Final Written Decision IPR2013-00172

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Takeaway: The broadest reasonable interpretation standard for claim construction is used in all trials on unexpired patents, regardless of whether the patent owner chooses to file a motion to amend.

In its Final Written Decision, the Board held that all challenged claims (1-12) of the ’074 Patent are unpatentable, dismissed as moot Petitioner’s Motion to Exclude Evidence, and denied Patent Owner’s Motion to Exclude Evidence. The Decision included a dissent as to claims 9-11, stating that those claims are indefinite under 35 U.S.C. § 112, second paragraph, and the proceeding should be terminated as to those claims.  The ’074 Patent relates to a computer system for providing hypertext anchor codes and destination addresses for a user-readable text file.

The Board began with claim construction stating that claim terms are construed using the broadest reasonable construction standard. Patent Owner argued that using the broadest reasonable construction standard was inappropriate because it did not elect to make any amendments or to reopen prosecution.  The Board found this unpersuasive, stating that Patent Owner’s election to not file a motion to amend is not sufficient reason to justify changing the claim construction standard.

The Board then discussed the system claims that include method steps, which Patent Owner argued should be interpreted as a means-plus-function limitation. The Board was not persuaded by this argument, stating that Patent Owner could have filed a motion to amend to clarify these claims but chose not to; therefore, the Board declined to rewrite the method steps as means-plus-function limitations.  The Board then recognized that while a claim reciting an apparatus and method steps would not be in compliance with § 112, ¶ 2, for infringement purposes, the Board analyzed claims 9-11 to determine the patentability of those claims based on the obviousness grounds asserted by Petitioner.  The Board noted that in some cases, an indefiniteness finding could preclude a finding of obviousness, but the Federal Circuit has found in other cases, a finding of unpatentability on the merits can be ascertained.  Here, the Board is able to ascertain the scope of each claim limitation with reasonable certainty; therefore, it can find unpatentability.

The Board then turned to the means-plus-function limitations, noting that neither party disputed the claim constructions for those elements from the Decision to Institute. Therefore, the Board adopted those constructions.

Next, the Board examined four additional terms. First, the Board found that the term “destination addresses” means “a variable that designates the location of a network resource such as a Web page; may take the form of a URL,” as defined in the Specification and agreed to by both parties.  Then, the Board construed “class codes,” “major class code,” and “preferred major class code.”   The Board adopted Patent Owner’s construction of “class code” and “major class code,” noting that the differences between the parties’ constructions would not affect the outcome of the prior art analysis.  The Board declined to adopt Patent Owner’s proposed construction for “preferred major class code” because it improperly imported a limitation from the Specification into the claims.

The Board then analyzed whether claims 1-5 and 7-11 are obvious over van Hoff and Anthony. Patent Owner first argued that the combination fails to teach or suggest the class code claim features of claim 1, but the Board was not persuaded by Patent Owner’s arguments.  Patent Owner then argued that one of ordinary skill in the art would not have combined van Hoff and Anthony because the topologies used in van Hoff and Anthony are different, and one would need to change the principle operation of Anthony to combine it with van Hoff.  Again, the Board was not persuaded by these arguments, stating they focus too narrowly on small differences between van Hoff and Anthony, and fail to consider the collective teachings of the art form the prospective of one of ordinary skill in the art.  Patent Owner next argued that the combination of references does not teach a “major class code” and a “preferred major class code” because the relevance indicator of van Hoff is not a major class code.  The Board found that the term “major class code” does not require a hierarchical format, which is what Patent Owner argued van Hoff is missing.  Finally, Patent Owner argued that the commercial success of Petitioner’s products shows that the subject matter of the claims would not have been obvious.  The Board agreed with Petitioner that Patent Owner failed to show commercial success of any system or the required nexus between the purported commercial success and the claims of the ’074 Patent.

The Board then turned to the argument that claims 6 and 12 are obvious over van Hoff, Anthony, Kleinberg, and Borden. Patent Owner’s first argument mirrored its argument as to claims 1-5 and 7-11 that one of ordinary skill in the art would not have combined van Hoff and Anthony, and the Board similarly found those arguments unavailing as to claims 6 and 12.  Patent Owner then argued that the combination of the prior art references does not describe the “filtering” features recited in claims 6 and 12; however, the Board was not persuaded by this argument.

Finally, the Board addressed the argument that claim 9 is obvious over van Hoff, Anthony, and Logue. Noting that Patent Owner’s arguments as to claim 9 are duplicative of its above arguments, the Board found that claim 9 is unpatentable as obvious over the combination of van Hoff, Anthony, and Logue.

The Board next discussed Petitioner’s Motion to Exclude Patent Owner’s objective evidence of nonobviousness. The Board stated that it is not necessary for it to assess the merits of the Motion because even without excluding such evidence, the Board found all claims unpatentable.

The Board then discussed Patent Owner’s Motion to Exclude numerous portions of Petitioner’s expert’s rebuttal declaration as improper rebuttal evidence that should have been presented with the Petition. The Board determined that the declaration should not be excluded because the mere fact that the declaration cites to evidence that was not discussed specifically in the Petition is insufficient to establish the impropriety of such evidence, much less the inadmissibility under the Federal Rules of Evidence.  Patent Owner also challenged Petitioner’s expert’s qualification as an expert regarding advertising, but the Board was not persuaded by those arguments.  Patent Onwer also argued that certain portions of the declaration should be excluded for the expert’s choice of words, but the Board agreed with Petitioner that this is not a proper challenge.  Finally, Patent Owner argued that parts of the declaration should be excluded because the expert provides legal opinions, but the Board did not find this argument persuasive.

In the Dissent, APJ Weatherly stated that claims 9-11 should be found indefinite under 35 U.S.C. § 112, second paragraph, and the proceeding should have been terminated as to those claims. APJ Weatherly stated that because these claims are indefinite, he cannot analyze the patentability of those claims under § 103.

Vibrant Media, Incorporated v. General Electric Company, IPR2013-00172
Paper 50: Final Written Decision
Dated: July 28, 2014
Patent 6,092,074
Before: Joni Y. Chang, James B. Arpin, and Mitchell G. Weatherly
Written by: Chang
Dissent-in-Part by: Weatherly
Related Proceedings: General Electric Co. v. Vibrant Media, Inc., No. 1:12-cv-00526-UNA (D. Del.); IPR2013-00170