iTakeaway: The Federal Circuit’s construction of claim terms as well as any determinations regarding the disclosure of prior art references may not be persuasive to the Board in light of the broadest reasonable claim construction and preponderance of the evidence standards.
In its Final Written Decision, the Board found all challenged claims for which trial was instituted (claims 1-9) of the ’007 patent unpatentable. Claims 11-15 had also been challenged, but trial was not instituted based on Patent Owner’s evidence that a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a) had been filed with respect to those claims.
The ’007 patent relates to “a system for backing up data stored on a central computer, over the Internet, to a local client computer” and particularly “relates to outsourced, Internet-based data processing and . . . to safeguarding customer/client data when a business outsources data processing to third party Internet-based systems.”
The Board began by construing the claims, giving the terms of the unexpired patent their broadest reasonable construction in light of the specification and “as they would be understood by one of ordinary skill in the art.” The presumption that a term has its ordinary and customary meaning could be rebutted if the patentee provides a definition of the term in the specification with “reasonable clarity, deliberateness, and precision.”
With respect to the “Internet-based data” limitation, the Board had construed the term in the Decision on Institution consistent with the definition provided by the Federal Circuit, that the term requires the ability to modify data across the Internet instead of merely being accessible via the Internet. Patent Owner argued during the oral hearing that the Board’s application of that term was not consistent with the broadest interpretation and that the term should include “updating and deleting” the data. The Board was not persuaded, finding Patent Owner had not shown why updating and deleting were requirements rather than merely exemplary functions in the specification. The specification did not define the term as Patent Owner proposed with reasonable clarity, deliberateness, and precision, so the Board refused to import limitations into the claim.
With respect to “data backup,” Petitioner contended that the term means “a copy of stored data,” but Patent Owner argued a narrower construction that required the data be “in a format capable of being retrieved by and stored on the central computer.” The Board disagreed with Patent Owner’s proposal, finding that it improperly imported limitations from one embodiment in the specification, and adopted Petitioner’s definition.
Regarding “software executing on said central computer for retrieving said data backup,” the parties disputed the verb “retrieving,” and particularly “the location from which the data backup is being retrieved.” Petitioner’s proposal did not specify the source of the data being retrieved, whereas Patent Owner proposed limiting the definition to the central computer retrieving data from the client computer. The Board disagreed with Patent Owner, finding that the term does not require retrieval from a particular source. In particular, Patent Owner concluded that because one dependent claim added “software executing on said client computer for storing said data backup,” and a second dependent claim added “software executing on said central computer for retrieving said data backup,” the disputed term required retrieval from the client computer. The Board was not persuaded, finding it improper to base its construction “on the order of claim dependencies, especially in the case of the system claims at issue here.” Further, in response to Patent Owner’s arguments that the Federal Circuit decision in the related proceeding required a different construction, the Board found its construction consistent with statements made by the Federal Circuit, which the Board noted were not actual claim constructions. Even if those statements could be considered a claim construction, the Board noted the different standards of claim construction between proceedings at the Board and district court allowed for different results.
Turning to the prior art, two grounds of unpatentability were instituted: obviousness of claims 1-9 over WF Site, Seybold, and Guck, and obviousness of claims 1-9 over Schrader and Guck.
Regarding the first ground, Patent Owner argued that the combined teachings of the references did not disclose the three limitations discussed above and that one of ordinary skill would not have combined the references. The Board found Patent Owner’s arguments unpersuasive, in particular finding that the alleged distinctions between the claim limitations and the prior art were based on erroneous claim constructions that read limitations into the claims. Regarding the reason to combine the references, the Board found Petitioner’s reasoning persuasive and not sufficiently rebutted by Patent Owner. In particular, the Board noted that the disclosure within the Guck reference highlighted by Patent Owner was not related to Petitioner’s proposed combination.
Regarding the second ground, Patent Owner’s arguments were the same – that the three limitations discussed above were not disclosed and there was no reason to combine the references. The Board was not persuaded by Patent Owner’s arguments regarding the disclosures of the prior art, finding they primarily relied upon improperly narrow claim constructions. The Board also found a reason to combine the references for the same reasons provided above with respect to the first ground.
In addition, Patent Owner argued that the Federal Circuit agreed with its analysis that Schrader did not disclose the “Internet-based data” limitation. The Board stated that the Federal Circuit “did not decide that Schrader does not disclose Internet-based data,” but rather found that “defendant had failed to provide evidence sufficient to overturn the jury’s verdict with respect to claims 1-9 and 11-15 of the ’007 patent.” As such, the Federal Circuit found that a reasonable jury could find elements absent from Schrader, “but this is far from holding that the elements are necessarily missing from the disclosure of the reference.” Nevertheless, the Board noted that “even if the Federal Circuit had definitively concluded Schrader does not teach Internet-based data under the clear and convincing standard, it would not foreclose [the Board’s] determination that Schrader meets the preponderance standard.”
Google, Inc. v. Whitserve LLC, IPR2013-00249
Paper 32: Final Written Decision
Dated: September 9, 2014
Patent: 6,981,007
Before: Thomas L. Giannetti, Michael J. Fitzpatrick, and Christopher L. CrumbleyWritten by: Crumbley
Related Proceeding: Whitserve LLC v. Computer Packages, Inc., 694 F.3d 10 (Fed. Cir. 2012)
