Takeaway: If a patent expires after the decision to institute but before the final written decision, the Board may re-evaluate its earlier constructions based upon the different claim construction standard employed for expired patents.

In its Final Written Decision, the Board found that all of the challenged claims (claims 1-20) of the ’320 Patent are unpatentable. The ’320 Patent relates to a method of generating a visual design for an application, for example, in the field of advertising, packaging, or creating corporate images.

The Board began with claim construction. In the Decision on Institution, the Board construed various terms using the broadest reasonable interpretation standard. Since Institution, the ’320 Patent has expired, therefore, the Board reconsidered its constructions under the Phillips standard. The Board found that only one of the constructions needs to be modified – “storing data defining . . . .” The Board agreed with Patent Owner that under the Phillips standard, “storing data defining . . .” requires storage in a database, but disagreed with Patent Owner to the extent it requires different databases for different forms of data. Therefore, the Board construed “storing data defining . . .” as “recording, in a database, information defining . . . .” The Board also construed “entering data corresponding to a permitted range of variables in the selected design application.” The Board agreed with Patent Owner that the limitation should be construed as “entering a value within a predetermined range of values associated with the selected design application.”

The Board then turned to Petitioner’s Motion to Exclude the declaration testimony of Patent Owner’s expert based on the fact that Patent Owner has not qualified its declarant as an expert and that the declaration is conclusory in nature because it fails to state what materials were considered and what methodology was used. The Board found that although the declarant did not provide a CV, the summary description of his qualifications qualifies him as an expert. The Board also noted that the declaration is limited in scope and does not include an opinion of whether the claim elements are taught or suggested by the prior art. Therefore, the Board declined to exclude the declaration.

The Board then discussed the first ground of unpatentability – anticipation of claims 1, 2, 4-8, 10-15, and 17-20 by Sieber and Sieber PCT. Patent Owner argued that neither reference discloses “selecting one of a plurality of predetermined visual design applications” because they are limited to a single implementation. The Board found that multiple implementations are not necessary. Patent Owner also argued that neither reference discloses the “entering data” limitation, but the Board was not persuaded by this argument. The Board was also unpersuaded by Patent Owner’s arguments that neither reference discloses “text elements include predetermined words, phrases, and blocks of text,” “visual design elements include . . . working in predetermined fonts,” or “each of the plurality of predetermined visual design applications has its own predetermined design parameters, which are related to the predetermined design parameters of one or more of the other visual design applications.” The Board next reviewed the second ground of unpatentability – anticipation of claims 1, 2, 4-8, 10-15, and 17-20 by Amari. Just as with the first ground, the Board was not persuaded by Patent Owner’s arguments that certain limitations are not disclosed by Amari.

The Board then turned to claim 9, which Petitioner contended is unpatentable as obvious over Sieber and Amari, and Sieber PCT and Amari. The Board noted that Patent Owner did not make any arguments unique to claim 9, and found that claim 9 is obvious over Sieber and Amari, and over Sieber PCT and Amari.

Finally, the Board addressed claims 3, 5, 16, and 18, which Petitioner argued are obvious over Sieber and Feiner, and over Sieber PCT and Feiner. Again, Patent Owner did not make any arguments unique to these claims, but instead relies on its arguments that neither Sieber nor Sieber PCT anticipates claims 2, 4, 15, or 17. Therefore, the Board found these claims unpatentable.

Yahoo! Inc. v. CreateAds LLC, IPR2014-00200
Paper 42: Final Written Decision
Dated: April 29, 2015
Patent 5,535,320
Before: Meredith C. Petravick, Jennifer S. Bisk, and Patrick M. Boucher
Written by: Boucher
Related Proceedings: CreateAds LLC v. Google Inc., No. 12-1606-GMS (D. Del.); CreateAds LLC v. Yahoo! Inc., No. 12-1613-GMS (D. Del.)