Docket No. 2016-2004 et al. (12 IPRs)
PROST, NEWMAN, DYK
June 21, 2017
Brief Summary: PTAB final written decisions following IPR proceedings of US 6,108,704; 6,009,469; and 6,131,121 finding of no obviousness based on construction of the “is connected” limtiation affirmed.
Summary: Samsung appealed PTAB final written decisions (FWD) following IPR proceedings of US 6,108,704; 6,009,469; and 6,131,121 (‘469 and ‘121 being ‘704 continuations-in-part (CIPs)), all relating to networks and the internet, upholding “the validity of all instituted claims reciting the limitation ‘is connected to the computer network’ or the counterpart claim phrases that the parties agreed bear the same meaning.” The FC panel opinion explains that the ‘704 patent “generally relates to establishing a point-to-point communication link” and theh ‘469 and ‘121 patents “both relate to facilitating audio communications over computer networks.” The FC panel also explained that claims of “the ‘704 patent, among others” were previously challenged by “the same prior art references that are at issue in this appeal” and found to be unpatentable as anticipated, but that the FC panel disagreed with the Board’s claim construction (Straight Path, FC 2015), instead finding “‘is connected to the computer network” requires the phrase “at the time that the query is transmitted to the server.” On remand in that case, the PTAB construed the claims under the FC’s guidance (e.g., “[w]hen claim language has as plain a meaning…as the language does here…it is particularly difficult to conclude that the specification reasonably supports a different meaning”; confirmed by reexamination prosecution history (“the assignee…made the very distinction that was at issue on appeal-between still being registered and actually being online-to overcome a rejection”)) and reversed its anticipation finding. In these IPRs, the claims were challenged under § 103(a) for obviousness over a combination of references. In its FWD, the Board adopted the FC’s construction of the “is connected” limitation and found that “the references disclose that the servers have information that a process ‘was’ connected to the computer network, but that information may no longer be accurate, i.e., the process may no longer be connected to the computer network.” Accordingly, the Board found obviousness had not been shown by a preponderance of the evidence. Samsung argued “the Board added a limitation not found in the claim when it purportedly required that the prior art references demonstrate ‘perfect accuracy’ when querying whether a process is connected to the computer network.” The FC panel disagreed, finding the Board “properly applied our construction of the ‘is connected…’” limitation and reached the correct conclusion. The FC panel also disagreed “that the Board ignored teachings of the prior art”, noting it “already explained that ‘a query that asks only for registration information, regardless of its current accuracy,’ will not satisfy the claim limitation.” Thus, the Board decision was affirmed.