Ex Parte 8224294 et al

Patent Trial and Appeal Board

May 24, 2016

95002140 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
95/002,140 09/05/2012
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
8224294
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.
Rex3-8224294 9028
EXAMINER
KE, PENG
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.
Appeal2016-000805
Inter Partes Reexamination Control No. 95/002,140
Patent US 8,224,294 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
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SUMMARY
Background
This proceeding arose from a request for inter partes reexamination of
US Patent 8,224,294 B2, which is entitled "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 Apr. 15, 2009) ("the '294 Patent"), and
which is assigned to Wireless Science, LLC and Helferich Patent Licensing,
LLC. PO App. Br. 7. The inter part es Reexamination Request 95/002, 140
("Request") was filed September 5, 2012 by CBS Interactive Inc., The New
York Times Company, 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 '294 patent (PO App. Br. 6), 2 but then includes
1 Subsequent to the filing of the Request, 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.
G4 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 December 4, 2013 ("ACP"); (2) Patentee Response to
Action Closing Prosecution (Non-Final) Pursuant to 37 C.F.R. § 1.951(a),
filed February 4, 2014 ("PO Resp. to ACP"); (3) the Right of Appeal Notice,
mailed August 25, 2014 ("RAN"); (4) Appeal Brief by Patent Owner
Appellant, filed November 24, 2014 ("PO App. Br."); (5) Requester's
Respondent Brief, filed December 19, 2014 ("3PR Resp. Br.); (6) the
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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., the New York Times Company, G4 Media, LLC, and Bravo
Media LLC v. Helferich Patent Licensing, LLC and Wireless Science, LLC,
Case IPR2013-00033, PRELIMINARY PATENT OWNER RESPONSE TO
THE PETITION FOR INTER PARTES REVIEW 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 '2140 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 part es reexamination 95/001,867 arose
from a request by Requesters for an inter partes reexamination of US 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 from Application
Examiner's Answer, mailed March 13, 2015 (incorporating the RAN by
reference) ("Ans."); (7) Patent Owner's Rebuttal Brief, filed April 13, 2015
("PO Reb. Br.").
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11/399,513, filed Apr. 7, 2006 ("the '5486 Appeal," "the '1867
Reexamination," or "the '716 Patent"). The present '294 Patent is a
continuation of the parent '716 Patent.
Appeal 2015-004984 in inter part es reexamination 95/001,983 arose
from a request by Requesters for an inter partes reexamination of US Patent
8,116,741 B2, titled "SYSTEM AND METHOD FOR DELIVERING
INFORMATION TO A TRANSMITTING AND RECEIVING
DEVICE" (issued to Richard J. Helferich on February 14, 2012 from
Application 12/167,971, filed July 3, 2008) ("the '4984 Appeal, "the '1983
Reexamination," or "the '741 Patent"). The '741 Patent is a divisional of
the'716 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 February 10, 2016. The hearing transcript
("Tr.") was entered into the record March 8, 2016.
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 (2011), version of 35 U.S.C.
§§ 134 and 315 applies.
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The Invention and Claims
The '294 Patent describes the invention as follows:
Systems and methods 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 of communicating content from an internet
accessible system to a subscribed cellular phone comprising
the following acts performed by a content provider:
a. generating media content in a format suitable for wireless
delivery to a cellular phone;
b. storing the generated media content in a first internet
accessible system, the system having memory, a
processor, data storage, and a networking interface;
c. providing a notification to a second system, the
notification:
1. including: (1) text describing the media content, and
(2) data that identifies the location of the media content
as stored on the first internet accessible system; and
11. configured to cause the second system to send a paging
call including at least three different portions: (1) a first
portion including the text describing the media content,
(2) a second portion including a system address of a
specific system from among a plurality of systems to
which to respond to begin the content retrieval process,
and (3) a third portion comprising a unique code,
wherein the second portion and the third portion
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together identify the media content in the first internet
accessible system;
d. receiving at the first internet accessible system a response
message related to the paging call, the response message
including: ( 1) a request to transmit at least a portion of the
generated media content stored at the first system to the
subscribed cellular phone, and (2) data corresponding to
the system address and the unique code; and
e. communicating at least a portion of the media content to a
cellular service provider for transmission to the subscribed
cellular phone over a network comprising a cellular
telephone data system.
The Adopted Rejections Appealed by Patent Owner
Claims 1-58 are the subject of this appeal. PO App. Br. 7. The
Examiner, having adopted twenty grounds of rejection, finds that the
appealed claims are either anticipated under 35 U.S.C. § 102(e) or obvious
under 35 U.S.C. § 103(a). See generally RAN.
Rather than reproduce all twenty individual grounds of rejection, we
reference the RAN. See RAN 14--19. To summarize, though, the rejections
can be divided into the following general groups:
I. Issues A-M entail one anticipation rejection under 35 U.S.C. § 102(e), as
well as twelve obviousness rejections under 35 U.S.C. § 103(a), of
various claims based on at least Smith (US 6,333,973 B 1; issued Dec. 25,
2001 ). Collectively, these thirteen rejections cover all of appealed claims
1-58. Some rejections of this group are also based upon various
combinations of the following additional references:
(1) Tso (US 6,047,327; issued Apr. 4, 2000);
(2) Raffel (US 6,223,042 Bl; issued Apr. 24, 2001);
(3) Furuta (JP H8-181781; published July 12, 1996);
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(4) Network Working Group Request for Comments: 1945, HYPERTEXT
TRANSFERPROTOCOL-HTTP/1.0 (1996) ("RFC 1945");
(5) Rossmann (US 5,809,415; issued Sept. 15, 1998); and
(6) Gifford (US 5,812,776; issued Sept. 22, 1998).
II. Issues N-T are obviousness rejections under 35 U.S.C. §103(a) of
various claims based on at least Reilly et al., Enabling Mobile Network
Managers, Computer Networks and ISDN Systems, 29 (1997) 1417-28
("Reilly") in combination with RFC '1945.
I.
In Section I of the ARGUMENT section of Owner's Appeal Brief,
Owner argues that Reilly does not constitute prior art. PO App. Br. 12-14.
We need not address this argument. The adopted rejections based upon
Smith cover all of the appealed claims, and Owner's arguments regarding
the rejections based upon Smith 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).
II.
In Section II of its Appeal Brief (PO App. Br. 14--19), Owner argues
that "the RAN failed to provide any construction of key claim terms[, but
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instead] relied on wholesale incorporation of over 500 pages of the Request,
which also fail to provide any explicit constructions." Id. at 14 (citing RAN
14--19). Owner contends that "[s]uch excessive incorporation in the face of
directly responsive positions by Helferich does not fulfill the requirements
for a RAN." Id. (citing MPEP 2673.02). Owner additionally contends that
"[t]he RAN's lack of explicit claim construction or discussion of Helferich's
arguments regarding claim construction makes discerning the appropriate
issues, and addressing them, in this appeal unnecessarily difficult." Id. at
14--15.
Owner then proceeds to recite various claim terms and limitations for
which the Examiner either failed to provide an express claim construction or
simply ignored. Id. at 15-19. For example, Owner argues that "[t]he RAN
omits any reference to [the] language in independent claim 18," "the specific
system is a system other than the first internet accessible system." PO App.
Br. 17; accord id. at 17-18.
However, as noted by Owner (id. at 14), the RAN adopts and
incorporates by reference pages 137-259 of the Request in rejecting claim
18 and various other claims. RAN 15. The Request, in tum, references this
claim language at page 160, and cites to portions of the prior art that
purportedly teach this language, as well as the rest of the claim limitation.
Request 159-162. Accordingly, Owner's argument that the Examiner
simply ignored this claim limitation is unconvincing.
As other examples, Owner argues how the claim term "unique code"
should be construed (PO App. Br. 16-17), as well as the claim language
"identify the media content" (id. at 1 7), and the claim term "indicate" (id. at
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18-19). But Owner does not present any arguments, at least not in this
section of the Brief, as to why any of the cited prior art fails to teach these
claim terms and limitations (id. at 16-19). In contrast, Section VIII of the
Argument Section of Owner's Appeal Brief (id. at 35--40) does set forth
substantive arguments as to why the cited prior art does not teach or suggest
a paging call that indicates a time during which the media content is
available.
We understand, then, the arguments in this section of the Appeal Brief
to be limited to the sufficiency, clarity, and procedural propriety of the RAN
itself-not to the merits of the substantive positions taken or adopted in the
RAN. To this point, we note that Owner does not argue that the Examiner
failed to construe the claims, but merely that the claim construction is not
explicit. PO App. Br. 14--15. Likewise, Owner does not argue that the RAN
is impossible to understand, but merely that the RAN makes "discerning the
appropriate issues, and addressing them, in this appeal unnecessarily
difficult." Id.
Nevertheless, such procedural challenges appear to be petitionable
matters. See MPEP § 1002.02(c)(4) (setting forth "Petitions and Requests
Decided by the Director of the Central Reexamination Unit," including
"items delegated to all Technology Center Directors under MPEP
§ 1002.02(c)"); see also MPEP § 1002.02(c)(3) (setting forth "Petitions
invoking the supervisory authority of the Director of the US PTO
under 37 CPR 1.181 involving any ex parte action or requirement in a patent
application by the examiner which is not subject to appeal (37 CPR 1.191)
and not otherwise provided for"). Owner does not cite to any authority
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indicating that the Board has authority to address such procedural challenges
on appeal.
Accordingly, we shall not address these arguments to the extent that
they challenge the RAN's clarity and procedural sufficiency. We instead
address these arguments in the subsequent sections of this Opinion to the
extent that Owner presents substantive arguments as to why the prior art
allegedly fails to teach the claim terms and limitations. See, e.g., Section
VIII of this Opinion, infra (addressing PO App. Br 35--40, Section VIII).
III.
In section III of its Appeal Brief, Owner similarly argues that the
RAN incorporates roughly 264 pages of the Request, but fails to discuss
Owner's subsequent submissions and arguments regarding Smith. PO App.
Br. 19. Owner contends this "[failure] to respond to Owner's arguments
violates Rule 1.953 and is not compliant with MPEP 2673.02. Thus, the
RAN's Smith rejections (under 35 U.S.C. §§ 102 and 103) are deficient on
their face." Id. Owner then asserts further reasons for why the RAN's
"wholesale incorporation by reference" of the Request is impermissible. Id.
(citing MPEP §§ 2673.02, 2671.02(I)).
We understand these arguments to be directed to the sufficiency,
clarity, and procedural propriety of the RAN itself-not to the merits of the
substantive positions taken or adopted in the RAN. Such procedural
challenges appear to be petitionable matters. Owner does not cite to any
authority for the Board to address such procedural challenges on appeal.
Accordingly, we shall not address these arguments.
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IV.
In section IV of its Appeal Brief (PO App. Br. 19-24), Owner argues
that all of the rejections based upon Smith are improper because "the RAN
disregards arguments on Smith." Id. at 19. More specifically, Owner argues
that Smith fails to disclose "at least the 'unique code,' which, together with
the 'system address,' 'identify the media content in the first internet
accessible system." PO App. Br. 22.
Owner argues, among other assertions, that Smith's invention
addresses different problems with different solutions. PO App. Br. 20-22.
For example, Owner contends that "Smith did not change the operation of
the servers but, instead, made handsets more user friendly." Id. at 21. This
argument is not convincing because it is irrelevant whether Smith also
addresses other problems or solves these other problems with additional
solutions beyond the elements recited in the claims. The relevant question is
whether Smith discloses, inter alia, the disputed limitation-a unique code
that, in combination with a system address, identifies media content in the
first internet accessible system.
Owner argues that "Smith's disclosure [shows] that the timestamp is
of the SMS notification and does not relate to the stored content. Id. at 22.
This argument is unpersuasive. Smith contains the following disclosure:
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.
Smith, col. 7, 11. 51-56.
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This passage reasonably demonstrates that Smith discloses a
notification that includes (1) text describing the media content, and (2) data
that identifies the location of the media content as stored on the first internet
accessible system, as recited in claim 1. Accordingly, Owner's arguments
regarding Smith's voice mail system are unpersuasive.
Owner presents additional arguments on the issue of whether Smith
teaches the claimed unique code that identifies media content (PO App. Br.
19-24), but it is sufficient to note that Owner has already argued this issue
unsuccessfully before another panel of this Board. See, e.g., '033 IPR,
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 Preliminary Response") at 11 (arguing that the
'033 IPR Petition incorrectly asserts Smith as disclosing the claimed unique
code---or labeled therein as an information identifier-that identifies "a
sender's name, telephone number, and e-mail address, and a time and date
stamp").
More specifically, the Board has already considered arguments in the
'033 IPR that are substantively the same as the arguments on this issue that
Owner raises in the present appeal, and the Board has already found against
Owner. CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case
IPR2013-00033, paper 122, 24--39 (PTAB Mar. 3, 2014), aff'd per curiam,
599 F. App'x. 955 (Fed. Cir. 2015) (mem.) ("the '033 IPR Final Written
Decision").
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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. 20-24 (wherein
Owner again relies on Dr. Grindon's declarations) and with PO App. Br 21
(again arguing that Smith's SMS server-as opposed to Smith's voicemail,
fax, or email servers-" adds a 'time and date stamp' to the SMS message,
and the SMS message is sent to the user's phone").
At oral hearing, Counsel for Owner was expressly asked whether the
'033 IPR's Final Decision precludes Owner from now arguing that Smith
teaches the claimed paging call' s three portions of information, including the
unique code. Tr. 20. In response, Counsel did not admit that Owner is
precluded from arguing this issue, but Counsel did not point to any
differences between the currently claimed unique code (or any other
language of independent claim 1) and the claim language that the '033 IPR
Board already found to be taught by Smith. See Tr. 20-21.
Counsel did argue that independent claim 18 is narrower than claim 1,
"and it's patently distinct from the IPR claims." Tr. 26. But claim 18 is not
rejected over Smith alone. The Examiner instead additionally relies on
RFC 1945 to teach the additional language of claim 18-"wherein the
specific system is a system other than the first internet accessible system."
We address claim 18 in Section V of this Opinion, below.
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Returning our attention to the broader language of claim 1 and the
claims that are rejected as anticipated by Smith, the Board rejected Owner's
arguments in the '033 IPR, and held that Smith discloses the claimed unique
code (or content identifier) for identifying media content. '033 IPR Final
Written Dec. 24--39. Furthermore, Owner has not asserted that any of the
present appeal's arguments regarding the rejections over Smith alone either
are new or could not have been made in the '033 IPR proceeding. See PO
App. Br. 19--24; PO Reb. Br. 7-15. Instead, Owner merely argues that
although the '033 IPR decision was affirmed by the Federal Circuit on
April 8, 2015, Owner still has opportunities for further review of the
Decision. PO Reb. Br. 7 n.3. Subsequent to the filing of Owner's Rebuttal
Brief on April 15, 2015, though, this opportunity for further review has
expired. See Tr. 22 (wherein Counsel states "The IPR is resolved, and
there's no appeal to the Supreme Court.")
For these reasons, we see no convincing reason to disturb the factual
findings set forth in the '033 IPR Final Written Decision.
V.
Contentions
The Examiner relies on the combination of Smith and RFC 1945-
either alone or in combination with further references-to reject claims 14--
58. See RAN 15-17 (setting forth obviousness rejections F-I, K, and M,
covering various combinations of claims 14--58). Some ambiguity exists as
to which of these rejections Owner is intending to dispute on appeal, as well
as what arguments Owner is intending to raise in relation to these rejections.
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Previously during the reexamination proceeding, Owner challenged
the combination of Smith and RFC 1945 with respect to all of claims 14--58.
See Patent Owner's Request for Reconsideration After Non-Final Office
Action Pursuant to 37 C.F.R. §§ 1.111 & 1.945 (filed Dec. 27, 2012)
("PO Response to NFOA") 41--42. Therein, Owner argued that it would not
have been obvious to combine RFC 1945 with Smith "to supply the
limitations relating to 'error status information.'" Id. at 41. Owner more
specifically argued,
[R ]equesters seek to combine a reference used in wired computer
networks (RFC 1945) with references directed to mobile phones
(Smith or Reilly) without any discussion or support regarding the
challenges in moving from wired to cellular wireless systems.
See Grindon Deel. i-fi-1 78-79. 4 Requesters then nakedly assert
that the results of their combinations would be predictable.
Id. at 42.
The cited portion of the Grindon Declaration reads more fully, as
follows:
77. RFC 1945 states the following:
"HTTP only presumes a reliable transport; any
protocol that provides such guarantees can be used,
and the mapping of the HTTP/1.0 request and
response structures onto the transport data units of
the protocol in question is outside the scope of this
specification."
RFC 1945 at 8 (emphases added). At the time of RFC 1945's
publication, a person of skill in the art would understand "a
reliable transport" to be a proven network such as a wired
computer network.
4 Expert Declaration of John R. Grindon, D.Sc., signed December 27, 2012.
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78. Requesters attempt to [combine a] reference used in
computer networks (RFC 1945) with references directed to
mobile phones (Smith or Reilly).
79. However, the reexamination request does not provide any
evidence of predictability with respect to the postulated
combinations involving RFC 1945 with Smith or Reilly.
Grindon Deel. i-fi-177-79.
Requester responded to this argument, asserting that the use of HTTP
could be used in the context of a web browser, such as disclosed in Smith, to
provide error status information. Comments by Third Party Requesters
Under 37 C.F.R. § 1.947 (filed Feb. 28, 2013) ("3PR Comments After
NFOA") 63---66, cited in 3PR Resp. Br. 8; see also Declaration of John C.
Mitchell, Ph.D. Under 37 C.F.R. § 1.132 and M.P.E.P. § 2658 (dated Feb.
26, 2013) i-fi-f 18-19 ("Mitchell Deel.") (stating facts and opinions in support
of Requester's position), cited in 3PR Comments After NFOA 65 and 3PR
Resp. Br. 8.
More specifically, Requester's expert, Dr. John Mitchell, declares that
the cited passage of RFC 1945 more fully discloses the following language:
On the Internet HTTP communication generally takes place over
TCP/IP connections. The default port is TCP 80 [15], but other
ports can he used. This does not preclude HTTP from being
implemented on top of any other protocol on the Internet, or
on other networks. HTTP only presumes a reliable transport;
any protocol that provides such guarantees can be used, and the
mapping of the HTTP/1.0 request and response structures onto
the transport data units of the protocol in question is outside the
scope of this specification.
Mitchell Deel. i-f 18 (citing RFC 1945 at 8) (emphasis added by Declarant ).
Dr. Mitchell then concludes that
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one skilled in the art would understand, for example, that the use
of HTTP could be used in the context of a web browser such as
disclosed in Smith and Reilly to provide "error status
information. . . One skilled in the art also knows that TCP, IP,
and other transport network layer protocols, can be implemented
over wired or wireless lower level protocols."
Mitchell Deel. ,-r 19.
Now upon appeal, Owner broadly asserts in the heading of the Appeal
Briefs Argument Section V ("Section V") that the combination of Smith
with RFC 1945 is defective. PO App. Br. 25. In support of this broad
proposition, though, Owner only presents alternative arguments to those
made previously-arguments that relate to the language of independent
claim 18. 5 Id. at 25-26.
Specifically, Owner notes that "claim 18 requires that the system
address included in the paging call to the handset be a system that is not the
system storing the available content." Id. at 25. Owner then argues that
"modifying Smith to send an address of a gateway or proxy server rather
than the address of the voicemail, fax, or email servers storing the content
renders Smith dysfunctional for its intended purpose." Id. Owner
additionally asserts "Smith does not disclose how the handset distinguishes
[among] different message types (i.e., voice, fax, or email) ... Thus, by
5 Independent claim 18 is narrower than independent claim 1 in that claim 18
further requires that the paging call include "a second portion including a
system address of a specific system from among a plurality of systems to
which to respond to begin the content retrieval process, wherein the specific
system is a system other than the first internet accessible system" (emphasis
added). Claim 18 is also broader than claim 1 in an aspect not germane to
the present dispute.
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replacing the content servicer name and address with a separate gateway
address, a central purpose of the Smith architecture is defeated." Id. at 26.
The fact that all of the substantive arguments of Section V are directed
exclusively to the language of independent claim 18 reasonably indicates
that Owner has elected to withdraw the earlier presented arguments that
were more generally relevant to all of claims 14--58. That is, we understand
Owner to be challenging only the obviousness rejections of independent
claim 18, dependent claims 19--35, and independent claim 58 6 on the basis
that the combination would not render obvious the disputed
other-than-the-first-system language, as explained above.
However, Owner closes Section V by summarizing, "for at least the
above reasons, the RAN's obviousness rejections of claims 14--58 relying on
Smith, Group 2, must be withdrawn." Id. But, as mentioned above, the
language argued in the Appeal Brief only relates to claims 18-35 and 58-
not to all of claims 14--58. Therefore, it is unclear whether Owner intended,
when filing the Appeal Brief, to preserve and reassert the prior arguments
made during prosecution.
Regardless, Requester notes in the Respondent Brief that Owner's
arguments regarding the combination of Smith and RFC 1945 have changed
over the course of prosecution, as explained above. 3PR Resp. Br. 7.
Requester references arguments and evidence as to why Owner's prior
assertions made during the reexamination before the Examiner were
6 While not alleged in Owner's Appeal Brief (see PO App. Br. 25-26),
independent claim 5 8, limitation c, also recites "data that causes a subscribed
cellular phone to respond to a system other than the system identified in the
first portion," similar to the disputed language of claim 18.
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allegedly "flawed and incorrect." For example, Requester argues that the
language "error status information" is not recited in claim 18, and as such is
inapposite with regard to claim 18. Id.
Requester also argues that Owner "selectively cropped its citation to
RFC 1945 to hide the fact that RFC 1945 discloses precisely the opposite of
what [Owner] alleged." 3PR Resp. Br. 8 (citing 3PR Comments After
NFOA 63---66; Mitchell Deel. i-fi-f 18-19). Requester additionally references
earlier arguments as to why the original Request does, in fact, provide a
sufficient basis for the Examiner's conclusion that Smith and RFC 1945 are
combinable and render the disputed language of claim 18 obvious. Id. at 7-
8 (citing Request 152---66, 169-73, 186-91, 191-207, and 243-58).
In its Rebuttal Brief, Owner again argues against the obviousness of
the limitation of claim 18. PO Reb. Brief22-23. Owner also responds to
Requester's additional contentions that relate to Owner's earlier, alternative
arguments that were not raised expressly in the Appeal Brief. Id. at 23.
Analysis
(a)
We first address the Owner's argument raised in the Appeal Brief-
that "modifying Smith to send an address of a gateway or proxy server rather
than the address of the voicemail, fax, or email servers storing the content
renders Smith dysfunctional for its intended purpose." PO App. Br. 25;
accord id. at 25-26.
This argument is unpersuasive because RFC 1945 provides a
definition of a gateway, indicating that even when a gateway is used, a
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request would still be sent to the address of the ultimate voicemail, fax, or
e-mail server-not to the gateway:
gateway
A server [that] acts as an intermediary for some other
server. Unlike a proxy, a gateway receives requests as if
it were the origin server for the requested resource; the
requesting client may not be aware that it is
communicating with a gateway. Gateways are often used
as server-side portals through network firewalls and as
protocol translators for access to resources stored on non-
HTTP systems.
RFC 1945 at 6 (emphasis added), cited in Request 162; see also PO Reb. Br.
8 (citing Request 162).
RFC 1945 further explains that "a gateway is a receiving agent, acting
as a layer above some other server(s) and, if necessary, translating the
requests to the underlying server's protocol." RFC 1945 at 7, cited in
Request 162; see also PO Reb. Br. 8 (citing Request 162).
(b)
We now tum to Owner's alternative argument that one of ordinary
skill in the art would not have expected RFC 1945 's protocol for wired
networks to have produced predictable results in wireless networks.
The Examiner adopted and incorporated the Request's proposed
obviousness rejections pertaining to the combination of Smith and
RFC 1945 (RAN 15-19), thereby concluding that it would have been
obvious to use RFC 1945 's teachings with Smith. As such, the burden of
rebuttal has shifted to Owner. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (An appellant may attempt to overcome an
examiner's obviousness rejection on appeal to the Board by: (A) submitting
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arguments and/ or evidence to show that the examiner made an error in either
(1) an underlying finding of fact upon which the final conclusion of
obviousness was based or (2) the reasoning used to reach the legal
conclusion of obviousness; or (B) showing that the prima facie case has been
rebutted by evidence of secondary considerations of nonobviousness ).
To this end, Owner presents expert testimony that one of ordinary
skill would not find the combination to produce predictable results because a
wireless transport was not a reliable system at the time of the invention.
Grindon Deel. i-fi-1 7 6-79. This testimony is insufficient to rebut the
Examiner's prima facie showing of obviousness.
First, Dr. Grindon's Declaration does not support these opinions with
sufficient factual evidence. "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.").
Second, Requester's expert, Dr. Mitchell presents testimony urging
the opposite conclusion. Mitchell Deel. i-fi-f 18-19. To be sure,
Dr. Mitchell's opinion testimony, on this point at least, is as equally
unsupported by factual evidence as is Dr. Grindon's. But still, to the extent
that we do credit these experts' respective testimony, the paucity of factual
supporting evidence in the experts' respective Declarations leaves the
testimony of Dr. Mitchell as a counterpoise to that of Dr. Grindon.
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Accordingly, Owner has not met its burden of rebuttal.
VI.
In Section VI of the Appeal Briefs Arguments, Owner argues that
"Reilly's Notifications do not 'include' a homepage address." PO App. Br.
26; accord id. at 26-29. As noted in Section I of this Opinion, though, we
need not address arguments regarding Reilly because Owner's arguments
regarding the rejections based upon Smith are unconvincing of Examiner
error.
VII.
According to Owner, Requesters' assertions regarding Smith are
barred by the doctrine of issue preclusion. PO App. Br. 29-34; PO Reb. Br.
16-19. 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 '2140 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. at 8-13.
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In the '033 IPR, the Board found this argument unconvincing, 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
preclude the application of resjudicata). 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 unconvincing. And in the present case, we find Smith
discloses a content identifier, as claimed, for the reasons set forth, supra.
VIII.
Appealed claims 8 and 25 further recite "wherein the notification
specifies a time that the content is available." The Examiner finds that this
limitation is taught by both Furuta (H8-181781, published July 12, 1996)
and Gifford (US 5,812,776; issued Sept. 22, 1998). RAN 10-12. For
example, the Examiner finds that Furuta teaches this claim language for the
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reasons set forth by Requester in the Comments by Third Party Requesters
Under 37 C.F.R. § 1.951(B), filed May 30, 2104 ("3PR Comments"), which
the Examiner incorporates by reference. RAN 12.
According to the Requester, in addition to teaching receipt of a date
and time stamp, Furuta further teaches that content may have a known
retention expiration period. 3PR Comments 42--44. 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 does not teach this limitation (PO App.
Br. 35-39; PO Reb. Br. 19-22) because the Examiner's interpretations
outlined above are unreasonably broad (PO App. Br. 35). According to
Owner, "Helferich's specification expressly differentiates between typical
'timestamps' ... [and] what the [S]pecification calls 'retrieval instructions."'
Id. at 36. In support, Owner relies on the following passage of the
'294 Patent's Specification:
[A] retrieval instruction may be sent from system 3 0 to paging
transceiver 100 for causing the paging transceiver 100 to
automatically retrieve a message or plurality of messages at a
time designated by system 30. For example it may be desirable
to have emergency weather information automatically retrieved
during night-time hours when telephone line charges and air
time charges are less expensive.
PO App. Br. 36 (citing '294 Patent, col. 7, 1. 65---col. 8, 1. 6).
We disagree that only Owner's narrower interpretation is consistent
with the Specification. Nothing in the '294 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
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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 argues that related reexamination proceedings support
Owner's interpretation because in those proceedings, the examiner found
that the disclosure of a time stamp does not provide any availability time
information. PO App. Br. 36-37 (citing examiner statements made in
relation to timestamps disclosed in other references that are not relied upon
for the present rejections). 7
This argument is unconvincing. As noted in Section VII of this
Opinion, the Board is not bound by factual findings and legal conclusions
reached in prior examinations. But even giving full consideration to these
cited statements, we are still unconvinced of error. The Examiner's
statements cited by Owner only address why a date and time stamp, alone,
should not be reasonably interpreted as constituting the claimed availability
notification. Owner does not cite to any prior discussion of Furuta or any
conclusion by a prior examiner that the claimed notification, when coupled
with the knowledge of a retention expiration period, fails to read on a
disclosure of a date and time stamp.
Owner next argues that claims 8 and 25 require that the system
indicate the time of availability to the handset, but in contrast, Furuta teaches
7 The cited Examiner statements relate to Hunt (US 5, 8 93, 091; issued
April 6, 1999) and Ozaki (US 5,933,478; issued August 3, 1999).
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the opposite-that the handset indicates the time of availability to the
system. PO App. Br. 37-39.
Requester responds, "Patent owner's analysis presumes and
is improperly predicated on the erroneous notion that the claims recite, for
example, that the 'page explicitly and expressly includes a time during
which the media content is available."' 3PR Comments 43. Requester
argues that the claim language "the paging call indicates a time" (emphasis
added) instead should be interpreted more broadly, merely requiring the
system's paging call to the phone to include a notification of when a
message was received. According to Requester, if Furuta's handset receives
a time stamp in a page, the handset "has an indication of a specified time of
availability of the content because such specified time is known by merely
adding a predetermined time period to the time stamp." 3PR Comments 43
(internal citation omitted).
The Requester's broader interpretation, which the Examiner adopted,
is reasonable. Furthermore, Owner does not dispute (see PO App. Br. 37-
3 8) that Furuta' s system (or service management station 2) does, in fact,
transmit the reception date and time to the handset. Nor does Owner dispute
Requester's contention (3PR Comments 43 (citing Furuta§ 38)) that
Furuta's handset "determines whether a voice mail has reached the retention
expiration date using the information transmitted with the notification
message."
For these reasons, Owner has not convinced us of error in the
Examiner's rejection of claims 8 and 25 over the combination of Smith and
Furuta. As such, we need not address the Examiner's alternative rejection
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over Gifford. See Gleave, 560 F.3d at 1338 (not reaching other rejections
after upholding an anticipation rejection); see also Beloit, 742 F.2d at 1421
(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).
IX.
Contentions
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 '294 Patent's priority date of September 19, 1997. PO App. Br. 41-51;
PO Reb. Br. 24--27. Owner supports this argument with two declarations of
the inventor: (1) Declaration of Richard J. Helferich Submitting Evidence
Pursuant to 37 C.F.R. § 1.131 (dated July 1, 2013) ("Helferich
Declaration"); and (2) Supplemental Declaration of Richard J. Helferich
Submitting Evidence Pursuant to 37 C.F.R. § 1.131 (dated July 9, 2013)
("Suppl. Helferich Declaration"). 8
The Examiner disagrees, concluding that while Owner had established
conception prior to the filing of Smith (RAN 3-5), Owner failed to establish
continuous diligence from prior to Smith's relevant date until the invention
8 During oral argument Owner's Counsel explained (Tr. 4--7) that pages 48
and 49 of Owner's Appeal Brief inaccurately cite to wrong paragraphs of the
Supplemental Helferich Declaration, inadvertently citing the paragraphs as
they are numbered in the first Helferich Declaration. This discrepancy does
not affect the Panel's reason or conclusions.
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was reduced to practice (RAN 5-7). Specifically, the Examiner finds three
gaps in Owner's evidence: a gap in the time period prior to March 27, 1997;
a gap in the time period between May 1, 1997, and July 31, 1997; and a gap
in the time period between July 31, 1997, and August 12, 1997. RAN 6.
The Examiner concludes that the following facts and activities of Mr.
Helferich fail to constitute diligence or excuse: "The fact that Mr. Helferich
acted as Chief Technical Officer [ ( CTO)] of ReadyCom and had to work on
Patent prosecution matters in his spare time" (id. at 6); "The fact that
ReadyCom had financial difficulties and ReadyCom was in negotiation with
investor" (id.); "Business Negotiations between Mr. Zoltick and the
ReadyCom Lawyers" (id.); "Business Communications between Mr. Zoltick
and Mr. Helferich for exploiting the invention commercially" (id. at 7);
"Business agreement between Helferich and ReadyCom" (id.); and that
"Mr. Helferich functioned as CTO of ReadyCom and worked on [an]
unrelated pending patent matter" (id.). The Examiner also finds in relation
to the time period between June 15 and August 12, 1997, that "[a] blanket
statement of diligence does not constitute diligence" (id. at 6, 7), and
"During [the periods of "June 27 to July 3, July 7 to July 30, August 1, [and]
August 5 to August 11] PO provided neither evidence[] of diligence nor
excuse." Id. at 7.
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
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diligence during the first critical time period. See Appeal 2015-005486
Tr. 16-17; accord id. at 12-16.
Owner also responds that the Examiner's finding regarding the time
period of approximately June 27 to August 11, 1997 is in error because
"[Mr. Helferich's] declaration and cross-examination testimony provide a
coherent recitation of his work on his invention and the surrounding events
(which were amply corroborated by documents and other testimony)."
PO App. Br. 42. Owner further contends that "[t]he corroboration
requirement is governed by the 'rule of reason,' which 'does not require
corroboration for every factual issue."' Id. (citing In re Placid Oil Co., 932
F.2d 394, 398 (5th Cir. 1991)).
Owner also cites Sandt Technology, Ltd. v. Resco Metal and Plastics
Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001) for the proposition,
all pertinent evidence is examined in order to determine whether
the inventor's stor; 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. 43.
Owner urges that for these reasons, the "contemporary work records
referencing Helferich's inventions corroborating his testimony are highly
probative." Id.
Spending approximately four months (while also serving as
[Chief Technical Officer]) drafting a lengthy specification and
drawings disclosing multiple inventions is reasonable diligence,
"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. 46.
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Owner also contends that "[ m Jost importantly, neither the veracity of
Helferich' s testimony nor the authenticity of the documentary evidence is
challenged." Id. at 47.
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 ....
(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.
Issue 9
Has Owner provided sufficient corroborating evidence to establish
continuous exercise of reasonable diligence in reducing his invention to
9 Unlike Section IV of this Opinion, supra, we do not adopt all of the
rationales and conclusions the Board set forth in the '033 IPR Decision in
relation to the issue of whether Smith constitutes prior art. 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
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practice for the entire period extending from just before Smith's relevant
date of April 23, 1997 to the '716 Patent's priority date of September 19,
1997?
More specifically, has Owner rebutted the Examiner's finding
(RAN 6-7) that Mr. Helferich has not provided sufficient corroborating
evidence of continuous exercise of reasonable diligence during the entire
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 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 '716 Claims prior to the scheduled trip to
Korea, and I wanted to continue working diligently to file patent
applications on my new inventions.
Helferich Deel. i-f 5.f.
2. The Helferich Declaration sets forth the following testimony
concerning the period of April 7, 1997 to September 19, 1997:
question of diligence in the '033 IPR Decision. See generally '033 IPR
Final Written Dec.
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r. 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 Deel. i-f 5 .r.
3. Evidence Appendix C56 of Owner's Appeal Brief, titled "Richard J.
Helferich Cross-Examination Deposition Transcript with Corrections, Vol.
I-II, IPR2013-00033," includes a transcript titled "Deposition of RICHARD
J. HELFERICH, ... commencing [July 15, 2013]" (the "Helferich '033 Dep.
Tr."). See PO App. Br. 80; App'x C56.
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
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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?
[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:
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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.
'033 Dep. Tr. 217-18.
Analysis
We need not address the 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 approximately
July 31, 1997-the time period following the signing of the business
agreement between Mr. Helferich and ReadyCom, the time period during
which ivir. Helferich was drafting the related patent applications, and during
which the Examiner finds corroboration of diligence to be lacking. RAN 6-
7. That is, we 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 1.
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,
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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.s (citing
Exhibit RJHelferich 11 through Exhibit RJHelferich 14)), six typewritten
specifications (id. i-f 5.t (citing Exhibit RJHelferich 15 through Exhibit
RJHelferich 20)), original figures (id. i-f 5.t.iii.2 (citing Exhibit RJHelferich
23)), and associated typewritten cover letters (e.g., id. i-fi-15.t.ix-xi. (citing
Exhibit RJHelferich 21, Exhibit RJHelferich 22, and Exhibit RJHelferich
25)). Accord PO App. Br. 45 (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
specification, and a handwritten set of 23 drawings).
Owner does not direct us to any assertion 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, e.g., PO
App. Br.; PO Reb. Br.; Helferich Deel.; Supp. Helferich Deel. Instead,
Mr. Helferich testified during a deposition that he did not keep daily records
of such activities in his daily billing calendar. Facts 3--4. In fact, Mr.
Helferich testified that his decision to not record this work in his daily
billing calendar was intentional. Fact 4.
This Inventor testimony may constitute a reasonable explanation or
excuse for why daily records of Mr. Helferich's invention-related activities
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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"); PO App. Br. 46 n.12 (stating the computer crash happened in mid-
June, 1997); Patent 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).
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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 start over typing the Specifications.
See PO App. Br. 45 n.14. 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
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.
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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, Owner's Counsel did have Mr. Helferich clarify his
deposition testimony by having Mr. Helferich subsequently testify 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. at 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).
We appreciate Owner's contention that diligence does not require an
inventor to abandon his livelihood while completing the invention. PO App.
Br. 46 (citations omitted). However, without corroboration of Mr.
Helferich's activities before the computer crash-further corroboration than
merely the final work product-we have no persuasive evidence proving
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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 in order 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 submitted pursuant to 37 C.F.R.
§ 1.132," dated July 8, 2013 ("the Second Schwartz§ 132 Declaration").
PO App. Br., Evidence App'x. C57. The Second 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 7th. 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.
Owner's Appeal Brief also references a supplement declaration of the
inventor. PO App. Br., 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
Second Schwartz Declaration, though, the Supplemental Helferich
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Declaration only includes statements regarding the timeframe prior to
April 7, 1997. See generally Supp. Helferich Dec. 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 gaps in diligence.
As such, the Supplemental Helferich Declaration does not provide
corroboration for this time period.
To summarize, the only significant corroborating evidence of
diligence cited in the Helferich Declaration in relation to the three-month
time period in question, is the evidence of the delivery of 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.
Consistent with Mr. Helferich's testimony, a review of the
above-listed dated, invention disclosure materials shows that
they required significant time and effort to create .... Spending
approximately four months (while also serving as CTO) drafting
a lengthy specification and drawings disclosing multiple
inventions is reasonable diligence, "since [the inventor] was not
required to abandon his livelihood while completing the
invention."
PO App. Br. 46 (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
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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).
X.
Finally, we address Owner's arguments regarding the proffered
"evidence of licenses showing industry respect for the inventions of the
'294 patent." PO App. Br. 51-53. Owner first asserts "[t]he RAN
disparaged the evidence of nonobviousness stating that 'patent owner has
not met the burden of establishing a clear nexus between the invention as
claimed and the evidence of secondary considerations."' PO App. Br. 51
(citing RAN 12) (emphasis added). Owner then recharacterizes the
Examiner's purported disparagement of the evidence as disregard of the
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evidence. PO App. Br. 51 ("The Federal Circuit has held that such disregard
is impermissible.")
As a threshold matter, it is unclear how the Examiner could have
disregarded Owner's secondary evidence of commercial success by
disparaging this evidence. In order for evidence to be disparaged, it first
must be considered. It seems more accurate to characterize the present
situation as one in which the Examiner considered the evidence, but found
that evidence to be unpersuasive. See RAN 12-13.
Regardless of the characterization, Owner's arguments regarding
commercial success are unpersuasive. The primary reason is that claims 1,
6, 9, 10, and 13 are rejected under 35 U.S.C. § 102(e) as being anticipated by
Smith. RAN 14. But inquiries into secondary considerations, such as
commercial success and licensing activity evidencing industry respect, are
only relevant to legal conclusions of obviousness, arising in rejections issued
under 35 U.S.C. § 103(a). Secondary considerations are not relevant to
anticipation rejections. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (In
determining obviousness of the claimed invention, objective evidence of
secondary considerations pertaining to nonobviousness must be considered,
including long-felt but unsolved needs, failure of others, commercial
success, etc.) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
See also In re Kahn, 441F.3d977, 985-86 (Fed. Cir. 2006) ("On appeal to
the Board, an applicant can overcome a rejection [under§ 103] by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness. ") (internal
citation omitted).
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It is true that in addition to rejecting claims 1, 6, 9, 10, and 13 as
anticipated by Smith, the Examiner additionally rejected 1-58 under
35 U.S.C. § 103(a) as obvious over at least Smith. See RAN 14--17.
Nonetheless, no secondary-considerations arguments were presented in
relation to any specific claim limitation of any of the claims. See PO App.
Br. 51-53 (arguing claims 1-58 as a single group in relation to the
secondary considerations).
Likewise, the secondary evidence cited in Owner's Appeal Brief also
fails to allege any specific claim limitation that is purportedly unobvious to
combine. See Declaration of Leonard Palevsky (dated Dec. 27, 2012) and
associated "Exhibits Palevsky A-C," submitted pursuant to 37 C.F.R.
§ 1.132) ("The Palevsky Declaration") (explaining the history of the
licensing and enforcement activities for the '294 Patent, as well as at least
six other related patents. Palevsky Deel. i-f 20; accord id. at 8-35. The
Palevsky Declaration generally asserts that accused infringers were 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 '294 Patent overall:
35. While the application leading to the '294 patent was pending,
Helferich offered discounted license fees if the licensee agreed
to exclude pending applications (including the then-pending
application leading to the '294 patent) from the license. No
licensee agreed to exclude the '294 patent. All content licensees
insisted that the pending application be included in the license.
Palevsky Dec. i-f 35.
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In arguing the commercial success of all of the claims as a group,
including the claims that were rejected as anticipated, 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 v. Rea, 731 F .3d
1248, 1257 (Fed. Cir. 2013) (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. 10
CONCLUSIONS
For the reasons set forth in Sections I-X, supra, we sustain the
adopted anticipation rejection under 35 U.S.C. § 102(e) of claims 1, 6, 9, 10,
and 13 over Smith (RAN 14, Rejection A).
We likewise sustain the following adopted obviousness rejections
under 35 U.S.C. § 103(a):
We sustain the obviousness rejection of claims 1, 6, 9, 10, and 13 over
Smith (RAN 14, Rejection B).
10 Owner also cites to prior attorney arguments contained within pages 58-
60 of Owner's Response to the Action Closing Prosecution (filed February
4, 2014) (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).
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We sustain the obviousness rejection of claims 2, 3, 5, 7, 11, and 12
over Smith and Tso (RAN 14, Rejection C).
We sustain the obviousness rejection of claims 3, 4, and 5 over Smith
and Raffel (RAN 15, Rejection D).
We sustain the obviousness rejection of claim 8 over Smith and
Furuta (RAN 15, Rejection E).
We sustain the obviousness rejection of claims 14--18, 23, 26-28, 31-
36, 43, 45--47, 54, and 56-58 over Smith and RFC 1945 (RAN 15, Rejection
F).
We sustain the obviousness rejection of claim 25 over Smith, RFC
1945, and Furuta (RAN 15, Rejection G).
We sustain the adopted obviousness rejection of claims 19, 20, 22, 24,
29, 30, 37--40, 42, 44, 48-51, 53, and 55 over Smith, RFC 1945, and Tso
(RAN 16, Rejection H).
We sustain the adopted obviousness rejection of claims 3, 20-22, 40-
42 and 51-53 over Smith, RFC 1945, and Raffel (RAN 16, Rejection I).
We sustain the adopted obviousness rejection of claims 10 and 11
over Smith and Rossmann (RAN 16, Rejection J).
We sustain the adopted obviousness rejection of claims 28 and 29
over Smith, RFC 1945, and Rossmann (RAN 16, Rejection K).
We sustain the adopted obviousness rejection of claim 8 over Smith,
and Gifford (RAN 17, Rejection L).
We sustain the adopted obviousness rejection of claim 25 over Smith,
RFC 1945, and Gifford (RAN 17, Rejection M).
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DECISION
The Examiner's decision rejecting claims 1-58 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 Owner:
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
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