Research in Motion was again successful in getting all claims of a Multimedia Ideas patent into an inter partes review trial for all challenged grounds, even relying on some prior art and arguments that were unsuccessful in a denial of a prior ex parte reexamination request. The case is styled Research and Motion Corp. and Research and Motion Ltd. v. Multimedia Ideas LLC (IPR2013-00036), involving US Patent No. 6,871,048. The Board granted the IPR trial for all 12 claims based on all 24 obviousness grounds for challenge. There were no challenge grounds based on anticipation.
The invention of the ‘048 patent relates to a mobile communication apparatus (e.g., a cell phone) for carrying out communication through radio waves and an information providing system using the mobile communication apparatus. Users of wireless mobile communication devices often carry, in addition, a portable sound device for playing music or a portable radio receiver for receiving AM/FM broadcasting, etc. It is an object of the invention to combine the functions of these devices so that the user can obtain information of desired content at a desired time without additionally carrying other devices. The dispute between the parties is focused on the meaning of the “stand-by” state, because the claims require reproducing and outputting downloaded data when the apparatus is in a “stand-by” state.
In general, the Board’s decision included several interesting topics, including: 1) consideration of what, if any, effect a prior reexamination decision, involving the same prior art, had on the IPR, 2) whether the pages used in an expert declaration count against the page limit for a petition, and 3) the Board adopted a key claim construction that was even broader than the construction urged by Patent Challenger.
At the outset, the Patent Owner stressed that the Board should carefully consider the prior denial of an ex parte reexamination request for the patent at issue. The Patent Owner further noted that the previous reexamination request was denied after explicitly considering two references with respect to the stand-by state limitation in which the Patent Challenger is relying on in the present IPR. Although the Board stated that consideration by examiners of the same claim feature based on the same prior art certainly should be considered, the patent owner should not expect that the Board necessarily would come to the same conclusion.
[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 U.S.C. § 325(d) – “In determining whether to institute or order a proceeding under … chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[/pullquote]
The Board then made it very clear that the PTAB will not give any deference to previous reexamination decisions, even when considering the same prior art and arguments. The Board went on to further state that the Patent Owner’s argument that the Patent Challenger failed to explain why the previous denial was incorrect or why it should be reconsidered, was misdirected. “A petition for inter partes review is not a renewed request for patent reexamination, an appeal of a prior decision denying a request for reexamination, or a rehearing request of the prior decision denying a request for reexamination. The petitioner correctly did not present its petition in any one of those ways.”
This view of prior proceedings is, of course, great news for Patent Challengers. The Board is more than willing to give a fresh look to old arguments. While this may be seen by Patent Owners as undermining their property rights and adding uncertainty to earlier decisions by the Office, this is simply another reason why inter partes review proceedings have been, and will continue to be, popular with Patent Challengers.
Further, although this case involves argument about a previous denial of an earlier ex parte reexamination request, the Board’s reasoning extends to all prior decisions by the Patent Office, indicating that the Board is more than willing to reconsider prior art references cited in the patent. To that end, it is interesting to note that approximately 2/3 of IPR petitions filed to date have included at least some previously cited prior art references.
Patent Owner also took the position that Patent Challenger’s petition violated the page length limit, arguing that the twenty-nine (29) page expert declaration that was an exhibit to the petition should have added to the forty (40) page petition given that the declaration contains numerous arguments in addition to factual support. The Board declined to accept Patent Owner’s argument on four grounds: 1) Patent Owner did not identify argument portions of the declaration, 2) arguments not included in the petition may not be considered, 3) page limit objections should be raised as soon as possible, and 4) there is no requirement that a supporting declaration only cite to evidence which has already been directly cited in the petition. Order at 8-9. The Board specifically criticized Patent Owner for taking three months to make a procedural page limit objection.
Finally turning to the merits of the case, the Board construed “stand-by” state to mean a state in which the mobile communication device is powered on and ready to transmit or receive data, but is not actively communicating. This was essentially the interpretation urged by Patent Challenger, but Patent Challenger limited the mobile communication device to a cellphone. Interestingly, the Board stated that even Patent Challenger’s construction was too narrow, and “mobile communication apparatus” should apply to other devices beyond cellphones. The Board also noted that Patent Owner did not take a position on the construction of the term, as well as mentioning that they were aware of the interpretation used during the previous reexamination denial, but did not address those issues any further. Order at 11-12.
In the end, the Board granted all grounds for all claims. Patent Owner beware – even after the Patent Office has had two or more shots at evaluating the validity of your patent, the Board will provide no deference to those earlier determinations.