Takeaway: An inventor’s statements during prosecution concerning an unrelated claim term do not justify departure from the plain meaning of a claim term.

In its Decision, the Board denied the petition to institute inter partes review of claims 1-7 and 9-20 of the ’482 patent. The ’482 patent generally is direct to computer software that “automatically finds, saves, and displays links to documents toically related to [other] document[s] . . . without a user having to search.” Petitioner argued that claims 1-7 and 9-19 were obvious over Chen and that claim 20 was obvious over Chen and Lieberman.

Each of the independent claims of the patent includes a first step of “accessing” at least one document “without contemporaneous user selection” and a second step of deriving keywords. Petitioner argued that Chen’s disclosure of “keyword extraction from documents that the user selects by marking them as ‘I like it’” met the “accessing” step of the claims. The Board, however, noted that the algorithm is run (and the document accessed) when the user marks the document as “I like it,” whereas the claims require document access “without contemporaneous user selection.”

The Board first addressed the proper construction of the “accessing” step. Relying on a statement made by the inventor during prosecution, Petitioner proposed construing “accessing. . . without contemporaneous user selection” to mean that there is “no user input of search parameters” and “no user input of search locations.” The Board first looked to the specification, which did not provide meaningful guidance because the term was not included, and then determined that the plain meaning of “accessing [a document] without contemporaneous user selection” is accessing a document, but not at the same time or period that a user selects that document. The Board then noted that it was not apprised of any evidence in the record that a POSITA would understand the phrase differently. The Board then analyzed whether statements made during the prosecution altered the construction from the term’s plain meaning. The Board determined that the portions of the prosecution history cited by Petitioner related to what is “searching . . . without user input” and not “accessing . . . without contemporaneous user selection.” Accordingly, the Board did not adopt Petitioner’s proposed claim construction.

The Board next analyzed Petitioner’s proposed challenges. As discussed above, Petitioner read the “accessing [a document] without contemporaneous user selection,” limitation of each independent claim on Chen’s description of accessing the document when the user marks it as “I like it.” The Board determined that marking a document in this manner is “selecting” the document, which results in the algorithm running, and then concluded that the cited portions of Chen disclose accessing a document at the same time as the user selects the document rather than without contemporaneous user selection.

Accordingly, the Board determined that Petitioner did not demonstrate a reasonable likelihood of showing that the teachings of Chen and Lieberman render obvious the “accessing” step required by each independent claim and, therefore, did not demonstrate a reasonable likelihood of showing that the challenged claims were unpatentable over the cited references.

Iron Dome LLC v. Chinook Licensing DE LLC, IPR2014-00674
Paper 10: Decision – Denial of Institution of Inter Partes Review
Dated: October 10, 2014
Patent 7,047,482
Before: William V. Saindon, James P. Calve,and Trenton A. Ward
Written by: Saindon
Related Proceedings: Chinook v. Scribd, Inc., No. 13-cv-02078 (D. Del); Chinook v. StumbledUpon, Inc., No. 3:13-cv-02079 (D. Del); Chinook v. Hulu, Inc., 3:14-cv-00074 (D. Del); and Chinook v. Zoosk, Inc., No. 3:14-cv-00077 (D. Del).