WAG Acquisition, LLC v. WebPower, Inc. et al.
Docket No. 2018-1617 (IPR2016-01238)
NEWMAN, CHEN, STOLL
August 26, 2019
Brief Summary: Board IPR decision finding WAG’s claims invalid for anticipation reversed due to erroneous claim construction (e.g., the definition “comes from the prior art Carmel reference”); obviousness conclusion affirmed since negative limitation not disclosed by prior art.
Summary: WAG appealed Board IPR decision finding claims 10-18 of WAG’s US 8,122,141 directed to “[a] server for distributing streaming media” invalid for being anticipated by a US patent (“Carmel”) or obviousness over Carmel in view of International Standard ISO/IEC 11172. The Board’s decision relied in large part on construction of independent claim 10 term “rate” at which “the server” sends “media data elements to the user” as not being “limited to the rate at which data are sent over an individual link” (“nothing in the express language of the claim, nor in the Specification of the ‘141 patent…compels” such a construction). The Board also found the negative limitation of dependent claim 15 (“said server does not maintain a pointer into a buffer established within said server, for each said user”) anticipated by Carmel. The FC panel reviewed the Board’s claim construction “de novo, reviewing any underlying fact findings for substantial evidence” (Teva, US 2015; Praxair, FC 2018) using the broadest reasonable construction (BRC) standard for this IPR (the Phillips standard applies for IPRs filed after Nov. 13, 2018, FN3), explaining that “a claim term is read…in the context of the entire patent” (Phillips, FC 2005). The FC panel disagreed with the DC’s construction, explaining that the revised “construction stems from the plain language of the claim” and “is further supported by the patent specification” (“consistent with the specification and the operational intent of the invention described in the specification”). The FC panel noted that the Board’s conclusion was based on its understanding of the term “link”, which “WAG’s specification does not even use” and “comes from the prior art Carmel reference”. The FC panel therefore remanded the disagreement between WAG and WebPower regarding whether Carmel disclosed “the claimed ‘rate’”. Regarding claim 15, WAG argued “that Carmel either expressly or inherently discloses the use of a pointer, and thus fails to disclose the negative limitation that the ‘server does not maintain a pointer into a buffer’” and therefore “does not disclose sufficient client-side control to render the use of a pointer unnecessary.” The FC panel was “not convinced by WAG’s arguments”, concluded that “[a] reasonable fact finder could find that Carmel does not require use of a pointer for the reasons stated by the Board” (“[w]hile Carmel does not specify that a pointer is not used, nothing in the record suggests that a pointer must be used”), and therefore found the Board’s decision to be supported by substantial evidence.