Pyrrhic Victory: IPR Petition Denied Because Claims Indefinite

14253925_sPatent Owner won a Pyrrhic victory in Facebook v. TLI Communications, IPR2014-00566, wherein the Board denied the Petition, but for a reason that calls into question the future viability of the patent-in-suit. Namely, the Board found that it could not construe the means-plus-function claim limitation at issue and, as such, the claim is indefinite and not amenable to construction.

More specifically, the Board sought to construe “means for allocating classification information” from the patent-at-issue. Order at 7. Petitioner stated that the specification did not disclose any algorithm for performing the allocating function. Id. at 10. Of course, a lack of sufficient disclosure of structure, pursuant to 35 U.S.C. § 112, ¶ 6, renders a claim indefinite, and thus not amendable to construction. Id. 13. The Board quoted the Federal Circuit on this point: “If a claim is indefinite, the claim, by definition, cannot be construed.” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). Because the claims were not amenable to construction, the Board was unable to conclude that there is a reasonable likelihood that Petitioner would prevail in its challenge of claim and dependent claims therefrom, and Institution was denied. Paper 14 at 18.  As such, Patent Owner’s patent survives…for now.

Failure to Identify Structure of Means-Plus-Function Limitation Results in Denial of Ground

Reference booksParties have tried different strategies in addressing claim construction in inter partes review petitions. Some have relied strictly on a generic “broadest reasonable interpretation” argument; others have followed a more traditional Phillips analysis – both strategies having achieved varying levels of success.  What is clear, however, is that when a challenged claim is in means-plus-function format, the IPR rules require that a Petitioner set forth the structure that corresponds to the recited function of the challenged claims.  Panel Claw, Inc. v. SunPower Corp., IPR2014-00388.

Among the limitations at issue in Panel Claw were “means for interengaging adjacent photovoltaic assemblies into an array of photovoltaic assemblies.” and “means for interlocking one said photovoltaic assembly to another said photovoltaic assembly.”  Of course, recitation of the term “means” in a claim limitation creates a rebuttable presumption that 35 U.S.C § 112, ¶ 6 governs construction of the claim. Further, when the presumption is that a limitation is a means-plus-function limitation, under 37 C.F.R. § 42.104(b)(3), Petitioner is required to identify the structure in the specification that corresponds to the recited function.

In Panel Claw, however, Petitioner argued first that the limitations which recited the term “means” were purely functional and therefore cover any suitable means for accomplishing the stated function. This argument contradicted a determination in a related lawsuit (SunPower Corp. v. Sunlink Corp., Case No. 08-Case IPR2014-00388 cv-2807 (N.D. Cal.)) which deemed the limitations at issue to be means-plus-function limitations. Further, Petitioner then failed to assert a back-up argument identifying any corresponding structure to the limitations-at-issue.

The Board found that limitations at issue were means-plus-function limitations, the constructions of which were governed by 35 U.S.C § 112, ¶ 6. By failing to identify corresponding structures, Petitioner violated 37 C.F.R. § 42.104(b)(3) and, as such, the challenged claims containing the means language were deemed patentable.

Short-Shrift Analysis of Dependent Claims Costs Patent Challenger in Inter Partes Review Institution

The OfficeMeans-plus-function claim limitations took center stage in Honeywell’s challenge of 20 claims of an HVAC Modulation Technologies patent, with the Board ultimately putting 17 of those claims into an inter partes review trial in Honeywell Int’l Inc. v. HVAC Modulation Tech. LLC (IPR2013-00096), involving U.S. Pat. No. 5,590,642.  The ‘642 patent had previously survived an ex parte reexamination proceeding.  Interestingly, the Board did not institute with regard to three of the challenged claims, despite the fact that Patent Owner did not file a Preliminary Response.

The ‘642 patent relates to control systems for burners used in heating, ventilation, and air conditioning (“HVAC”) systems. More specifically, the ‘642 patent discloses a complex system of sensors, modulating gas valves, controllers, and algorithms which allows HVAC systems to operate in various settings and respond to changes in building load.

In light of the absence of a Preliminary Patent Owner Response, the Board’s claim construction analysis was straightforward, with the Board adopting “for purposes of this decision” the constructions proposed by Patent Challenger. The Board then went on to detail how many of the challenged claims were contained within one of the cited prior art references, thus providing the reasonable basis required to institute the trial.

The Board did not, however, include 3 claims in the trial.  With regard to claim 16, for example, the Board found that Honeywell had failed to provide a sufficient and credible explanation as to how the prior art described the features recited in this challenged claim.  It seemed, instead, that Honeywell had short-circuited its analysis by relying on an analysis provided with other claims, but those other claims did not mention all the limitations of claim 16.  No reasonable likelihood was, therefore, found with respect to this claim, based on several potential grounds for challenge.  A substantially similar analysis was performed with regard to claims 17 and 23.

In the end, the Board’s decision is another cautionary tale regarding the need to provide complete analyses and evidence in a Petition to prevail in an inter partes review.  The Board is proving to be meticulous in its analysis and will not overlook even minor errors in its patentability analyses.

Detailed Means-Plus-Function Analysis Underlies Board’s Decision to Institute Six Related IPR Trials

Six PersonalWeb Technologies patents were thrown into inter partes review trials by EMC Corporation in cases styled as EMC Corp. v. PersonalWeb Tech., LLC (IPR2013-00082 through IPR2013-00087), involving U.S. Pat. Nos. 5,978,791; 6,415,280; 7,945,544; 7,945,539; 7,949,662; and 8,001,096.

The six patents each relate to a data processing system that identifies data items, such as data files or records, by using an identifier which depends on all of the data in the data item and only on the data in the data item. This implies that the identity of a data item is said to be independent of its name, origin, location, or address – a feature that is useful in identifying and subsequently eliminating duplicate copies of data items. The system involves having a “True File registry,” into which all data items are assimilated, with duplicates being eliminated.

After describing the cited art in the first case of the series, the Board began in all six cases with the customary claim construction analysis. Of note in the Board’s ruling was its construction of “data” and “data item.”  Relying on CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000), the Board noted that, “[i]n the absence of evidence to the contrary, we must presume that the use of different terms in the claims connotes different meanings.”  See, e.g., 82 Order at 15.

Also of note was the Board’s treatment of the means-plus-function claim language from the subject claims. In particular, the Board found that “[t]he corresponding structure of a means-plus-function limitation…must be more than simply a general-purpose computer or microprocessor to avoid pure functional claiming.”  The Board then conducted a detailed analysis of the specification to determine what structure corresponded to the claimed function.

Finally, in a situation common to the related cases, the Board embarked on a lengthy discussion as to whether some of the prior art references cited by Patent Challenger were “printed publications” under 35 U.S.C. §102(b). For example, Patent Owner argued that one of the references was not a printed publication because there was no evidence to indicate that it could have been located prior to the critical date.  See, e.g., 84 Order at 18.  The Board did not agree, noting that whether a given reference is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.  Id. at 19.  In this case, because the title page of the reference clearly showed that the reference was posted on a publicly accessible site well known to those interested in the art prior to the critical date, the reference is to be considered a printed publication.  The Board distinguished this type of factual scenario – where the reference indicated when it was created and publicly disseminated – versus the scenario presented in Synopsis, Inc. v. Mentor Graphics Corp., wherein a brochure, without any such indication of public availability, was at issue.

In the end, the Board granted all six of Patent Challenger’s petitions for inter partes review as to all challenged claims based on extensive obviousness and anticipation grounds.

Board Refuses to Subject Indefinite Claims to Inter Partes Review Trial

In a rare denial of a petition seeking inter partes review, the Board denied a petition filed by against a Universal Electronics patent in a case styled as Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00152 (Paper No. 8), involving US Patent No. 5,614,906.

In total, four claims of the ‘906 patent were challenged, pursuant to 8 grounds of unpatentability.  Based on the Board’s claim construction for a key term of the patents, many of the grounds were denied because the prior art was deemed to be missing a limitation of the challenged claims.

Most interesting in the Board’s decision, however, was its denial of the grounds relating to Claim 16 – a claim that contained numerous means-plus-function limitations.  In attempting to construe three means-plus-function limitations of that claim, the Board found, in each instance, that there was no structure disclosed in the specification that corresponded to the function recited in the claim.  See, e.g. Order at 12.  In effect, the Board determined that the claims were hopelessly indefinite.

A Petitioner cannot, of course, challenge the validity of a patent claim under 35 U.S.C. § 112.  How did the Board reconcile this indefinite claim with a request for a finding that the claim was unpatentable under §§ 102 and 103?  They denied the Petition!

“A lack of sufficient structure under 35 U.S.C. § 112, sixth paragraph renders a claim indefinite, and thus not amenable to construction.”  Order at 20.  As such, the Board concluded that the information presented in the Petition does not show that there is a reasonable likelihood that the Petitioner would prevail in its challenge.

It is worth noting that the claim at issue in this decision had already been found indefinite by the district court, as a matter of law.  Two weeks prior to the filing date of the petition, the court in the underlying litigation issued an order invalidating the claim.  While it is unclear why the Petitioner would seek to challenge in the inter partes review a claim that had already been invalidated, the Board’s decision was likely significantly impacted by this court decision.

36 for 41: Workmanlike Board Decision Gets Patent Challengers Back in the Winning Column

iStock_000007197208XSmallIn a decision lacking in its typical flair, the Board has instituted an inter partes review trial for all challenged claims in a case styled Midland Radio Corp. of Florida v. Cobra Electronics Corp. (IPR2013-00021), involving US Pat. No. 6,584,306. Patent Challenger asserted 39 separate grounds of unpatentability, but the Board only authorized the trial on three grounds.  The Patent Owner did not file a Preliminary Response in this case.

The ‘306 patent is drawn to a “point-to-point” two-way radio system in which hand held walkie-talkies communicate without using a base station. Each walkie-talkie has a transmitter that transmits a call announcement signal and a separate voice signal. The voice signal is different from the call announcement signal and is transmitted over a fixed frequency range. Each walkie-talkie also has a receiver that receives the voice communications signal, a vibrator responsive to the call announcement signal, a vibrator responsive to the call announcement signal, an audible notification means responsive to the call announcement signal, and a switch for selecting an audible call announcement and a vibrational call announcement.

Starting with a claim construction analysis, the Board agreed with Patent Challenger that “switch” means a device for choosing among at least two options, and that none of the claim  terms should be construed as “means-plus-function” even though the term “means” appears in the claim. Taken in context, the claim is not limited to any particular structure disclosed in the specification. Order at 9. The Board also raised its own claim construction analysis for a term in the patent, relying on Webster’s New Collegiate Dictionary (1977) to define “separate” as “set apart or kept apart: not shared with another; dissimilar in identity” and “different” as “partly or totally unlike in nature, form or quality.” (It seems the Board’s decision may have erroneously listed the year as 1977 instead of 1997 – the priority date of the patent is February 1998, so a 1997 dictionary would be significantly more appropriate than one from 1977).

The Board then turned to an obviousness analysis, finding that two of the asserted references were missing a key limitation of the claims.  As such, the Board denied all other grounds that used either reference as the primary reference. In the end, the Board’s analysis did not contain any other notable tidbits, except the fact that the vast majority of grounds were denied as redundant.

31 for 32: Secondary Considerations Argument Comes Up Short in Decision to Institute Inter Partes Review Trial

iStock_000000967953XSmallCBS was successful in forcing all 41 challenged claims of a Helferich patent into an inter partes review trial. The case is styled CBS Interactive Inc., The New York Times Company, G4 Media, Bravo Media LLC, and Phoenix Newpaper, Inc. v. Helferich Patent Licensing, LLC (IPR2013-00033), involving US Pat. No. 7,155,241. Each claim was challenged based on a single ground, but that was all that was required to institute the trial.

The ‘241 patent discloses a paging system that notifies the user of a paging transceiver that a message has been received, but without sending the entire message. The paging system allows the user to determine the priority of the message and whether the user wants to retrieve, play, erase, store, forward, or reply to the message at a convenient time, such as downloading the entire message at less expensive off-peak hours.

The Board started its analysis with a claim construction analysis that primarily involved means plus function claim limitations.  To that end, the Board undertook a fairly detailed analysis of the specification in identifying corresponding structure for the several means-plus-function limitations. In some instances, the Board noted that Patent Owner’s claim construction was insufficient because, although Patent Owner contested Patent Challenger’s constructions, Patent Owner did not identify any specific portions of the specification that described any corresponding structure. Order at 18.

The Board then proceeded to an obviousness analysis, finding that the prior art met the “reasonable likelihood” standard required to institute an inter partes review trial.  In so doing, the Board rejected Patent Owner’s argument for secondary considerations of nonobviousness. Patent Owner had argued that the enormous licensing success of “Helferich patents” was sufficient to overcome an obviousness determination, but the Board found that such an argument, detached from the patent-in-suit, was unpersuasive.  Order at 22. Further, the Board found that Patent Owner failed to provide the required nexus between the merits of the invention and the licenses themselves.  Id.  As such, the secondary considerations arguments put forth by Patent Owner were rejected by the Board.

The Patent Owner also argued that the Board should deny the petition because the Patent Challenger used the same arguments as during a previous reexamination argument. The Board was not persuaded by the argument because the ‘241 patent was not involved in the previous reexamination, and even if it was, section 325(d) does not require the Director to defer to a prior determination in the Office, even one which considered the same prior art and arguments. Order at 24.

In the end, the Board granted trial for all challenged claims, granting on the single challenge ground for approximately half the claims, and another single challenge ground for the remainder of the claims.

24 for 25: Inter Partes Review Trial Instituted in View of Waived Patent Owner Preliminary Response

iStock_000016813098XSmallIn only the second decision to initiate an IPR trial on ALL proposed grounds, the Board granted a petition filed by Research in Motion in the IPR styled Research In Motion Corp. v. Mobilemedia Ideas LLC (IPR2013-00016), involving US Patent No. 6,441,828. The trial involves a smaller than average number of claims and grounds, as the decision was granted for all 5 challenged claims based on all 10 challenged grounds.

The subject matter of the ‘828 patent involves an apparatus (e.g., an electronic picture frame) for displaying a digital image in a normal direction regardless of whether the apparatus is placed with the shorter or longer side down.

The Board spent a considerable amount of the decision discussing claim construction, starting with a finding that the preamble of the only independent claim (Claim 6) is not limiting because it did not add any further limitation that is not already present in the body of the claim. Order at 6.  Further, the Board found that the preamble of Claim 6 only recited an intended use for the claimed apparatus (“for displaying image data read from a recording medium.”).  Id.

The Board then proceeded to address the Patent Challenger’s means-plus-function claim limitation positions, noting that because the Patent Owner did not file a patent owner preliminary response, the Board did not have the benefit of ascertaining the Patent Owner’s position on the claim construction of the means-plus-function limitations. Order at 7. The Board stated that the Patent Owner would have an opportunity to present its construction in the patent owner response and was clear to remark that the claim construction positions it was taking in its Order were made solely to determine whether to institute the trial.  The Board then went on to identify specific structure for each of the means-plus-function limitations, often agreeing with the Patent Challenger’s position.

The Board proceeded to analyze each of the Patent Challenger’s anticipation and obviousness grounds, finding a reasonable likelihood of prevailing in each instance. The Board again made subtle references to the waiver of the patent owner preliminary response in stating more than once that the Patent Challenger’s explanations of its invalidity contentions were “unrebutted.” Order at 22, 25.

In the end, it was a total success for Patent Challenger at this stage of the proceeding. Patent Challenger’s strategy of focusing on a small number of grounds was successful, as it avoided the quandary many other Patent Challengers have faced – the Board denying cumulative or duplicative grounds. Although it was not apparent how crucial the waiver of the patent owner preliminary response was in this decision, the Board’s repeated emphasis of “unrebutted” challenge grounds indicates that patent owners should strongly consider the advantage of rebutting a Patent Challenger’s argument at an early stage of the proceeding to give the Board the opportunity to potentially narrow the trial.

Eighth Inter Partes Review Trial Instituted

The Order issued in the second of four inter partes review trials involving Intellectual Ventures and Xilinx, styled as Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00019), relating to U.S. Patent No. 8,062,968, closely parallels the decision instituting a trial in IPR2012-00018, involving the same parties.  Again, all challenged claims were included in the trial, based on six of the 18 proposed grounds for invalidity.  The remaining 12 grounds were analyzed, but deemed to not have met the reasonable likelihood standard, so were denied.

In general, the rationale for instituting the trial was very similar to the rationale articulated in the previous Order, including the same claim construction issues and largely the same discussion of the challenged claims vis-a-vis the prior art.  As such, we do not repeat that analysis here, and merely refer you to our prior report.

In the end, however, its 8-for-8 for patent challengers to date.

Seventh Inter Partes Review Trial Instituted

The last four PTAB Orders from February 12, 2013, that instituted inter partes review trials, were all related to the large battle underway between Xilinx and Intellectual Property Ventures Management.  We will take them in order, first looking to the Board’s decision to institute an IPR trial in Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00018) (J. Arbes), relating to US Patent No. 7,566,960.  In that Order, the board denied the proposed ground that sought a finding of unpatentability based on anticipation, but granted the trial on four separate obviousness grounds that covered all 13 challenged claims.

The subject matter of the ‘960 patent was an “interposer disposed inside an integrated circuit package between a die and the package.”  Order at 2.  The Board’s analysis focused on the only really interesting portion of the opinion–claim construction.  To that end, the Board first considered the limitation of the claims that required “an array of landing pads disposed on an inside surface of the integrated circuit package.”  Order at 8.  While petitioner did not proffer a definition of this claim limitation, Patent Owner suggested that the limitation required the IC package to “completely surround” both the IC die and landing pads.  The Board rejected this proposal on a number of grounds: 1) the language of the claim itself did not indicate such a relationship, 2) the specification did not disclose an intent on the part of Patent Owner to define the “inside surface” language consistent with Patent Owner’s proposal, 3) while one embodiment of the specification supported Patent Owner’s position, there was no reason to limit the claim as Patent Owner suggested; indeed, the term “surround” only appeared in the patent on one occasion, relating to a different context, and 4) while an argument made in prosecution was consistent with Patent Owner’s definition, the Board did not find that such argument was an express or clear disclaimer of a broader construction.”  (for those litigators used to relying heavily on the file history to define a claim term, this has to be an eye opener).  Order at 9-10.  In short, in view of the broadest reasonable interpretation, Patent Owner’s proposal was incorrect.

The Board also construed the limitation “means for electrically coupling,” finding that because the word “means” was used, and no structure was recited tin the claim as performing the electrical coupling, the term was subject to 35 USC §112(f).  As compared to other, more cursory means-plus-function analysis in other Orders, in the its analysis here, the Board undertook a detailed analysis of the specification in coming up with its proposed corresponding structure.

In view of the Board’s claim construction positions, it went on to find that Patent Challenger presented arguments that made it reasonably likely that all challenged claims were unpatentable in view of 4 of the 9 grounds proposed in the petition.