Takeaway: 35 U.S.C. § 325(d) provides the Board discretion to deny a petition based on the petition relying on references cumulative to references considered during prosecution of the patent application, but does not require the Board to deny the petition on that basis. Further, merely citing to the original specification for written description support for substitute claims, without further explanation, may not be sufficient where the support is not in haec verba.

In its Final Written Decision, the Board determined that all of the challenged claims (1-6) of the ’489 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’489 Patent is directed to “a communication system for a water softener system that includes a controller configured for communicating with the water softener assembly and a remote display configured for sending and receiving at least one signal to and from the controller to remote location.” The Board noted that no oral hearing was held, because neither party requested it.

The grounds of unpatentability included obviousness over a combination of two references of claims 1-3, 5, and 6, and obviousness of claim 4 over a combination of the same two references with a third reference. The Board began with claim construction, stating claims must be interpreted using the broadest reasonable construction in the context of the specification unless the patentee acts as his own lexicographer or the patentee disavows the full scope of a claim term. The Board first addressed the meaning of the phrase “said first location is different from said second location.” Neither party proposed an explicit claim construction for the phrase, but the Board determined that Patent Owner in its arguments against the alleged ground of unpatentability implicitly construed the phrase to exclude a first element that “is located at or near” a second element. The Board was unable to find a specific definition in the Specification, and thus relied on the ordinary and customary meaning of the terms, which it determined based on dictionary definitions to mean that the phrase is “the first site dissimilar from the second site,” which does not limit the proximity of the first site relative to the second site, or prohibit the first and second sites from being “near” one another.

The Board also construed the term “automatically.” Again, Patent Owner and Petitioner did not propose an explicit claim construction for the term “automatically,” but Patent Owner implicitly, based on its arguments for patentability, stated that the term excluded intermediate or extra steps. Again, the Board was not able to identify any reasonably clear, deliberate and precise definition for “automatically” in the context of automatically transmitting data. Therefore, the Board refused to adopt Patent Owner’s incorrect and contradictory implicit construction, and instead adopted the ordinary and customary meaning. Based on dictionary definitions, the Board determined that “automatically” should be construed to mean “independent of external influence or control.” Other terms were not disputed by the parties, and the Board maintained its constructions for those terms from the decision on institution.

Patent Owner argued that the Petition was improper under 35 U.S.C. § 325(d), because one of the references was cumulative to references already cited and considered by the Examiner during examination of the application issuing as the ’489 Patent. 35 U.S.C. § 325(d) states that “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board was not persuaded by this argument, because the statute provides the Board with discretion to deny a petition on this basis, but does not require the Board to reject a petition for this reason. Further, the Board determined that the reference cited in the Petition was not substantially the same or cumulative to references cited during prosecution of the patent application.

The Board then turned to the obviousness grounds of unpatentability. The Board determined that the proposed obviousness rejections were sufficiently supported by evidence, and that Patent Owner’s arguments were all premised on misplaced constructions of certain terms for the reasons explained above.

The Board then discussed Patent Owner’s Motion to Amend. The Board found that Patent Owner failed to sufficiently set forth the support in the original disclosure of the patent for each claim that was added. For example, Patent Owner merely provided parenthetical citations after each element of the claims with no further explanation. In particular, the Board agreed with Petitioner that the original specification did not explicitly describe “automatically” in the context of downloading updated software. Patent Owner failed to provide an explanation to address this omission.

Further, the Board found that Patent Owner did not show that proposed substitute claims are patentable. For example, Patent Owner focuses its patentability argument solely on the references disclosed in the Petition, asserting that they are the closest prior art. Further, the arguments for patentability relied on limitations that were present in the existing claims, and did not address how the substitute claim is patentable based on the added term.

Ecowater Systems LLC v. Culligan International Company, IPR2013-00155
Paper 18: Final Written Decision
Dated: June 24, 2014
Patent 8,180,489 B2
Before: Howard B. Blankenship, Kristen L. Droesch, and Justin T. Arbes
Written by: Droesch