Takeaway: The Board did not find that an alteration of Petitioner’s positions concerning its challenge is a basis for dismissing the Petition.

In its Final Written Decision, the Board held that Petitioner has not shown by a preponderance of the evidence that any of the instituted claims, 2-12, 14, and 16, of the ’536 patent are unpatentable. The ’536 patent generally relates to “developing intelligence in a computer or digital network by creating and manipulating information containers with dynamic interactive registers in a computer network.”

Addressing claim construction, the Board had construed seven claim terms in its Decision on Institution, and neither party disputed the constructions in the PO Response or Reply. Accordingly, the Board maintained the same constructions for the Final Written Decision.

The Board then turned to the anticipation ground. Petitioner contended that claims 2-14 and 16 of the ’536 patent are anticipated under 35 U.S.C. § 102(e) by Gibbs. The Board determined that Gibbs did not disclose each and every feature of the claims. For example, Petitioner argued that the objects used by Gibb’s railroad management system are examples of logically defined data enclosures that meet the preamble limitation “containers” in claim 2 of the ’536 patent. Additionally, in its Reply, Petitioner contended that Gibbs showed the “claimed ‘container’ via its description of a collection of transport, map, and report objects that are instantiated and used to display maps and reports to users.” Patent Owner argued that Petitioner improperly switched its position from express anticipation to an inherency argument, and that the Board should deny the Petition because of the change of position. The Board did not find that an alteration of Petitioner’s positions concerning its challenge is a basis for dismissing the Petition.

The Board determined that the objects of Gibbs fall within its construction of “container” as meaning “a logically defined data enclosure which encapsulates any element or digital segment,” but did not determine that Gibbs disclosed a “container” as claimed. To supports its argument that the objects of Gibbs have the necessary registers of the claimed “container,” Petitioner argued that an anticipatory reference must be analyzed from the perspective of one of ordinary skill and that it is proper to take into account not only specific teachings of the references, but also what inferences one of ordinary skill in the art reasonably would be expected to draw. However, the Board determined that the Houh Declaration and the Houh Supplemental Declaration are inconsistent, and thus the Board credited the testimony of Patent Owner’s expert. Accordingly, the Board agreed with “Patent Owner that ‘Gibbs does not disclose any single,’ logically defined container that ‘comprises the instantiation of the transport, map, and object libraries.’” The Board further determined that many of the other features were not disclosed in Gibbs, and accordingly, the Board found that Gibbs did not anticipate any of the claims.

Apple, Inc., Twitter, Inc, and Yelp Inc. v. Evolutionary Intelligence, LLC, IPR2014-00086; IPR2014-00812
Paper 42: Final Written Decision
Dated: April 16, 2015
Patent 7,010,536 B1
Before: Kalyan K. Deshpande, Brian J. McNamara, and Gregg I. Anderson
Written by: Anderson
Related Proceedings: Evolutionary Intelligence, LLC v. Apple, 6:12-cv-00783-LED (E.D. Tex.), which was transferred to N.D. Cal. as 3:13-cv-4201-WHA (N.D. Cal.)