Takeaway: Estoppel from advancing arguments that are inconsistent with the findings in a prior final written decision only applies once the claims have been cancelled pursuant to the prior final written decision, not merely once they have been found unpatentable. 

In its Final Written Decision, the Board found that all of the challenged claims (claims 25, 26, 52, 53, 55-61, and 75) of the ’682 Patent are unpatentable, and granted-in-part Patent Owner’s Motion to Exclude. The ’682 patent relates to audio systems for reproducing sound from computer files and computer network radio stations.

The Board began by discussing estoppel. In a prior IPR, the Board held that independent claims 1 and 28 are unpatentable as obvious based upon the same prior art that was asserted in this proceeding. The Board further noted that claims 25 and 26 depend from claim 1, claims 52 and 53 depend from claim 28, and independent claim 55 is similar to claims 1 and 28. Patent Owner made many of the same arguments regarding the patentability of the challenged claims and admissibility of evidence in this proceeding that it made in the prior proceeding. At the hearing, Petitioner argued that Patent Owner is estopped under Rule 42.73(d)(3) from arguing in this proceeding any patentability or admissibility issue that was decided in Petitioner’s favor in the prior IPR. Patent Owner objected to the application of estoppel and, in the alternative, requested the opportunity to brief the issue, which was granted. In its briefing, Petitioner argued that the prior final written decision is an “adverse judgment” under Rule 42.73(d)(3), and Patent Owner’s advancement of arguments rejected in the prior final written decision is “taking action inconsistent with” said adverse judgment. However, the Board agreed with Patent Owner that Rule 42.73(d)(3) does not apply here, at least because Patent Owner’s appeal right in the prior IPR has not been exhausted and, therefore, the claims had not yet been cancelled.

The Board then discussed Patent Owner’s Motion to Exclude. Patent Owner contended that page seven of Exhibit 1011 (Altec Lansing Manual) should be excluded.  Without further explanation, the Board adopted its ruling from the prior proceeding excluding page seven. Patent Owner also requested exclusion of certain paragraphs of a declaration, but the Board denied this request for the same reason as stated in the prior proceeding. Finally, Patent Owner requested exclusion of Irman Web Pages. In the prior proceeding, Patent Owner objected to the date stamp of the web pages. In response, the Board introduced an unsigned copy of the standard affidavit from the archive site. In this proceeding, Patent Owner argued that the affidavit is not enough because it only states that the stamp is a true and correct copy of the site’s records, and does not establish the date on which the document was available on the internet. The Board found that the explanation of the archive site’s record keeping was sufficient to show that the Irman Web Pages were archived prior to the filing date of the ’682 Patent and that the facts indicate reliability of the Irman Web Pages. Therefore, the Board held that the Irman Web Pages were properly authenticated and not inadmissible hearsay.

Next, the Board examined claim construction, noting that claims are construed using the broadest reasonable construction standard in light of the specification. The parties did not dispute all but one of the constructions presented by the Board in the Decision to Institute, so the Board adopted those constructions here. Patent Owner disputed the construction of “configured to respond to signals received from the computer.” The Board originally construed the term to mean “configured to take an action as a result of signals received from a computer,” but Patent Owner proposed that it be construed as “configured to answer or reply to the computer, i.e., send a responsive communication back to the computer.” The Board disagreed, and adopted its initial construction. Patent Owner also contended that “audio signal processing circuitry” does not include circuitry that merely performs amplification; however, the Board stated that Patent Owner had presented nearly identical arguments in the prior IPR that were rejected and rejected them in this proceeding as well.

The Board then turned to the ground of unpatentability – that the challenged claims would have been obvious over WinAmp, Irman Web Pages, and Altec Lansing Manual. Regarding claims 25, 26, 52, and 53 (which depend from claims 1 and 28), Patent Owner once again attacked Petitioner’s alleged failure to prove unpatentability of claims 1 and 28 using the same arguments advanced in the prior proceeding, but the Board adopted its explanation from the prior proceeding that the limitations in claims 1 and 28 are taught in one or more of the asserted prior art. Further, the Board found Patent Owner’s arguments regarding the additional limitations in the dependent claims unpersuasive. As to claim 55, the Board agreed with Petitioner that the elements that overlap with claim 1 are taught in one or more of the asserted prior art, and the Board found Patent Owner’s arguments regarding the dependent claims unpersuasive.

SDI Technologies, Inc. v. Bose Corporation, IPR2014-00343
Paper 32: Final Written Decision
Dated: June 11, 2015
Patent 8,401,682 B2
Before: Karl D. Easthom, Michael J. Fitzpatrick, and David C. McKone
Written by: McKone
Related Proceedings: IPR2013-00350; IPR2013-00465; IPR2014-00346; Bose Corp. v. SDI Technologies, Inc., NO. 13-cv-10277-WGY (D. Mass.)