iTakeaway: When construing terms appearing in a negative claim limitation, a narrower construction of the term would result in a broader construction of the overall claim and may, therefore, comport with the broadest reasonable interpretation.
In its Decision, the Board instituted inter partes review of claims 1-20 of the ‘285 patent in IPR2014-00757 but denied institution of inter partes review of the same challenged claims in IPR2014-00952. The ‘285 patent “describes scanning circuit structures for scanners capable of reducing distortion during high-speed image signal transmission.”
With respect to claim construction, the Board noted that the claims are given their broadest reasonable construction in light of the specification. The Board construed “scanning instruction” in accordance with its plain meaning, agreeing with Patent Owner that Petitioner’s proposal improperly introduced terms. The Board similarly agreed with Patent Owner regarding “scan control signals,” construing the term in accordance with its plain meaning. Regarding the term “timing control signals,” the Board noted that because the term appears in a negative limitation, Patent Owner’s proposed broad construction would actually result in a narrowed construction of the overall claims. Thus, the Board adopted Petitioner’s proposed construction. Finally, the Board provided its constructions for several means-plus-function limitations, which were largely agreed upon by the parties.
Turning to the asserted grounds of unpatentability, the Board first agreed with Patent Owner’s observation that two grounds in each of the ‘757 IPR and the ‘952 IPR were substantial duplicates. Therefore, the two challenges – based on Hayashi alone or in combination with Kono – were treated together. This left one unique ground in the ‘952 IPR – obviousness based on Hayashi and Kitani.
The first ground asserted anticipation of claims 1, 5, 7, 11, 13, 17, and 18 by Hayashi. The Board was persuaded that Petitioner demonstrated a reasonable likelihood of prevailing on this ground, rejecting Patent Owner’s arguments as based on its erroneous claim construction of “timing control signals.”
The Board was also persuaded that Petitioner demonstrated a reasonable likelihood of prevailing on its second asserted ground – obviousness of claims 6, 12, 19, and 20 over Hayashi and Kono – without mentioning whether Patent Owner contested this ground. The Board was similarly persuaded to institute review of claims 2-4, 8, and 14-16 as obvious over Hayashi and Shiraishi, and to institute review of claims 9 and 10 as obvious over Hayashi, Shiraishi, and Ochiai without comment on any argument Patent Owner may have presented.
Next, the Board addressed the one unique ground asserted in the ‘952 IPR, that of obviousness of claims 2-4, 8-10, and 14-16 over Hayashi and Kitani. The Board exercised its discretion under 35 U.S.C. § 315(d) and declined to institute on this ground because it relied on “teachings from Kitani that Petitioner already identifies as disclosed by Shiraishi and/or Ochiai.”
The Board then addressed grounds of unpatentability based upon the Tsuboi reference. The Board found that Petitioner’s reasoning was similar to that of the other Hayashi-based grounds. Thus, the Board was similarly persuaded that Petitioner had established a reasonable likelihood of prevailing on its two additional grounds of obviousness of claims 1-7, 11-14, and 16-20 over Tsuboi and Wada, and obviousness of claims 8-10 and 15 over Tsuboi, Wada, and other art.
Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00757, IPR2014-00952
Paper 8: Decision on Institution of Inter Partes Review in IPR2014-00757 and Denying Institution of Inter Partes Review in IPR2014-00952
Dated: November 21, 2014
Patent: 8,300,285 B2
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Boucher
Related Proceeding: Intellectual Ventures I LLC v. Canon Inc., 13-cv-473-SLR (D. Del.)
