Final Written Decision (Motion to Amend) IPR2013-00194


Takeaway: To establish an earlier date of invention to antedate a prior art reference, an inventor’s statements alone are not sufficient; corroborating evidence is required.

In its Final Written Decision, the Board found that Petitioner had proven by a preponderance of the evidence that the challenged claims (1-8 and 10-12) are unpatentable, denied Patent Owner’s Motion to Amend, and denied Petitioner’s Motion to Exclude.

The ’492 patent generally relates to “providing real-time, two-way transactional capabilities on the Web.” The proceeding was instituted on three grounds: anticipation of claims 1-7, 10, and 11 by Chelliah; obviousness of claim 8 over Chelliah and Electronic Banking; and obviousness of claim 12 over Chelliah and Valentino.

Turning to claim construction, the Board noted that “claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear.” Terms are given “their ordinary and customary meaning as would be understood by one of ordinary skill in the art.”  The Board first noted that Patent Owner’s proposed constructions largely attempted to read into the claims large portions of the specification.  The Board then addressed particular claim terms that it found material to the decision.

The Board first addressed the limitation “value-added network service” (VAN service) and adopted the approach in IPR2013-00195 by construing the term to mean “a service other than underlying network communication services on a network.” In this regard, the Board noted that Patent Owner’s proposal was to define the VAN service as an application, which was inconsistent with the specification’s description of an application being a computer program rather than a service.

With respect to the “VAN switch” term, the Board adopted its construction set forth in the Decision on Institution and construed the term to mean “an OSI application layer switch that has a switching component, management and object routing component.”

Regarding the “Web application” limitation, the Board considered the construction of the term in related proceedings concerning other patents that shared the same specification. Ultimately, the Board adopted the construction applied in IPR2014-00413 and defined the term to mean “a computer program to perform a certain type of work using the Web.”

The Board next discussed the limitation “point of service (POSvc) application.” The Board found Patent Owner’s proposal not supported by the specification, and instead adopted the construction applied in IPR2013-00413.  Thus, the limitation was defined as “computer program that can execute the type of transaction the user may be interested in performing.”

Finally, the Board addressed the construction of “service network (running on top of a facilities network).” The Board again found Patent Owner’s arguments that the Board should revise its construction from that set forth in the Decision on Institution to be inconsistent with the specification.  Thus, its prior construction that the limitation means “a network on which services, other than underlying network communication services, are provided” was not altered.

Turning to the grounds of unpatentability, the Board first addressed Patent Owner’s attempt to antedate the Chelliah reference. The Board noted that although Patent Owner stated that Chelliah does not qualify as prior art, no specific arguments were made on that issue.  Instead, Patent Owner cited to its 150 page declaration and 13 page list of exhibits, which cited 108 separate exhibits.  The Board declined to “sort through hundreds, if not thousands, of pages of testimony and exhibits without some direction.”  The Board also found that with respect to the exhibits it had considered, Patent Owner failed, for example, to reveal what existed prior to the Chelliah filing date or how the exhibits correspond to the claimed subject matter.  In addition, the Board noted that the only support for antedating Chelliah was the inventor’s declaration, but that some form of corroborating evidence is required.

Having found that Chelliah qualifies as prior art, the Board then turned to Patent Owner’s arguments distinguishing the claims from Chelliah. Patent Owner argued that Chelliah failed to disclose several limitations, but the Board found the arguments, when applied to the claims as properly construed, unpersuasive.  Thus, the Board was persuaded that claims 1-7, 10, and 11 are anticipated by Chelliah.  The Board was similarly persuaded that claims 8 and 12 are unpatentable based on the instituted grounds.

In the Motion to Amend, Patent Owner sought only to amend claim 4. The Board first noted that the Motion was not in proper form because it did not identify the amended claim as a substitute claim.  The Board nevertheless considered amended claim 4 as substitute claim 13.

With respect to the substance of the Motion, the Board explained that Patent Owner must clearly identify the written description support for the substitute claims in the original disclosure. Patent Owner did not sufficiently map substitute claim 13 to the original disclosure, only providing a list of pages where support could be found.  Thus, the Board denied the Motion “as failing to explain how the proposed substitute claim complies with the written description requirements.”

Finally, the Board addressed Petitioner’s Motion to Exclude certain documents as not authenticated or hearsay. The Board noted that documents could be authenticated using circumstantial evidence, and although the evidence was “thin,” the Board held that it could assess their authenticity and assign appropriate weight.  With respect to hearsay, Petitioner argued that Patent Owner relied upon inadmissible hearsay to establish earlier dates of conception and reduction to practice.  The Board did not exclude the documents, finding that “the statement has circumstantial guarantees of trustworthiness, is offered as evidence of a material fact, is more probative on the point for which it is offered than any other evidence the proponent can obtain through reasonable efforts, and if admitting it will serve the interests of justice,” pursuant to FRE 807(a).

SAP America, Inc. v. Lakshmi Arunachalam, IPR2013-00194
Paper 67: Final Written Decision
Dated: September 18, 2014
Patent: 8,108,492 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara Related
Proceedings: IPR2013-00195; CBM2013-00013; IPR2014-00413; IPR2013-00414