In the Final Written Decision, the Board determined that the challenged claims of the ’926 Patent (claims 30, 31, 40, 41, 43, 52, 55, 59, 72, and 75) are unpatentable as obvious under 35 U.S.C. § 103 over three prior art references (Zauras, Pad++, and SVF) and are unpatentable as obvious under 35 U.S.C. § 103 over four prior art references (Zaurus, Hara, Tsutsumitake, and SVG). The ’926 Patent relates to the scalable display of Internet content on mobile devices by enabling the content to be rendered, zoomed, and panned for better viewing on small screens and standard monitors.
The Board began by construing the claims. In its Decision to Institute, the Board adopted the claim construction from the co-pending district court litigation. A dispute then arose about a term that was not addressed in the district court’s claim construction ruling. The Board did not adopt either party’s construction. Instead, the Board rendered its own construction by looking to the language of the claims and the specification.
The Board then turned to Petitioner’s prior art challenge that the claims are obvious over Zaurus, Pad++, and SVF. The Board first cited to Federal Circuit law regarding obviousness, and applied those principles to examine the prior art as to two representative claims, 30 and 52. The Board then discussed in detail the disclosures of the three prior art references and Patent Owner’s interpretation of such. The Board then discussed the prior art disclosures relative to the limitations of the rest of the challenged claims.
The Board then turned to Petitioner’s prior art challenge that the claims are obvious over Zaurus, Hara, Tsutsumitake, and SVG. The Board again began by discussing the representative claims and then the remaining claims, and found that the challenged claims would have been obvious in view of this combination as well.
The Board then discussed objective indicia of non-obviousness, and specifically that Patent Owner did not establish the required nexus between the indicia of non-obviousness and the claimed subject matter. Specifically, Patent Owner argued that praise by others and commercial success were indicia of non-obviousness. The Board, citing to Federal Circuit law, stated that Patent Owner had not sufficiently shown that the sales of iPhone and Android devices are a result of the claimed invention.
The Board also denied Patent Owner’s Motion to Exclude various evidence. Going through each piece of evidence, the Board stated that Petitioner was entitled to introduce that evidence at that time.
Kyocera Corp. and Motorola Mobility LLC v. SoftView LLC, IPR2013-00004, IPR2013-00257
Paper No. 53: Final Written Decision
Dated: March 27, 2014
Patent 7,831,926 B2
Before: Bryan F. Moore, Brian J. McNamara, and Stacey G. White
Written by: McNamara
Related Litigation: SoftView LLC v. Apple Inc., No. 10-389-LPS (D. Del.)