Wasica Decision Reinforces Federal Circuit Guidance on Claim Construction

The Federal Circuit’s recent decision in Wasica Finance v. Continental Automotive Systems touched on a number of well-worn patent issues, but this article focuses on a few key claim construction principles discussed by the CAFC, including that the contents of the specification are highly relevant when performing claim construction, and a claim generally will not be construed in a manner that renders recited terms meaningless or superfluous.

Wasica is the result of the CAFC consolidating two appeals based on two IPRs arising from petitions filed with respect to Patent Owner’s U.S. Patent No. 5,602,524 (“the ‘524 patent”). The claims at issue were directed, generally, to a system for measuring tire pressure. In the system, each tire included a pressure measuring device and a transmitter, and each transmitter transmitted pressure data to a corresponding receiver. A transmission from a transmitter to a corresponding receiver also included an “identification signal” for identifying the transmitter that sent the transmission. A receiver receiving the identification signal stored the identification signal and processed transmissions only from the corresponding transmitter.

As to the first claim construction issue, Patent Owner argued that the PTAB erred in determining that a particular pressure sensor disclosed by the prior art taught a “pressure measuring device” because the pressure sensor only output a binary signal that indicated whether a measured pressure is abnormal. Patent Owner argued that the recited pressure measuring device, when properly construed, must output a tire’s pressure as a numerical value, and that such a numerical value cannot be represented by a single bit of a binary signal. The CAFC sided with the PTAB and rejected the claim construction presented by Patent Owner. The CAFC relied, in part, on the ‘524 patent, itself, which identifies a family of European patents as including examples of manners in which a sensor of the ‘524 patent may output a pressure signal. The CAFC decided that the family of European patents identified by the ‘524 patent disclose switch-based (e.g., binary) pressure sensors and non-numeric pressure signals. The CAFC pointed out that, in accordance with previous decisions, the CAFC generally does not interpret claim terms in a manner that excludes examples disclosed in the specification. Id. at 13.

As to the second claim construction issue, Petitioners argued that the proper claim construction for the term “bit sequence,” from claim 9, was a sequence of “one or more bits.” Patent Owner argued that the plain meaning of “sequence” implies at least two elements. The PTAB agreed with Patent Owner, but on appeal, the CAFC disagreed. The CAFC explained that the recited element required “at least a 4 bit sequence” which included 4 constituent bit sequences, and thus, interpreting a “sequence” as requiring at least two bits would result in a minimum size of 8 bits for the “at least 4 bit sequence.” The CAFC determined that such an interpretation would essentially rewrite “at least 4 bits” from claim 9 to “at least 8 bits.” The CAFC explained that it is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous. Id. at 28. As further support for reversing the PTAB’s decision regarding the patentability of claim 9, the CAFC pointed to a portion of the ‘524 patent interpreted by the CAFC as disclosing an embodiment in which a bit sequence included a single bit, thereby contradicting the at-least-two-bit interpretation of “bit sequence” sought by Wasica Finance.

In the end, the Patent Owner and Petitioner both took home partial victories, while the rest of us take home additional insight into the Court’s construction of claim limitations.

Unreasonable Claim Construction Causes PTAB Reversal


In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB today in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining the challenged claims to be unpatentable because, as a matter of logic, the prior art could not anticipate or render those claims.

The patent at issue involved methods of effecting secure credit-card purchases by minimizing merchant access to credit card numbers. In those methods, a limited-use transaction code is given to the merchant in the place of the credit card number. Of particular importance to the Court’s decision was a “single-merchant” limitation that required that, when such a transaction code is requested, the request limits the number of authorized merchants to one, but does not then identify the merchant because the claims required that such identification occurred only later. Id. at 7.

In its claim construction during the inter partes review trial, the PTAB adopted a construction that did not recognize the separation in time of the communication of the transaction code and the communication of the merchant’s identity. Id. at 5-6. As might be expected, the Court relied upon the specification of the subject patent, as well as its file history, to support this claim construction. See, e.g., id. at 6 (“The prosecution history reinforces the evident meaning of the single-merchant limitation…”).

In general, this decision represents another decision that patent owners can point to in support of the notion that the Board is not flawless in all of its decisions. This particular Board panel made errors that, according to the Federal Circuit, were fairly obvious in nature helping to undercut any notion of Board infallibility.

Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader

cafc1The Federal Circuit issued another substantive, IPR-related opinion today in Prolitec, Inc. v. ScentAir Techs., Inc., 2015-1020 (Fed. Cir. Dec. 4, 2015) (appealing from IPR2013-00179). The Board had determined that each of the two claims at issue was unpatentable and the Federal Circuit affirmed. On appeal, Patent Owner made five challenges to the PTAB’s decision in the underlying IPR – three claim construction arguments, a related argument against anticipation, and an argument directed to its Motion to Amend in the IPR. It is worth discussing here one of the claim construction arguments, the Federal Circuit’s treatment of the Motion to Amend, and a broad-based and strong dissenting opinion filed by Judge Newman.

Regarding claim construction, Patent Owner argued that the term “mounted” was not properly construed to require a permanent joining of two parts. In support, Patent Owner pointed out that the purpose of the invention was to provide a disposable cartridge for one-time use and that each embodiment in the patent required a permanent means of bonding. The Federal Circuit disagreed. As to the purpose of the invention argument, the Court cited to broad language from the specification, that taught that “it may be desirable that the cartridge is configured to be used only one time prior to being discarded.” Op. at 5. The Court specifically noted that “[t]he problem for [Patent Owner] is that the use of ‘may’ signifies that the inventors did not intend to limit the patent as [Patent Owner’s] expert opined.” Id. at 5-6. As to the fact that each embodiment required permanent bonding, the Court pointed to more permissive language which taught that the two parts “may be jointed to each other by heat or ultrasonic welding spin welding, or by use of an adhesive.” Id. at 6 (emphasis in original).

In short, this is another example of a situation where the blind pursuit of breadth in the drafting of the patent specification hurt a Patent Owner by requiring that its patent claim(s) be construed broader than what was likely necessary to cover the commercial embodiment of the invention. The prior art seemed to show non-permanent joining of the key parts and, as such, if Patent Owner intended the patent-at-issue to cover permanent joining, it should have made that point of novelty clear in the specification and/or the patent claims.

Regarding the Motion to Amend, Patent Owner had attempted to substitute “permanently joined” into the subject claims, substituting its above-referenced claim construction for the claim element. Petitioner opposed, pointing to a reference in the prior art (cited in the original examination of the patent) that taught permanent joining. Patent Owner did not dispute that the subject prior art reference disclosed that limitation, but argued that other claim limitations were not found in the reference. The Board denied the Motion to Amend, finding that Patent Owner failed to demonstrate that the proposed claim was patentable. On appeal, Patent Owner made two arguments that came up short. The first argument was that it was not required to prove patentability over prior art references cited in the original file history because they were not of record in the IPR. This was an issue that was left open by the Federal Circuit in Microsoft v. Proxyconn789 F.3d 1292 (Fed. Cir. 2015). In that case, the Court had indicated that it was not deciding on the reasonableness of the Board’s jurisprudence regarding the scope of the requirement that Patent Owner show patentability over all “prior art of record” (which, at the time, arguably required a showing of patentability over the entire universe of uncited prior art). Op. at 14. Subsequent to the Federal Circuit’s decision in Proxyconn, the PTAB narrowed its guidance on what constituted “prior art of record” to include material contained in the prosecution history of the patent-at-issue. The Federal Circuit agreed with the Board’s approach in this regard, finding that the Patent Owner’s burden to show patentability over the art from the original prosecution history “is not in conflict with any statute or regulation. Moreover, it is not unreasonable to require patentee to meet this burden.” Id. As such, the Board’s denial of the Motion to Amend was affirmed.

Lastly, Judge Newman seemed to return to her pro-Patent Owner role, after signing onto the decidedly pro-Petitioner decision in Belden v. Berk-Tek, by filing a broad and strong dissentSpecifically, Judge Newman disagreed with the majority’s decision in five ways. First, she argued that the PTAB improperly refused entry of the amendment-at-issue, given that Patent Owner had complied with all the statutory and regulatory requirements. Judge Newman’s view is that the proposed amendment resolved the key dispute in the proceeding about claim breadth and, as such, “refusal to enter the amendment is contrary to both the purpose and the text of the America Invents Act.” Dissenting Op. at 3. Second, Judge Newman disagreed with the majority regarding the burden of proof for amended claims. It was not proper, per the dissenting opinion, for the Board and majority to shift the burden for amended claims to Patent Owner. Instead, the AIA places the burden of proof, throughout the proceeding – for amended and unamended claims – on Petitioner. Third, Judge Newman argued that it is the Federal Circuit’s duty to assure that the preponderance of the evidence standard is met in PTAB proceedings. As such, it is erroneous to apply the highly-deferential substantial evidence standard to AIA post-grant appeals. Fourth, Judge Newman criticized the majority opinion for not remanding the case to the Board given that the PTAB changed its view of the scope of “prior art of record” during the pendency of the case.

Lastly, Judge Newman took issue with the majority’s affirmance of the anticipation finding in view of the fact that the anticipatory reference was Patent Owner’s prior incarnation of the subject device. Per Judge Newman: “A finding of anticipation requires that the same invention was previously known and described, not that a claim can be construed so broadly and incorrectly as to embrace a prior art device.” Id. at 11.

Judge Newman is back to her old self, but another Patent Owner has found its patent rights in rubble.

PTAB Decision Illustrates Advantage of Defining Terms in Specification

38531686_sGiven the difficulty Patent Owners are having in surviving IPR proceedings, the discussion often turns to ways in which patents can be drafted to help survive an IPR Petition. In this regard, the recent decision in Aker Biomarine AS et al. v. Neptune Tech. et al., (IPR2014-00003), teaches that, in the right circumstances, a patent applicant may find it beneficial to include explicit definitions of claim limitations in its patent specification. In Aker Biomarine, at issue was Patent Owner’s use of the term “about” from the claims of the subject patent in conjunction with a value from the claims. Because the Patent Owner had defined the meaning of “about” in the specification, several of its claims survived the IPR proceeding.

More specifically, the patent explicitly defined the term “about” in the specification, as follows:

“As used herein and in the claims, where the term “about” is used with a numerical value, the numerical value may vary by at least ±50%. Preferably, the variation will be ±40% or ±30% and  more preferably ±20% or ±10%. Even more preferred variations are in the range ±5%, ±4%, ±3%  or ±2%. Most preferably, the variation is in the range of ±1%.” (emphasis added) Decision at 10.

Petitioner contended that “about” should be construed to modify an absolute value by an amount of “at least ±50%,” as set forth in the above-referenced definition. For example, if a claim contained the limitation, “about 5%,” in light of the definition contained in the specification, that allowed for a 50% variance, this limitation should be construed to mean a range of -45% to 55% – that is, subtracting 50% from 5% to find the lower end of the range and then adding 50% to 5% to find the upper end of the range.

Patent Owner argued that Petitioner’s proposed construction would be nonsensical to the ordinary artisan given the possibility of producing negative percentages, as in the example above. Instead, Patent Owner contended that the ordinary artisan would interpret phrases like “±50%” as seen in the definition to be determined from the numerical value used with the variation.  For example, 5% ±50% indicates a range of 2.5% to 7.5% (50% of 5% = a variation of 2.5% in each direction).  Id. at 11.

The Board agreed with Patent Owner regarding what value to which the 50% variance should be applied. For example, relative to claim 5 of the subject patent, that required a concentration of free fatty acids of about 5% w/w of the lipids in subject extract, the Board construed “about 5%” to mean a range of 2.5% to 7.5%. Because the prior art failed to disclose free fatty acids in this range, claim 5 was not shown to be unpatentable.

Preliminary Response that Addresses the Merits of Petition Again Fails in Grant of IPR Trials

iStock_000031747934XSmallTime and again, Patent Owner arguments on the merits in Preliminary Responses  have been smothered by expert testimony and other evidence that is allowed with a petition.  As such, as IPR practice has evolved, more and more Patent Owners are waiting until the formal Patent Owner response before presenting its arguments.  In short, and as the high number of petition grants makes clear, trying to substantively fight a petition at the preliminary response phase is not working.  In this fashion, Texas Instruments was able to get 16 challenged claims of a Unifi Scientific Batteries patent into a trial for inter partes review, in a case styled as Texas Instr., Inc. v. Unifi Scientific Batteries, LLC (IPR2013-00213), involving U.S. Pat. No. 6,791,298. Additionally, Samsung was successful in challenging 12 claims of the same Unifi patent in a case styled as Samsung Elec. Co., Ltd. v. Unifi Scientific Batteries, LLC (IPR2013-00236).

The ‘298 patent relates to “monolithically formed battery charging devices” which include at least one step-down DC to DC converter. The idea of the step down converter described by the ‘298 patent is to allow a lower output voltage relative to input voltage, which allows for a greater output current relative to the input current.

In the IPR2013-00213 proceeding, the Board started by considering claim construction issues, including by considering whether of the challenged claims was a limitation on the claims. Finding that the preamble’s recitation of “monolithic battery charger” limited the scope of the invention because it fundamentally described what the claimed apparatus was, not merely an intended use, the Board construed the preamble to have patentable weight. Next, the Board cleared up confusion over what appeared to be an omission of percentage symbols from the claims. Order at 8.  Looking to the specification for support, the Board held that the limitation of “from approximately 10 to approximately 95” would be understood by one of skill in the art to be referencing percentages.  Order at 9.  To conclude, the Board interpreted the term “monolithically formed” to mean “formed in a single integrated circuit package or wafer die.”  Order at 10.

Next, as a threshold matter, the Board dismissed Patent Owner’s argument that the Petition should be denied as incomplete because Patent Challenger contended that the “broadest reasonable construction” should be applied, but provided no explanation for what is that interpretation.  While the Board ultimately determined that specific claim constructions were required, the Board found that Patent Challenger sufficiently stated its position.  Order at 11.

Turning to the specific art cited by Patent Challenger, the Board addressed three arguments raised by Patent Owner, finding none persuasive.  First, the Board discounted the argument that one of skill in the art would not have combined the references of record because one of the references did not teach the type of converter at issue in the ‘298 patent.  Second, the Board did not agree with Patent Owner’s argument that a combination of the references would destroy the purpose of the converter.  Lastly, Patent Owner argued that the prior art taught away from a combination of the references.  Importantly, with respect to all of the above arguments, the Board indicated that Patent Owner had not pointed to sufficient and credible evidence.  Of course, the formal response, and the ability to provide expert testimony, would give Patent Owner the opportunity to provide that type of evidence.  At this stage of the proceeding, however, the evidence was sufficient for Patent Challenger to have met its burden to institute the IPR trial.

IPR2013-00236 was predictably a very similar proceeding, with the Board noting that some of the challenged claims in IPR2013-00236 overlap with those of the IPR2013-00213. The claim construction in the two proceedings was nearly identical and similar arguments were used, resulting in the Board granting the Petition as to all challenged claims. The Board in IPR2013-00213 suggested the parties be prepared to discuss whether the two proceedings should be joined, a suggestion repeated by the Board in IPR2013-00236.

With Patent Owner unable to overcome obviousness arguments heavily supported by expert testimony, Texas Instruments was able to get 16 challenged claims of the ‘298 patent into a trial for inter partes review. In a separate proceeding suggested to be joined, Samsung was able to get 12 claims of the same patent into a separate trial or inter partes review.

Operability of Combined References Considered by PTAB in Obviousness Analysis

iStock_000011462794XSmallIn a challenge relying in part on prior art previously considered during prosecution, Zodiac Pool was able to get 15 of 18 challenged claims of an Aqua Products patent into a trial for inter partes review in a case styled as Zodiac Pool Sys., Inc. v. Aqua Products, Inc. (IPR2013-00159), involving U.S. Pat. No. 8,273,183.

The ‘183 patent relates to “self-propelled apparatus and methods for controlling such apparatus for cleaning a submerged surface of a pool or tank.” The ‘183 patent further discloses methods for controlling the movement patterns of the cleaning apparatus as it moves over the bottom and sides of a pool or tank.

The Board’s construction of the term “a stationary directional discharge conduit” warrants discussion in light of its consideration of the indefinite article “a” contained in the term.  After considering the specification and file history of the ‘183 patent, the Board construed the term to mean “one or more discharge conduits.”  Citing KCJ Corp. v. Kinetic Concepts, Inc. 223 F.3d 1351, 1356 (Fed. Cir. 2000), the Board adopted the long-established rule that an indefinite article, such as “a” or “an” is typically construed to mean “one or more” when found in an open-ended claim that contains the transitional phrase “comprising.”  Order at 10.

Patent Owner sought to limit the Board’s review by pointing out that one of the prior art references cited by Petitioner was already considered by the Examiner during prosecution.  The Board noted, however, that Petitioner presented different arguments and evidence that that before the Examiner, so the Board did not deny the grounds solely on the basis of 35 USC § 325(d).

Lastly, it is worth noting two arguments made by Patent Owner that were rejected by the Board relating to the obviousness grounds raised in the petition.  First, regarding the idea that the prior art taught away from the incorporation of an internal pump, the Board found that, “the fact that the motivating benefit comes at the expense of another benefit…should not nullify its use as a basis to modify the disclosures of one reference with the teaching of another.  Instead, the benefits, both lost and gained, should be weighted against one another.”  In view of this analysis, the Board found that the references did not teach away.  Order at 24.  Second, with regard to Patent Owner’s argument that Petitioner failed to describe how an internal pump could be operably incorporated, the Board cited the Federal Circuit explanation that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference…Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”  As a result, the Board again rejected Patent Owner’s argument.  Order at 25-26.

This rationale by the Board, that hurt Patent Owner’s argument in one regard, was helpful in another.  Regarding one of the obviousness grounds set forth by Petitioner, the Board noted that Petitioner did not “address the inconsistency or conflict created by the proposed modification or to explain why, on balance the benefits of the proposed modification outweigh its deleterious effects on the operation and use of [the prior art’s] device.” Order at 33.  Operability is, therefore, a viable argument for a Patent Owner before the PTAB.

In the end, after a lengthy challenge, Zodiac Pool was able to get 15 of 18 challenged claims of the ‘183 patent into a trial for inter partes review.


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.

52 for 57: Oracle Successful Again in IPR War Against Clouding IP

The IPR battles between Oracle and Clouding IP continue, with 17 petitions for Inter Partes Review currently pending.* In this installment, Oracle was successful in getting seven of ten challenged claims of a Clouding IP patent into an inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00089), involving U.S. Pat. No. 6,631,449.

The ’449 patent relates to methods and systems for maintaining the consistency of storage objects across distributed networks. More specifically, the ‘449 patent discloses a dynamic distributed data system and method that provides reduced complexity and is extensible, scalable, and isotropic.

The Board began with a findings of fact, detailing pertinent information in the two main references that Patent Challenger cited in its grounds for unpatentability. Then, the Board turned to a brief claim construction analysis, where it interpreted the terms “a repository of last resort,” “a name tag,” and “a storage object.” After hearing interpretations from both Patent Challenger and Patent Owner, the Board looked to the specification and a technical dictionary to obtain constructions of each, with the result being disagreement with Patent Owner in only one instance.

Then the Board moved on to an analysis of the alleged grounds of unpatentability. Patent Challenger alleged the challenged claims were anticipated or obvious over four combinations of prior art references. As to the anticipation grounds, the Board declined to grant Patent Challenger’s proposed grounds, basing its decision on the holding that the cited reference did not describe the same, “repository of last resort,” as was cited in the challenged claims of the ‘449 patent.  The “repository of last resort,” as described in the prior art was deemed different than the same phrase, as used and claimed in the ‘449 patent.

There were mixed results for the claims challenged on obviousness grounds. In an analysis that did not stand out for any particular noteworthy analysis, seven of the ten challenged claims were placed into the IPR trial based on a single ground of unpatentability.

*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.