Takeaway: The Board will not institute an inter partes review proceeding with respect to claims it cannot interpret, particularly if those claims recite means-plus-function limitations for which no corresponding structure is disclosed in the challenged patent.

In its Decision, the Board instituted inter partes review with respect to claims 1-12 and 36-49 of the ‘854 patent, finding that there was a reasonable likelihood that Petitioner would prevail with respect to some of its asserted grounds of unpatentability.

Petitioner challenged claims 1-18, 36-56, 86-95, 97, 98, 100, and 101 of the ‘854 patent on eight different grounds: (1) § 102(a) based on LiveDoc/DropZones; (2) § 103(a) based on LiveDoc/DropZones; (3) § 103(a) based on LiveDoc/DropZones and Moore; (4) § 102(e) based on Domini; (5) § 102(e) based on Hachamovitch; (6) § 103(a) based on Hachamovitch; (7) § 102(e) based on Luciw; and (8) § 103(a) based on Luciw.  Patent Owner filed a Preliminary Response.

The ‘854 patent relates to a computer program that is coupled to an information management source, such as a word processing program being coupled to a database of contact information. According to an embodiment, a user types a name into a document and clicks on a button in the program to launch the claimed process.  The text entered by the user is analyzed for contact information, and if present, the contact information is searched in the database.  If more than one match is found in the database for the contact information, the user is prompted for a decision before information is added to the document.

The Board first addressed the construction of claim terms under the broadest reasonable construction, giving the terms their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire disclosure.

The Board construed the term “marking without user intervention the first information to alert the user” relying upon arguments made during prosecution. The Board construed the term as encompassing “highlighting, designating or displaying the information in a separate screen or window to draw a user’s attention.”  The first information must be detected or have some form of marking applied to it without user intervention.

The Board then addressed the construction of claims reciting means-plus-function limitations under section 112, ¶ 6.  The Board agreed with Petitioner that the specification did not disclose the corresponding structure or algorithms for the means-plus-function limitations of claims 13-18, 50-56, 100 and 101, and Patent Owner did not argue to the contrary.  Thus, the Board stated that it could not construe those claims and noted that the lack of sufficient disclosure of structure under section 112, ¶ 6 would render a claim indefinite.

With respect to the term “associated” in the limitation “second information associated with the first information from a second application program,” Patent Owner offered a construction while Petitioner did not. The Board disagreed with Patent Owner’s proposed construction which required some pre-existing connection or relationship and defined associated as meaning “connected or related.”

Finally, with respect to the term “application program,” Patent Owner again offered a construction with which the Board disagreed. Patent Owner sought to limit the term to programs that assist in the performance of a specific task, “such as word processing or spreadsheet processing or contact management or e-mail or calendaring.”  The Board noted that the ‘854 patent expressly states that the invention is not limited to such programs, instead defining the term as encompassing any independent executable program.

The Board then analyzed the various grounds of unpatentability raised in the Petition.

Ancticipation and Obviousness Based on LiveDoc/DropZones Reference(s)

The Board noted in a footnote that the parties disagreed as to whether this reference could be considered a single reference for anticipation purposes. The Board never addressed this point because it found that the reference nevertheless failed to disclose all the limitations of any challenged claim under § 102.

The Board discussed the disclosures of LiveDoc and the related DropZones, agreeing with Patent Owner that they failed to disclose the limitation of “responding to a user selection by inserting a second information into the document” in claim 1 and similar limitations in the other independent claims. The Board also noted, with respect to the means-plus-function limitations, that independent claims 13, 50, 100, and 101 could not be interpreted and that, accordingly, Petitioner failed to show a reasonable likelihood that it would prevail with respect to those claims.

Anticipation by Domini Reference

After reviewing the disclosure of Domini, the Board mostly agreed with Petitioner that Domini disclosed all the limitations recited in the claims. However, the Board agreed with Patent Owner that Domini does not disclose all the limitations recited in claims 93 and 98, particularly the feature of “a second computer program” that is distinct from “a first computer program.”

Again, the Board noted that Petitioner failed to establish the likelihood that it would prevail with respect to the claims reciting means-plus-function limitations.

Anticipation and Obviousness Based on Hachamovitch

Similar to the discussion of the Domini reference, the Board agreed with Petitioner that Hachamovitch disclosed all the claim limitations with the exception of “a second computer program” as well as the means-plus-function limitations.

Anticipation and Obviousness Based on Luciw

The Board agreed with Patent Owner that Petitioner failed to establish that Luciw discloses or renders obvious each limitation recited in the claims.

Thus, of the eight grounds of unpatentability asserted by Petitioner, the Board instituted the proceeding on the following three grounds: “(1) Claims 1-12, 36-38, 40-45, and 49 are unpatentable under 35 U.S.C. § 102(e) over Domini; (2) Claims 1-12 and 36-49 are unpatentable under 35 U.S.C. § 102(e) over Hachamovitch; and (3) Claims 3-5, 9-11, 38-41, and 45-48 are unpatentable under 35 U.S.C. § 103(a) in view of Hachamovitch.”

Apple Inc., Google Inc., and Motorola Mobility LLC v. Arrendi S.A.R.L., IPR2014-00207
Paper 9: Decision on Institution of Inter Partes Review
Dated: June 11, 2014
Patent: 7,496,854 B2
Before: Sally C. Medley, Howard B. Blankenship, and Trevor M. Jefferson
Written by: Jefferson
Related Proceedings: IPR2014-00206; Arendi S.A.R.L. v. Apple Inc., No. 1:12-cv-01596-LPS (D. Del.); Arendi S.A.R.L. v. Motorola Mobility LLC, Case No. 1:12-cv-01601-LPS (D. Del.).