Final Written Decision Finding Challenged Claims Eligible for CBM Review and Unpatentable Under Section 101 CBM2014-00156

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Takeaway: The recitation in the challenged claims of communication or computer networks, display devices, point-of-sale devices, or the use of known technology, does not make a patent for a technological invention.

In its Final Written Decision, the Board determined that claims 1-4 of the ‘100 patent were unpatentable for claiming ineligible subject matter under 35 U.S.C. § 101. The ‘100 patent “generally relates to methods for coordinating financial transactions via a wireless network, for example, a wireless telephone network” and, in particular, disclosed methods that “allow a user, e.g., a customer or purchaser, to complete financial transactions at point-of-sale locations by using a wireless device, such as a wireless telephone, over a wireless network.” Continue reading

Final Written Decision Concluding Nexus Not Established IPR2014-01102

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Takeaway: To prove nexus between an allegedly commercially successful product and a claimed invention, a patent owner relying upon infringement claim charts in a related litigation should provide explanation as to the context of the litigation, such as whether infringement was established or whether the accused infringer agreed to the charge of infringement. Continue reading

Final Written Decision Finding Challenged Claims Not Unpatentable IPR2014-01146

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Takeaway: Where a claim term is susceptible to more than one construction, the Board’s governing rules do not necessarily require de facto adoption of the broader interpretation. Moreover, questions eliciting yes/no answers on re-direct examination may provide contextual cues so as to be leading questions and subject to exclusion per Federal Rule of Evidence 611.

In its Final Written Decision, the Board determined “that Petitioner has not met its burden of showing, by a preponderance of the evidence, that claims 13–15 of the ’207 patent are unpatentable.” The ‘207 patent, “titled System and Method for Activity Based Configuration of an Entertainment System, relates to methods for configuring multi-input and/or multi-output home entertainment systems.” Petitioner had challenged “claims 13–15 of the ’207 patent under 35 U.S.C. § 102 as anticipated by [Dubil].” Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00878

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Takeaway: The Board declined to make a determination about the weight to provide a declaration, as a whole, and instead considered relevant portions and determined the appropriate weight to accord that particular testimony.

In its Final Written Decision, the Board concluded that Petitioner has shown, by a preponderance of the evidence, that each of the challenged claims 1, 2, 5-7, and 10-12 of the ’969 patent are unpatentable. Petitioner had asserted that the following grounds were applicable: (1) obviousness of claims 1, 2, 5, 6, and 12 under 35 U.S.C. § 103(a) over Tetsuo and Kim; (2) obviousness of claims 10 and 11 under 35 U.S.C. § 103(a) over Tetsuo, Kim, and Yamaguchi; (3) obviousness of claims 1, 2, 5-7, and 12 under 35 U.S.C. § 103(a) over Tetsuo and Blieske; and (4) obviousness of claims 10 and 11 under 35 U.S.C. § 103(a) over Tetsuo, Blieske, and Yamaguchi. The ‘969 patent relates to “a display apparatus including a surface light source apparatus having a light emitting apparatus.” Continue reading

Final Written Decision Confirming All Challenged Claims IPR2014-00788

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Takeaway: Evidence presented by a petitioner after the petition showing public availability of a reference need not be submitted as supplemental information, but can be submitted with its reply as long as it directly addresses contentions made in the patent owner response.

In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that the challenged claims (10-20) of the ’155 Patent are unpatentable.  The ’155 Patent relates to “a system and method of providing publishing and printing services via a communication network.” Continue reading

Final Written Decision Finding Standing Based on Eminent Domain Lawsuit CBM2014-00116

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Takeaway: Standing for a covered business method patent review was demonstrated by a suit for unlicensed use of the patent under an eminent domain statute, 28 U.S.C. § 1498.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 39-44 of the ’548 patent are unpatentable. Also, the Board denied-in-part and dismissed-in-part each of Patent Owner’s and USPS’s Motion to Exclude. Continue reading

Final Written Decision holding that Board’s Authority not limited to Grounds Alleged in Petition IPR2014-01164

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Takeaway: The Board’s authority in its final written decision is not limited to only those grounds alleged in the petition, but is rather broad enough to encompass patentability of any patent claim challenged by the petitioner and any new claim added.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable.  The ’433 patent relates to “subscriber delivered, location-based services.”

The Board first addressed claim construction under the broadest reasonable interpretation standard.  The parties did not dispute the constructions for three terms set forth in the Institution Decision, and the Board therefore adopted its previous determinations.  Patent Owner argued three additional terms, two of which the Board evaluated in its Final Written Decision.

First, the Board construed the term “receiving a transaction confirmation from the preferred service provider.”  Patent Owner relied upon the deposition testimony of Petitioner’s expert in support of its argument that the transaction confirmation can be received “either directly from or indirectly from the preferred service provider.”  Petitioner disagreed, arguing that the specification provides no support for the term “indirectly.”  The Board agreed with Patent Owner’s position and additionally relied upon a dictionary definition for the word “transaction” in construing the term to mean “receiving a confirmation of something, such as a business deal, that is settled or is in the process of being settled either directly from or indirectly from the preferred service provider.”

Second, the Board construed the term “network-assisted location finding technology.”  A principal disagreement between the parties was whether GPS technology qualifies as “network-assisted location finding technology,” with Patent Owner providing a proposed construction for the term and arguing that standalone GPS does not qualify, and Petitioner arguing that GPS is a location finding technology.  The Board relied upon a dictionary definition of the word “assist” as well as the specification of the ’433 patent in finding Patent Owner’s proposal to be inconsistent with the claim language and the specification.  Without providing an explicit construction, the Board held that the term “encompasses the examples of location finding equipment set forth in the specification including cell, microcell, angle of arrival, time of arrival, time delay of arrival, and GPS.”

Turning to the prior art, the Board first addressed alleged anticipation of claims 1-7 and 11-17 by DeLorme.  The Board was persuaded by Petitioner’s arguments and expert testimony that DeLorme teaches all the limitations of the challenged claims.  The Board was also not persuaded by Patent Owner’s arguments regarding difficulty implementing DeLorme’s mobile embodiments, finding that the arguments and examples were not persuasively tied to the claim language and did not undermine the remaining disclosure of DeLorme.

With respect to claim 11, Petitioner had not requested review of the claim based solely on DeLorme, but instead requested review on another ground.  Therefore, Patent Owner argued that institution of review of claim 11 based on anticipation by DeLorme was improper.  The Board noted that its “authority at the final decision stage is not limited to the grounds alleged in the Petition” and that it is “authorized to issue ‘a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).’”  In this case, Petitioner had challenged claim 12, which depends from claim 11, based on DeLorme.  Thus, claim 12 requires the limitations of claim 11, and because Petitioner had shown that DeLorme discloses the limitations of claim 12, the Board found that claim 11 is also unpatentable.

With respect to alleged obviousness of claims 7-10 over the combination of DeLorme and Trask, Patent Owner argued that the Petition provided no valid reason to combine the references.  The Board was persuaded by Petitioner’s arguments and expert testimony that “Trask enhances DeLorme’s system to maximize available taxis and minimize delays by accounting for the location of the taxi.”  Moreover, the Board was persuaded that a person of ordinary skill in the art, who is “a person of ordinary creativity, not an automaton,” would have a reasonable expectation of success in combining the teachings of the references.

With respect to the final ground of the alleged obviousness of claims 1-6 and 11-16 over Baker and Hall and claims 7-10 over Baker, Hall, and Trask, the Board found that Petitioner had established unpatentability by a preponderance of the evidence.  In particular, the Board found that Patent Owner’s arguments were unpersuasive because they relied upon a claim construction that was not adopted and were given less weight as compared to Petitioner’s expert testimony.

Finally, the Board granted in part Patent Owner’s Motion to Exclude two of Petitioner’s exhibits – a declaration filed in a related CBM and a copy of Patent Owner’s infringement claim chart from a related district court litigation.  The Board granted the motion as to the CBM declaration because the Board found that Petitioner had not shown how the declaration “relates to the issues in this inter partes review proceeding.”  As to the infringement chart, the Board was persuaded that the exhibit “is offered not for the truth of the matter asserted (i.e., the content of the ’433 patent), but as evidence of how the Patent Owner has characterized the ’433 Patent and, in particular, the ‘transaction confirmation’ limitation.”  Thus, the Board found the exhibit “relevant to the credibility of [Patent Owner’s] characterization of the ’433 Patent in this proceeding,” and denied the Motion to Exclude the claim chart.

Square, Inc. v. Unwired Planet LLC, IPR2014-01164
Paper 28: Final Written Decision
Dated: November 19, 2015
Patent: 7,376,433 B1
Before: Michael W. Kim, Jennifer S. Bisk, and Barbara A. Parvis
Written by: Parvis
Related Proceedings: Unwired Planet LLC v. Square, Inc., No. 3:13-cv-00579 (D. Nev.); Unwired Planet, LLC v. Google, Inc., No. 3:12-cv-00504 (D. Nev.); CBM2014-00005; IPR2014-00036; CBM2014-00156; IPR2014-01165

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00750

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Takeaway: A proposed modification to a prior art reference does not have to be optimal.  

In its Final Written Decision, the Board found that all challenged claims (1, 2, 4-11, and 13-16) of the ’933 Patent are unpatentable, and denied Patent Owner’s Motion to Exclude. The ’933 Patent relates to a sealed drink container with at least two trigger-actuated apertures in the lid, one through which the user drinks the beverage and another for venting pressure. Continue reading