Introduction: It’s been a while since my last post, but I haven’t given up on this blog yet. Here’s hoping the next post doesn’t take as long.
Today’s two cases are interesting because the patent owners didn’t file preliminary responses! Combined, the two institution decisions span about 75 pages, and each decision addresses priority dates of the challenged claims within a chain of claimed priority applications. Add in some means-plus-function constructions and you have quite the smorgasbord of IPR issues for the Board to parse through. And there are a few good lessons on claim construction here. Read on!
Caption: GRACENOTE, INC. v. ICEBERG INDUSTRIES LLC
Patent No.: 7,174,293 (-00551 case); 7,783,489 (-00552 case)
Technology at Issue: Both patents relate to the use of a hand-held device to “listen” to a song, to compare the song’s signals to a database of templates corresponding to audio works, and to thereby identify the song title. The Board identifies the illustrative claims, which are compared below:
|73. Apparatus for recognizing free-field audio signals, comprising:
||14. A hand-held music capture device comprising:
|a hand-held device having a microphone to capture free-field audio signals;
||a microphone which receives a random portion of an analog audio signal;
|a local transmitter, integral to said hand-held device, to transmit a signal corresponding to the captured free-field audio signals to a recognition site, the transmitted signal corresponding to a portion of a recorded audio work that is less than an entire recorded audio work;
|said local transmitter further comprising an analog-to-digital converter to convert the free-field audio signal to a digital format; and
||an analog-to-digital converter to convert the received portion of the audio signal into a digital signal;
||a signal processor which (i) receives a less than approximately six second portion of the digital signal and (ii) signal processes same into a digital time series representing the voltage waveform of the captured audio signal;
|a recognition processor and a recognition memory at the recognition site, said recognition memory storing data corresponding to a plurality of audio templates, each audio template corresponding to substantially an entire recorded audio work,
||a memory which stores the processed fixed-time portion of the digital signal that corresponds to less than a complete audio work;
|said recognition processor comparing the signal transmitted from said local transmitter with at least one of the audio templates stored in said recognition processor memory, said recognition processor providing a recognition signal based on the comparison.
||transmission structure which transmits the stored portion of the digital signal to a recognition processor; and indicia structure configured to indicate an identification signal provided by the recognition processor, said identification signal corresponding to the random portion of the analog audio signal.
Board Decisions Issued on February 28, 2014 (-00551 case) and March 7, 2014 (-00552 case): The panel includes APJ Zecher, APJ Arpin, and APJ Ward. APJ Arpin writes for the panel in the -00551 case, and APJ Ward writes for the panel in the -00552 case. There is some overlap in the decisions.
Discussion: Each Petition asserts three anticipation grounds of challenge, and a series of obviousness-based challenges. The allegedly anticipating references are Wang, Sonoda, and Ikezoye. Claim construction occupies a fair portion of the Board’s analysis. In the -00551 case, the Board rejects Petitioner’s argument that certain means-plus-function terms are indefinite for failure to disclose corresponding structure in the specification. [[the PTAB can agree with an indefiniteness argument in IPR, but that generally results in dismissal of the IPR as to the indefinite claim(s), by the way, so the strategy taken here finds me contemplative at the moment]] In both cases, the Board is not satisfied that Petitioner’s claim constructions are supported by the specifications, and reaches its own constructions.
Next the Board spends significant page-space evaluating the proper priority date of the challenged claims. In the patent family, there were two provisional applications having different filing dates, a non-provisional, a continuation-in-part thereof (the -00551 case’s patent), and a continuation thereof (the -00552 case’s patent). In view of the Board’s claim constructions, the Board evaluates each of Petitioner’s arguments on priority by comparing the properly-construed claims to the priority documents. Through this process, it reaches the conclusion that the Wang reference is not prior art under 35 U.S.C. 102(e) vis-à-vis the challenged claims.
Finally, moving on to the grounds of challenge, the Board tosses the challenges based on Wang, and challenges based on insufficiently supported theories of inherency. In one instance, the Board cites to Petitioner’s expert declaration, which in one instance states that portions of Sonoda are “suggestive” of a claim limitation. The Board also kicks out the challenges against the means-plus-function claims. Since Petitioner did not propose a construction for these terms, Petitioner could not have satisfied its burden as to these claims. The Board cites to 37 CFR 42.104(b)(3), which requires a construction for M+F limitations. See -00551 Decision at p. 38. Elsewhere, the Board is not convinced that challenges are fully supported. In one example, the Board seems to agree that Sonoda’s system would include an analog-to-digital convertor, but is not convinced that the A/D convertor is Sonoda is part of an “integral transmitter,” as required in certain claims. In another example, the Board states that “reliance on Dr. Kalker’s declaration to supply elements missing from Sonoda is not appropriate in an anticipation rejection.” See -00551 Decision at p. 41. A similar issue arises in the -00552 Decision at p. 28. Also in the -00552 Decision, the Board finds a gap between the cited portions of the Ikezoye reference and the claim language at issue:
Claim 15 recites that “at least one of the hand-held device and the processor extracting a time series of spectrally distinct audio signal features from the captured free-field audio signals.” Ex. 1020, col. 20, ll. 22-42 (emphasis added). For this limitation in claim 15, Petitioner‟s claim chart cites to multiple references, including Ikezoye, Blum, and Gibson. Pet. 36. For its anticipation challenge, only the citation to disclosures in Ikezoye are relevant. Specifically, Petitioner cites to Ikezoye‟s disclosure that “a sound file may be sampled according to its acoustic/perceptual features over time.” Pet. 36 (Ex. 1005, col. 8, ll. 4-8). Petitioner provides no explanation of how Ikezoye‟s sampled acoustic/perceptual features anticipate the claimed step of a processor “extracting a time series of spectrally distinct audio signal features from the captured free-field audio signals.
See p. 25 (underlining added).
Result: Petitions Denied.
Lessons from IPR2013-00551 and -00552:
- These cases show that patent owners do not have to file a preliminary response to an IPR petition, and the Board may still reject the petition. This is a good data point for patent owners.
- Here, claim construction played a big role. On the means-plus-function terms, the Board warned petitioners to propose constructions or face denials.
- I’ll be curious to see if the Board ever takes similar steps where petitioners offer incorrect constructions. It is clear that the Board is looking to petitioners to not only propose constructions, but to propose the correct constructions. For example, if there are clear definitions or disclaimers in the file history for claim terms, and petitioner does not use them in the grounds of challenge, should the petition be denied? (arguably, the obligation to reach the correct construction is built into the 37 CFR 42.104(b)(4) requirement – how can the petition include the burden-carrying explanation of unpatentability if the petitioner’s claim construction is incorrect?)
- Last, the Board is looking for explanation that spans the gap between cited reference and claim limitation. The block quotation above provides a nice example of what the Board doesn’t like.
If you want to discuss IPRs further, please feel free to contact me at whelge at dbjg dot com.