Takeaway:  In order to prevail on showing that a petitioner’s inherency arguments regarding obviousness must fail, the patent owner must avoid premising its arguments on a limited view of the prior art.

In its Final Written Decision, the Board held that all of the challenged claims (1, 2, 7, 8, 10, 13, and 14) of the ’444 Patent are unpatentable. The ’444 Patent discloses an audiovisual recording and playback device that provides substantially simultaneous recording and playback, allowing user-controlled programming delay.

The Board determined that no claim term required an express construction for the purposes of its Decision.

The Board then reviewed the sole ground of unpatentability—whether the challenged claims are obvious over Ulmer and Goldwasser. Regarding claims 1 and 2, Patent Owner argued that Ulmer does not disclose an “interruption” as recited in the preamble, and Petitioner argued that the preamble is not limiting. The Board did not decide whether the preamble is limiting, and instead found that Goldwasser discloses the recited interruption.

Patent Owner also argued that the combination of Ulmer and Goldwasser does not teach the ’444 Patent’s “a keyboard having a record key and a playback key” or the recited “control circuit.” Specifically, Patent Owner argued that Petitioner’s inherency arguments must fail because Ulmer may be controlled via something other than a keypad, and that even if Ulmer does have a keypad, the keypad may only need a key to eliminate commercials. The Board found that these arguments are premised upon a very limited view of Ulmer’s device and rejected them. Regarding the “control circuit” recitation, the Board disagreed with Patent Owner’s expert and found that Petitioner provided sufficient evidence to show that Ulmer teaches the recited simultaneous recording and playback, therefore, Ulmer must have a circuit to control this functionality.

Patent Owner also argued in its response that there was no motivation to combine Ulmer and Goldwasser. At argument, however, Patent Owner withdrew this argument. In the end, the Board found that Petitioner provided sufficient evidence of a motivation to combine.

Finally, for the remaining dependent claims, the Board found that Patent Owner did not make any additional arguments as to the patentability of these claims, and that Petitioner had sufficiently shown that Ulmer and Goldwasser disclosed the additional limitations.

Unified Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252
Paper 64: Final Written Decision
Dated: February 5, 2016
Patent 5,930,444
Before: Gregg I. Anderson, Stacey G. White, J. John Lee
Written by: White
Related Proceedings: IPR2015-00499; two district court cases in Delaware