In its Final Written Decision, the Board found claims 1-42 of the ’065 Patent unpatentable, dismissed Petitioner’s Motion to Exclude Evidence, and denied Patent Owner’s Motion to Exclude Evidence. The ’065 Patent relates to “a method and computer system for providing hypertext anchor codes and destination addresses for a user-readable text file automatically.”
The Board began with claim construction, noting that the claims are interpreted using the broadest reasonable construction, even if a district court has construed the patent claims. Patent Owner argued in its Response that the broadest reasonable construction standard was improper because Patent Owner “has neither elected to make any amendments nor reopen prosecution itself.” The Board, however, was not persuaded. Merely because Patent Owner chose not to file a motion to amend claims was an insufficient reason to change the standard. Also, the Board noted that Petitioner analyzed the claims under the broadest reasonable construction standard in its Petition, and the Board likewise used the same standard in its Decision on Institution. Changing the standard at this point would require that the proceeding be effectively restarted.
With respect to the claim terms, the Board adopted the constructions of ten means-plus-function elements set forth in the Decision on Institution without opposition from the parties. The Board then expressly interpreted four of the several claim terms the parties had proposed for construction.
In construing the term “destination addresses,” the Board agreed with Petitioner’s proposed definition of “a variable that designates the location of a network resource such as a Web page; may take the form of a URL.” Patent Owner did not oppose. The Board then construed the terms “class code,” “major class code,” and “preferred major class code” together. First addressing the proposed constructions of “class code” and “major class code,” the Board noted, and Petitioner agreed, that Patent Owner’s proposal would not affect the outcome of the prior art analysis. Therefore, because Patent Owner’s proposals were consistent with the specification, the Board adopted Patent Owner’s constructions for “class code” and “major class code.” However, with respect to “preferred major class code,” the Board found that Patent Owner’s proposed definition improperly imported a imitation from the specification into the claims. The Board then provided its own construction for the term.
The Board then turned to the analysis of the grounds of unpatentability. First, the Board discussed the ground of anticipation of claims 1 and 22 by the van Hoff reference. In particular, the Board noted that although Patent Owner had a full opportunity to argue for patentability as to all instituted grounds, Patent Owner did not direct the Board “to any argument or evidence” that would persuade the Board that Petitioner failed to demonstrate that claims 1 and 22 are anticipated by van Hoff. The Board held that Petitioner’s unrebutted arguments and evidence demonstrated by a preponderance of the evidence that claims 1 and 22 are anticipated by van Hoff.
The Board next addressed the obviousness grounds of unpatentability of claims 1-42 in light of van Hoff in combination with Anthony, as well as other references. Patent Owner argued in its Response that the combination of van Hoff and Anthony, which was relied upon in each instituted obviousness ground, does not disclose certain features. Patent Owner also argued that Petitioner failed to establish a sufficient reason to combine the teachings of van Hoff and Anthony. Finally, Patent Owner proffered objective evidence of nonobviousness. The Board was not persuaded by Patent Owner’s arguments, finding that Petitioner demonstrated by a preponderance of the evidence that claims 1-42 are obvious over the combinations of van Hoff, Anthony, Borden, Edelstein, and Logue.
The Board discussed each of Patent Owner’s arguments in turn. With respect to Patent Owner’s arguments that the combination of references did not disclose certain features, the Board credited the testimony of Petitioner’s expert and cited to the express disclosure of van Hoff as contradicting Patent Owner’s argument. The Board also held that the claims, as construed, were not as limited as Patent Owner argued. Thus, even though the Board agreed with some of Patent Owner’s arguments, the Board still found the prior art to disclose all the limitations based on the broader scope of the claims.
With respect to the rationales for modifying van Hoff in light of Anthony’s disclosure, the Board noted that Petitioner provided several rationales for the modification in the Petition. The Board was not persuaded by Patent Owner’s argument that one of ordinary skill in the art would not combine the references as being too narrowly focused “on small differences between van Hoff and Anthony, and fail[ing] to consider the collective teachings of van Hoff and Anthony from the perspective of one with ordinary skill in the art.” Patent Owner also argued that the combination would change the principle of operation of Anthony such that the combination would not have been obvious. However, the Board found Patent Owner’s argument inapplicable to the facts of the case – Petitioner proposed modifying van Hoff (the primary reference), and the proposed modification, according to the Board, would improve van Hoff’s system.
With respect to objective evidence of nonobviousness, Patent Owner alleged that commercial success of Petitioner’s products indicated the nonobviousness of the claims. Petitioner responded that Patent Owner had not shown that Petitioner’s products were commercially successful nor had it shown a nexus between the purported success and the system allegedly practicing claims of the ’065 Patent. Patent Owner cited to Petitioner’s press releases indicating: (1) the number of Petitioner’s publishers and unique users per month; (2) that 69% of 500 women surveyed reported that they were more likely to pay attention to ads relevant to what they were reading; and (3) “online video ad spending is projected to reach $ 7.1 billion by 2015 up from $ 2.2 billion spent in 2011.” The Board found the evidence did not establish that the alleged sales numbers constituted commercial success, noting that it was unclear if the numbers were even sales or revenue amounts. Accordingly, little weight was accorded to Patent Owner’s alleged objective evidence of nonobviousness.
The Board then turned to Petitioner’s Motion to Exclude Patent Owner’s objective evidence of nonobviousness. Because the Board found the evidence unpersuasive anyway, it dismissed the motion as moot.
Patent Owner also moved on several grounds to exclude several portions of Petitioner’s expert rebuttal declaration. Patent Owner argued that the portions included arguments that should have been presented with the Petition and should also be excluded under Federal Rules of Evidence 403 and 602 because Patent Owner did not have an opportunity to address the testimony. The Board held that Patent Owner failed to carry its burden of showing that the portions should be excluded. In particular, Patent Owner failed to sufficiently discuss how the evidence and arguments were not triggered by its own arguments raised in the Patent Owner Response. Without such a discussion, Patent Owner did not show that the rebuttal declaration exceeded the proper scope of reply evidence. Patent Owner also attempted to exclude one paragraph of the declaration, because the declarant was not qualified as an “advertising expert.” The Board disagreed, noting that an expert could resort to common sense or common knowledge of one with skill in the art, and could therefore opine that “it is of course a common market demand that an advertisement be placed in a relevant location.” Patent Owner also argued that certain paragraphs should be excluded on the basis that the expert used words that are not applicable legal standards in the statute. The Board agreed with Petitioner that an expert may express his or her opinions in words not used expressly in the statute. Finally, Patent Owner moved to exclude certain paragraphs because the expert allegedly provided legal opinions. The Board noted that expert testimony on the ultimate legal conclusion of obviousness is not necessary or controlling. However, it is within the Board’s discretion to assign the appropriate weight to such testimony. Thus, Patent Owner’s Motion to Exclude was denied.
Vibrant Media, Inc. v. General Electric Company, IPR2013-00170
Paper 56: Final Written Decision
Dated: June 26, 2014
Patent 6,581, 065
Before: Joni Y. Chang, James B. Arpin, and Mitchell G. Weatherly
Written by: Chang
Related Proceeding: General Electric Co. v. Vibrant Media, Inc., No. 1:12-cv-00526-UNA
(D. Del.); IPR2013-00172