Takeaway: If circumstances dictate, the Board may construe the steps in a method claim to require a specific arrangement with respect to order in which the steps are performed.

In its Final Written Decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claim 14 of the ’494 patent is unpatentable. The Board determined that Petitioner had not shown that claims 1, 5, 15, and 16 of the ’494 patent are unpatentable, however.  The Board also granted Patent Owner’s Motion to Amend canceling claims 8, 10, 11, 35, and 40 of the ’494 patent, and denied Patent Owner’s Motion to Exclude the Reply Declaration of Dr. Edward A. Fox (Exhibit 1028).

Petitioner (Facebook, LinkedIn, and Twitter, collectively) had petitioned for inter partesreview of claims 1, 5, 8, 10, 11, 14-16, 35, and 40 of the ’494 patent.  The Board then instituted trial on each of these challenged claims based on “certain of the grounds of unpatentability alleged in the Petition.”  After that, Patent Owner filed a Motion to Amend to cancel claims 8, 10, 11, 35, and 40, which the Board granted in this Final Written Decision.

The Board held a consolidated oral hearing for IPR2013-00478, IPR2013-00479, IPR2013-00480, and IPR2013-00481 on October 30, 2014. Each of these IPRs involved the same Petitioner and the same Patent Owner as in the present case.  Correspondingly, a Final Written Decision in IPR2013-00481 was issued by the Board on the same day (January 29, 2015) as the date of issuance of the Final Written Decision in the present case.  In the Final Written Decision for IPR2013-00481, the Board found claims 12 and 22 of U.S. Patent No. 6,233,571 (the ’517 patent) to be unpatentable, but determined that claim 21 of the ’571 patent was not shown to be unpatentable.

The ’494 Patent discloses “computerized research on databases” that “[improve] search methods by indexing data using proximity indexing techniques.” The ’494 patent indicates that “proximity indexing techniques generate a quick-reference of the relations, patterns, and similarities found among the data in the database.”  The asserted grounds of unpatentability addressed by the Final Written Decision were anticipation of claims 14-16 by the Fox Thesis, and anticipation of claims 1 and 5 by Fox SMART, under 35 U.S.C. § 102.

Because the ’494 patent had expired, the Board used the so-called Phillips standard to interpret the claims rather than the broadest reasonable interpretation. Upon doing so, the Board agreed with Patent Owner that each of claims 1 and 15 recite “a specific arrangement with respect to the two steps of generating candidate cluster links and deriving actual cluster links from the candidate cluster links, as recited in claim 1, and as commensurately recited in claim 15.”  Thus, according to the Board’s interpretation, “actual cluster links are derived from candidate cluster links after the candidate cluster links have been generated, as recited in claim 1, or stored, as recited in claim 15.”  The Board also concluded that “cluster links” should be interpreted to mean “relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes.”

As for Petitioner’s assertion that claims 1 and 5 of the ’494 patent are unpatentable as anticipated by Fox SMART under 35 U.S.C. § 102, the Board referenced the Declaration of Patent Owner’s Declarant, Dr. Jacobs, and concluded that Petitioner had not sufficiently shown “that Fox SMART discloses either: (1) deriving actual cluster links for the candidate cluster links; or (2) displaying the identity of one or more nodes using the actual cluster links.” This led the Board to conclude that Petitioner had not shown by a preponderance of the evidence that either of claims 1 or 5 is anticipated by Fox SMART.

Regarding Petitioner’s contention that claims 14-16 of the ’494 patent are unpatentable as anticipated by the Fox Thesis under 35 U.S.C. § 102, the Board found that “Petitioner’s claim chart persuasively reads all elements of claim 14 onto the disclosure of Fox Thesis.”  Thus, the Board concluded that Petitioner had successfully shown that claim 14 is unpatentable as anticipated by the Fox Thesis.  The Board did not reach the same conclusion of unpatentability for challenged claims 15 and 16, however.  As compared to parent claim 14, claims 15 and 16 additionally required a further “step of deriving the actual cluster links wherein the actual cluster links are a subset of the candidate cluster links.”  Thus, Petitioner’s attempt to use the same subject matter of the Fox Thesis relied upon to show anticipation of claim 14 for the purpose of showing anticipation of claims 15 and 16 as well, fell short.

The Board denied Patent Owner’s Motion to Exclude the Reply Declaration of Dr. Edward A. Fox because “the evidence presented in the Reply Fox Declaration that is discussed in this Decision properly responds to arguments raised in the Patent Owner Response” and because the Board had not relied on evidence in the Reply Fox Declaration in its finding that claim 14 is unpatentable.

Facebook, Inc., LinkedIn Corp., and Twitter, Inc. v. Software Rights Archive, LLC, IPR2013-00480 
Paper 54: Final Written Decision 
Dated: January 29, 2015 
Patent: 5,832,494 
Before: Sally C. Medley, Christopher L. Crumbley, and Barbara A. Parvis 
Written by: Parvis
Related Proceedings: Software Rights Archive, LLC v. Facebook, Inc., No. 12-cv-3970 (N.D. Cal., filed July 27, 2012), Software Rights Archive, LLC v. LinkedIn Corp., No. 12-cv-3971 (N.D. Cal., filed July 27, 2012), Software Rights Archive, LLC v. Twitter, Inc., No. 12-cv-3972 (N.D. Cal., filed July 27, 2012); Software Rights Archives, Inc. v. Google, No. 08-cv-3172 (N.D. Cal.); IPR2013-00479; Reexamination Control No. 90/011,014; and IPR2013-00478; IPR2013-00481