Final Written Decision (Motion to Amend) – IPR2013-00093


Takeaway: In inter partes review, a claim of an unexpired patent is given its broadest reasonable interpretation (BRI) consistent with the specification in which it appears, and a motion to amend may be denied if it does not add patentable subject matter.

In its Final Written Decision, the Board found that the challenged claims of the ‘880 patent were unpatentable as anticipated and obvious in view of the prior art.  Also, the Board denied Patent Owner’s Motion to Amend.

The technology at issue involved a PDA (personal digital assistant).  The Board, both in its Decision to Institute, and in this Final Written Decision, construed PDA under the broadest reasonable interpretation (BRI) standard to mean “a substantially hand-sized computer used for storing and manipulating an amount of data and capable of exchanging information with a host.”  Patent Owner proposed a narrower construction requiring synchronization functionality which, according to the Board, was neither claimed nor described in the challenged ‘880 patent.  The Board found that all of the challenged claims were unpatentable under its construction of the term “PDA,” and that all of the challenged claims would have been unpatentable even if Patent Owner’s proposed construction was adopted.  Patent Owner attempted to bolster its non-obviousness arguments by asserting commercial success.  Nonetheless, the Board concluded that Patent Owner had not shown any nexus between Petitioner’s sales, certain graphics calculators, and the subject matter recited in the challenged claims.

The Board denied Patent Owner’s Motion to Amend because it was not supported by the written description in the ‘880 patent.  In this connection, Patent Owner asserted that synchronization was inherent in the disclosed PDA, as that term is used in the specification of the ‘880 patent; but the Board disagreed.  The Board also denied Patent Owner’s Motion to Amend because it did not add patentable subject matter.  According to the Board, even if the proposed synchronization language was inserted into the challenged claims, they would still be unpatentable in view of the prior art.

Motorola Solutions, Inc. v. Mobile Scanning Technologies, LLC, IPR2013-00093
Paper 61: Final Written Decision

Dated: April 24, 2014

Patent 6,065,880

Before: Glenn J. Perry, Brian J. McNamara and Mitchell G. Weatherly
Written by: McNamara