Denial of Institution Where Corresponding MPF Structure Not Identified CBM2015-00040


Takeaway: The Board will not institute a review proceeding on claims with means-plus-function limitations if the Petitioner does not identify corresponding structure for the limitations.

In its Decision, the Board instituted a Covered Business Method Patent Review of claims 1, 5, and 11 of U.S. Patent No. 7,774,280 but declined to institute a CBM review of claims 12 and 22. The ’280 patent relates to “a method and system for managing the transfer of rights associated with digital works using variable state variables.”

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Final Written Decision Finding All Challenged Claims Unpatentable as Obvious IPR2014-00430

Takeaway: It is irrelevant whether the references and a product practicing the claimed invention act in a similar manner. What is relevant is whether the references disclose the limitations claimed in the patent at issue.

In its Final Written Decision, the Board found that the challenged claims (1-25) of the ’282 Patent are unpatentable. The ’282 Patent relates to the field of modifying playback of a multimedia presentation, such as a video, from a storage medium.

The Board began with claim construction, stating that the claims are interpreted according to their broadest reasonable construction in light of the specification. The Board adopted the means-plus-function limitation interpretations from the Decision on Institution. Further, the Board interpreted “filter information including at least one identification of a start time and end time associated with a portion of the multimedia presentation, the filtering information further including at least one filtering action for the portion of the multimedia presentation” to mean “(1) an identification of a first time within a multimedia presentation when a filtering action is started; (2) an identification of a second time within the multimedia presentation, subsequent to the first time, when the filtering action is ended; and (3) the filtering action,” as proposed by Patent Owner.

The Board then turned to the asserted ground of unpatentability – obviousness based on Abecassis and Malkin. Patent Owner argued that Malkin does not disclose or suggest a “navigation object,” does not identify start and end times for a filtering action, and that its other control specifications do not constitute a “navigation object.” Patent Owner acknowledged that, unlike the claims in the related inter partes reviews, the claims of the ’282 Patent do not use the term “navigation object.” However, Patent Owner noted that all of the challenged claims require the three elements identified in the claim construction above, and that these three elements have been included in a “navigation object” in some of the claims in the related inter partes reviews. Patent Owner agreed that “to a large extent regarding what Clearplay does, what Abecassis does, what Malkin does, is very similar.” However, Patent Owner stated, and the Board agreed, that whether these disclosures are similar is not the relevant question because what matters is what is claimed. The Board found that, contrary to Patent Owner’s position, all of the elements of the claimed filtering information are taught in either Abecassis or Malkin. Therefore, the dispositive issue is whether it would have been obvious for one of ordinary skill in the art to include pre-defined filtering actions in Abecassis based on the disclosure in Malkin, rather than require the end-user to make all the filtering decisions.

Regarding rationale to combine, Petitioner asserted that both Abecassis and Malkin “teach systems and methods for filtering offensive or otherwise undesirable content from multimedia content during playback,” are in the same field of endeavor, and deal with related subject matter. Therefore, a person of ordinary skill “would have readily known to combine the teachings of the two references, yielding ‘predictable variation[s].’” Patent Owner’s sole argument was that because neither Malkin nor Abecassis discloses a “navigation object,” the combination does not teach said object. However, the Board already determined that the elements of the claimed filtering information are taught by the references. The Board found that the rationale for the modification comes from the references. Therefore, the claims are unpatentable as obvious based on Abecassis and Malin.

Customplay, LLC v. Clearplay, Inc., IPR2014-00430
Paper 20: Final Written Decision
Dated: August 14, 2015
Patent 8,117,282 B2
Before: Karl D. Easthom, Justin T. Arbes, and Barry L. Grossman
Written by: Grossman
Related Proceedings: IPR2013-00484; IPR2014-00339; IPR2014-00383

Denying Institution Where no Meaningful Obviousness Analysis is Provided IPR2015-00277, 00278

Takeaway: A patent claim is not proved to have been obvious merely by demonstrating that each of its elements was, independently, taught in different individual prior art references.

In its Decision, the Board denied the Petitions in each of related inter partes review proceeding nos. IPR2015-00277 and IPR2015-00278. The Board was not persuaded that Petitioner had established the existence of a reasonable likelihood that at least one challenged claim could be shown to have been obvious under 35 U.S.C. § 103(a). Thus, the Board did not institute trial with respect to any claim.

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Denying Institution Where Patent is a Technological Invention CBM2015-00046

Takeaway: The Board will consider on a case-by-case basis whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art and solves a technical problem using a technical solution in determining whether a patent is for a technological invention under 37 C.F.R. § 42.301(b).

In its Decision, the Board denied the Petition as to all challenged claims of the ‘556 patent. As found by the Board, Petitioner had not demonstrated that the ‘556 patent was eligible for review as a covered business method patent.

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Denying Request for Rehearing Where Petition had Deficiencies CBM2015-00019

Takeaway: The Board found that a disclaimer of dependent claims for the alleged purpose of avoiding CBM review was not an issue for consideration by an expanded panel in view of other deficiencies noted by the Board in the Petition.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision not to institute covered business method review of claims 1-4, 6-11, 13-21, 24, 27-35, 37, 38, 42, 43, 47-49, 54, 55, 62, and 63 of the ‘279 patent. Petitioner had not shown an abuse of discretion in the Decision, according to the Board, thus Petitioner had not carried its burden of demonstrating that the Board had misapprehended or overlooked any matters argued in the Petition.

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Evidence Establishing Date of Cataloging and Shelving Not Required IPR2014-01086

Takeaway: Evidence establishing a specific date of cataloging and shelving before the critical date, although desirable, is not required in a public accessibility determination.

In its Final Written Decision, the Board held that claims 1, 4, 10–12, 17, 18, and 44 of the ’759 patent are unpatentable under 35 U.S.C. § 103(a). The dissenting-in-part opinion disagreed that claim 44 is unpatentable. Continue reading

Indemnitor Merely Sending Advice Does Not Result in Privity IPR2015-00635

Takeaway: One factor to determine if a non-party is in privity with a litigant is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.

In its Decision, the Board granted institution of inter partes review (“IPR”) of claims 1, 3, and 4 of the ’883 patent. The ’883 patent relates to facilitating two-way multi-media communication based on a shared transmission media such as a coaxial cable-TV network, and more specifically, to signaling channel management and protocol. Petitioner alleged that (1) claims 1 and 4 of the ’883 patent are obvious over MPT 1343, MPT 1347, and MPT 1327, and (2) claim 3 is obvious over MPT 1343, MPT 1347, MPT 1327, Zdunek, and Dufresne. No claim terms were expressly construed. Continue reading

Denying Institution for Lack of Evidentiary Support for Grounds of Unpatentability IPR2015-00276

Volkswagen Group of America, inc. v. Velocity Patent LLC

Takeaway: The Board declined to exercise its discretion to deny institution of similar grounds submitted in a previous Reexamination, because at least one reference was not asserted in any rejection in the Reexamination even though the reference had been cited in an Information Disclosure Statement in the Reexamination.

In its Decision, the Board denied the Petition as to all challenged claims of the ’781 patent, because Petitioner failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’781 patent. Continue reading

Denying Institution Because Petition Presented Same or Substantially the Same Prior Art or Arguments Already Presented IPR2015-00272

Takeaway: The Board may exercise its discretion to deny institution of grounds based on references that had already been presented in prior IPR proceedings, especially where the new proceeding would delay final decision regarding the patent for an additional year.

In its Decision, the Board denied institution of the Petition as to all challenged claims of the ’524 patent. Prior to deciding the issue of institution, Patent Owner filed a Preliminary Response, and, pursuant to Board authorization, Petitioner and Patent Owner each filed supplemental briefing on the application of 35 U.S.C. § 325(d) to the instant proceeding. Continue reading