Blackberry Corporation and Blackberry Limitedv.Mobilemedia Ideas LLC

Patent Trial and Appeal Board

Feb 25, 2014

09391941 (P.T.A.B. Feb. 25, 2014)

Trials@uspto.gov Paper 32
571-272-7822 Entered: February 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
Petitioners

v.

MOBILEMEDIA IDEAS LLC
Patent Owner
____________

Case IPR2013-00016
Patent 6,441,828
____________

Before KEVIN F. TURNER, JONI Y. CHANG, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

CHANG, Administrative Patent Judge

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 The Board terminated Petitioners’ involvement without terminating the
proceeding under 35 U.S.C. § 317(a). Paper 31.
Case IPR2013-00016
Patent 6,441,828
2
INTRODUCTION
On October 12, 2012, BlackBerry Corporation and BlackBerry
Limited2 (collectively “BlackBerry”) filed a petition, requesting an inter
partes review of claims 6, 7, 15, 17, and 18 of U.S. Patent No. 6,441,828
(“the ’828 patent”). Paper 1 (“Pet.”). The patent owner, MobileMedia Ideas
LLC (“MobileMedia”), waived the patent owner preliminary response.
Paper 15. Upon review of the petition, the Board determined that the
information presented in the petition demonstrated that there was a
reasonable likelihood that BlackBerry would prevail with respect to at least
one challenged claim. Pursuant to 35 U.S.C. § 314, the Board issued a
Decision on Institution on March 18, 2013. Paper 16 (“Dec.”).
After institution, MobileMedia did not file a patent owner response
pertaining to the patentability of claims 6, 7, 15, 17, and 18. Rather,
MobileMedia filed a motion to amend claims, which included cancelling
claims 6, 7, 15, 17, and 18, and proposing substitute claims 19-23. Paper 21
(“Mot.”). During a conference call on October 16, 2013, MobileMedia
conceded that it had cancelled original challenged claims 6, 7, 15, 17, and 18
of the ’828 patent. Paper 28. Therefore, claims 6, 7, 15, 17, and 18 of the
’828 patent are cancelled.
As to proposed substitute claims 19-23, BlackBerry filed an
opposition to MobileMedia’s motion to amend claims, and MobileMedia

2 Real parties-in-interest Research In Motion Corporation and Research In
Motion Limited have changed their names to “BlackBerry Corporation” and
“BlackBerry Limited,” respectively (collectively, “BlackBerry”). Paper 22.
Case IPR2013-00016
Patent 6,441,828
3
filed a reply to BlackBerry’s opposition. Paper 23 (“Opp.”); Paper 24 (“PO
Reply”). No oral hearing was held. Paper 28. After the parties filed all of
their substantive papers, the parties filed a joint motion to terminate the
instant proceeding. Papers 28, 30; Ex. 2013. In light of the advanced stage
of the instant proceeding, the Board granted-in-part the motion to terminate.
Paper 31. Consequently, the proceeding has been terminated with respect to
Blackberry, but it is not terminated with respect to MobileMedia. Id.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is entered pursuant to 35 U.S.C. § 318(a).
Claims 6, 7, 15, 17, and 18 of the ’828 patent are cancelled.
MobileMedia’s motion to amend is denied.
A. Related Proceedings
Blackberry identifies the following related proceedings: MobileMedia
Ideas LLC v. Apple, Inc., 10-cv-00258 (D. Del.); MobileMedia Ideas LLC v.
Research In Motion Ltd., 11-cv-02353 (N.D. Tex); and Sandisk Corp. v.
MobileMedia Ideas LLC, 11-cv-00597 (N.D. Cal.). Pet. 1.
B. The ’828 Patent
The ’828 patent relates to an apparatus (e.g., an electronic picture
frame) for displaying a digital image in a normal direction regardless of
whether the apparatus is placed with the shorter or longer side down.
Ex. 1001, 1:6-8, 1:65-67.
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Case IPR2013-00016
Patent 6,441,828
5
memory card 12 via memory card controller 40 and stores them into a built-
in dynamic random-access memory (DRAM). Id. at 5:51-59. The
compressed image data are decompressed in image processing block 43, and
then the decompressed image data are stored back into the DRAM. Id. The
image data in the DRAM are processed by image processing block 43 for
display on the display panel 4. Id.
DISCUSSION
An inter partes review is more adjudicatory than examinational in
nature. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
2013). A motion to amend claims in an inter partes review is not, itself, an
amendment. As the moving party, MobileMedia bears the burden of proof
to establish that it is entitled to the relief requested. 37 C.F.R. § 42.20(c).
In sum, MobileMedia’s proposed substitute claims are not entered
automatically, but only upon MobileMedia having demonstrated the
patentability of the substitute claims.
In support of its motion, MobileMedia proffers a declaration of
Dr. Vijay K. Madisetti. Ex. 2001. We have reviewed MobileMedia’s
motion and supporting evidence. For the reasons stated below,
MobileMedia’s motion to amend claims is denied. The substitute claims
will not be incorporated into the ’828 patent.
In its motion to amend claims, MobileMedia proposes substitute
claims 19-23. Mot. 3. Substitute claim 19 is an independent claim, and
substitute claims 20-23 depend from substitute claim 19. Mot. 4-7.
Case IPR2013-00016
Patent 6,441,828
6
Substitute claim 19 is reproduced below with markings to show the
changes made relative to claim 6:
19. (new claim, proposed substitute for claim 6) An image
displaying apparatus for displaying image data read from a
recording medium, comprising:
image signal generating means for generating an image
signal for display based on image information read from the
recording medium;
image displaying means for displaying the image signal
produced by the image signal generating means; and
means for determining a direction in which an image of
the image signal is to be displayed on the image displaying
means according to a posture in which the apparatus is placed
and information on a direction in which an image of the image
signal is to be displayed read from the recording medium,
said means for determining a direction comprising (a) a
position sensor having a moving element that is movable in all
directions to automatically detect which position the image
display apparatus is placed, (b) an image processing block
which displays said image signal in a correct direction
regardless of the posture of the apparatus in response to a signal
from said position sensor, and (c) a microcomputer,
the apparatus further comprising a recognition sensor that
provides a detection signal to said microcomputer based on
which a displaying status of the image displaying means is
changed.
A. Claim Construction
Claim construction is an important step in a patentability
determination. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339
(Fed. Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933
(Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under
§ 103 are two-step inquiries. The first step in both analyses is a proper
Case IPR2013-00016
Patent 6,441,828
7
construction of the claims. . . . The second step in the analyses requires a
comparison of the properly construed claim to the prior art.” (Internal
citations omitted.)).
To construe means-plus-function language in a claim, one “must look
to the specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” In re Donaldson, 16
F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). That is, a means-plus-function
limitation shall be construed to cover the corresponding structure described
in the specification and equivalents thereof. See 35 U.S.C. § 112, ¶ 6.3
For the purposes of the Decision on Institution, we construed seven
means-plus-function limitations that invoke 35 U.S.C. § 112, ¶ 6, by
identifying the recited functions and the corresponding structures disclosed
in the specification for performing the recited functions. Dec. 7-16. For
example, we construed the following three limitations recited in claim 6,
which also are recited in substitute claim 19.
1. “Image signal generating means for generating an
image signal for display”
We first identified the recited function for this limitation to be
“generating an image signal for display.” Dec. 8. The specification
of the ’828 patent contains the following description related to the

3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
§ 112(f). Because the ’828 patent has a filing date before September 16,
2012 (effective date), we will refer to the pre-AIA version of § 112.
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Case IPR2013-00016
Patent 6,441,828
10
3. “Means for determining a direction in which an image of the image
signal is to be displayed on the image displaying means according to
a posture in which the apparatus is placed and information on a
direction in which an image of the image signal is to be displayed
read from the recording medium”
We determined that the recited function for this limitation is
“determining a direction in which an image of the image signal is to be
displayed on the image displaying means according to a posture in which the
apparatus is placed and information on a direction in which an image of the
image signal is to be displayed read from the recording medium.” Dec. 11.
The specification of the ’828 patent provides the following description
for determining a display direction:
[A] position detection switch 41 is provided to detect whether
the image display apparatus 1 is placed with the longer or
shorter side down, and send a detection signal to the control
microcomputer 42 which will read the displaying-direction
information from the memory card 12 via the memory card
controller 40. Thus the image can be displayed in the same
normal direction. The position detection switch 41 may be
either a type of which a moving element is moved in two
directions or a type of which a pendulum type element is moved
in all directions.
Ex. 1001, 6:26-35 (emphasis added).
There is also provided a position detection switch 66 to
determine a direction in which an image is to be displayed the
display panel 52 according to the posture of the enclosure 51 of
the image display apparatus 50. In particular, the position
detection switch 66 is a direction select switch to allow the user
to selectively set a direction in which an image is to be
displayed, an automatic position detector provided with a
gravity sensor or the like to automatically detect in which
Case IPR2013-00016
Patent 6,441,828
11
position the image display apparatus 50 is placed and set a
position in which an image is to be displayed, or the like. Note
that to save the user's labor to select such a displaying direction,
the automatic position detector should desirably be adopted in
the position detection switch 66. A position detection signal
from the position detection switch 66 is sent to the image
processing block 65.
Therefore, the image processing block 65 determines a
direction in which an image is to be displayed on the display
panel 52 according to the position detection signal, and allows
to display the image on the display panel 52 in the determined
direction.
Id. at 9:27-46 (emphasis added). For the purposes of the Decision on
Institution, we considered the corresponding structures for performing
the recited function to be the control microcomputer, the position
detection switch, and the image processing block. Dec. 12.
However, because in a means-plus-function limitation, the
corresponding structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm,
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999), and because we could not identify an algorithm associated with the
microcomputer and the image processing block in the specification that
performs the recited functions, we provided MobileMedia the opportunity to
inform the Board as to its claim constructions of the means-plus-function
limitations including the specific algorithm that performs the recited
functions. Dec. 8.
Case IPR2013-00016
Patent 6,441,828
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4. MobileMedia’s Claim Construction
In its motion to amend claims, MobileMedia states that the “image
signal generating means,” as recited in substitute claim 19, should construed
as a means-plus-function limitation invoking 35 U.S.C. § 112, ¶ 6, as the
Board construed it with respect to claim 6 in the Decision on Institution.
Mot. 8 (citing Dec. 8-10). MobileMedia further indicates that the
corresponding structure for the recited function (“generating an image signal
for display”) is “the control microcomputer 42 and image processing blocks
43 and 65.” Id. (citing Ex. 1001, 5:51-59, 9:17-22; figs. 6, 15). However,
MobileMedia fails to identify the specific algorithm associated with the
microcomputer or image processing blocks for performing the functions
recited in substitute claim 19, or explain why an algorithm is not necessary
for performing the recited functions. See Aristocrat Technologies Australia
Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (ruling
that the claims were indefinite because of lack of disclosure of any specific
algorithm used by the disclosed computer to perform the function recited in
a means-plus-function element.).
In its motion to amend claims, MobileMedia also takes the position
that the following limitation set forth in substitute claim 19 does not invoke
35 U.S.C. § 112, ¶ 6:
means for determining a direction in which an image of
the image signal is to be displayed on the image displaying
means according to a posture in which the apparatus is placed
and information on a direction in which an image of the image
signal is to be displayed read from the recording medium,
said means for determining a direction comprising (a) a
Case IPR2013-00016
Patent 6,441,828
13
position sensor having a moving element that is movable in all
directions to automatically detect which position the image
display apparatus is placed, (b) an image processing block
which displays said image signal in a correct direction
regardless of the posture of the apparatus in response to a signal
from said position sensor, and (c) a microcomputer.
Mot. 5, 9-10 (citing to Ex. 2001 ¶¶ 55-57) (emphases added).
It is well settled that a limitation that uses the term “means for”
creates a rebuttable presumption that the drafter intended to invoke § 112,
¶ 6. Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703-04
(Fed. Cir. 1998). “This presumption can be rebutted where the claim, in
addition to the functional language, recites structure sufficient to perform the
claimed function in its entirety.” Altiris, Inc. v. Symantec Corp., 318 F.3d
1363, 1375-76 (Fed. Cir. 2003). Therefore, in order to take the “means for
determining a direction” limitation outside the bounds of § 112, ¶ 6, the
claim must recite sufficient structure for performing the recited function.
See Personalized Media, 161 F.3d at 704 (“In deciding whether [the]
presumption has been rebutted, the focus remains on whether the claim as
properly construed recites sufficiently definite structure to avoid the ambit of
§ 112, ¶ 6.”).
MobileMedia, however, does not explain adequately why the features
added in substitute claim 19 would provide sufficient structures for
performing the recited function—“determining a direction in which an
image of the image signal is to be displayed on the image displaying means
according to a posture in which the apparatus is placed and information on a
direction in which an image of the image signal is to be displayed read from
Case IPR2013-00016
Patent 6,441,828
14
the recording medium.” Mot. 7-10.
Dr. Madisetti attempts to substantiate MobileMedia’s position by
referring to the Board’s claim construction set forth in the Decision on
Institution (Ex. 2001 ¶¶ 56-57), which stated:
For the purposes of this decision [on institution], we therefore
consider the corresponding structure for this limitation to be the
control microcomputer, the position detection switch, and the
image processing block.
Dec. 12 (citing Ex. 1001, 6:26-35; 9:27-46). However, merely referencing
that claim construction without further explanation as to how the features
added in substitute claim 19 provide sufficient structures to perform the
recited function is insufficient to establish that the limitation is not a means-
plus-function limitation under § 112, ¶ 6. Notably, Dr. Madisetti does not
articulate adequately how the features added in substitute claim 19—
“a position sensor,” “an image processing block,” and “a microcomputer”—
should be construed. Stating that the limitation should be construed
“according to its plain, ordinary meaning in light of the specification”
(Mot. 9) is not sufficient for a proper construction of claim limitations under
§ 112, ¶ 6. For example, Dr. Madisetti’s testimony does not indicate
whether the claim term “position sensor” should be construed as the
“position detection switch” disclosed in the specification. In fact, the claim
term “position sensor” is not recited in the specification. And we note that
different claim terms are presumed to have different meanings. See CAE
Screen plates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
1317 (Fed. Cir. 2000). More importantly, MobileMedia’s motion and expert
Case IPR2013-00016
Patent 6,441,828
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testimony fail to identify the specific algorithm associated with the
microcomputer for performing the functions recited in the substitute claims,
or explain why an algorithm is not necessary for performing the recited
functions. See Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385
(Fed. Cir. 2009); Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008).
For the foregoing reasons, MobileMedia fails to set forth a reasonable
claim construction for each claim feature added in the substitute claims.
Without reasonable claim constructions of the claim features,
MobileMedia’s motion to amend claims fails to demonstrate the
patentability of its substitute claims.
B. Amendment Must be Responsive to a Ground of Unpatentability
Pursuant to 35 U.S.C. § 316(a)(9), and taking into account the
statutory considerations under 35 U.S.C. § 316(b)—“the effect of any such
regulation on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to timely complete
proceedings instituted”—the Office promulgated 37 C.F.R. § 42.121 to set
forth the standards and procedures for allowing a patent owner, in an inter
partes review, to move to amend the patent “to cancel a challenged claim or
propose a reasonable number of substitute claims.” As set forth in 37 C.F.R.
§ 42.121(a)(2), a motion to amend may be denied where the amendment
does not respond to a ground of unpatentability involved in the trial.
Here, MobileMedia eliminates all of the features of original
challenged claims 7, 15, 17, and 18. Mot. 6-7. MobileMedia does not
Case IPR2013-00016
Patent 6,441,828
16
explain adequately why the removal of all those features is responsive to a
ground of unpatentability. For example, substitute claim 20 (the proposed
substitute for claim 7) eliminates the only element in claim 7—“means
whereby the recording medium is set into the apparatus from outside.”
Substitute 20 is reproduced below with markings showing the changes made
relative to claim 7:
20. (new claim, proposed substitute for claim 7) The apparatus
as set forth in claim 619 further comprising means whereby the
recording medium is set into the apparatus from outside,
wherein said recognition sensor (a) emits light and (b) detects
the light returned from a human body or object.
Mot. 6.
MobileMedia asserts that the feature recited in substitute claim 20 is
“written in non-means plus function format.” Mot. 11. However, we
indicated, in the Decision on Institution, that the corresponding structure for
the means-plus-function limitation recited in claim 7 is “the socket 53”
shown in Figure 13 of the ’828 patent. Dec. 14. MobileMedia does not
dispute that claim construction, nor indicate that the feature added in
substitute claim 20, a recognition sensor, is the corresponding structure for
performing the function recited in claim 7. Therefore, contrary to its
assertion, MobileMedia did not rewrite claim 7 simply in a non-means plus
function format. In fact, the feature recited in substitute claim 20 has little to
do with the corresponding structure for performing the function recited in
claim 7.
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As another example, substitute claim 21 (the proposed substitute for
claim 15) eliminates all of the elements recited in claim 15—“means for
detecting an amount of light around the apparatus; and means for adjusting
an operation of the image displaying means based on a decision signal from
the light detecting means.” Substitute claim 21 is reproduced below with
markings to show the changes made relative to claim 15:
21. (new claim, proposed substitute for claim 15) The apparatus
as set forth in claim 620further comprising:
means for detecting an amount of light around the
apparatus; and
means for adjusting an operation of the image displaying
means based on a decision signal from the light detecting
means, wherein the displaying status remains changed for at
least an expiration time unless the microcomputer receives said
detection signal again.
Mot. 6.
Again, MobileMedia asserts that the feature recited in substitute
claim 21 is “written in non-means plus function format.” Mot. 11.
However, we indicated, in the Decision on Institution, that the corresponding
structures for the means-plus-function limitations recited in claim 15 are
“the light sensor 55” and “the display brightness controller 69” shown in
Figure 15 of the ’828 patent. Dec. 14. MobileMedia does not dispute that
claim construction. Contrary to its assertion, MobileMedia did not rewrite
claim 15 merely in a non-means plus function format. In fact, the feature
recited in substitute claim 21 has little to do with the corresponding
structures for performing the functions recited in claim 15.
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Patent 6,441,828
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MobileMedia further asserts that each substitute dependent claim
“more specifically” defines the invention of the previous claim to which it
refers, without any explanation. See, e.g., Mot. 11. At best, that assertion is
merely an explanation as to why the features are added in the substitute
claims. Without a reasonable explanation as to why the features recited in
the original patent claims are eliminated, MobileMedia has not demonstrated
that such amendments are responsive to a ground of unpatentability involved
in the trial. Therefore, MobileMedia’s motion to amend claims does not
comply with 37 C.F.R. § 42.121(a)(2).
C. Reasonable Number of Substitute Claims
In a motion to amend, a patent owner may, “[f]or each challenged
claim, propose a reasonable number of substitute claims.” 35 U.S.C.
§ 316(d)(1)(B). The presumption is that only one substitute claim would be
needed to replace each challenged claim, although the presumption may be
rebutted by a demonstration of need. 37 C.F.R. § 42.121(a)(3). A desire to
obtain a new set of claims having a hierarchy of different scope typically
would not constitute a sufficient special circumstance. Absent special
circumstances, a challenged claim can be replaced by only one claim. Each
proposed claim should be traceable to an original challenged claim as a
proposed substitute claim for that challenged claim.
In its motion to amend claims, MobileMedia asserts that claim 19 is
the proposed substitute for claim 6; claim 20 is the proposed substitute for
claim 7; claim 21 is the proposed substitute for claim 15; claim 22 is the
proposed substitute for claim 17; and claim 23 is the proposed substitute for
Case IPR2013-00016
Patent 6,441,828
19
claim 18. Mot. 4-7. However, that assertion is not adequate to establish that
proposed claims 20-23 are substitute claims for challenged claims 7, 15, 17,
and 18. As discussed above, all of the features recited in these challenged
claims are being eliminated. For instance, substitute claim 21 purportedly
replaces claim 15, but it eliminates all of the features recited in claim 15.
Mot. 6. MobileMedia does not explain sufficiently how the feature added in
substitute claim 21 would be pertinent to the removed features. Mot. 11-12.
Although MobileMedia states that substitute claim 21 defines the invention
of substitute claim 20 “more specifically” (id. at 11), MobileMedia does not
explain why it is necessary to eliminate all of the limitations recited in
claim 15. In sum, substitute claim 21 is not traceable to claim 15. Each of
the other substitute dependent claims, likewise, is not traceable to the
challenged claim it allegedly replaces. Therefore, substitute claims 20-23
are not proper substitute claims for challenged claims 7, 15, 17, and 18.
Moreover, contrary to MobileMedia’s assertion that its motion
presents a reasonable number of substitute claims (Mot. 1), we observe that
proposed claims 20-23 each are instead substitute claims for challenged
claim 6. Claim 6 is the only challenged claim for which each proposed
claim includes all of the features. Consequently, claims 20-23, as well as
claim 19, are substitute claims for challenged claim 6. However,
MobileMedia does not provide any explanation as to why it needs five
substitute claims for one challenged claim. Thus, MobileMedia fails to rebut
the presumption that only one substitute claim would be needed to replace
each challenged claim.
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For the foregoing reasons, MobileMedia has proposed more than a
reasonable number of substitute claims in violation of 37 C.F.R.
§ 42.121(a)(3).
D. Patentability Over Prior Art
An inter partes review is neither a patent examination proceeding nor
a patent reexamination proceeding. The proposed substitute claims, in a
motion to amend, are not entered automatically and then subjected to
examination. Rather, the substitute claims will be added directly to the
patent, without examination, if the patent owner’s motion to amend claims is
granted. The patent owner is not rebutting a rejection in an Office Action, as
though this proceeding is a patent examination or a patent reexamination.
Instead, the patent owner bears the burden of proof in demonstrating
patentability of the proposed substitute claims over the prior art in general,
and thus entitlement to add these proposed substitute claims to its patent.
There is no presumption of validity as to the challenged claims or
substitute claims in an inter partes review. In fact, upon consideration of the
information presented in the petition, we determined that there is a
reasonable likelihood that claims 6, 7, 15, 17, and 18 are unpatentable under
35 U.S.C. §§ 102 and 103. Dec. 17-26. MobileMedia did not file a patent
owner preliminary response or a patent owner response, arguing the
patentability of claims 6, 7, 15, 17, and 18, but instead it has cancelled those
claims. Therefore, there is no inference of patentability of substitute
claims 19-23 by virtue of that they purportedly are replacing claims 6, 7, 15,
17, and 18.
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In its motion to amend claims, MobileMedia only presents the
following statements concerning the patentability of the substitute claims:
As explained in greater detail in the Madisetti Declaration, new
claims 19-23 are patentably distinct from the Petition Prior Art
(Ex. 2001 at ¶¶ 68 - 132.) The proposed new claims recite an
apparatus with the automatic display features described above
that incorporate additional combinations of features that would
not have been obvious to a person of ordinary skill at the time
of the invention based on the Petition Prior Art. (Id.)
Mot. 14.
At the outset, MobileMedia’s arguments attempt to incorporate by
reference Dr. Madisetti’s testimony (Ex. 2001 ¶¶ 68-132), but incorporation
of arguments from one document into another is prohibited by 37 C.F.R.
§ 42.6(a)(3). MobileMedia’s attempt to incorporate Dr. Madisetti’s
testimony also violates the page limit set forth in 37 C.F.R. § 42.24(a)(1)(v).
Cf. Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005 WL 3077915,
*1 (D. N.J. 2005) (Defendants provided cursory statements in its motion and
sought to make its case through incorporation of an expert declaration and a
claim chart. Incorporation by reference of argument not in motion was held
to be a violation of local rules governing page limitations and was not
permitted by the court).
In any event, MobileMedia’s arguments and Dr. Madisetti’s testimony
are insufficient to demonstrate the patentability of substitute claims 19-23.
MobileMedia merely provides the aforementioned conclusory statements
without any explanation or other arguments, and essentially relies upon
Dr. Madisetti’s declaration. However, Dr. Madisetti’s testimony is limited
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22
to the prior art cited in the petition. Ex. 2001 ¶¶ 68-132. Dr. Madisetti does
not identify the closest prior art known to him with respect to the substitute
claims. Nor does he indicate that the prior art cited in the petition is the
closest prior art known to him with respect to the substitute claims. Without
indicating that his patentability analysis is based on the closest prior art
known to him, Dr. Madisetti’s testimony provides insufficient information to
establish that his patentability analysis as to the substitute claims is complete
or reliable. Therefore, Dr. Madisetti’s conclusion that “the proposed new
claims are novel” is entitled little weight. See Rohm and Haas Co. v.
Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the rules
or in our jurisprudence requires the fact finder to credit the unsupported
assertions of an expert witness.”).
Further, Dr. Madisetti’s testimony also is limited to anticipation
issues, and fails to demonstrate sufficiently that the substitute claims are
nonobvious. See, e.g., Minkin v. Gibbons, 680 F.3d 1341, 1349-1351 (Fed.
Cir. 2012) (A movant who was required to demonstrate patentability must
prove, by a preponderance of the evidence, that the claims would have been
novel and nonobvious.). It is well settled that “anticipation and obviousness
are separate conditions of patentability, requiring different tests and different
elements of proof.” Id. at 1351; see also KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 406-07 (2007). Although Dr. Madisetti concludes that the
substitute claims would not have been obvious to one of ordinary skill in the
art (Ex. 2001 ¶ 132), Dr. Madisetti’s analysis merely discusses how each
cited prior art reference individually does not disclose the features added in
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the substitute claim. Ex. 2001 ¶¶ 68-132. Such a patentability analysis is
insufficient to demonstrate nonobviousness, because an analysis of whether
the subject matter of a claim would have been obvious “need not seek out
precise teachings direct to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” See KSR, 550 U.S. at 418.
Additionally, Dr. Madisetti does not proffer any evidence as to the
level of ordinary skill in the art at the time of the invention, which is a
necessary factual inquiry for determining obviousness. See Graham v. John
Deere Co., 383 U.S. 1, 17-18. In fact, Dr. Madisetti’s testimony does not
address the level of ordinary skill in the art at the time of the invention and
what was known previously regarding a recognition sensor that provides a
detection signal or other claim features added in the substitute claims. At
least some explanations should have been provided as to why a person with
ordinary skill in the art, applying his own knowledge and creativity, would
not have found the substitute claims obvious.
In sum, limiting the discussion to the references cited in the petition is
insufficient to demonstrate patentability of the substitute claims over the
prior art in general. Without having discussed the level of ordinary skill in
the art, and what was known previously regarding the features added in the
substitute claims, MobileMedia’s motion fails to demonstrate the
patentability of the substitute claims.
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CONCLUSION
For the foregoing reasons, MobileMedia has not, in its motion, set
forth a prima facie case for the relief requested or satisfied its burden of
proof. Consequently, consideration of Blackberry’s opposition and
MobileMedia’s reply is unnecessary.
MobileMedia has not met its burden to show that its proposed
substitute claims are patentable.
ORDER
In consideration of the foregoing, it is
ORDERED that claims 6, 7, 15, 17, and 18 of the ’828 patent are
cancelled; and
FURTHER ORDERED that MobileMedia’s motion to amend claims
is denied.

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25
PETITIONER:
Robert C. Mattson
Oblon Spivak
cpdocketmattson@oblon.com

PATENT OWNER:
Anthony C. Coles
PROSKAUER ROSE LLP
acoles@proskauer.com