging a patent of a major industry rival, Adidas was able to get all 46 challenged claims of a Nike patent into a trial for inter partes review in a case styled as Adidas AG v. Nike, Inc. (IPR2013-00067), involving U.S. Pat. No. 7,347,011.

The ‘011 patent relates to footwear having a textile upper. More specifically, the patent discloses said upper incorporating a knitted textile element and having a sole structure secured to the upper.

The Board’s claim construction analysis was notable in that it first took Petitioner to task relating to its proposed construction of “single type of textile” because Petitioner’s definition “simply introduces a new term…which does not appear in the claim, for construction.”  Order at 12.  Instead, relying upon two dictionary definitions, the ‘011 patent specification, as well as other claims of the ‘011 patent, the Board formulated its own claim construction the specific “type” of textile to be used.  The claim construction analysis for the other claim terms-at-issue was similarly detailed and heavily relied upon intrinsic evidence.

Patent Owner chose a well-worn, and typically unsuccessful, path in arguing that the prior art references at issue were previously considered by the Patent Office and/or are cumulative to what was considered.  The Board again, however, gave this argument little weight, finding that Petitioner “presents different arguments and new supporting evidence that were not before the Examiner.”  Order at 17.

In the end, the Board instituted an IPR trial based upon two primary references, pursuant to grounds that alleged both anticipation and obviousness – the Board holding that “[b]ecause anticipation is the epitome of obviousness, a disclosure that anticipates under §102 also renders the claim unpatentable under §103.”  Order at 36.

PTAB’s Detailed Claim Construction Analyses Exemplified in Grant of Three IPR Petitions

Cloud computing conceptThe Patent Trial and Appeal Board (PTAB) has impressed with its detailed and well-grounded claim construction analyses to date in its decisions instituting inter partes review trials.  Examples of such analyses were on display in two related institution orders, styled as Oracle Corp. v. Clouding IP, LLC (IPR2013-00098IPR2013-00099, and IPR2013-00100), involving U.S. Pat. Nos. 6,918,014, 7,065,637, and 5,825,891.

Briefly, from a technology perspective, the ‘014 patent relates to systems and methods for maintaining the consistency of storage objects across distributed storage networks.  More specifically, the invention relates to a, “dynamic distributed data system and method which provides for minimized latency, reduced complexity, and is extensible, scalable, and isotropic.”  The ‘637 patent relates to an interactive computer system that allows the dynamic design and creation of a computing environment. More specifically, the ‘637 patent discloses that the system permits computer system architects to design the computing environment by allocating resources and specifying how they will be used.  The ‘891 patent relates to a method for enabling computers to communicate using encrypted network packets. More precisely, the invention relates to a method for generating tunnel records and subsequently updating the tunnel records.

With regard to the ‘014 patent, the Board defined “storage object” and “storage object routing table.”  With regard to “storage object,” the Board mostly agreed with Patent Owner’s proposal, but ultimately adopted a definition that was more consistent with the verbiage used in the patent specification.  Order at 12.  Further, to assist in the clarity of the definition, the Board also relied upon a dictionary definition.  With regard to “storage object routing table,” the Board again tweaked the proposed construction from Patent Owner to make it more consistent with the specification.  Order at 13.  Guided by the strong advice of the Federal Circuit, the Board’s Order demonstrates it will look for definitions grounded in the intrinsic evidence.

With regard to the ‘637 patent, the Board focused on three claim terms that needed construction for purposes of deciding whether to institute the IPR trial.  Relying heavily on the specification and other claim language, the Board first construed “resources” to mean “any hardware, software, or communication components in the system.”  Order at 7. Second, with regard to the term “visual construction,” the Board lacked explicit disclosure of a definition from the specification, given that the phrase “visual construction” was not found in the specification.  The Board, however, performed a detailed analysis of related disclosures from the specification to settle on a definition of the claim term. Lastly, regarding the term “configuration,” despite the parties agreeing upon a proposed construction, the Board disagreed, finding the parties’ proposal imprecise and vague.

With regard to the ‘891 patent, the Board first rejected Patent Owner’s narrow construction of “temporary configuration password,” and instead based its definition firmly in the patent specification.  Second, the Board departed from both parties’ constructions of the term “authenticating,” again turning to the ‘891 specification to come up with the term’s meaning as “a process which validates a computer or user.” Lastly, the terms “tunnel record” and “tunnel record information” were again construed with strong reference to the specification.  Imprecise proposed definitions from Patent Owner were discarded in favor of direct quotes from the specification.  Order at 10-12.

In the end, these three decisions provide a good overview of a typical PTAB claim construction analysis – heavy reliance on intrinsic evidence, with a healthy does of skepticism regarding the parties’ own proposals for claim construction.

53 for 58: Another Oracle win over Clouding IP

In yet another petition against Clouding IP, Oracle was successful in getting all thirteen challenged claims of a Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00075), involving U.S. Pat. No. 6,925,481.

The ’481 patent relates to pervasive computing, and more specifically describes methods, systems, and instructions for enabling users of pervasive devices (i.e., mobile devices, smart appliances, etc.) to remotely access and manipulate information in ways that may go beyond the inherent limitations of the device. The idea behind this was to allow users to have “anywhere, anytime” access to desirable services like voice and data communications.

The Board began with a findings of fact, outlining the content of importance in the main reference that Patent Challenger cited in the allegations of unpatentability. Then, the Board turned to fairly in-depth claim construction analysis, where it began with the phrase, “receiving a data access request.”  The Board rejected Patent Owner’s  interpretation that the steps of the claimed method must occur only in response to data access request required by the claim.  The Board deemed this interpretation too narrow because: 1) the claim was open-ended (including the transitional “comprising” phrase), and thus was not limited to only one type of data access request; 2) language from other claims confirmed that other data requests could occur; and 3) the specification did not indicate that other data requests could occur.  Next, the Board evaluated the meaning of, “location of each data manipulation operation.” Finding no meaningful difference between the proposed constructions from Patent Owner and Patent Challenger, the Board adopted an interpretation that was the similar to both, but more precise. Finally, the Board needed only to rely upon a specific definition of the term “data” from the specification.

Then the Board moved on to an analysis of the alleged grounds of unpatentability. Patent Challenger alleged the challenged claims were obvious over four combinations of prior art references, and also anticipated by one prior art reference that was also cited in an obviousness challenge. As to the anticipation grounds, the Board granted Patent Challenger’s petition, finding that Patent Owner’s arguments for patentability over the prior art were either misplaced or dependent on claim construction that was narrower than the Board’s claim construction. Then, the Board considered the obviousness challenges. After granting the petition as to one of the challenged claims over a set of prior art references, the Board declined to consider obviousness over the other three combinations of prior art references, stating that the alleged grounds of unpatentability were redundant.

In summary, the Board granted trial for all thirteen challenged claims of the ‘481 patent based primarily on anticipation grounds, but also a single ground relating to obviousness of one challenged claim.

*As we continue to get caught up on past decisions (in between billable hours), we note that the battle between Oracle and Clouding IP has been settled, with all 17 IPR proceedings having been terminated by joint stipulation and the filing of a settlement agreement.