Ex Parte 8,116,741 B2 et al

Patent Trial and Appeal Board

May 24, 2016

95001983 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 95/001,983 05/04/2012 107554 7590 05/24/2016 JUSTIN LESKO LAW OFFICES OF STEVEN G. LISA, LTD. C/O INTELLEV A TE, LLC. P.O. BOX 52050 MINNEAPOLIS, MN 55402 FIRST NAMED INVENTOR 8,116,741 B2 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. Rex3-8116741 1866 EXAMINER CAMPBELL, JOSHUA D ART UNIT PAPER NUMBER 3992 MAILDATE DELIVERY MODE 05/24/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CBS INTERACTIVE INC., THE NEW YORK TIMES COMP ANY, G4 MEDIA, LLC, and BRA VO MEDIA LLC, Third Party Requesters, v. HELFERICH PATENT LICENSING, LLC, Patent Owner. Appeal2015-004984 Inter Partes Reexamination Control No. 95/001,983 Patent US 8,116,741 B2 Technology Center 3900 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and JONI Y. CHANG, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 SUMMARY Background This proceeding arose from a request for inter partes reexamination of U.S. Patent 8,116,741 B2, which is entitled "SYSTEM AND METHOD FOR DELIVERING INFORMATION TO A TRANSMITTING AND RECEIVING DEVICE" (issued to Richard J. Helferich on Feb. 14, 2012 from Application 12/167,971, filed July 3, 2008) ("the '741 Patent"), and which is assigned to Wireless Science, LLC and Helferich Patent Licensing, LLC. PO App. Br. 7. The inter part es reexamination request 95/001,983 ("Request") was filed May 4, 2012 by CBS Interactive Inc., The New York Times Company, Best Buy Co., Inc., The Bon-Ton Department Stores, Inc., G4 Media, LLC, Bravo Media LLC, and Phoenix Newspapers, Inc. ("Requesters"). 1 See Request for Inter Partes Reexamination Transmittal Form. Owner asserts that "[t]here are no related PTO appeals or interferences involving the '741 patent (PO App. Br. 7),2 but then includes 1 Subsequent to the filing of the Request, Bon-Ton Stores, Inc. filed a Notice ofNon-Participation on May 17, 2012. Best Buy Co., Inc. filed a Notice of Non-Participation on July 27, 2012. Phoenix Newspapers, Inc. filed a Notice of Non-Participation on June 25, 2013. CBS Interactive Inc. filed a Notice ofNon-Participation on August 25, 2015. The New York Times Company filed a Notice ofNon-Participation on October 30, 2015. 4G Media, LLC and Bravo Media LLC filed a Notice of Non-Participation on December 1, 2015. 2 In addition to the above-noted Request, we also refer to various other documents throughout this Opinion, including (1) the Action Closing Prosecution, mailed May 31, 2013 ("ACP"); (2) Patentee Response to Action Closing Prosecution (Non-Final Pursuant to 37 C.F.R. § 1.951(a) (filed July 31, 2013) ("PO Resp. to ACP"); (3) the Right of Appeal Notice, 2 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 with its appeal brief, "Appendix B: Related Cases and Orders Pursuant to 37 C.F.R. 41.37(c )(ii)" (setting forth a list of approximately thirteen completed and pending reexaminations, an inter partes review, and approximately 24 resolved, dismissed, or appealed litigations). Owner also states that various issues arise in multiple reexaminations. See CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033, PRELIMINARY PATENT OWNER RESPONSE TO THE PETITION FOR INTERPARTESREVIEW OF U.S. PATENT NO. 7,155,241 PURSUANT TO 35 U.S.C., § 313 AND 37 C.F.R. § 42.107 (paper 20; filed Jan. 18, 2013) ("'033 IPR PO Prelim. Response") at 8 (arguing that "[the Requesters of the present Reexamination] have asserted Smith as a primary reference in 8 inter partes reexamination requests [including in the present '1983 Reexamination (id. n.8)] filed against related Helferich patents"). Two other of these eight reexaminations also have co-pending appeals before the Patent Trial and Appeal Board ("the Board"): Appeal 2015-005486 in inter partes reexamination 95/001,867 arose from a request by Requesters for an inter partes reexamination of U.S. Patent 7,499,716 B2, titled "SYSTEM AND METHOD FOR DELIVERING INFORMATION TO A TRANSMITTING AND RECEIVING DEVICE" (issued to Richard J. Helferich on Mar. 3, 2009 mailed May 21, 2014 ("RAN"); (4) Appeal Brief by Patent Owner Appellant, filed October 9, 2014 ("PO App. Br."); (5) Requester's Respondent Brief, filed November 7, 2014 ("3PR Resp. Br.); (6) the Examiner's Answer, mailed January 23, 2015 (incorporating the RAN by reference) ("Ans."); (7) Patent Owner's Rebuttal Brief, filed February 23, 2015 ("PO Reb. Br."). 3 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 from Application 11/399,513, filed Apr. 7, 2006 ("the '5486 Appeal," "the '1867 Reexamination," or "the '716 Patent"). The present '741 Patent is a divisional of the parent '716 Patent. Appeal 2016-000805 in inter part es reexamination 95/002, 140 arose from a request by Requesters for an inter partes reexamination of US Patent 8,224,294 B2, titled "SYSTEM AND METHOD FOR DELIVERING INFORMATION TO A TRANSMITTING AND RECEIVING DEVICE" (issued to Richard J. Helferich on July 17, 2012, from Application 12/580,189, filed Oct. 15, 2009; which is a continuation of the '7 41 Patent and ultimately claiming priority to the '716 Patent) ("the '805 Appeal, "the '2140 Reexamination," or "the '294 Patent"). Various issues are common among the present appeal and the two related appeals. The details of the two related appeals are addressed in separate Opinions. We have jurisdiction under 35 U.S.C. §§ 134 and 315. 3 We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). Oral argument was held on October 21, 2015. The hearing transcript ("Tr.") was entered into the record November 20, 2015. We affirm. 3 Because the request for inter partes reexamination was filed in the instant proceeding before September 16, 2012, the pre-Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (201 l)("AIA"), version of 35 U.S.C. §§ 134 and 315 applies. 4 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 The Invention and Claims The '741 Patent describes the invention as follows: Systems and method for delivering information to a transmitting and receiving device. The device receives a notification alerting a user of the device that information is available to be obtained and, in some embodiments, providing a short description of the information. After receiving the notification at the device, the user can then use the device to obtain or otherwise act on the information at a time and at a place convenient to the user. Abstract. Independent claim 1 is illustrative of the appealed claims: 1. A method that sends dynamic content to a cell phone, wherein the content is stored at a content storage and retrieval system that is coupled to the internet and coupled to a notification system, comprising: (a) causing a notification system to send a notification to the cell phone, the notification comprising an information identifier describing the content and an indication of the location of a specific system from among a plurality of systems to be contacted to trigger retrieval of the content; (b) subsequent to causing the notification to be sent to the cell phone, and prior to the cell phone requesting the content, causing the content to change without causing the notification system to send to the cell phone another notification of the changed content; and ( c) subsequent to causing the content to change, causing the changed content to be transmitted to the cell phone upon receipt of the cell phone's request, the request corresponding to the notification. The Adopted Rejections Appealed by Patent Owner Claims 1-9, 11-18, 20, 21, 23, 24, and 26-39 are the subject of this appeal. PO App. Br. 7. Claims 10, 19, 22, and 25 are not subject to reexamination. Id. 5 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 The Examiner concludes that all of the appealed claims are obvious under 35 U.S.C. § 103(a), based upon thirty-four adopted grounds of rejection. RAN 13-23 (Issues 1-32, 35, and 36). The Examiner also adopts two grounds of rejection under 35 U.S.C. § 112. RAN 22 (Issues 33 and 34 ). Rather than reproduce all thirty-six individual adopted grounds of rejection, we reference the RAN. See RAN 13-23. To summarize, though, the appealed obviousness rejections can be divided into the following three general groups: (1) Issues 1-8 and 354 relate to obviousness rejections of various claims under 35 U.S.C. § 103(a). These rejections are based, at least in part, on Smith (US 6,333,973 Bl; issued Dec. 25, 2001) in combination with Cox et al., Robotic Telescopes: An interactive Exhibit on the World-Wide Web, The 4 The R .. A .. N states in relation to Issue 35 that"[ c ]laims 28-39 remain rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite." RAN 22-23 (emphasis added) (citing and incorporating by reference pages 68-7 4 of Comments by Third Party Requesters Under 37 C.F.R. § 1.947 (filed March 8, 2013) ("Requester Comments to ACP"). The cited pages 68-7 4 of the Requester Response, however, set forth Requesters' arguments regarding "Rejections of Claims 28-39 under 35 U.S.C. § 103(a) as unpatentable over the '973 Patent (Smith) in combination with the Robotic Telescopes Article." Requester Response 68. Furthermore, the Action Closing Prosecution sets forth Issue 3 5 as an obviousness rejection-not a section-112 rejection. ACP 13. Also, the Examiner's treatment of Issue 35 in the RAN follows the Examiner's treatment of Issues 33 and 34, which are rejections under 35 U.S.C. § 112. See RAN 22. For these reasons, we understand the RAN to contain a clerical error, intending to state that the claims of Issue 35 remain rejected as obvious-not rejected under§ 112. Due to the degree that the noted prosecution history makes clear the intended meaning of the RAN' s misstatement, we find the error to be harmless. 6 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Robotic Telescopes: An Interactive Exhibit on the World-Wide Web published in the WWW Conference '94 Mosaic and the Web Advance Proceedings Volume II ("Cox"). 5 Some rejections of this first group are additionally based upon the further combination of the following references: (Issue 2) Giinliik (US 5,768,509; issued June 16, 1998); (Issue 3) Picard (US 6,233,318; issued May 15, 2001); (Issue 4) Theriault (US 6,049,821; issued Apr. 11, 2000); (Issue 5) Rossmann (US 5,809,415; issued Sept. 15, 1998); (Issue 6) Kane (US 5,487,100; issued Jan. 23, 1996); (Issue 7) Furuta (JP H8-181781; published July 12, 1996); and (Issue 8) Internet Engineering Task Force Request for Comments 1945: Hypertext Transfer Protocol -- HTTP/1.0 ("RFC 1945"). (2) Issues 9-16 relate to obviousness rejections of various claims under 35 U.S.C. § 103(a). The rejections are based, at least in part, on Smith in combination with Hunt (US 5,893,091; issued Apr. 6, 1999). (3) Issues 17-32 and 36 relate to obviousness rejections of various claims under §103(a). These rejections are based, at least in part, on Reilly et al., Enabling Mobile Network Managers, Computer Networks and ISDN Systems, 29 (1997) 1417-28 ("Reilly") in combination with either Cox or Hunt. 5 The online version of the Robotic Telescopes article was archived by the Internet Archive (Wayback Machine) on December 28, 1996 as shown in the following URL (emphasis added) (http://web.archive.org/web/ 1996122 8222 83 3/http ://www.ncsa.uiuc.edu/SDG/IT94 IProceeedings/Museu mlcox/markcox.html). 7 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 In addition to adopting these obviousness rejections, the Examiner further rejects claims 28 and 34 (Issue 33), as well as claims 32 and 38 (Issue 34), under 35 U.S.C. § 112, i-f 1, for lacking adequate written description in the written Specification. RAN 22. 6 Owner argues the above rejections or issues in eight separate general groups. PO App. Br. 12-54. We address Owner's arguments in the order that they are set forth in Owner's Appeal Brief. I. Claims 28-39 are non-original claims, added by amendment after the reexamination proceeding commenced. See Request for Reconsideration After Non-Final Office Action Pursuant to 37 C.F.R. §§ 1.111 & 1.945 (filed Sept. 18, 2012) ("PO Request After Non-Final") at iv-xi ("PATENTEE PROPOSED AMENDMENTS TO THE CLAIMS"). As explained below, despite the Examiner's indefiniteness characterizations on page 22 of the RAN, we presume that the rejections are based on the Examiner's finding that claims 28 and 34 (Issue 33), as well as claims 32 and 3 8 (Issue 34 ), lack adequate written description, as required by 35 U.S.C. § 112, i-f 1. RAN 22. More specifically, the RAN states in relation to Issues 33 and 34 that the respective claims "remain rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite ... (See pages 66-[68] of Third Party Requester's Response filed 6 The Examiner erroneously states that these claims are rejected under§ 112, i-f 2, for indefiniteness. RAN 22. This misstatement, as well as the correct basis for these§ 112 rejections, is discussed further in Section I of this Opinion, below. 8 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 3/8/2013, incorporated by reference)." RAN 22 (emphasis added) (citing Requester Comments to ACP). This cited Requester Comments to ACP, though, sets forth arguments for why the claims should be rejected under § 112, i-f 1, for lacking adequate written description-not under § 112, i-f 2, for being indefinite. Requester Comments to ACP 66-68. Furthermore, Owner argues that the disputed claim language finds adequate support in the Specification-not whether the claim language is definite. PO App. Br. 12-13. Accordingly, we understand the RAN's recitation of indefiniteness under§ 112, i-f 2, to be a clerical error, instead intending to reference the written-description prong of § 112, i-f 1. We also find the rejection's intended meaning to be sufficiently clear so as to render the clerical error harmless. Turning to the substance of Owner's arguments appearing in Section I of the Appeal Brief (PO App. Br. 12-13), Owner challenges the written description rejection of amended claims 28 and 34 (RAN Issue 33), as well as the rejection of amended claims 32 and 38 (RAN Issue 34). We address these two RAN issues separately. Principles of Law "Adequate written description means that the applicant, in the specification, must 'convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention."' Agilent Techs., Inc. v. Afjj;metrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted) (brackets in original). 9 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Claims 28 and 34 Claims 28 and 34 respectively depend from independent method claim 1 and independent system claim 13. These dependent claims both add the further limitation, "wherein the information identifier includes a filename or code for the content." Owner asserts that two passages of the '741 Patent support this newly added claim language. The first passage reads as follows: One or more messages may be selected by the user to be forwarded to one or a plurality of addresses or recipients at step 112. Items such as messages and send message lists may be selected by scrolling through the message number or name. The selected messages for forwarding may reside at the paging transceiver 100 or at the system 30. '741 Patent, col. 10, 11. 34--40, cited with emphasis in PO App. Br. 12; accord PO Request After Non-Final at 58. The second passage of the '741 Patent cited by Owner reads as follows: The data transmission 201 also includes message information. The message information includes information identifying the message and preferably also includes information specifying the type of the message, the length of the message, and the message priority. The message identification may identify the message with a unique code, such as a number, or may specify the address in system 30 for the message. '741 Patent, col. 17, 1. 54---col. 18, 1. 4, cited in PO Request After Non-Final at 58. At page 22 of the RAN, the Examiner adopts Requester's argument relating to the claims that newly state "the information identifier includes a filename:" 10 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 At no point in either one of these two cited sections does the '741 patent disclose that an information identifier describing content includes a filename . . . [Owner] appears to be relying on the cited and emphasized portion of column 10 of the '7 41 patent to provide support for this limitation. However, this section does not provide support for the actual language of the claim-that the "information identifier includes a filename ... for the content" (emphasis added). Instead, the section cited by the applicant, when construed as favorably as possible to serve as support for this limitation, merely describes how a user may scroll through a list of notifications by the "name" of those notifications. At no point does the section state that the "name" is the filename of the content represented by a notification, much less that a filename is included within an information identifier. Requester Comments to ACP 66----67. Requester further urges that the '741 Patent appears to indicate that the mentioned "name" instead refers to "the name of the sender who transmitted the message about which the user of the cell phone is being notified." Id. at 67 (citing '741 Patent, col. 7, 1. 65---col. 8, 1.14). Owner disputes this position, arguing that the "message" selected by "message number or name" is the message content that might not yet be downloaded. The '7 41 patent discusses forwarding messages, not forwarding the notifications. The specification makes no mention of selecting the sender's name; instead, it states "message number or name," where "message" is the adjective modifying both "number or name." PO App. Br. 12. Owner further notes that there is no in haec verba requirement for claim language. PO Reb. Br. 6. Owner then argues that according to plain English, "a 'filename' identifying a stored message is simply another word for the disclosed 'message name."' Id. 11 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Owner's arguments are unpersuasive. The passages of the '741 Patent to which Owner cites for support merely indicate that messages may be identified by names, numbers, or codes, generally. '741 Patent, col. 17, 1. 54---col. 18, 1. 4, col. 17, 1. 54---col. 18, 1. 4. Thus, "filename" and "message name" are not synonyms of the same subject scope. While a filename may be a "name," it is only one specific kind of name. The term "names, as used in the '741 Patent," appears to refer to a much broader category or class. For example, we see no reason preventing a message from alternatively being "named," as this term is used in the '741 Patent, according to all sorts of classifications. For example, a message name could be chosen according to the name of a sender, subject, priority, storage location, or date or order of receipt. Owner points to no passage that sufficiently evidences that at the time of the invention, Owner had envisioned specifically using a filename as the disclosed message name. "[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention." Purdue Pharma L.P. v. Paulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000). Rather, the specification must provide some guides or "blaze marks" that disclose the claimed invention "'specifically, as something appellants actually invented."' Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010) (en bane). Claims 32 and 38 Claims 32 and 38 respectively depend from independent method claim 1 and independent system claim 13. These claims both add the further 12 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 limitation, "wherein a notification of the changed content is never sent to the cell phone." Owner contends that the '741 Patent includes an example that expressly supports the language of claims 32 and 38: "[T]he information may be updated or otherwise change from the time that the user was alerted. As an example, the user may receive a weather alert and by the time the user decides to receive the information the information would be updated to reflect current weather conditions." PO App. Br. 13 (citing '741 Patent col. 16, 11. 7-11) (emphasis added). Owner argues that this passage's language, "a [singular] weather alert," indicates the user receives "f!:. weather alert," (i.e., one alert) even though the available weather information updates/changes after the alert is sent." PO App. Br. 13. Owner's argument is unpersuasive. Owner's proffered example merely illustrates that the user receives a single alert, and upon later accessing the message associated with the alert, the user receives the most up-to-date content associated with the alert. This example is silent, though, as to whether a later accessed message additionally may include any further notifications---e.g., information or metadata regarding the number of times the content has been revised since receipt of the single alert. As such, Owner has not established that the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date, Owner was in possession of the idea of not sending subsequent notifications, as claimed. II. In Section II of the Argument Section of Owner's Appeal Brief, Owner argues that Reilly does not constitute prior art. PO App. Br. 13-15; 13 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Reb. Br. 5---6. We need not address this argument, which is directed to the Group (3) issues, as outlined above. The adopted rejections based upon at least Smith and Cox-the Group (1) issues---cover all of the appealed claims. And for the reasons subsequently set forth in this Opinion, Owner's arguments regarding these rejections are unconvincing of Examiner error. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single dispositive issue of numerous resolved by the presiding officer; there is no need for the Commission to decide all issues decided by the presiding officer). III. Owner argues that Smith does not constitute prior art because the inventor, Mr. Richard Helferich, was continuously diligent in reducing the invention to practice from prior to Smith's April 23, 1997, filing date until the '741 Patent's priority date of September 19, 1997. PO App. Br. 16-24; PO Reb. Br. 24--27. 7 Owner supports this argument with a declaration of the inventor, Declaration of Richard J. Helferich Submitting Evidence Pursuant 7 More specifically, Owner argues diligence in relation to the filing dates of Reilly and Hunt, as well as Smith. See, e.g., PO App. Br. 16. While this argument fails with respect to Reilly and Hunt for the same reasons it fails in relation to Smith, we need not address Reilly and Hunt because the rejections based on these references are duplicative of the other rejections based upon Smith. See Beloit, 742 F.2d at 1421. 14 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 to 37 C.F.R. § 1.131 (dated July 31, 2013) ("the Helferich Declaration"); see PO App. Br. 69, Evidence Appx. C., Item C24). The Examiner disagrees, concluding that while Owner had established conception prior to the filing of Smith (RAN 6-8), Owner failed to establish continuous diligence from prior to Smith's relevant date until the invention was reduced to practice (RAN 8-10). Specifically, the Examiner finds two gaps in Owner's evidence: The first time gap relates to the time period that extends from prior to April 7, 1997 (the critical date of Reilly, which precedes Smith's date) to May 1, 1997. RAN 10. The Examiner finds that Mr. Helferich provides numerous documents relating to contract negotiations with ReadyCom and a Korean company ... to corroborate diligence, but these documents do not provide evidence of any continued constructive reduction to practice of the claimed invention. These documents are related to the commercialization of any invention conceived or reduced to practice before May 1, 1997. RAN 10 (internal citations omitted). In response, Owner argues that the contract negotiations and commercialization efforts were not submitted as evidence of acts constituting diligence. Rather, these activities are purportedly evidence of necessary acts that account for and excuse the gaps in the inventor's diligence during the first critical time period. See Tr. 14--15. The second time gap that the Examiner finds to exist in Mr. Helferich's diligence relates to the three-month time period between May 1, 1997 and July 31, 1997. RAN 9. The Examiner finds that Mr. Helferich has not provided any corroborating evidence of diligence between at least May 1, 1997 and July 31, 1997. At 15 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 most, Mr. Helferich has only pleaded reasonable diligence (See July 2013 Helferich Declaration, i-f 4, 5r, 5w(vi)). Mr. Helferich has failed to provide any corroborating evidence of continuing reasonable diligence in preparing the application for filing to support his declarations. Nor has Mr. Helferich provided any reasonable excuses for these three months of inactivity. RAN9. Owner responds that the Examiner's finding regarding the second time period is in error because The record evidence here includes not only Mr. Helferich's detailed testimony (through two declarations and Requesters' extensive cross-examination), but also corroborating testimony and many dated business documents from before April 7 to August, 12 1997 that are internally consistent with, and lead to a proper conclusion that, Mr. Helferich's testimony of diligence during the entire period is, under a rule of reason, more likely true. PO App. Br. 24 (citing PO Resp. to ACP at 40-42 and Helferich Dec.). Owner cites Sandt Technology, Ltd. v. Resco Ji;fetal and Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001) forthe proposition, "all pertinent evidence is examined in order to determine whether the inventor's story is credible. Each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive .... Circumstantial evidence about the inventive process, alone, may also corroborate." PO App. Br. 17. Owner urges that for these reasons, the "contemporary work records referencing Helferich's inventions corroborating his testimony are highly probative." Id. [S]pending approximately four months (while serving as [Chief Technical Officer] CTO) drafting a lengthy specification and drawings disclosing multiple inventions is reasonable diligence, 16 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 "since [the inventor] was not required to abandon his livelihood while completing the invention." See Gould v. General Photonics Corp., 534 F.Supp. 399, 404 (N.D.Cal. 1982). PO App. Br. 23. Requester, on the other hand, argues in support of the Examiner's finding: During at least the periods of April 7-April 30 ... and May I-July 30 ... , PO has provided neither evidence of diligence nor excuse. A 2-day period lacking activity has been held to be fatal. In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). In [his Declaration], Helferich provides no specific dates, let alone specific amounts of time he worked on such dates, to identify when he worked on constructively reducing his alleged invention to practice between the period from prior to April 7, 1997 to August 12, 1997. [The Helferich Declaration] is replete with mere assertions of diligence (see, e.g., i-fi-1 5.f., 5.w., 5.bb.vi.), but devoid of specific facts and dates of work toward reducing the invention to practice and filing a patent application. Evidence that is "not specific as to dates and facts, does not constitute the kind of corroboratory evidence required to establish [] diligence during the critical period." [Gould v. Schawlow, 363 F.2d 908 at 920 (CCPA 1966). 3PR Resp. Br. 5 Principles of Law Rule 3 7 C.F .R. § 1.131, AFFIDAVIT OR DECLARATION OF PRIOR INVENTION, is reproduced, in pertinent part, as follows with emphasis added: (a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under§§ 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based .... 17 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 (b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. Issue8 Has Owner provided sufficient corroborating evidence to establish continuous exercise of reasonable diligence in reducing his invention to practice for the entire period extending from just before Smith's relevant date of April 23, 1997 to the '741 Patent's priority date of September 19, 1997? More specifically, has Owner rebutted the Examiner's finding (R_AN 8-10) that Mr. Helferich has not provided sufficient corroborating evidence of continuous exercise of reasonable diligence during the entire 8 Unlike Section V of this Opinion, infra, we do not adopt all of the rationales and conclusions the Board previously set forth in relation to the issue of whether Smith constitutes prior art. See In CBS Interactive Inc., the New York Times Company, G4 Media, LLC, and Bravo Media LLC v. Helferich Patent Licensing, LLC and Wireless Science, LLC, Case IPR2013- 00033, paper 122 (PTAB Mar. 3, 2014) aff'd per curium R. 36 (Fed. Cir. No. 2014-1556, 2015). This is because differences exist between the records of the '033 IPR and the present appeal. Notably, the different record of the '033 IPR led that Panel to conclude that Owner had not established timely conception of the claimed subject matter. '033 IPR Final Written Dec. at 44--50. As such, the Board did not reach the question of diligence in the '033 IPR Decision. See generally '033 IPR Final Written Dec. 18 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 period during which Mr. Helferich declares he was drafting the related patent applications? Findings of Fact The record supports the following Findings of Fact (Fact) by a preponderance of the evidence: 1. The Helferich Declaration sets forth the following testimony concerning the time period prior to April 7, 1997: [P]rior to April 7, 1997, the CEO of ReadyCom (Brian Kinahan) and I scheduled a trip to Korea to meet with a third party to discuss potentially important business relating to ReadyCom and my Earlier Patents. As shown by at least Exhibits RJHelferich 1, 2, 30 and 31. I had already conceived of and had spent at least nine months working on the inventions defined by the Subject '7 41 Claims prior to the scheduled trip to Korea, and I wanted to continue working diligently to file patent applications on my new inventions. Helferich Dec. i-f 5 .f. 2. The Helferich Declaration sets forth the following testimony concerning the period of April 7, 1997 to September 19, 1997: w. From before April 7, 1997, and through September 19, 1997, I continued to work diligently to more comprehensively describe the inventions previously described in the handwritten specifications Exhibit RJHelferich 4, which were completed before April 7, 1997. In addition, I continued to diligently consider the prior art (cited in the invention disclosure documents submitted to ReadyCom), and prepared final typewritten Invention Disclosures (also submitted to ReadyCom) in compliance with Sections 2.2 and 2.4 of the Invention Development Agreement with ReadyCom (Exhibit RJHelferich 8). Helferich Dec. i-f 5.w. 19 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 3. Evidence Appendix C56 of Owner's Appeal Brief is titled "Richard J. Helferich Cross-Examination Deposition Transcript with Corrections, IPR2013-00033 (July 15-16, 2013)," (the "Helferich '033 Dep. Tr."). See PO App. Br. 80; App'x C56. 9 4. The Helferich '033 Deposition Transcript sets forth the following testimony: [Mr. Helferich]: . . . [B]efore the Consulting Agreement with ReadyCom, I used to bill them just on a flat monthly basis, [but] then when ReadyCom signed the Consulting Agreement, I needed to report my hours for particular days. So when that happened, I started keeping track with a calendar my billing hours to ReadyCom for the Consulting Agreement, so I have a calendar that has all my activities for the consulting, for consulting with ReadyCom for the year of 1997. For the first few months of that calendar, it was just they're basically blank and with a notation that just bill flat rate for those months, January, February, March, something like that. But then after that when the Consulting Agreement was signed, I made entries on the calendar two hours this day, three hours that day, two hours meeting with Brian, meeting with attorneys, working on Japanese patent applications, that sort of thing. Q [from Mr. Helferich's attorney, Mr. Lisa]. Did that [billing] calendar record your work on the inventions that are the subject of this case? 9 While Owner's evidence appendix is listed as "Appendix C" (PO App. Br. 68), the documents contained within Appendix C include cover pages that recite "Evidence Appendix D#" (where "#" indicates the document number). We note this discrepancy to better clarify the record, but we find the discrepancy to be harmless. 20 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 [Mr. Helferich]: No, it was inverse, inverse of that. It did just the opposite. It didn't report it because this was the billing calendar, so my invention work was billed -- wasn't billed to ReadyCom. That was part of the Invention Development Agreement. So I didn't -- I was very careful not to bill ReadyCom for work done on my invention work because I wasn't selling it to them on an hourly basis. '033 Dep. Tr. 341--42. 5. The Helferich '033 Deposition Transcript sets forth the following testimony: BY [REQUESTER'S COUNSEL] MR. MARKMAN: Q. . . . this three-month deadline, were you concerned at all about meeting that three-month deadline that was built into the Invention Development Agreement? A [by Mr. Helferich]. I wasn't until I had a computer crash. I wasn't concerned. Then after that it was more than just kicking butt, it was crazy, and it was just fanatical. My wife and I both were just going crazy. It was -- I needed every minute. I mean, it was every single minute to the very last day. I needed every minute to get it done. '033 Dep. Tr. 215-16. 6. The Helferich '033 Deposition Transcript sets forth the following testimony: A [by Mr. Helferich]. Somewhere in the middle of [the three- month period] I think in June I had to go to Japan for ten days to meet the examiner for the '976 patent that had got turned down and went out there and met with those attorneys, the Japanese attorneys, and did an interview at the patent office, wound up getting that patent issued, which was no minor thing, which was very important to ReadyCom at the time because they didn't want to lose their Japanese patent, their number one patent that they had bought a year previous. 21 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 '033 Dep. Tr. 217-18. Analysis Requester challenges (3PR Resp. Br. 5) Mr. Helferich's statement that prior to April 7, 1997, "[he] wanted to continue working diligently to file patent applications on [his] new inventions" (Fact 1 (emphasis added)). In particular, Requester argues that "'wanting' to work diligently is not enough, and Helferich has not shown the particular acts, along with the dates of those acts, that he carried out in preparing the application"). 3PR Resp. Br. 5. Arguably, Owner's statement might be interpreted as constituting an admission that although he wanted to work diligently prior to April 7, 1997, he did not actually work diligently continuously during this period. Or, the statement might be interpreted as a statement of the Inventor's intent for future action-not an assertion of what he actually did. We need not decide how this statement should be interpreted; however; because this statement relates to a timeframe that is prior to Smith's critical date of April 23, 1997. For the purposes of resolving the present appeal, it is sufficient to review the time period from May 1, 1997 to at least July 3 1, 1997-the time period that the Examiner finds to constitute the second gap in diligence (RAN 7). 10 1° For this reason-that an analysis of the second time gap is sufficient for this appeal, we likewise need not decide whether the asserted necessity for Mr. Helferich to attend to other business matters in order to keep his business from going bankrupt reasonably excuses him from diligently reducing the present invention to practice for the week of April 23 to May I-the time period that the Examiner finds to possess the first gap in diligence. 22 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Turning to this latter, second time period of May 1 through approximately the end of July, 1997, the record supports the Examiner's conclusion that Mr. Helferich has not provided sufficient corroborating evidence of continuous exercise of reasonable diligence throughout this three-month period. Mr. Helferich declares in his § 131 Declaration that he spent this three-month period considering prior art, converting his previously completed handwritten specifications into finalized Invention Disclosures, including Specifications, Abstracts, and Drawings, as well as finalizing five handwritten Invention Disclosure Forms. See, e.g., Fact 2. However, the relevant documents cited in the Helferich Declaration to corroborate Mr. Helferich's statements of diligence only consist of four handwritten "Invention Disclosure Forms" (Helferich Dec., i-f 5.x (citing Exhibit RJHelferich 11 through Exhibit RJHelferich 14)), six typewritten specifications (id. i-f 5.y (citing Exhibit RJHelferich 15 through Exhibit RJHelferich 20)), original figures (id. i-f 5.y.iii.2 (citing Exhibit RJHelferich 23)), and associated typewritten cover letters (e.g., id. i-fi-15.y.ix-xi. (citing Exhibit RJHelferich 21, Exhibit RJHelferich 22, and Exhibit RJHelferich 25)). Accord PO App. Br. 22 (asserting that the corroborative evidence entails five typed draft abstracts, an extensive set of 24 prior art patents (which Mr. Helferich had to search for, review, and summarize), four separate sets of remarks discussing the background art, a 22-page typed master specification, and a handwritten set of 12 drawings). Owner does not direct us to any facts in the record that Mr. Helferich maintained any daily or regular records of his activities relating to reducing the present invention to practice. See generally PO App. Br.; PO Reb. Br.; 23 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Helferich Deel. Instead, Mr. Helferich testified during a deposition that he did not keep daily records of such activities in his daily billing calendar. See Facts 3--4. In fact, Mr. Helferich testified that his decision to not record this work in his daily billing calendar was intentional. See Fact 4. This testimony may constitute a reasonable explanation or excuse for why daily records of Mr. Helferich's invention-related activities were not entered specifically into his billing calendar. But the testimony does not explain or excuse Mr. Helferich's failure to keep separate records of invention-related activities. Furthermore, neither Mr. Helferich's Declaration nor testimony explains sufficiently why Owner failed to submit Mr. Helferich's mentioned billing calendar into evidence. While the billing calendar does not include records of the time the Inventor spent on the present related inventions, the calendar might have corroborated whether the amount of time spent on non-invention work was sufficiently de minimus to evidence that Mr. Helferich had not abandoned work on the present inventions in favor of the other work. Various portions of the record-as opposed to the Helferich Declaration-indicate that Mr. Helferich experienced a computer crash sometime during the critical three-month period of May through July, 1997. Cf Helferich Dep. Tr. 191:21-23 (wherein Mr. Helferich testified "I think [the computer crash] was around May); with id. 192:9-12 ("I think the CAD program crashed [the computer system] right in the middle of that whole time period. We [were] halfway through. I had 90 days that I had to deliver"); and with Appeal 2016-005486, PO App. Br. 46 n.12 (stating the computer crash happened in mid-June, 1997); Appeal 2016-000805, Patent 24 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Owner Response to Action Closing Prosecution (Non-Final) Pursuant to 37 C.F.R. § 1.951(a) (filed Feb. 4, 2014) at 20 (setting forth a timeline chart titled "THE EVIDENCE PROVES DILIGENCE OF THE ENTIRE CRITICAL PERIOD [OF MARCH 27, 1997-SEPTEMBER 19, 1997]," which states that the computer crash occurred on June 15, 1997) (citations omitted). But significantly, the Helferich Declaration, itself, does not assert this crash occurred, much less cite to any corroborating evidence. See generally Helferich Deel. For example, the Helferich Declaration does not cite to any evidence of receipts for computer repairs or replacements. Nor does the Helferich Declaration explain the absence of any such documentation. For the sake of argument, though, we will accept, without deciding, the uncorroborated assertions (1) that Mr. Helferich' s computer did crash sometime during this critical period, (2) that Mr. Helferich had substantially completed typing the master specification before the crash, and (3) that Mr. Helferich was forced to substantially retype the Specifications. See Appeal 2016-005486, PO App. Br. 46 n.12. However, acceptance of these assertions relating to the computer crash does not excuse Mr. Helferich's failure to corroborate other facts. For example, Mr. Helferich testified that after the computer crash, his wife helped him re-create the invention disclosures by typing his handwritten notes. '033 Dep. Tr. 185-86. Mrs. Helferich could have submitted her own declaration attesting to the manner in which she assisted Mr. Helferich, the amount of time she spent assisting him, the amount of time they worked together, or the amount of time she witnessed him working to reduce the related inventions to practice. But no such corroborative 25 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 evidence was brought to the Panel's attention. We only have Mr. Helferich's uncorroborated deposition testimony that the time period after the crash "was just fanatical. My wife and I both were going crazy. It was - I needed every ... single minute to the last day." Fact 5. Moreover, even if we were to accept, for the sake of argument, Mr. Helferich's deposition testimony regarding the "crazy" and "fanatical" nature of the time period following the computer crash, the lack of any corroborative evidence beyond the final work product still renders Mr. Helferich's § 131 Declaration insufficient to prove continuous diligence prior to the computer crash. Mr. Helferich acknowledges that prior to the computer crash, he worked at a slower pace than he did after the crash. Fact 5. To be sure, Mr. Helferich clarified his deposition testimony by subsequently testifying that his pre-crash efforts were still diligent ('033 Dep. Tr. 344--46), and that this diligence was due to Mr. Helferich having a substantial financial incentive to complete the work as expeditiously as possible (id. 172:22-174: 10). Nonetheless, this supplemental Inventor testimony does not constitute corroborative evidence of continuous diligence. This is especially important because Mr. Helferich admits that various lapses of diligence, albeit allegedly excusable lapses, occurred during the critical period. See, e.g., Fact 6 (noting Mr. Helferich's acknowledgement that during the critical period, he went to Japan for ten days to attend to matters associated with an unrelated, yet "important" patent). 26 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 We appreciate Owner's contention that diligence does not require an inventor to abandon his livelihood while completing the invention. PO App. Br. 23 (citations omitted). However, without corroboration of Mr. Helferich's activities before the computer crash-further corroboration than merely the final work product-there is insufficient evidence proving that Mr. Helferich truly did work continuously in reducing his invention to practice with only excusable lapses in diligence. Nor can we say that Mr. Helferich's preceding nine months of work on the inventions (see Fact 1; accord Fact 2) enabled Mr. Helferich to take inexcusably extended breaks from work on the present inventions to work on other inventions or to attend to other, higher-priority work-related matters, yet still be reasonably diligent in reducing the present inventions to practice. See, e.g., Fact 6. We additionally note that Owner has appended to its Appeal Brief, the "Declaration of Martin A. Schwartz Submitting Evidence Pursuant to 37 C.F.R. § 1.132," dated July 29, 2013 ("the Schwartz§ 132 Declaration"). PO App. Br., Evidence App'x. C57. The Schwartz§ 132 Declaration is submitted for the purpose of corroborating that "[p ]rior to April 7, 1997, ... Mr. Helferich was already working diligently on preparing his patent applications." Schwartz§ 132 Dec. i-f 10. Mr. Schwartz makes no statements, though, regarding Mr. Helferich's diligence after April 7. That is, Mr. Schwartz makes no statements concerning the relevant three-month period from May 1, 1997 to approximately July 31, 1997, the time period for which the Examiner finds the second gap in diligence. As such, the Schwartz Declaration does not provide corroboration for this latter time period. 27 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 In related appeal 2016-000805, Owner's Appeal Brief also references a supplement declaration of Mr. Helferich. 2016-000805 PO App. Br. (filed Nov. 24, 2014), Evidence Appendix C24, "Supplemental Declaration of Richard J. Helferich Submitting Evidence Pursuant to 37 C.F.R. § 1.131," signed July 9, 2013 (the "Supplemental Helferich Declaration"). Like the Schwartz Declaration, though, the Supplemental Helferich Declaration only includes statements regarding the timeframe prior to April 7, 1997. See generally Supp. Helferich Deel. Mr. Helferich makes no statements concerning the three-month period from May 1, 1997 to July 31, 1997, the time period for which the Examiner finds the second gap in diligence. As such, the Supplemental Helferich Declaration does not provide corroboration for this time period. To summarize, the only significant corroborating evidence cited in the Helferich Declaration in relation to the three month time-period in question, is the evidence of delivering the final work products at the end of this three- month time period. Apparently, Owner would have us find that this body of work product, itself, coupled with the list of the 24 prior art patents that Mr. Helferich purportedly reviewed during the months in question, is sufficient to corroborate the inventor's declaration of continuous diligence: an objective review ofHelferich's invention materials shows that they required a significant amount time and effort, including study and review of the state of the art, to complete the requirements of the [information Disclosure Agreement] IDA, all in Mr. Helferich' s spare time as required while serving as ReadyCom's CTO .... Likewise, spending approximately four months (while also serving as CTO) drafting a lengthy specification and drawings disclosing multiple inventions is reasonable diligence, 28 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 "since [the inventor] was not required to abandon his livelihood while completing the invention." PO App. Br. 23 (citations omitted). We do not agree. In order to comply with the rule's requirement of showing "due diligence from prior to [a critical] date to a subsequent reduction to practice or to the filing of the application," Rule 1.131 (b) further requires that "original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained." It is well settled that corroboration of continuous diligence has to be "specific as to dates and facts"-not merely corroboration of "a general nature to the effect that the [inventor] from the time of his conception worked continuously on the development of his idea." See Gould v. Schawlow, 363 F.2d 908, 920 (CCPA 1966). Evidence that is "not specific as to dates and facts, does not constitute the kind of corroboratory evidence required to establish appellant's diligence during the critical period." Id. On this record, Owner fails to provide sufficient evidence to support that unexplained lapses have not occurred. See In re Mulder, 716 F.2d 1542, 1542--46 (Fed. Cir. 1983) (affirming a determination of lack of reasonable diligence, where the evidence of record was lacking for a two-day critical period); D'Amico v. Koike, 347 F.2d 867 (CCPA 1965) (an unexplained one- month period of time during the critical period was found to be excessive). IV. Contentions 29 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 In section IV of the Appeal Brief' s Argument Section, Owner argues that the Examiner misinterpreted the following claim language, which appears in every independent claim: "the notification comprising an information identifier describing the content and an indication of the location of a specific system from among a plurality of systems to be contacted to trigger retrieval of the content." PO App. Br. 24; accord id. at 24--28. According to Owner, The RAN' s construction of "information identifier" merely as "describes the content," [(RAN 27)], conflicts with the words of the claims, the specification, and the intrinsic record. In effect, the RAN construes the claim as reciting "a notification describing the content" without giving separate meaning and effect to the express requirement for an "information identifier." PO App. Br. 24. In support of this ultimate argument, Owner first argues that the Examiner's construction of "information identifier describing the content" is overbroad, impermissibly reading words out of the claim. PO App. Br. 25. According to Owner, the express inclusion of the word "identifier" requires that the claim term be limited to a label, symbol, or token that actually names or identifies information-not a notification that merely describes the content. Id. (citing PO App. Br. Evidence Appendix C74, Expert Declaration of John R. Grindon, D.Sc., signed Sept. 18, 2012 ("First Grindon Dec.")); see also id. at 28 (citing PO App. Br. Evidence Appendix C77 [sic: C76], Declaration of Bobby R. Hunt, Ph.D., IPR2013-00033, Ex. 2052 (June 7, 2013) ("Hunt Declaration") i-f 48)); id. (citing First Grindon Dec. i-f 25(j)). 30 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 This argument is not persuasive. As urged by Requester (3PR Resp. Br. 7-8), Owner is arguing non-existent claim language instead of the actual claim language. In particular, Owner is essentially asking that the claim language be rewritten to recite an information identifier uniquely identifying the content, instead of "an information identifier describing the content." Owner's reliance on the testimony of Drs. Grindon and Hunt as to the meaning of this claim limitation is also unavailing. While Dr. Grindon has many scientific credentials (First Grindon Dec. i-fi-f l-15; Hunt Dec. i-fi-1 7- 32), none of the experts' listed experience indicates that either Dr. Grindon or Dr. Hunt is an expert in the exegesis of patent claim language. Nor does the Declaration provide any factual support for the Declarants' opinion that the claim term must be limited to an identifier that uniquely identifies the content. Rather, the Declarants' testimony merely indicates that Owner's proffered definition is one of various possible definitions-but not necessarily the broadest reasonable interpretation. See, e.g., First Grindon Dec. i125(j) (explaining that Owner's "construction is consistent with standard English language dictionaries and is supported by usage throughout the HPL patents and claims"). "One's expertise, even though draped with a skilled-artisan veil, does not entitle a naked opinion to much weight." Corning Inc. v. DSM IP Assets B. V., Case IPR2013-00052, Paper 88, 21 (PTAB May 1, 2014) (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) ("Lack of factual support for expert opinion going to factual determinations ... may render the testimony of little probative value in a validity determination"). 31 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Owner's second supporting argument is that "[t]he RAN's construction of 'information identifier' is also inconsistent with the specification." PO App. Br. 25. Owner notes that "descriptive information" according to the '7 41 Patent includes expressly recited types of information, including "message priority," "length of message," and "type of message," -information that is expressly distinguished from "information identifying the message." Id. at 25-27. This argument is unpersuasive. The facts argued by Owner merely indicate that some examples of the generic term "descriptive information" were noteworthy enough for the '741 Patent to expressly mention them and thereby distinguish these recited specific examples. That fact, however, does not preclude other, non-recited types of information from being reasonably interpreted as reading on the generic term, "descriptive information." Owner's third supporting argument is that the Examiner's construction conflicts with the prosecution history. PO App. Br. 27-28. More specifically, Owner contends that Patentee argued the narrow construction during the original prosecution of the '741 Patent; that the Examiner subsequently allowed the '741 Patent claims; and therefore, that "[P]atentee's submission to the PTO of a construction constitutes a disclaimer of claim scope." Id. (citation omitted). Owner cites to Golden Bridge Technology, Inc. v. Apple Inc., 758 F.3d 1362, 1366 (Fed. Cir. 2014) for the proposition that "[a] patentee's submission to the PTO of a construction constitutes a disclaimer of claim scope." PO App. Br. 27. This argument is not persuasive. Golden Bridge 32 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Technology addressed a patentee's claim scope disclaimer in the context of a later infringement lawsuit. Golden Bridge Technology, 758 F.3d at 1363. Owner also cites to Tempo Lighting, Inc. v. Tivoli, LLC, 742 F. 3d 973, 977 (Fed. Cir. 2014) for the proposition that in construing claims before the PTO, "the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction." PO App. Br. 27. This argument is unpersuasive. The fact that prosecution history constitutes evidence does not mean that this evidence is necessarily conclusive or non-rebuttable or that other evidence should be ignored. Owner cites no authority for the proposition that such prosecution history estoppel applies during reexamination proceedings at the USPTO under the broadest reasonable interpretation standard. Instead, our reviewing court has explained, During reexamination, as with original examination, the PTO must give claims their broadest reasonable constrttction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation. As this court has discussed, this methodology produces claims with only justifiable breadth ... may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (internal citations omitted). Furthermore, Owner has already argued this issue unsuccessfully before another panel of this Board. In the inter part es review of US 7,155,241 B2 (issued to Richard C. Helferich, Dec. 26, 2006), Owner argued that the Board's construction of the claim language, "information 33 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 identifier identifying the information" was too broad because it includes "descriptive material about the information." See the '033 IPR Final Written Decision at 8. 11 Owner contended that the claim language should be limited to meaning "a label, symbol, or token that establishes the identity of the message that is stored in the system such as a code or the message's address in the system." Id. at 12-13. Applying the broadest reasonable interpretation to the claim language, the Board rejected Owner's narrow interpretation in favor of the interpretation that includes descriptive material. '033 IPR Final Written Decision at 8-17. Furthermore, the Board's construction was subsequently affirmed on appeal to the Federal Circuit. 599 F. App'x. 955 (Fed. Cir. 2015) (mem.) (aff'd per curiam). In fact, the disputed claim language at issue in the '033 IPR arguably is even narrower than the present claim language. The presently disputed claim language recites "an information identifier describing the content" (e.g., claim 1) (emphasis added), whereas the disputed claim language of the '033 IPR recites "information identifier identifj;ing the information" (e.g., '241 Patent, claim 1) (emphasis added). Owner presently argues that the term "identifying" is narrower than merely "describing." See PO App. Br. 24--28. So to the extent that Owner's argument has any merit, the language of the present claims must be interpreted at least as broadly as the Board interpreted the claim language in the '033 IPR. 11 The '033 IPR Final Decision is cited in Owner's Appeal Brief. See PO App. Br. Evidence App'x C79. 34 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 V. THE REJECTIONS BASED UPON SMITH AND COX Summary The Examiner finds that Smith discloses every limitation of independent claim 1 except for the limitation of step (b }---causing the content to change without causing the notification system to send another notification. RAN 13 (citing Request 100-157). Cox is relied upon for this feature missing from Smith. Id. Notably, the Examiner finds that Smith discloses a notification that comprises "an information identifier describing the content and an indication of the location of a specific system ... to be contacted to trigger retrieval of the content," as recited by independent claim 1. See, e.g., RAN 26-29. Owner presents two arguments regarding Smith's teachings. Owner first argues that Smith's date and time stamp does not constitute a content identifier. PO App. Br. 29-31; PO Reb. Br. 8-9. Owner secondly argues that the Examiner erred in "finding that Smith's 'teachings regarding a hot-link show that the hot-link identifies and describes the content and indicates the content's location." PO App. Br. 32-33. We start with the arguments regarding Smith's date and time stamp. As a threshold matter, Owner's first argument relating to Smith's date and time stamp is based on the same unduly narrow interpretation of the claim as was just addressed in Section IV of this Opinion, supra. In Section IV, we already explained why "an information identifier describing the content" does not need to uniquely identify content. We, therefore, address Owner's arguments in light of the broader interpretation that we adopt. 35 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Owner argues that because "the RAN' s discussion of Smith recognizes that multiple voicemails are often from the same caller, the 'caller name' and 'telephone number' cannot identify the remote content." PO App. Br. 29 (citing RAN 28). Owner then argues that Smith's time and date stamp does not identifj; the remote content. Id. at 29--31. These arguments are unpersuasive. The rejection is not based on any of these pieces of information alone. The Examiner explains that the rejection is based upon the following disclosure of Smith: In response to the notification from voice mail server 5600, [short message service] SMS server 5300 formulates an SMS voice mail notification message to notify the user of the voice mail message. The voice mail notification message might include the caller's name and telephone number, a time and date stamp, and the name and address of voice mail server 5600. RAN 27 (citing Smith, col. 7, 11. 51-56). This passage reasonably demonstrates that Smith discloses a notification that comprises an information identifier describing the content and also comprises an indication of the location of a specific system to be contacted, as recited in claim 1. Accordingly, Owner's arguments regarding Smith's voice mail system are unpersuasive. For this reason, we need not address Owner's separate arguments (PO App. Br. 32-33) regarding Smith's additional teachings pertaining to a Hot-Link. In addition to the reasons set forth above, we further note that Owner has already argued this issue before the PT AB panel that presided over the '033 IPR. See, e.g., '033 IPR PO Prelim. Response at 11 (arguing that the '033 IPR Petition incorrectly asserts Smith as disclosing the claimed information identifier that identifies "a sender's name, telephone number, 36 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 and e-mail address, and a time and date stamp"). More specifically, the Board has already considered arguments in the '033 IPR that are either the same as, or substantively similar to, the arguments on this issue that Owner raises in the present appeal, and the Board has already found against Owner. '033 IPR Final Written Dec. 24--39. For example, the Board has already considered Owner's arguments regarding Smith's date and time stamp. Cf the '033 IPR Final Written Dec. at 32 (rejecting the declaration statement of Owner's expert, Dr. Grindon, that Smith's "time and date stamp cannot be used by the storage system to identify the content because the storage system did not generate, and is not aware of, the time and date stamp") with PO App. Br. 30 (wherein Owner again relies on Dr. Grindon's declaration) and with PO App. Br 31 (again arguing, "For Smith's messages referring to available content (e.g., voicemails ), the time stamp added by the SMS server indicating when the SMS message was sent is not linked or "related" to the available content and, therefore, it cannot assist to identify the content or where it is stored"). To summarize, the Board rejected Owner's arguments in the '033 IPR and held that Smith does disclose the claimed content identifier. '033 IPR Final Written Dec. 24--39. Furthermore, Owner has not asserted that any of the present appeal's arguments on this issue are new---or could not have been made-in the '033 IPR proceeding. See PO App. Br. 26-33; PO Reb. Br. 15-18; see generally Tr. We see no persuasive reason to disturb the Board's factual findings and conclusions, as set forth in the '033 IPR Final Written Decision. 37 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 VI. According to Owner, Requesters' assertions regarding Smith are also barred by the doctrine of issue preclusion. PO App. Br. 36-42; PO Reb. Br. 13-14. The same or substantially similar argument was raised in the '033 IPR proceeding. See '033 IPR PO Prelim. Response at 8; id. n.8) (arguing that "[the Requesters of the present Reexamination] have asserted Smith as a primary reference in 8 inter partes reexamination requests [including in the present '1983 Reexamination] filed against related Helferich patents"). Owner contends that an examiner of one of the related reexamination proceedings has already determined "that Smith does not disclose (expressly or inherently) or render obvious a notification that includes an 'information identifier."' '033 IPR PO Prelim. Response at 8 (citing Order Denying Reexamination ofU.S, Patent No. 7,280,838 Control No. 95/002,088 (Nov. 13, 2012) at 11-12); accord id. 8-13. In the '033 IPR, the Board found this argument unpersuasive, noting that 35 U.S.C. § 325(d) indicates that in deciding whether to institute an inter partes review, the Office is not required to defer to a prior determination in the Office, even one that considered the same prior art and arguments. '033 IPR DECISION on Institution of Inter Partes Review at 23- 24 (paper 21; mailed Mar. 25, 2013). As a more general matter, while the Board fully considers its prior conclusions and holdings, the Board is not bound by its prior non- precedential opinions. See In re Craig, 411F.2d1333, 1336 (CCPA 1969) (where Board has conceded error in a prior decision, the broad countervailing public policy considerations of granting valid patents 38 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 preclude the application of res judicata ). A fortiori, the Board is not bound by claim interpretations, factual findings, or legal conclusions reached by Examiners in prior examinations. Accordingly, while we consider fully the factual findings and legal conclusions of prior examinations when raised on appeal, Owner's argument of issue preclusion is unpersuasive. And in the present case, we find Smith discloses a content identifier, as claimed, for the reasons set forth in Section V of this Opinion, supra. VII. In Section VII of the Appeal Brief, Owner argues that the Examiner erred when analyzing the secondary references, Cox, Hunt, Theriault, Rossmann, Furuta, and Kane. PO App. Br. 42-53. Due to the redundancy of the rejections, it is sufficient for us to address Owner's arguments only relating to Cox, Furuta, Theriault, and Rossmann. See Gleave, 560 F.3d at 1338; Beloit, 742 F.2d at 1421. We address the arguments pertaining to these references consecutively. cox Owner notes that the Examiner relied upon Cox for teaching limitations relating to dynamic content, but alleges that the Examiner made two technical errors in addressing Cox. PO app. Br. 42. Owner first argues that the Examiner erred in finding that Cox teaches sending a link to the "Robotic Operation Main Menu," depicted in Figure 5. Id. Owner urges that "[Cox] does not disclose or otherwise teach sending an email with a 39 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 [uniform resource locator] URL. [Cox's] completed job notifications do not include a link." Id. (citing Grindon Deel. i-f 14 ). This argument is not persuasive. First, Owner is arguing limitations that do not appear in the claims. As noted by the Examiner (RAN 32), the claims do not recite that the notification specifically is in the form of an email or that the notification further includes a URL or any other link. Moreover, Owner is arguing Cox individually, but the rejections are based upon the combination of Cox and Smith. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Owner next presents arguments in relation to what Owner refers to as "the 'Log In' Error." PO App. Br. 43--44. Owner first argues in this regard that users of Cox's system first must request a login page, but that this login page that users "request" in response to a "notification" is a static password entry page-not a dynamic page. Id. at 43. This argument is unpersuasive because it is not commensurate in scope with the claim language. Claim 1, for example, merely states that "subsequent to causing the content to change, causing the changed content to be transmitted to the cell phone upon receipt of the cell phone's request, the request corresponding to the notification." Nothing in the claim restricts or specifies what the request procedure entails. We see nothing that would preclude the recited request from including an authorization protocol such as a login protocol. That is, the request is not completed until after the users log in to Cox's system with their cell phones. 40 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Owner next argues that the Examiner misunderstands what the "relevant content" is. PO App. Br. 43. Owner contends that the "relevant content" relied upon by the Examiner is the completed jobs as indicated by Cox's Job Status page. Id. at 43--44 (citing RAN 34--35; Cox, FIG. 5). Owner argues that the completed jobs are static (PO App. Br. 43), though, and that the Job Status page is "never the subject of a notification, and is not the page that shows the user's completed photographs." This argument is not persuasive. Owner is confusing the content of a single job (which is static) with the body of all completed jobs that resides on the system, as listed on the display screen of Cox's Figure 5. We understand the Examiner's position to be (RAN 32-35) that when a particular requested job is completed, Cox will send a notification that the system's body of stored content now includes the requested job. But in at least some circumstances, other jobs may be completed and added to the system's body of stored content before the user accesses Cox's system and views the list of the body of available content via the screen of Figure 5. That is, it is the body of stored content that the Examiner finds to be dynamic-not the individual static jobs. It is this body of stored jobs that can change without notification to the user. FURUTA Contentions Dependent claims 9 and 18 further recite "wherein the notification specifies a time that the content is available." The Examiner finds that this limitation is taught by Furuta (H8-181781, published July 12, 1996). RAN 40--43. According to the Examiner, in addition to teaching receipt of a 41 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 date and time stamp, Furuta further teaches that content may have a known retention expiration period. Id. at 41. In such cases where the retention expiration period is known, a notification of the date and time when the content is received effectively also provides the user an indication of when the content expires. Id. Owner contends that Furuta fails to teach this time-available limitation (PO App. Br. 48-53; PO Reb. Br. 23-24) because the Examiner's interpretations outlined above are inconsistent with the Specification, the intrinsic record, and the prosecution history, and as such, the interpretations are unreasonably broad (id.). According to Owner, the "'time available' claims are based on the novel disclosure ... that the content provider can include in the notification retrieval[,] instructions that specify a future time (i.e., 'will be') when the content can be retrieved (regardless of the time the notification was sent)." PO App. Br. 49. Owner argues that in prior proceedings based upon the same parent application, the Office expressly found that timestamps for a message's arrival at a system do not provide the "time that the content is available." PO App. Br. 50 (citing the Office's statement regarding Ozaki 12 in the reexamination request of the '716 Patent in Reexamination Control No. 95/001,738). More specifically, Owner argues that because Furuta teaches only "time/date of receipt," it does not obviate the "time available" limitation. PO Reb. Br. 24. Analysis Owner's arguments are unpersuasive of error because the Examiner's position is not based on Furuta's disclosure of a date/time stamp alone. 12 US 5,933,478 (issued to Ozaki on August 3, 1999). 42 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Rather, the rejection is based on Furuta's disclosure of both a date/time stamp and also a retention expiration period. See RAN 54. Owner's argument that Owner's narrower interpretation is consistent with the Specification is unpersuasive because nothing in the '7 41 Specification reasonably indicates that the claim language is intended to be limited to the example set forth in the Specification. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). "It is the applicants' burden to precisely define the invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Owner's additional argument-that the Examiner's interpretation is inconsistent with the intrinsic record-is also unpersuasive. Even if we were to presume that the examiner's finding in a prior reexamination proceeding is binding on the present case (but see Section VI of this Opinion, supra), Owner's argument only addresses why a date and time stamp, alone, should not be reasonably interpreted as constituting the claimed notification. Owner does not cite to any prior discussion of Furuta or any conclusion by a prior examiner that the claimed notification fails to read on a disclosure of a date and time stamp when coupled with the knowledge of a retention expiration period. THERIAULT and ROSSMANN Dependent claim 5 recites "[ t ]he method of claim 1 wherein the system to be contacted to trigger retrieval of the content comprises a system other than the content storage and retrieval system." Owner argues that 43 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 neither Theriault nor Rossmann teaches this limitation (PO App. Br. 46-48; PO Reb. Br. 19--22) because "simply contacting a system that is not storing the content does not satisfy the claim. Claim 5 is directed to how that [contact] occurs and expressly requires that the notification sent to the cellphone indicates a specific system that is not the system storing the content." PO App. Br. 46. Using Theriault as an example of this distinction, Owner argues that "[i]f the client is preconfigured to contact a proxy, as is the case in Theriault, the notifications themselves do not indicate the proxy." Id. This argument is unpersuasive. As noted by Requester (3PR Resp. Br. 17), Owner argues for an unduly narrow interpretation of claim language. As noted above, claim 5 merely requires that "the system to be contacted to trigger retrieval of the content comprises a system other than the content storage and retrieval system" (claim 5, emphasis added). The claim, when read in combination with independent claim 1, does not require that the notification that indicates the location of the system specifically indicate this additional "system other than the content storage and retrieval system." Rather, the claim is broad enough such that when an overall system includes both a content storage and retrieval subsystem and another subsystem (such as a proxy), the step of claim 5 will be satisfied regardless of which of these subsystems is indicated in the notification. Stated another way, claim 5 is satisfied by sending a notification that indicates the location of the content storage and retrieval system so long as this content storage and retrieval system communicates with, or further comprises, another system, such as a proxy. 44 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 Because Owner's arguments are not commensurate in scope with the language of claim 5, Owner has not demonstrated that the obviousness rejections over the combinations of Smith, Cox, and either Theriault or Rossmann are erroneous. VIII. Contentions Finally, Owner argues that the Examiner disregarded objective evidence of commercial success. PO App. Br. 53-54. In particular, Owner asserts that it "presented evidence of licenses showing industry respect for the inventions of the '741 patent." PO App. Br. 53 (citing PO Resp. to ACP 68-73). Owner further alleges that the Examiner erred in concluding that "'no objective evidence of a nexus' to the claimed invention has been shown, only evidence directed to 'Helferich patents,' or the 'Helferich portfolio."' PO App. Br. 53 (citing RAN 57). Owner contends that "[c]ontrary to the RAN's statement, Helferich provided direct evidence of nexus linking the claims of the '741 patent to its licenses." PO App. Br. 53 (citing the Declaration of Dwight J. Duncan, CPA, 13 signed July 31, 2013 ("the Duncan Declaration," labeled in Owner's Appeal Brief inconsistently as Evidence Appendix C62 and D62) i-fi-f 11 (b }- 13 Mr. Duncan is an economist holding the Chartered Financial Analyst designation and is the Managing Director ofEconLit, L.L.C. Duncan Dec. i12. "[Mr. Duncan has] more than 18 years of experience involving economic consulting generally and the calculation of economic damages in commercial disputes specifically." Id. i1 4. Mr. Duncan has been retained [by Owner] as an expert ... to provide [his] opinions related to indicia of value and industry respect attributable to the '7 41 patent. Id. i17. 45 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 ( f); the Declaration of Timothy Sperling, 14 signed July 31, 2013 ("the Sperling Declaration," labeled inconsistently as Evidence Appendix C63 and D63) i-f 36; and PO Resp. to ACP (68-73). Owner contends that a nexus is established by the fact that "[ s ]pecific infringement assertions including detailed infringement charts for the [challenged '741 patent claims] were provided to virtually all accused infringers as part of licensing activities, and those specific infringement assertions at least in part gave rise to the licenses." PO App. Br. 53-54 (citing Sperling Deel. i-fi-119-20; Duncan Deel. i-f 24). According to Owner, "because of those infringement charts for the '7 41 patent, no licensee requested a reduced fee to omit the '741 patent from [its] license, despite discounts offered." Id. at 54 (citing Duncan Deel. i-fi-11l(g}-(o),24; Sperling Deel. i-fi-122-27). Owner argues that the record evidence shows that the commercial significance of the presently claimed inventions is demonstrated by the fact that companies voluntarily sought licenses of the '7 41 Patent. Id. (citing PO Response to ACP 72; the Declaration of Leonard I. Palevsky, Managing Member of Helferich Patent Licensing, LLC, 15 filed August 30, 2012 ("the Palevsky Declaration," labeled inconsistently as Evidence Appendix C58 14 Mr. Spalding holds a Bachelor of Science in Mechanical Engineering and a law degree. Spalding Dec. 3. Mr. Spalding is employed by Counsel for Patent Owner, with the primary responsibility of "representing Helferich in connection with the licensing of their patent portfolio, including the subject '741 patent." Id. 4. 15 Mr. Palevsky is a Certified Public Accountant (Palevsky Dec. i-f 1) and is "responsible for reviewing and approving all license agreements entered into by Helferich, and overseeing all litigation relating to the portfolio" (id. i-f 6). 46 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 and D58) i-fi-f 15, 32; Sperling Deel. i135; Duncan Deel. i129). According to Owner, "Helferich also demonstrated that its licenses were not entered to avoid litigation or for 'other' business reasons." Id. (citing PO Resp. to ACP i169). Owner cites to Rambus v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013) for the proposition that the Board erred when it did not have "substantial evidence to support the Board's finding that Rambus's licensing evidence lacked a nexus to the reexamined claims." Id. at 53 (citing Rambus, 731 F.3d at 1257). Requester counters, inter alia, that Owner's reliance on Rambus is misplaced because "we have no evidence of record, much less undisputed evidence, that any claimed feature of the '741 patent is 'revolutionary and pioneering technology."' 3PR Resp. Br. 19 (citing Rambus, 731 F.3d at 1257). Analysis Strictly speaking, evidence of commercial success can be viewed as a separate secondary consideration from evidence of licenses showing industry respect for the invention. See, e.g., Apple Inc. v. Int 'l. Trade Comm 'n, 725 F.3d 1356, 1375 (Fed. Cir. 2013) (Reyna, Circuit Judge, concurring-in-part and dissenting-in-part) (wherein licensing showing industry respect for the invention is distinguished from other secondary considerations of non-obviousness, including commercial success); see also In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) (same); but see Rambus, 731 F.3d at 1257 (conflating the two inquiries in stating that "Rambus's undisputed [licensing] evidence linked its commercial success to the claimed dual-edge data transfer functionality"). So while Owner's principal brief 47 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 conflates these separate inquiries by arguing that the licensing evidence demonstrates commercial success (see PO App. Br. 53-54), we understand Owner's position to be based on the sole substantive argument presented- that the licensing evidence shows industry respect for the invention of the '7 41 Patent. Turning to the merits of this argument, we agree with Requester that the present fact pattern is distinguishable from that of Rambus. Rambus 's patent owner not only established licensing evidence commensurate in scope with the claims, but further, "Rambus's evidence show[ed] beyond dispute that the claimed [purportedly novel] dual-edge data transfer functionality is what enabled the praised high-speed transfer of data." Rambus, 731 F.3d at 1257. Highly relevant to the present case, the Rambus court went on to explain why it rejected as erroneous "[t]he Board's finding that all of Rambus's evidence lacked a nexus because dual-edge functionality was already disclosed in [the primary reference], and therefore 'not novel."' Id. The Rambus court found the Board to be correct that "objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was 'known in the prior art."' Id. (citing Ormco Corp. v. Akign Tech, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006). The Rambus court clarified, though, that "the obviousness inquiry centers on whether 'the claimed invention as a whole' would have been obvious." Id. at 1257-58 (citing 35 U.S.C. § 103(a)). The Rambus court found that at least some of Rambus's objective evidence of nonobviousness was not limited to the functionality of the 48 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 primary prior art reference, but, instead, additionally pertained to Rambus' s overall memory device architecture. Id. at 1258. The Rambus court specifically instructed the Board to carefully "parse the evidence that relates only to the prior art functionality and the evidence that touted Rambus' s patented design as a whole." Id. Applying the Rambus court's guidance to the present case, we parse the cited evidence to determine what evidence relates only to the prior art functionality of Smith (or any of the other cited prior art references) alone and what evidence touts Owner's patented design as a whole. A review of Section VIII of Owner's principal brief (which addresses the question of secondary considerations) indicates that the licensing evidence Owner relies upon to demonstrate industry respect, and, therefore, nonobviousness, is the Palevsky, Duncan, and Sperling Declarations. See PO App. Br. 53-54. 16 However, this cited secondary evidence fails to allege any specific claim limitation that is purportedly unobvious to combine. For example, the Palevsky Declaration and associated "Exhibits Palevsky A---C," (labeled in Owner's Appeal Brief as Evidence Appendices D59---61) explain the history of the licensing and enforcement activities for the '741 Patent, as well as other related patents. Palevsky Dec. i-f 20; accord id. at 8-35. In so doing, the Palevsky Declaration generally asserts that accused infringers were 16 Owner also cites to prior attorney arguments contained within pages 68- 73 of Owner's Response to the Action Closing Prosecution (labeled as Evidence Appendix C20), but it is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 49 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 provided infringement notice letters including claim infringement charts (id. i-f 19), but it does not assert any particular limitation of any claim that is purportedly unobvious to combine. Nor does the Palevsky Declaration explain why any of the claims as a whole would have been non-obvious. The Palevsky Declaration just makes general assertions about the '741 Patent overall: 14. Of the 28 handset companies that acquired licenses, seven companies also acquired licenses for their wireless content prov1s10n. Specifically, Amazon, Apple, Dell, Hewlett- Packard/Palm, Microsoft, Motorola and Research in Motion separately acquired a license under the Helferich content patents for their handsets as well as their wireless content provision, including specifically the subject '741 Patent. In addition, an eighth handset company (Nokia) requested, and paid for, an "option right" to obtain a license for its wireless content provision under the Helferich content patents, including the subject '741 Patent. Palevsky Deel. i-f 14. 17. In late 2009, Helferich began licensing the Helferich Portfolio in the wireless content provision field. 18. Initially, the infringement assertions in the wireless content provision field were based on four Helferich patents, including the '741 patent (as well as U.S. Patent Nos, 7,499,716, 7,835,757, and 7,280,838). The infringement assertions in the wireless content provision field now include an additional three patents, all of which issued in the past few months. 19. Every prospective content licensee that received a notice letter from Helferich also received claim infringement charts and accompanying analysis (and screenshots) demonstrating the prospective licensee's infringement of the Helferich's content provision patents. 20. Helferich initially asserted infringement of the '741 patent in those instances in which companies practiced the infringing 50 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 methods in connection with [multimedia messaging service] MMS messaging. Helferich included with the respective notice letters an infringement chart for the subject '7 41 patent. Palevsky Deel. i-fi-f 17-20. Likewise, neither of the Duncan and Sperling Declarations asserts any particular limitation of any claim that is purportedly unobvious to combine, nor explain why any of the claims as a whole would have been non-obvious. For example, the Duncan and Sperling Declarations merely makes general assertions about the '741 Patent overall: 11. I, and staff under my supervision, reviewed in excess of 180 content licenses. Based on my review, I confirmed the following facts, (which are also set forth as noted in the Sperling Declaration): g. Some ofHelferich's content licenses recite more narrow rights ("exclusions") in exchange for a slightly lower (or "discounted") license fee, including an exclusion for MMS, and for foreign patent rights. (See also, Sperling Declaration, i1 23.) Duncan Deel. i-f 11. 24. The fact that such a large number of sophisticated companies signed license agreements with rights to the '741 patent after receiving notice letters addressing potential infringement of the '741 patent demonstrates a "nexus" between the claimed invention and the subsequent successful licensing. In particular, Helferich has allowed licensees to pay a lower license fee by "carving out" various patents (e.g. foreign) and eliminating activity from the scope of the license field (e.g. MMS), and I understand no company has sought to eliminate the '741 patent from the license in an effort to negotiate a lower license fee. Duncan Deel. i124. 51 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 21. As of the signing of this declaration, more than 180 companies of various sizes have agreed to a license to the Helferich portfolio with a licensed field of use covering content provision, including the '741 patent. See Exhibit TSperling 3. 22. All of the 180 content provision license agreements expressly include rights to the '7 41 patent and claims. See, e.g., Exhibit TSperling 8-10. 23. Some of Helferich's content provision licenses recite more narrow rights ("exclusions") in exchange for a slightly lower (or "discounted") license fee. 24. One exclusion and discount offered by Helferich relates to excluding content delivery via MMS (multi-media messaging service) from the "licensed field of use" (hereinafter "the MMS exclusion"). Sperling Deel. i-fi-121-24. By arguing the commercial success of all of the claims as a group, and by failing to point out any particular claim limitations that would have been non-obvious to combine; Owner fails to demonstrate the requisite nexus between a showing of non-obviousness and commercial success. See Rambus, 731 F.3d at 1257 (explaining that "objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was 'known in the prior art."') (citing Ormco Corp. v. Akign Tech, Inc., 463 F .3d 1299, 1312 (Fed. Cir. 2006). Accordingly, we are unpersuaded that the Examiner erred in concluding that Owner has failed to demonstrate a sufficient and appropriate nexus to the claims at issue. CONCLUSIONS For the reasons set forth in sections I-VIII, supra, we sustain the adopted obviousness rejection of independent claim 1 over the combination 52 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 of Smith and Cox, as well as the rejection of claims 4, 6-8, 13-17, and 28- 39 (RAN Issues 1 and 35), which are not argued separately. See generally PO App. Br. We likewise sustain the adopted obviousness rejections of dependent claims 2 and 3 over Smith and Cox, and further in view of either of Giinliik or Picard (RAN Issues 2 and 3), neither of which rejections were argued separately. Id. We likewise sustain the adopted obviousness rejections of claims 11, 12, 20, 21, 23, 24, 26, and 27 over Smith and Cox, and further in view of either of RCF (RAN Issue 8), which rejection was not argued separately. Id. We sustain the obviousness rejection of claim 5 over the combination of Smith, Cox, and Theriault/Rossmann (RAN Issues 4 and 5). We sustain the obviousness rejection of claims 9 and 18 over the combination of Smith, Cox, and Furuta (RAN Issue 7). We sustain the written description rejection of claims 28, 32, 34, and 38 (RAN Issues 33 and 34). Because these rejections address all of the claims on appeal, we need not address the obviousness rejection based upon the combination of Smith, Cox, and Kane (RAN Issue 6); the obviousness rejections based upon the combination of Smith and Hunt (RAN Issues 9-16); or the obviousness rejections based upon Reilly (RAN Issues 17-32). See Gleave, 560 F.3d at 1338; see also Beloit, 742 F.2d at 1421. 53 Appeal2015-004984 Patent 8,116,741 B2 Reexamination Control 95/001,983 DECISION The Examiner's decision rejecting claims 1-9, 11-18, 23, 24, and 26- 3 9 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1and1.983. AFFIRMED Patent 0\~1ner: JUSTIN LESKO LAW OFFICES OF STEVEN G. LISA, LTD. C/O INTELLEV ATE, LLC. P.O. BOX 52050 MINNEAPOLIS MN 55402 Third Party Requester: COVINGTON & BURLING, LLP ATTN: PATENT DOCKETING 1201 PENNSYLVANIA A VENUE, NW W ASHIGTON, DC 20004-2401 PS 54