In its Decision, the Board addressed Petitioner’s Request for Rehearing with respect to claims 50-57 of the ’481 patent. In its earlier Decision to Institute, the Board had instituted trial as to claims 1, 2, 25, 28, and 32, but not as to claims 50-57.
The Board had previously instituted trial for claims 50 and 51 of the ’481 patent in an inter partes review proceeding requested by a different petitioner. Oracle Corp. v. Clouding IP, LLC, Case IPR2013-00075 (PTAB May 3, 2013). In that proceeding, the Board instituted trial for claims 50 and 51 of the ’481 patent without specifically addressing the “means for obtaining” limitation required by these claims. At some point thereafter, IPR2013-00075 was terminated by settlement.
The Board then issued its Decision in Blackberry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036 (PTAB Mar. 7, 2014). In Blackberry Corp., the Board indicated how means-plus-function claim elements in a patent claim are to be construed, while specifically setting forth “the requirement of a sufficient accounting for a specific algorithm to implement the recited function.” As characterized by the Board, although Blackberry Corp. is “not precedential or authoritative,” it is “nonetheless persuasive authority.”
After that, the Petition for this proceeding was filed, which challenged all of the same claims of the ’481 patent on the same grounds as were asserted in Oracle Corp. The Board declined to institute trial on claims 50-57, but did proceed with instituting trial as to claims 1, 2, 25, 28, and 32. In declining to institute trial regarding claims 50-57, the Board analyzed the “means for obtaining” limitation of claim 50 in view of Blackberry Corp., concluding that the Petition had not “[identified] any specific algorithm for the ‘means for obtaining’ limitation.”
In its Request for Rehearing, Petitioner presented several assertions. Among these was an assertion by Petitioner that the Board’s handling of claims 50 and 51 in the instant proceeding was different from that in Oracle Corp., even though the challenges in both cases were directed to the same claims of the same patent based on the same grounds. Consequently, according to Petitioner, there would be “significant unexplained inconsistency if trial is not instituted in this proceeding for claims 50 and 51.” Nonetheless, the Board was not persuaded by these arguments, finding that the Decision to Institute in Oracle Corp. was not precedential or informative, and thus was not binding. Moreover, the Board noted that “it is speculative as to whether trial would have been instituted in Oracle Corp. with respect to claims 50 and 51 had the reasoning articulated in Blackberry Corp., reasoning we find persuasive and apply in this case, been available for and applied in Oracle Corp.” Consequently, the Board elected not to reconsider its Decision in the instant proceeding with respect to claims 50 and 51.
The Board did, however, modify the Decision to Institute inter partes review with respect to claims 52-57 in view of the Schmidt reference under 35 U.S.C. § 102(e), and to clarify for the record that it was claims 50-51, rather than claims 52-57, that included means-plus-function limitations. As pointed out by Petitioner, and as acknowledged by the Board, the Board’s Order of July 23, 2014 had misread the dependencies of claims 52-57, which in turn caused the Board to inaccurately indicate that claims 52-57 included means-plus-function limitations.
SAP America Inc. v. Clouding IP, LLC, IPR2014-00299
Paper 13: Decision on Request for Rehearing
Dated: July 31, 2014
Patent 6,925,481 B2
Before: Jameson Lee, Michael W. Kim, and Kristina M. Kalan
Written by: Kim