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


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

Granting in Part Institution Finding Time Bar on Challenge to Parent Application Does Not Bar Challenge to Child Application IPR2015-01090


Takeaway: A time bar to challenging a parent application does not prevent a petitioner from filing a challenge against a child application.

In its Decision, the Board granted institution of inter partes review (“IPR”) of claims 1, 2, 4-7, 9-12, and 14 of the ’529 patent, but denied institution of claims 3, 8, and 13 of the ’529 patent. The ’529 patent relates to managing mobile applications on mobile devices by associating a user profile with each user using a mobile device. Petitioner alleged that (1) claims 1-14 are anticipated by Mehta; (2) claims 4, 9, and 14 are obvious over Mehta and Herschberg; (3) claims 1-3, 5-8, and 10-13 are anticipated by Clare; and (4) claims 1-3, 5-8, and 10-13 are obvious over Clare and Mehta. Continue reading

Denying Institution Because Patent Ineligible for CBM Review CBM2015-00109; CBM2015-00149


Takeaway: The Board refused to allow the parties to file a motion to terminate the proceeding without a written settlement of the dispute.

In its Decision, the Board declined institution of covered business method patent review in either CBM2015-00109 or CBM2015-00149 as to any of the challenged claims (1-26) of the ’074 Patent. The ’074 Patent relates to “a ‘unified messaging service’ that allows a user to access communications such as e-mail and voice mail using ‘a single point of access to all communications, integrated with personal information management tools and customized public content delivery.’” Continue reading

Decision Denying Institution IPR2015-01189


Takeaway: If an application is a continuation of an abandoned application, but is not filed until after the abandoned application went abandoned and there is no incorporation by reference of the abandoned application into the continuation, then the continuation is not entitled to the abandoned application’s priority date.

In its Decision, the Board found that there was not a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims (1-28) of the ’013 Patent.  Therefore, the Board denied institution of inter partes review.  The ’013 Patent describes chipset (platform)-independent methods for compressing and decompressing system ROM code of a computer. Continue reading

Order Granting Motion to Compel Routine Discovery IPR2015-00015, 16, 19, 25, 26, 34, 100, 108, 128


Takeaway: A party must serve on the other party any documents that are inconsistent with a position advanced by that party during the proceeding as part of routine discovery. 

In its Decision, the Board granted Petitioner’s Motion for Routine Discovery.  Specifically, Petitioner sought production of a PowerPoint presentation and a Word document that it contends are inconsistent with several statements Patent Owner made in support of its Patent Owner Response regarding Patent Owner’s commercial products, which it alleges practices all of the challenged independent claims.  Continue reading

Granting Institution in Part Where Intervening Case Law Was Found Insufficient to Prevent Estoppel as to One Challenged Claim CBM2015-00131


Takeaway:  A petitioner may be estopped from challenging a claim that was raised or reasonably could have been raised in a previous post-grant review, even in the face of intervening case law.

In its Decision granting in part institution of a covered business method patent review, the Board determined that “Petitioner has demonstrated that it is more likely than not that the challenged claims are unpatentable” under 35 U.S.C. § 101.  However, the Board also determined that Petitioner “is estopped from challenging claim 26 in this proceeding,” and instituted review of claims 3–6, 8–14, 16–25, 27–30, and 32–41, but not claim 26, of the ’598 patent.  The ’598 patent “relates to ‘a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored,’ and the ‘corresponding methods and computer programs.’” Continue reading

Institution Denied Where Customer Indemnification Insufficient to Establish Standing as Real Party in Interest CBM2015-00134


Takeaway:  Indemnifying customer for alleged patent infringement, without sufficient substantiation, does not make an entity a real party in interest for a transitional proceeding with respect to a covered business method patent.

In its Decision, the Board denied institution of covered business method patent review of seven related cases.  Two Petitioners (AAA and Gerber) had previously “settled with Phoenix Licensing LLC (‘Patent Owner’) and have been terminated from each of the proceedings.”  The Board determined “that Petitioner [Acxiom] has not demonstrated that it has standing to file these Petitions for covered business method review under § 18(a)(1)(B) of AIA and 37 C.F.R. § 42.302.” Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00750


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

Denying Institution For Failure to Explain Why Not Substantially the Same as Asserted in Prior Proceeding IPR2015-01476


Takeaway: The Board may exercise its discretion to deny institution of a petition filed by the same petitioner against the same patent as a previous proceeding if there is no showing that the new grounds are better or that the new grounds could not have been raised in the earlier proceeding.

In its Decision, the Board denied institution of all challenged claims (1, 4, 5, 8-10, and 12) of the ’773 Patent. The ’773 patent describes endodontic files that allegedly “have high flexibility, have high resistance to torsion breakage, maintain shape upon fracture, can withstand increased strain, and can hold sharp cutting edges.” Continue reading

Final Written Decision Finding Evidence of “Printed Publication” Insufficient IPR2014-00690


Takeaway: A declaration used as evidence of a document being a “printed publication” should be precise and be accompanied by corroborating evidence of public accessibility, and not bare statements by the declarant.

In its Final Written Decision, the Board denied the parties Renewed Joint Motion to Terminate Proceedings and found that Petitioner had not shown by a preponderance of the evidence that the instituted claims 4-6, 8-20, or 23-29 are unpatentable. The ’275 patent “discloses a single wire serial interface for managing functions such as power level and on and off switching for power integrated circuits and other devices.” Continue reading