Ex Parte Helferich et al

Patent Trial and Appeal Board

May 24, 2016

95001867 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 95/001,867 01/06/2012 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 Richard J. Helferich 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. Rex3-7499716 8990 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. Appeal2015-005486 Inter Partes Reexamination Control No. 95/001,867 Patent US 7,499,716 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 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 SUMMARY Background This proceeding arose from a request for inter partes reexamination of US Patent 7,499,716 B2, which is entitled "SYSTEM AND METHOD FOR DELIVERING INFORMATION TO A TRANSMITTING AND RECEIVING DEVICE" (issued to Richard J. Helferich on Mar. 3, 2009 from Application 11/399,513, filed Apr. 6, 2006) ("the '716 Patent"), and which is assigned to Wireless Science, LLC and Helferich Patent Licensing, LLC. PO App. Br. 7. The inter part es reexamination request 95/001,867 ("Request") was filed January 6, 2012 by CBS Interactive Inc., The New York Times Company, Best Buy Co., Inc., The Bon-Ton Department Stores, Inc., G4 Media, LLC, and Bravo Media LLC. ("Requesters"). 1 See Request for Inter Partes Reexamination Transmittal Form. Owner asserts that "[ t ]here are no related PTO appeals or interferences involving the '716 patent (PO App. Br. 6), 2 but then includes 1 Subsequent to the filing of the Request, Bon-Ton Stores, Inc. filed a Notice of Non-Participation on May 16, 2012. Best Buy Co., Inc. filed a Notice of Non-Participation on July 27, 2012. 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 April 29, 2013 ("ACP"); (2) Right of Appeal Notice, mailed October 9, 2014 ("RAN"); (3) Appeal Brief by Patent Owner Appellant, filed January 7, 2015 ("PO App. Br."); (4) Requester's Respondent Brief, filed February 6, 2015 ("3PR Resp. Br.); (5) the Examiner's Answer, mailed February 27, 2015 (incorporating the RAN by 2 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 '1867 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 2015-004984 in inter partes reexamination 95/001,983 arose from a request by Requesters for an inter partes reexamination of US Patent 8, 116, 7 41 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, reference) ("Ans."); (6) Patent Owner's Rebuttal Brief, filed March 27, 2015 ("PO Reb. Br."). 3 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 filed July 3, 2008; which is a divisional of the present '716 Patent) ("the '4984 Appeal," "the '1983 Reexamination," or "the '741 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 '741 Patent and which ultimately claims priority to the present '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 December 9, 2015. The hearing transcript ("Tr.") was entered into the record January 22, 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. 4 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 The Invention and Claims The '716 Patent describes the invention as follows: The present invention provides 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 15 is illustrative of the appealed claims: 15. A content communication system, comprising: a memory configured to store content; a memory controller including a processor coupled to the memory configured to cause a paging data signal to be directed to a cell phone, wherein the data signal includes an address identifier that identifies the cell phone, a content identifier that identifies the content and the content's location, and a type identifier that identifies the content's type; wherein the memory controller is configured to direct the content corresponding to the content identifier from the memory to the cell phone only upon receiving a request from the cell phone at the identified content's location, to do so. The Adopted Rejections Appealed by Patent Owner Claims 15-18, 21-33, 37--43, 83-86, 89-101, 103-115, and 135-188 are the subject of this appeal. PO App. Br. 7. Claims 1-14, 19, 20, 34--36, 44--82, 87, 88, 102, and 116-134 are not subject to reexamination. Id. The Examiner concludes that the appealed claims would have been obvious 5 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 under 35 U.S.C. § 103(a), having adopted twenty-eight grounds of rejection. See generally RAN. 4 Rather than reproduce all twenty-eight individual grounds of rejection, we reference the RAN. See RAN 11-20 (listing the adopted rejections and RAN 21-26 (listing the withdrawn rejections). To summarize, though, the adopted rejections can be divided into the following three general groups: (1) Issues 1-8 are obviousness rejections under 35 U.S.C. §103(a) of various claims based on at least the combination of Rossmann (US 5,809,415; issued Sept. 15, 1998) and Reilly et al., Enabling Mobile Network Managers, Computer Networks and ISDN Systems, 29 (1997) 1417-28 ("Reilly"). (2) Issues 9-17 are obviousness rejections under 35 U.S.C. § 103(a) of various claims based on at least the combination of Kylanpaa et al., Nomadic Access to Information Services by a GSM Phone, Comput & Graphics, Vol. 20, No. 5, (1996) 651-58 ("NAIS") and Kane (US 5,487,100; issued Jan. 23, 1996). (3) Issues 18-21, 23-28, and 30 are obviousness rejections under §103(a) of various claims based on at least the combination of Smith (US 6,333,973 Bl; issued Dec. 25, 2001) and Kane. Some rejections of this third group are also based upon various combinations of the following references: (i) Furuta (JP H8-181781 A; published July 12, 1996); (ii) Bjomdahl (US 5,406,616; issued Apr. 11, 1995); and 4 The Examiner did not adopt six additionally proposed written-description and indefiniteness rejections under 35 U.S.C. § 112, i-fi-f l, 2. RAN 21-26. 6 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 (iii) Giallanza (US 4,369,443; issued Jan. 18, 1983). For the reasons set forth below, Owner's arguments regarding the third group of rejections-the rejections based upon the combination of Smith and Kane-are unconvincing of Examiner error. Because this third group of rejections covers all of the appealed claims, we need not address the first two groups of rejections. 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). THE REJECTIONS BASED UPON SMITH AND KANE Summary The Examiner finds that Smith discloses every limitation of independent claim 15. RAN 15-19; 47-56. Notably, the Examiner finds that Smith, itself, discloses a content identifier that identifies the content and the content's location, as recited by independent claim 15. RAN 48-50. The Examiner additionally finds that Smith also teaches a type identifier. RAN 50-51. The Examiner combines Kane for its redundant teachings regarding a memory controller (e.g., Request 746-49, incorporated by the RAN), as well as an address identifier that identifies the cell phone to which a paging data signal is directed (e.g., Request 749-51). In response, Owner presents four arguments regarding the rejections based upon Smith and Kane. First, Smith does not disclose a content 7 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 identifier. PO App. Br. 26-33; PO Reb. Br. 15-18. Second, Requesters' assertions regarding Smith are barred by the doctrine of issue preclusion. PO App. Br. 33-38; PO Reb. Br. 18-20. Third, Smith does not constitute prior art because Owner was diligent in reducing the invention to practice. PO App. Br. 45-52; PO Reb. Br. 22-25. Fourth, the RAN disregarded objective evidence of commercial success. PO App. Br. 52-54. Owner also presents separate arguments in relation to independent claim 22 and other claims that further recite "wherein the notification specifies a time that the content is available." PO App. Br. 39-44; PO Reb. Br. 20-22. We address each of these arguments separately and in more detail below. I. Owner argues that Smith does not disclose a content identifier. PO App. Br. 26-33; PO Reb. Br. 15-18. Owner proffers multiple assertions in support of this argument, including that Smith's invention addresses different problems with different solutions. PO App. Br. 26-27. For example, Owner contends that "Smith did not change the operation of the servers but, instead, made handsets more user friendly." Id. at 27. This argument is unconvincing 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 content identifier. Owner next argues that Smith's notification process was such that [ t ]he messages stored for one user are not available to any other users. Therefore, Smith had no need to uniquely identify each 8 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 message from among all others on the system. Users only access message stored in their in-box. Nothing in Smith's notifications allows one user to obtain messages stored for another user. PO App. Br. 27. This argument is unconvincing because, even accepting arguendo these alleged facts to be true, Owner has not explained why Smith still would not need to uniquely identify messages from all other messages that are received for a particular user. Owner argues that Smith's "timestamp does not in any way 'relate to' the stored content and, therefore, cannot identifj; that content." Id. at 29--31. This argument is unpersuasive. 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 48 (citing Smith, col. 7, 11. 51-56). This passage reasonably demonstrates that Smith discloses a content identifier that identifies the content and the content's location, as recited in claim 15. 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. 31-33) regarding Smith's additional teachings pertaining to a Hot-Link. Owner presents additional arguments on the issue of whether Smith teaches the claimed content identifier (PO App. Br. 28-33), 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 PO Prelim. Response 9 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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, 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 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"). 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. 26 (wherein Owner again relies on Dr. Grindon's declarations) and with PO App. Br 28 (again arguing that "[t]he SMS server [as opposed to Smith' voicemail, fax, or email servers] adds a 'time and date stamp' to the SMS message, and sends the SMS message to the user"). 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- 10 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 18; see generally Tr. We see no convincing reason to disturb the factual findings set forth in the '033 IPR Final Written Decision. II. According to Owner, Requesters' assertions regarding Smith are barred by the doctrine of issue preclusion. PO App. Br. 33-38; PO Reb. Br. 18-20. The same or substantially similar argument was raised in the '033 IPR proceeding. See '033 IPR PO Prelim. Resp. 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 '1867 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. Resp. 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 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- 11 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 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 unconvincing. And in the present case, we find Smith discloses a content identifier, as claimed, for the reasons set forth above. III. Contentions Owner argues that Smith does not constitute prior art because the inventor of the subject invention in the '716 patent, Mr. Richard Helferich, was continuously diligent in reducing the invention to practice from prior to Smith's April 23, 1997 filing date until the '716 Patent's priority date of September 19, 1997. PO App. Br. 45-52; PO Reb. Br. 22-25. Owner supports this argument with a declaration of the inventor, Declaration of Richard J. Helferich Submitting Evidence Pursuant to 37 C.F.R. § 1.131 (dated July 1, 2013) ("the Helferich Declaration"). The Examiner disagrees, concluding that while Owner had established conception prior to the filing of Smith (RAN 4---6), Owner failed to establish continuous diligence from prior to Smith's relevant date until the invention 12 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 was reduced to practice (RAN 6-9). 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 critical date) to May 1, 1997. RAN 8. 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 8 (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. 16-17; accord id. 12- 16. 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 7. 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 most, Mr. Helferich has only pleaded reasonable diligence (See July 2013 Helferich Declaration i-fi-14, 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. 13 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 RAN7. Owner responds that the Examiner's finding regarding the second time period 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. 44. 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 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 aboitt the ini'enti-ve process, alone, ma}' also corroborate." PO App. Br. 44. 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. 47. 14 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 48. Requester, on the other hand, argues in support of the Examiner's finding: In the present case, we have no showing of a continuous exercise of reasonable diligence from at least the period from prior to April 7, 1997 to August 12, 1997. [RAN 8]. Appellant's continued failure to cite to evidence, facts, and dates that would constitute continuous exercise of reasonable diligence (or legally acceptable excuse) confirms, and does nothing to disturb, the Examiner's reasoned analysis and conclusions. "[M]ere surmise cannot take the place of proof, and there is no proof in the record of such diligence." Ireland v. Smith, 97 F.2d [95,] 100 [(CCPA 1938)]. 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 15 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 of the affidavit or declaration or their absence must be satisfactorily explained. Issue5 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 '716 Patent's priority date of September 19, 1997? More specifically, has Owner rebutted the Examiner's finding (RAN 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? 6 5 Unlike Section I 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 question of diligence in the '033 IPR Decision. See generally '033 IPR Final Written Dec. 6 Even though the Examiner refers to this time period as extending between May 1, 1997 and July 31, 1997 (RAN 7), as will be explained in the ANALYSIS section, below, some of the associated Invention Disclosure Forms were delivered to ReadyCom's attorneys between the period of July 1 and August 12, 1997 (Helferich Dec. i-fi-15.x.i-v). As such, this second disputed time period arguably extends beyond July 31, 1997 to approximately August 12, 1997. This distinction does not affect the Panel's analysis, though. 16 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 ofReadyCom (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 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. 3. Evidence Appendix C56 of Owner's Appeal Brief, titled "Richard J. Helferich Cross-Examination Deposition Transcript with Corrections, Vol. 17 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 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. 18 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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. '033 Dep. Tr. 217-18. Analysis Requester challenges (3PR Resp. Br. 15) 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 19 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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. 15. 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). 7 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, 7 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. 20 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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. 46 (asserting that the corroborative evidence entails five typed draft abstracts, an extensive set of 24 prior art patents that 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 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.; Helferich Dec. 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 21 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 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); Appeal 2016-000805, 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). 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 22 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 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 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. 23 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 (quoting 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. 47 (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 objective standard for determining whether 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 24 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 extended breaks from work on the present inventions to work on other inventions or attend to other, higher-priority work-related matters (see, e.g., Fact 6), yet still be reasonably diligent in reducing the present inventions to practice. 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 June 30, 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 Deel. 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. 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 time frame 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 25 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 of diligence 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. Owner asserts 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 drav,rings disclosing multiple inventions is reasonable diligence, "since [the inventor] was not required to abandon his livelihood while completing the invention." PO App. Br. 47 (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 26 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 Finally, in relation to independent claim 15, Owner argues that the Examiner disregarded objective evidence of commercial success. PO App. Br. 52-54. In particular, Owner asserts that it "presented evidence of licenses showing industry respect for the inventions of the '716 patent." PO App. Br. 52 (citing Declaration of Leonard I. Palevsky filed pursuant to 37 C.F.R. § 1.132 ("the Palevsky Declaration") (labeled as Evidence Appendix C5 8) i-fi-f 13---66). Owner contends that it "provided direct evidence of nexus linking the claims of the '716 patent to its licenses." Id. at 53 (citing the Palevsky Deel. i-fi-f 13---66). Owner further contends that it "demonstrates that its licenses were not entered to avoid litigation or for 'other' business reasons." Id. (citing the Palevsky Deel. i-fi-1 43-59). 27 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 Owner cites to Rambus v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013), for the proposition that the present Examiner's disregard of secondary evidence regarding the licenses for the '716 patent is impermissible. PO App. Br. 52-53. Owner more specifically relies on Rambus 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 '716 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, 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 28 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 conflates these separate inquiries by arguing that the licensing evidence demonstrates commercial success (see PO App. Br. 52-54), 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 '716 Patent. Turning to the merits of this argument, we agree with Requester that the present fact pattern is distinguishable from that of Rambus. The Patent Owner in Rambus 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 29 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 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 Declaration. See PO App. Br. 52-54 (citing Palevsky Deel. i-fi-f 13---66). 8 The Palevsky Declaration, in tum, explains that the Helferich content-provision patent portfolio includes nine US patents, including the present '716 patent. Palevsky Deel. i-f 15. According to Mr. Palevsky, over the past three and a half years prior to the date Mr. Palevsky signed the Declaration, Owner "has notified several hundred content provider companies of their infringement of Patentee's content provision patents and claims." Id. i-f 16. 8 Owner also cites to prior attorney arguments contained within pages 75-79 of Owner's Response to the Action Closing Prosecution (labeled as Evidence Appendix C 17), 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). 30 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 Every notice letter sent to accused infringers of Patentee's content provision patents since late 2009 (when Patentee first began actively licensing the content provision portfolio) has included a detailed description of the '716 patent and claims, as well as specific allegations of infringement of the '716 patent along with claim infringement charts and proofs (e.g., screenshots ). These notice letters typically span several hundred pages, including claim charts and infringement proofs. See, e.g., Exhibit Palevsky B which is Helferich's Notice Letter to CBS (the Requester herein) (note, the '716 patent is specifically identified to be infringed by CBS' SMS messaging at pp. 8-10); see also, Exhibit Palevsky C which is Claim Infringement Chart for the '716 Patent as attached to Helferich's Notice Letter to CBS (note, the '716 patent is likewise asserted to be infringed by CBS' SMS messaging). Palevsky Dec. i-f 1 7. The referenced Exhibit Palevsky C is a three-page document that lists seven claims that CBS purportedly infringes: independent claims 15 and 22, as well as dependent claims 17, 18, 21, 24, and 27, all of which depend from claim 15 and recite additional features. Claim 15 is already discussed supra. Independent claim 22-further reciting the limitation "wherein the notification specifies a time that the content is available"-is discussed in Section V of this Opinion, infra. The other cited claims set forth the following additional limitations: 17. The system of claim 15, wherein the content comprises at least one of the following: audio, voice, music, image, graphic, text, video, application or data. 18. The system of claim 15, wherein the cell phone communicates by at least one of the following: a global system for mobile communications network ( GSM), a cellular packet data network, or a personal communications services network (PCS). 31 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 21. The system of claim 15, wherein the memory is coupled to the Internet. 24. The system of claim 15, wherein the content's location is identified based on a system identification. 27. The system of claim 15 wherein the memory controller is further configured to direct the content corresponding to the content identifier to the cell phone in a way that bypasses a notification system. The Palevsky Declaration goes on to explain that, to date, over approximately 180 companies have agreed to a license covering content provision, and "[a ]ll of the 180 content provision license agreements expressly include rights to the '716 patent and claims. Id. i-fi-f 18-19. Mr. Palevsky, a Certified Public Accountant (id. i14), values the '716 Patent at approximately $10,000,000 in collected license fees, excluding handset agreements and agreements that call for ongoing running royalty rate payments. Id. i120. In paragraphs 21 and 22, Mr. Palevsky explains the methodology used to reach the calculated $10 million valuation of the '716 patent license fees, as well as the valuation of other patents. In paragraphs 23 to32, Mr. Palevsky explains how he calculated the valuation of the multimedia-messaging-service (MMS) and the '241 patent. In paragraphs 33 to 37, Mr. Palevsky explains how he calculated the valuation of the foreign patents. In paragraphs 38 to 42, Mr. Palevsky explains how he calculated the valuation of the '716 patent. In paragraphs 43 to 58, Mr. Palevsky sets forth reasons supporting his declaration that most licenses were not signed under threat of litigation. The remainder of the Palevsky' s declaration (i-fi-1 59---66) sets forth additional considerations. 32 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 Notably, Mr. Palevsky ascribes "a significant amount of Patentee's total recoveries under its lump sum content provision agreements to the '716 patent." Id. i-f 43. According to Mr. Palevsky, "the '716 [patent] is one of Patentee's earliest patents, and it is included in the license grant of all of Patentee's content provision licenses." Id. i-f 22.a. "[I]t has been Patentee's practice to offer licensees a discount on the offered license fee should the licensee agree to exclude from the license grant certain defined patents or activities from the 'licensed field of use,' such as foreign issued content provision patents and/or MMS messaging." Id. i-f 22.b. Read as a whole, Mr. Palevsky's declaration indicates that a licensee of the Helferich patent portfolio could opt to include the entire '716 patent in the license, or opt to exclude the entire patent. See id. But Owner points to nothing in the Palevsky declaration---or elsewhere in the record-that would indicate which individual claims of the '716 patent, or what specific subject matter within any of the claims, constitutes the nonobvious invention or subject matter that purportedly enjoys industry respect. We, therefore, disagree with the contention of Owner's Counsel that "PO provided specific evidence [demonstrating] the nexus to the very patent claims at issue." Tr. 9. Even accepting, arguendo, Mr. Palevsky's $10,000,000 licensing-fee valuation of the '716 patent to be reasonable, it still is unclear, then, whether any portion of the $10,000,000 is more specifically attributable to the invention recited in claim 15. It may well be the case that the industry respects and values only some additional subject matter that is contained in one or more of the '716 patent's other claims, such as the additional subject 33 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 matter contained in independent claim 22, discussed infra. Alternatively, the industry may have found commercial significance to be associated with the subject matter of one or more of dependent claims 17, 18, 21, 24, or 27, set forth supra. See, e.g., Tr. 10 (wherein Owner's Counsel argues that the notice letter lists multiple claims involved in this reexamination). Even if we were to further assume, arguendo, that all of the industry respect is for claim 15 specifically, that assumption still would not answer the question of what it is about claim 15 that gamers the industry's respect. For example, it may well be that the industry has respect for the argued limitation-the content identifier that identifies the content and the content's location (discussed in Section I of this Opinion, supra). Such hypothetical respect may be a result of the mistaken belief that Smith does not teach this limitation (but see Section I of this Opinion, supra), or that Smith does not constitute prior art (but see Section III of this Opinion, supra). Such industry respect would be immaterial to the question of obviousness because this feature relates to prior art functionality, and not to the touted patented design as a whole. See Rambus, 731 F.3d at 1258. Alternatively, the hypothetical industry respect for claim 15 might be for the touted invention of claim 15 as a whole. However, this seems questionable in that the secondary reference, Kane, was combined with Smith to provide additional evidence of what functionality that Smith, itself, purportedly already possesses. See RAN 15 (citing Request 7 40-911 ). More specifically, the Examiner adopts Requester's position that while one of ordinary skill would understand that Smith implicitly discloses a memory controller, Kane also discloses a memory controller (Request 34 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 747), and one of ordinary skill would have been motivated to include Kane's memory controller in Smith because Smith already discloses memory controllers (Request 749). The Examiner additionally adopts Requester's position that "[Smith itself] discloses that the data signal includes an address identifier that identifies the cell phone" (Request 7 49), and that it also would have been obvious to have incorporated Kane's unique identifier of a remote unit in a cell phone according to Smith (Request 751). It seems questionable, though, whether either of these features could be shown to have garnered industry respect because Owner does not challenge with particularity the novelty of either of these features (see PO App. Br.). Furthermore, it would be questionable, at best, whether either the controller or the address identifier could serve to demonstrate sufficiently commercial success. Just as was the case with the disputed content identifier, Smith already contained a controller and address identifier. That is, even though the rejection of claim 15 is labeled as an obviousness rejection under 35 U.S.C. § 103(a), the substance of the rejection appears to be that Smith teaches or suggests all limitations of claim 15, and Kane is relied upon merely to provide additional evidence of those features that Smith, itself, teaches implicitly. As such, any arguments regarding industry respect or commercial success are unavailing because those arguments would be directed to prior art functionality, and not to the touted patented design as a whole. See Rambus, 731 F.3d at 1258. Conclusion Owner argues the commercial success of the '716 patent generally, but provides insufficient evidence that any commercial success the 35 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 '716 patent may enjoy is attributable to the touted patent design as a whole as opposed to merely prior art functionality. 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. For the reasons set forth in sections I-IV supra, then, we sustain the adopted obviousness rejection of independent claim 15 over the combination of Smith and Kane, as well as that rejection of claims 16-18, 21-27, 83-86, 89-94, 110-113, 135-138, 141, 144--146, 162-165, 168, and 170-173 (RAN Issues 18 and 23), which are not argued separately. 9 See generally PO App. Br. We likewise sustain the following adopted obviousness rejections, which also were not argued separately (See id.): We sustain the obviousness rejection of claims 28-33, 37, 40-43, 95- 100, and 103, 104, 107-109, 147-152, 155, 156, 159-161, 174--179,and 182, 183, 186-188 over the combination of Smith, Kane, and Bjomdahl (RAN, Issues 20 and 24). 10 We sustain the obviousness rejection of claims 139, 140, 166, and 167 over the combination of Smith, Kane, Bjomdahl and Giallanza (RAN, Issue 25). 9 Claims 22, 23, 90, 91, 114, 115, 142, 143, and 169 are addressed in Section V of this Opinion, infra. As such, we need not consider whether these claims are rendered obvious by the combination of Smith and Kane, alone. See 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). 1° Claims 38, 39, 105, 106, 157, 158, 184, and 185 are addressed in Section V of the Opinion, infra. See Beloit, 742 F.2d at 1421. 36 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 We sustain the obviousness rejection of claims 101, 153, 154, 180, and 181 over Smith, Kane, and Bjomdahl and Giallanza (RAN, Issues 26 and 30). V. Contentions Appealed claims 22, 23, 38, 39, 90, 91, 105, 106, 114, 115, 142, 143, 157, 158, 169, 184, and 185 further recite, in pertinent part, specifying a time that the content is available. The Examiner finds that this limitation is taught by both Kane and Furuta (H8-181781, published July 12, 1996). RAN 16 (Issues 19 and 21 ), 17 (Issue 27), 18 (Issue 28). 11 More specifically, the Examiner finds that Kane teaches this limitation because the language reads on Kane's notification of time and date information indicating when a message was received. RAN 53. The Examiner reasons 11 The RAN states in relation to Issue 28 only that claims 157 and 184 remain rejected over the combination of Smith, Kane, Bjomdahl, and Furuta. RAN 18. Claims 157 and 184 both recite the limitation that "the notification specifies a time that the content is available"-the limitation for which the Examiner relies on Furuta. Claims 158 and 185, which stand rejected over the combination of only Smith, Kane, and Bjomdahl-but not Furuta (see Issue 24), respectively depend from claims 157 and 184. As such, we understand Issue 28 's listing of claims 157 and 184 to intend, instead, to set forth that all four of claims 157, 158, 184, and 185 remain rejected over the combination of Smith, Kane, Bjomdahl, and Furuta. Cf Issue 28 (RAN 18) with Issue 15 (wherein the Examiner indicates that dependent claims 39 and 106, as well as parent claims 38 and 105, stand rejected over the combination of Smith, Kane, Bjomdahl, and Furuta; RAN 15). We view this oversight in the listing of the claims associated with Issue 28 to constitute harmless error. 37 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 that a voicemail message is accessible as of its reception date and time, and Kane teaches time tag information that indicates the date and time at which the voicemail message is accessible. Id. at 53-54. The Examiner further finds, in the alternative, that even if Kane must be interpreted so narrowly as to not teach this claim language, Furuta does teach this claim language. RAN 53-54. According to the Examiner (id.), in addition to teaching receipt of a date and time stamp, Furuta further teaches that content may have a known retention expiration period. 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. at 54. Owner contends that neither of these references teaches this limitation (PO App. Br. 39-44; PO Reb. Br. 20-22) because the RAN's interpretations outlined above are "inconsistent with [the] plain meaning, expert testimony, the specification, and the intrinsic record," and as such, are unreasonably broad (PO App. Br. 39). According to Owner, the plain meaning of "'specifies' is 'to name or state explicitly or in detail."' PO App. Br. 39 (citing a general purpose dictionary). According to Owner, the declaration testimony of Owner's expert witness supports construing the claim language "specifies a time that the content is available" as "states explicitly a duration, period, interval, or point in time that the content is accessible." PO App. Br. 39 (citing EXPERT DECLARATION OF JOHN R. GRINDON, D. Sc., i-f 28) ("Grindon § 132 Deel."). According to Owner, this construction "is ... consistent with the specification[,] which teaches that the notifications can include 'retrieval instructions' designated by the content provider[,] which 38 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 provide a time the information may be downloaded to reduce air time charges." PO App. Br. 39-40 (citing the '716 Spec., col. 13, 11. 18-24). Also according to Owner, the narrower construction is supported by the intrinsic record because the examiner of a prior reexamination found the disclosure of date and time stamps, alone, to be insufficient to constitute specifying a time that the content is available: [T]he Request asserts that Ozaki discloses of a message being transferred to the terminal device[,] which includes inter alia a header including 'time'. The examiner notes that this is not a time for availability as claimed, but instead represents the time that the fax transmission is received. The examiner notes that the claim is clear that the time must be related to the availability of the content (i.e. availability of the content for which the notification was sent). PO App. Br. 40 (citing ORDER DENYING REQUEST FOR INTER PARTES REEXAMINATION for US 7,499,716 in reexamination 95/001;738; mailed Nov. 4; 2011 at 22) (emphasis added in PO App. Br.). Analysis Owner's arguments are unconvincing of error, at least with respect to the Examiner's alternative rationale that the claim language reads on Furuta's disclosure of both a date/time stamp and also a retention expiration period. See RAN 54. As such, we need not consider whether the Examiner's alternative finding-that the claim language reads on Kane's date/time stamp alone-is also reasonable. Owner's argument that Owner's narrower interpretation is consistent with the Specification is unconvincing because nothing in the '716 Specification reasonably indicates that the claim language is intended to be limited to the example set forth in the Specification. Although the 39 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 argument that the Examiner's interpretation is inconsistent with the term's plain meaning is unconvincing because even the definition of "specifies" supplied by Owner indicates that the broader interpretation is reasonable. A notification of when a message was received, when coupled with knowledge of a retention expiration period, provides a reasonably explicit or detailed notification of the time period when the content will be available. There is no ipsissimis verbis test for determining whether a reference discloses a claim element, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Owner's argument that the Examiner's interpretation is inconsistent with the testimony of Owner's expert is likewise unconvincing. As a threshold matter, we note that the cited portion of Dr. Grindon's testimony appears to be based solely on his opinion and is uncorroborated: It is my opinion that a PHO SIT A would understand the phrase "specifies a time that the content is available" to mean: "states explicitly a duration, period, interval or point in time that the content is accessible." This definition is consistent with the plain and ordinary meaning of these terms at the time, the normal definitions for the words "specify " "time " and "available " as ' ' ' used in the '716 patent specification, and with the Examiner's analysis of this language in the reexamination files. Grindon § 132 Deel. i-f 28 (emphasis added). 40 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 As such, Dr. Grindon's testimony on this point is of little probative value. "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."). Regardless, though, Dr. Grindon's testimony seems to support the conclusion that the Examiner's broader interpretation is reasonable. A notification of when a message was received, when coupled with knowledge of a retention expiration period, "states explicitly a duration, period, interval or point in time that the content is accessible." See Grindon § 132 Deel. ii 28. Finally, Owner's argument that the Examiner's interpretation is inconsistent with the intrinsic record is also unconvincing. Even if we were to presume that the Examiner's finding in the prior reexamination proceeding is binding on the present case (but see Section III, supra), Owner's argument only addresses 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 the 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. 41 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 CONCLUSIONS Owner has not persuaded us that the Examiner erred in interpreting the teachings of Smith. See Section I, supra. Owner has not persuaded us that assertions regarding Smith constituting prior art are barred by the doctrine of issue preclusion. See Section II, supra. Owner has not persuaded us that the Examiner erred in finding insufficient evidence existed that Inventor was continuously diligent in reducing the invention to practice from prior to Smith's critical date, and therefore, Smith constitutes prior art. See Section III, supra. Owner has not persuaded us that the Examiner erred in considering the evidence of record regarding commercial success. See Section IV, supra. Owner has not persuaded us that the Examiner erred in finding Furuta teaches the additional claim language, "wherein the notification specifies a time that the content is available." DECISION The Examiner's decision rejecting claims 15-18, 21-33, 37--43, 83- 86, 89-101, 103-115, and 135-188 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. 42 Appeal2015-005486 Patent 7,499,716 B2 Reexamination Control 95/001,867 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 PEJ'D'JSYLVi\.NLA. i\.VENUE, N\V W ASHIGTON, DC 20004-2401 PS 43