After an early start of granting almost every IPR petition, the Board has now denied its third petition seeking inter partes review. Wowza Media Systems was unsuccessful in getting any of the 19 challenged claims of an Adobe patent into inter partes review trial in a case styled as Wowza Media Systems, LLC and Coffee Cup Partners, Inc. v. Adobe Systems Incorporated (IPR2013-00054), involving US Pat. No. 8,051,287. The ‘287 patent relates to establishing an encrypted communication session.
The Board started with a claim construction analysis and decided that only one of the several proposed constructions offered by Patent Challenger was material. But, even with regard to that one term, the Board did not agree with the proffered interpretation. More specifically, Patent Challenger submitted that the claim limitation “reserved for random data” should not be given its plain and ordinary meaning, but instead should be given a specific construction. The Board disagreed, finding that Patent Challenger provided no reasoning or evidence to support the position that the phrase should not be interpreted in accordance with its ordinary meaning. Order at 6.
The Board then turned to a claim limitation that was not included in the list of terms addressed by Patent Challenger. The Board found that “pre-defined” was the term most pertinent to the issues raised in the petition, even though it was not addressed by either of the parties! To define the term, the Board looked to Webster’s Third New International Dictionary, Unabridged (1993) and found that the definition of “pre-defined” from that dictionary comported with the plain and ordinary meaning of the term.
The Board then moved on to an analysis of the proposed grounds of unpatentability. Patent Challenge alleged a specific combination of references for an obviousness challenge, but also alleged obviousness over various other combinations of references in the alternative, without providing support by applying the combinations to any of the claims. Because the Patent Challenger provided insufficient analysis of several references as applied to specific limitations of the claims, the Board did not consider those references further. Order at 10-11. Additionally, the Board criticized both the Patent Challenger’s lengthy claim chart for providing little to no guidance as to where the challenged claim portions were found in the references, and the Patent Challenger’s 100 page expert declaration for simply tracking and repeating the arguments presented in the petition without relating to any specific claim limitations. Order at 12.
The Board then rejected Patent Challenger’s reliance on KSR support for obviousness because Patent Challenger did not identify any teaching in the references of establishing one of the claim limitations and, therefore, did not demonstrate a prima facie case of obviousness under KSR. Order at 14-15. Relatedly, Patent Challenger was deemed not to have identified a limitation from the claims with respect to a second combination of references. Order at 16. Lastly, with respect to a third combination of references, Patent Challenger was deemed not to have offered a convincing rationale as to why one of ordinary skill in the art would have chosen to combine the references in the manner suggested by Patent Challenger. Order at 19.
In the end, the petition was denied because the Board did not agree with the Patent Challenger’s special broader claim construction positions, and the lengthy claim charts, expert declaration, and petition all failed to specifically identify where each limitation from the claims was found in the prior art references. As a result, all 19 challenged claims were denied.