Takeaway: Even when a patent owner does not address an argument in its response, the Board still has to assess the ground on its own merits.

In its Final Written Decision, the Board found that all challenged claims (claims 1, 4, and 8) of the ’091 Patent are unpatentable.  The ’091 Patent relates to a multimedia system for providing “consistent, timed, coordinated playback of images and/or sounds despite differences in playback system speed or configuration.” 
The Board began with claim construction, stating that claim terms will be interpreted according to the broadest reasonable construction in light of the specification of the patent.  The Board construed “selecting a playback bandwidth with which to deliver at least one of said images or sounds.”  Petitioner stated that the Board’s construction from the Decision to Institute was correct, but Patent Owner asserted a different construction.  The Board determined that Patent Owner’s construction was correct.  Patent Owner also argued that the term “selecting” required construction, but the Board agreed with Petitioner that Patent Owner’s construction was too narrow based upon the specification.

The Board then reviewed the only ground of unpatentability – that the challenged claims are anticipated by Cruz.  After reviewing the explanation and testimony on both sides, the Board agreed with Petitioner that claims 1 and 4 are anticipated by Cruz.  Patent Owner argued that Cruz does not disclose two limitations.  Regarding “selecting a playback bandwidth with which to deliver at least one of said images or sounds,” the Board found that because the limitation is not as narrow as Patent Owner stated, it is disclosed by Cruz.  Regarding “dividing each of said data elements into one or more portions,” the Board found that Patent Owner was also interpreting that limitation too narrowly.

The Board then reviewed the anticipation of claim 8.  The Board noted that Patent Owner did not address claim 8 in its Response, therefore, the Board has discretion to decide claim 8 based on the Petition.  The Board reviewed Petitioner’s analysis, and found that claim 8 is anticipated by Cruz.

Adobe Systems Incorporated and Level 3 Communications, LLC v. Afluo, LLC, IPR2014-00153
Paper 27: Final Written Decision
Dated: April 9, 2015
Patent 5,995,091
Before: Michael W. Kim, William V. Saindon, and Tina E. Hulse
Written by: Hulse
Related Proceeing: Afluo LLC v. Adobe Systems Inc., No. 1:12-cv-01459-SLR (D. Del.)