Takeaway: To establish a nexus between commercial success of a computer-related product and a challenged patent claim, evidence beyond publicly-available, generalized hearsay statements is likely to be required, and could even include evidence such as source code.
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims (claims 18-20, 45, 48, 49, 51, and 54) of the ‘494 patent are unpatentable. The ‘494 patent “relates to computerized research on databases” and “discloses that it improves search methods by indexing data using proximity indexing techniques.”
Because the ‘494 patent had expired, the Board interpreted the claims using the Phillips standard rather than the broadest reasonable interpretation. The Board previously construed in its Decision to Institute the terms “direct relationships” and “indirect relationships,” and the parties did not disagree with the constructions. The Board then addressed the parties’ arguments with respect to the terms “computerized database” and “numerical representation of direct relationships.” Patent Owner urged the Board to construe “computerized database,” but as the Board noted, the term does not appear in the claims of the ’494 patent that are subject to the trial. Thus, the term was not construed. With regard to “numerical representation,” Patent Owner argued the term should be limited to representations by digits and not by letters. Petitioner proposed a broader definition, that the term only means “of or relating to numbers.” Referring to the specification of the ’494 patent, the Board found Petitioner’s construction to be too broad and unsupported, and defined the term to mean “representation consisting exclusively of numbers or a set of numbers.”
The Board then analyzed the asserted grounds of unpatentability. First, the Board was persuaded that Petitioner had shown that claims 18-20, 48, and 49 are unpatentable as obvious over the Fox Papers (Fox Thesis, Fox SMART, and Fox Collection). Petitioner showed that the combination of references disclosed every limitation and “satisfied the requirements for combining the teachings of Fox Thesis, Fox SMART, and Fox Collection.” In particular, the three publications “arose from the same thesis project, and were originally one document.” The Board credited Petitioner’s expert testimony that “one of skill in the art would have been motivated to combine the references because they ‘describe a complete project with its underlying system and data.’”
The Board found Patent Owner’s arguments unpersuasive, finding them to be directed to features not recited in the claims or based on an interpretation of the prior art with which the Board disagreed. Patent Owner asserted secondary considerations of nonobviousness, pointing to the commercial success of Google’s PageRank algorithm. However, the Board held that Patent Owner failed to provide evidence of nexus. Patent Owner did not provide any source code for PageRank, and only provided “publicly-available, generalized hearsay statements about Google’s search.” Thus, the Board could not determine if any of the alleged success was due to the method of the challenged claim. In addition, the Google license that was presented as commercial success was the result of a litigation settlement, which “weighs against finding a nexus.” Furthermore, the Board cited the Leapfrog Federal Circuit decision, finding that “Petitioner has provided a strong case of obviousness.”
Regarding the alleged obviousness of claims 18-20, 48, and 49 over the Tapper Papers, the Board found that Petitioner had not carried its burden. In particular, the Board found that Petitioner had not established that the limitation of the preamble of claim 18 was disclosed. The preamble “requires that the database have ‘a first numerical representation of direct relationships in the database.’” The claim chart in the Petition “does not identify a first numerical representation, instead merely identifying where the Tapper papers disclose direct relationships.” The remaining text in the Petition did not address the limitation. Petitioner argued this limitation in its Reply, and the Board noted that it would be within its discretion to not consider the argument as being presented for the first time in a reply. Even considering the arguments, the Board was not persuaded that there would have been a sufficient “reason to substitute numerical representations for those disclosed in Tapper.” Thus, the Board denied this second ground.
Patent Owner filed a Motion to Exclude portions of Petitioner’s Reply Declaration based on alleged improper new reply evidence. The Board noted that a motion to exclude evidence “normally is not the proper vehicle for resolution of a dispute regarding reply arguments and evidence exceeding the proper scope of a reply.” Therefore, the Board denied the Motion but noted that it would have dismissed the Motion as moot if it were proper because the objected to evidence was found to be unpersuasive.
Patent Owner and Petitioner each filed a Motion to Seal. The Board found that Patent Owner failed to carry its burden of showing “good cause” why certain paragraphs of its expert declaration were confidential. No proof was provided that any information was confidential, and although Patent Owner argued the information “has not been made, and will not be made, public,” it was openly presented during the hearing, which was open to the public. Petitioner’s Motion to Seal the Langville deposition transcript (Based on Patent Owner’s designation of the transcript as confidential) similarly failed to establish that the transcript contained confidential information. The Board allowed the parties, within one week, to either (1) withdraw the motions and request the Board to expunge the exhibits or (2) withdraw the motions, request the exhibits be expunged, and replace them with redacted versions.
Facebook, Inc., LinkedIn Corp., and Twitter, Inc. v. Software Rights Archive, LLC, IPR2013-00479
Paper 54: Final Written Decision
Dated: February 2, 2015
Before: Sally C. Medley, Christopher L. Crumbley, and Barbara A. Parvis
Written by: Crumbley
Related Proceedings: Software Rights Archive, LLC v. Facebook, Inc., No. 12-cv-3970 (N.D. Cal.); Software Rights Archive, LLC v. LinkedIn Corp., No. 12-cv-3971 (N.D. Cal.); Software Rights Archive, LLC v. Twitter, Inc., No. 12-cv-3972 (N.D. Cal.); IPR2013-00480; IPR2013-00478; IPR2013-00481; and Reexamination Control No. 90/011,014