Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi S.A.R.L.: Decision Denying Institution of Inter Partes Review
Wednesday, June 11, 2014

Takeaway: A claim construction adopted by the Board may turn out to be a dispositive issue.

In its Decision, the Board denied institution as to all claims of the challenged ‘993 patent.  The Board was not persuaded that the information that Petitioner had presented in its Corrected Petition established a reasonable likelihood that Petitioner would prevail in proving the unpatentability of any of the challenged claims.

The Corrected Petition had requested inter partes review of claims 1-24 of the ‘993 patent, the subject matter of which relates to “computer-implemented processes for automating a user’s interaction between a first application, such as a word processor or spreadsheet, and a second application, such as a contact manager with a database.”  Claims 1-4, 6-12, 14-20, and 22-24 were challenged as obvious under 35 U.S.C. § 103 over Bonura and Magnanelli; claims 5, 13, and 21 were challenged as obvious under 35 U.S.C. § 103 over Bonura, Magnanelli, and Giordano; claims 1-2, 6-7, 9-10, 14-15, 17-18, and 22-23 were challenged as anticipated under 35 U.S.C. § 102(b) in view of Luciw; and claims 1-24 were challenged as obvious under 35 U.S.C. § 103 over Luciw, Bates, and Giordano.

The Board first addressed claim construction, noting that the Board in aninter partes review proceeding interprets claim terms of an unexpired patent according to the broadest reasonable construction in light of the specification of the challenged patent.  37 C.F.R. § 42.100(b); Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (August 14, 2012).  Petitioner had proposed constructions for the terms “contact database;” “initiating electronic communication;” “allowing the user to make a decision whether to store at least part of the first contact information in the contact database as a new contact or to update an existing contact in the contact database;” “input device;” and “button.”  Patent Owner only proposed an alternative construction for one of these terms, namely, the above-quoted “allowing the user” term.

The Board adopted the undisputed proposed constructions, noting that they were all supported by citations to the ‘993 patent in the Petition or in the accompanying declaration by Mr. Allison.  The Board adopted Patent Owner’s proposed construction for the disputed “allowing the user” term as being the broadest reasonable construction consistent with the specification.  In doing so, the Board noted that Petitioner’s citations to the specification in connection with this term were unrelated to the portions of the disclosure which, according to the Board, bore directly on the claim language at issue.

The Board next addressed the challenge to claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24 under 35 U.S.C. § 103 based on Bonura and Magnanelli.  On this point, the Board agreed with Patent Owner that the disputed “allowing the user” term, as construed by the Board, was not taught or suggested by Bonura or Magnanelli, whether taken singly or viewed in combination.  Moreover, because Giordano did not teach or suggest this missing limitation, the Board concluded that Petitioner had failed to establish a reasonable likelihood of prevailing on the ground that any of claims 5, 13, and 21 would have been obvious under 35 U.S.C. § 103 over Bonura, Magnanelli, and Giordano.

As for Petitioner’s challenge to claims 22-23 as being anticipated under 35 U.S.C. § 102(b) in view of Luciw, the Board agreed with Patent Owner that the disputed “allowing the user” term, as construed by the Board, was not taught by Luciw.  For this reason, and others, the Board also found that Petitioner had failed to establish a reasonable likelihood of prevailing on the challenge to claims 1-24 as being obvious under 35 U.S.C. § 103 over Luciw, Bates, and Giordano.

Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi S.A.R.L., IPR2014-00203
Paper 10: Decision Denying Institution of Inter Partes Review
Dated: June 5, 2014
Patent 8,306,993 B2 
Before: Sally C. Medley, Trevor M. Jefferson, and Peter P. Chen 
Written By: Chen
Related Proceedings: Arendi S.A.R.L. v. Yahoo! Inc.(1:2013cv00929); 

Arendi S.A.R.L. v. Google Inc. (1:2013cv00919);
Arendi S.A.R.L. v. HTC Corp. (1:2012cv01600); 
Arendi S.A.R.L. v. Sony Mobile Communications (USA) Inc. (1:2012cv01602); 
Arendi S.A.R.L. v. Nokia Corporation (1:2012cv01599); 
Arendi S.A.R.L. v. Blackberry Limited (1:2012cv015); and IPR2014-00214

 

NLR Logo

We collaborate with the world's leading lawyers to deliver news tailored for you. Sign Up to receive our free e-Newsbulletins

 

Sign Up for e-NewsBulletins