Blackberry Corporation and Blackberry Limitedv.Mobilemedia Ideas, LLC

Patent Trial and Appeal Board

Mar 7, 2014

9300671 (P.T.A.B. Mar. 7, 2014)

Trials@uspto.gov Paper 65
571-272-7822 Entered: March 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY CORPORATION and BLACKBERRY LIMITED
1

Petitioner

v.

MOBILEMEDIA IDEAS, LLC
Patent Owner
____________

Case IPR2013-00036
Patent 6,871,048
____________

Before JAMESON LEE, KEVIN F. TURNER, and JONI Y. CHANG,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

ORDER
Termination of Proceeding
37 C.F.R. § 42.72

1
Petitioner originally identified as Research In Motion Corporation and
Research In Motion Limited changed their names to “BlackBerry
Corporation” and “BlackBerry Limited,” respectively. Paper 37.
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I. BACKGROUND
A. Introduction
Petitioner, BlackBerry Corporation and BlackBerry Limited
(“Blackberry”), filed a petition on October 30, 2012, for an inter partes
review of claims 1-12 of US Patent No. 6,871,048 (“the ‟048 patent”)
pursuant to 35 U.S.C. §§ 311-319. That petition was followed by a
corrected petition (Paper 7, “Pet.”), filed on November 6, 2012. On March
18, 2013, the Board instituted trial on claims 1-12 of the ‟048 patent based
on all grounds of unpatentability alleged in the petition. Paper 15. The
Board has jurisdiction under 35 U.S.C. § 6(c).
After institution of trial, Patent Owner, MobileMedia Ideas LLC
(“MobileMedia”), filed a patent owner response (“PO Resp.”). Paper 27.
Blackberry filed a reply. Paper 39. An oral hearing was held on October 18,
2013. A transcript of the oral hearing is included in the record as Paper 63.
On December 16, 2013, the parties filed a joint motion to terminate
proceeding (Paper 60), which was granted-in-part. The Board terminated
the proceeding with respect to Blackberry, but not with respect to
MobileMedia. Paper 64.
For the reasons discussed below, we are unable to reach a
determination on the alleged grounds of unpatentability over prior art.
Accordingly, we terminate this proceeding under 37 C.F.R. § 42.72.

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B. The ’048 Patent
The ‟048 patent relates to “a mobile communication apparatus for
carrying out communication through radio waves” and “an information
providing system using the mobile communication apparatus.” Ex. 1001,
1:9-13. The specification of the ‟048 patent describes that for a wireless
mobile communication apparatus, audio communication is mainstream, but
there is an increasing need for “composite and multiple data communication
of character information, image information, video information, or the like.”
Id. at 1:22-28. In the Background section, the specification describes that a
user of a mobile communication apparatus often carries, in addition, a
portable sound device for reproducing music data recorded on a magnetic
tape, an optical disc, a magneto-optical disc, or the like, or a portable radio
receiver for receiving AM broadcasting, FM broadcasting, TV sound, or the
like. Id. at 1:36-43. In the Summary section, the specification states:
In view of the fact that usage efficiency of a mobile
communication apparatus is not absolutely high, and a user
carries a portable sound device, a portable radio receiver, or the
like in addition to the mobile communication apparatus, an
object of the present invention is to provide a mobile
communication apparatus and an information providing system
using the mobile communication apparatus in which the
functions of these devices are combined so that the user of the
mobile communication apparatus can obtain information of
desired contents at a desired time without additionally carrying
other devices.
Id. at 1:48-58.

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The claimed invention requires reproducing and outputting
downloaded data when the apparatus is in a “stand-by” state. Claims 1 and 7
are the only independent claims. Claim 1 is directed to a mobile
communication apparatus, and claim 7 is directed to an information
providing system comprising a mobile communication apparatus.
Both claims 1 and claim 7 recite elements in means-plus-function
format pursuant to 35 U.S.C. § 112, sixth paragraph, including (emphasis
added):
processing means for encrypting the information signals prior
to storage in said memory means.

For context, the entirety of claim 1 is reproduced below:
1. A mobile communication apparatus, comprising:
a) communication means for transmitting and receiving
information signals to and from a base station via radio waves;
said base station further transmitting and receiving information
signals to and from a service provider through a public line
network;
b) input/output means for a user to interact with said
mobile communication apparatus; said input/output means
comprising a keypad, display means, a speaker, and a
microphone;
c) a removable semiconductor memory for storing
received information signals; and
d) processing means for encrypting the information
signals prior to storage in said memory means;
whereby said mobile communication apparatus is
selectively operable to perform one of the operations of
outputting received information signals at the time of reception,
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storing received information signals for output at a later time,
and simultaneously outputting and storing received information
signals; and
whereby said mobile communication apparatus is
operable to reproduce and output downloaded data when said
apparatus is in a stand-by state.

Notable features of the claimed mobile device are that it transmits and
receives information signals to and from a base station via radio waves, that
the base station further transmits and receives information to and from a
service provider through a public line network, that the device encrypts
received information signals prior to storing them, and that the device may
perform one of three selectable operations: (1) outputting received
information at the time of reception; (2) storing the received signals for
outputting at a later time; and (3) simultaneously outputting and storing the
received information. The device is also operable, while in stand-by mode,
to reproduce and output downloaded data.

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C. Prior Art References

Rydbeck et al.
(“Rydbeck”) US Patent No. 7,123,936 B1 Oct. 17, 2006
Exhibit
1002
Hageltorn et al.
(“Hageltorn”) US Patent No. 6,006,117 Dec. 21, 1999
Exhibit
1003
Allard et al.
(“Allard”) US Patent No. 5,422,656 June 6, 1995
Exhibit
1006
Kleiman US Patent No. 5,959,945 Sept. 28, 1999
Exhibit
1007
Salomäki Int. Pub. WO97/28649 Aug. 7, 1997
Exhibit
1004
RealPlayer
RealPlayer Plus 4.0 Manual,
Progressive Networks, Inc.
1997
Exhibit
1005

D. Alleged Grounds of Unpatentability

Claims Ground References
Claims 1-5 and 7-11 § 103
Rydbeck, Hageltorn, Salomäki,
and RealPlayer
Claims 6 and 12 § 103
Rydbeck, Hageltorn, Salomäki,
RealPlayer, and Allard
Claims 1-5 and 7-11 § 103
Rydbeck, Hageltorn, Kleiman,
and RealPlayer
Claims 6 and 12

§ 103
Rydbeck, Hageltorn, Kleiman,
RealPlayer, and Allard

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II. DISCUSSION
A. Introduction
A determination of anticipation and obviousness over prior art begins
with claim construction. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998) (“[T]he name of the game is the claim.” (quoting Giles
Sutherland Rich, Extent of Protection and Interpretation of Claims—
American Perspectives, 21 INT‟L REV. INDUS. PROP. & COPYRIGHT L. 497,
499 (1990))). It is axiomatic that we first must know what is being claimed.
Not every such patentability analysis, however, necessarily ends with
a determination with respect to the prior art. The language used in a claim to
define the scope of coverage, read in light of the specification, may be
indefinite and thus fail to indicate the scope of the claimed invention. See,
e.g., In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d
859, 862-63 (CCPA 1962).
A patent claim is unpatentable under § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art;
(2) differences between the claimed subject matter and the prior art; (3) the
level of ordinary skill in the art; and (4) secondary considerations of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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As explained below, the scope of the claims of the ‟048 patent cannot
be determined without speculation. Consequently, the differences between
the claimed invention and the prior art cannot be determined. In this
circumstance, the analysis begins and ends with the claims, and we do not
attempt to apply the claims to the prior art. See In re Wilson, 424 F.2d at
1385; In re Steele, 305 F.2d at 862-63; accord United Carbon Co. v. Binney
& Smith Co., 317 U.S. 228, 237 (1942) (indefiniteness moots consideration
of prior art issues).
B. The Law on the Construction of
a Computer-Implemented Means-Plus-Function Element

With regard to a claim element set forth in “means-plus-function”
form, its scope and meaning are governed by 35 U.S.C. § 112, sixth
paragraph, which provides:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
(emphasis added).
2

2
Section 4(c) of the America Invents Act, Pub. L. 112-29, 125 Stat. 284,
329 (2011) (“AIA”) re-designated 35 U.S.C. § 112, sixth paragraph, as
35 U.S.C. § 112(f). Because the ‟048 patent has a filing date prior to
September 16, 2012, the effective date of the AIA, we refer to the pre-AIA
version of 35 U.S.C. § 112.
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The above-quoted rule of construction applies regardless of the
tribunal attempting to interpret a claim, e.g., the United States Patent and
Trademark Office or a United States District Court. In re Donaldson Co.,
16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
The United States Court of Appeals for the Federal Circuit has given
considerable, clear, and consistent guidance, with regard to the construction
of a computer-implemented means-plus-function claim element under
35 U.S.C. § 112, sixth paragraph. Except for a narrow exception explained
in In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011), concerning generic
functions performed by a general-purpose computer, such as “processing,”
“receiving” and “storing,” a computer-implemented means-plus-function
element is indefinite unless the specification discloses the specific algorithm
used by the computer to perform the recited function. Function Media, LLC
v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013); In re Katz, 639 F.3d
at 1315; 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); Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
Cir. 2008); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Techs., Inc.,
521 F.3d 1328, 1333 (Fed. Cir. 2008).
The following explanation from the Federal Circuit in Function Media
is instructive:
Section 112, paragraph 6 allows for a limited exception [to the
particularly pointing out and distinctly claiming requirement of
Section 112, second paragraph], permitting “a claim [to] state
the function of the element or step, and the „means‟ covers the
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„structure, material, or acts‟ set forth in the specification and
equivalents thereof.” [Typhoon Touch Techs., Inc. v. Dell, Inc.,
659 F.3d 1376, 1383 (Fed. Cir. 2011)]. The trade-off for
allowing such claiming is that “the specification must contain
sufficient descriptive text by which a person of skill in the field
of the invention would „know and understand what structure
corresponds to the means limitation.‟” Id. at 1383-84 (quoting
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
Cir. 2008)).
. . . . When dealing with a “special purpose computer-
implemented means-plus-function limitation,” we require the
specification to disclose the algorithm for performing the
function. The “specification can express the algorithm in any
understandable terms including as a mathematical formula, in
prose, or as a flow chart, or in any other manner that provides
sufficient structure.” Id.
708 F.3d at 1317-18.
The need for disclosure of the specific algorithm used to program the
computer is explained in WMS Gaming, Inc. v. International Game
Technology: “In a means-plus-function claim in which the disclosed
structure is a computer, or microprocessor, programmed to carry out an
algorithm, the disclosed structure is not the general-purpose computer, but
rather the special purpose computer programmed to perform the disclosed
algorithm.” 184 F.3d 1339, 1349 (Fed. Cir. 1999) (citation and footnote
omitted). Consequently, the specification must disclose enough of a specific
algorithm to provide the necessary structure under § 112, sixth paragraph.
Finisar, 523 F.3d at 1340. Indeed, allowing a computer programmed to
perform a specialized function to be claimed without disclosure of the
algorithm used for that programming would exhibit the same type of
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impermissible overbreadth of purely functional claims. Net MoneyIN,
545 F.3d at 1367.
The Federal Circuit stated, in Aristocrat, 521 F.3d at 1333:
For a patentee to claim a means for performing a particular
function and then to disclose only a general purpose computer
as the structure designed to perform that function amounts to
pure functional claiming. Because general purpose computers
can be programmed to perform very different tasks in very
different ways, simply disclosing a computer as the structure
designated to perform a particular function does not limit the
scope of the claim to “the corresponding structure, material, or
acts,” that perform the function, as required by section 112[,]
paragraph 6.
“The point of the requirement that the patentee disclose particular structure
in the specification and that the scope of the patent claims be limited to that
structure and its equivalents is to avoid pure functional claiming.” Id.
Thus, the disclosure of a general-purpose computer is insufficient to
provide the corresponding structure required by 35 U.S.C. § 112, sixth
paragraph, for a means-plus-function element recited as performing anything
other than a basic generic function of a general-purpose computer. For
example, in Aristocrat, 521 F.3d at 1333, the court affirmed a district court‟s
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. The outcome is the same for one
or more claims in Function Media, 708 F.3d at 1319, Net MoneyIN,
545 F.3d at 1367, Blackboard, 574 F.3d at 1385, and Finisar, 523 F.3d
at 1340-41.
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C. “processing means for encrypting the information
signals prior to storage in said memory means”

Each of independent claims 1 and 7 recites: “processing means for
encrypting the information signals prior to storage in said memory means.”
Both Blackberry and MobileMedia identify this claim language as reciting a
means-plus-function element under 35 U.S.C. § 112, sixth paragraph. Pet.
14; PO Resp. 24. Both Blackberry and MobileMedia recognize the function
recited as “encrypting the information signals prior to storage in said
memory means.” Id. We agree with the identification of the parties.
Blackberry identifies the corresponding structure in the specification
of the ‟048 patent as “recording/reproducing section 18 (Fig. 1)” and notes
that that section is described in the specification of the ‟048 patent as “made
of a microprocessor and the like.” Pet. 14 (citing Ex. 1001, 4:41-42).
MobileMedia identifies the corresponding structure in the specification of
the ‟048 patent as “microprocessor or the like, or an equivalent thereof,
programmed as described in the patent to perform the claimed function.”
PO Resp. 24. For the reasons stated below, we determine that neither
proposed construction provides sufficient corresponding structure, as
required under 35 U.S.C. § 112, sixth paragraph.
The specification describes that recording/reproducing section 18
“encrypts the music data or news data” to keep data in the memory secure
(Ex. 1001, 5:64 to 6:3), and that recording/reproducing section 18 “is made
of a microprocessor and the like” (Ex. 1001, 4:42-43). Because the
“processing means for encrypting the information signals prior to storage in
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said memory means” is a computer-implemented means-plus-function
element under 35 U.S.C. § 112, sixth paragraph, the specification must
disclose a specific algorithm with which to program the general-purpose
microprocessor, to provide a corresponding structure. This is not a
circumstance falling within the narrow exception explained in In re Katz,
639 F.3d at 1316, where the function recited is generic and can be performed
by any general-purpose computer without special programming, e.g.,
“processing,” “receiving,” “storing.” At issue, here is the specialized
function of encrypting information signals prior to storage.
In the circumstance here, involving a specialized function of
encrypting information signals, the corresponding structure to the means-
plus-function recitation cannot be a general-purpose computer, but must be a
special purpose computer programmed to perform a disclosed algorithm
causing the computer to accomplish the recited function. WMS Gaming,
184 F.3d at 1349, see also Harris Corp. v. Ericsson, Inc., 417 F.3d 1241,
1253 (Fed. Cir. 2005) (“A computer-implemented means-plus-function term
is limited to the corresponding structure disclosed in the specification and
equivalents thereof, and the corresponding structure is the algorithm.”).
It is not in dispute that the specification of the ‟048 patent discloses no
specific algorithm with which to program the microprocessor to achieve the
function of “encrypting the information signals prior to storage in said
memory means.” In its petition, Blackberry states that the ‟048 patent does
not disclose an algorithm for performing the claimed encrypting function.
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Pet. 14. At final hearing, counsel for MobileMedia acknowledged that the
specification of the ‟048 patent does not describe an encryption algorithm:
[Counsel]: The specification describes the hardware for doing
it, not the encryption algorithm. That‟s right. We don‟t do the
encryption algorithm, because it doesn‟t matter for this
invention what the encryption algorithm is, it‟s that there‟s a
processor in the phone for encrypting. And it‟s not -- doesn‟t
matter and that‟s really what‟s important here that it‟s all taking
place on the phone. All right?
Paper 63, 39:3-9.
MobileMedia‟s belief that disclosure of an encryption algorithm is
unimportant is refuted by the plain language of the statute and specific
reasons that prompted Congress to enact 35 U.S.C. § 112, sixth paragraph.
The sixth paragraph of 35 U.S.C. § 112, when enacted, was a statutory
response to the Supreme Court‟s decision in Halliburton Oil Well
Cementing Co. v. Walker, 329 U.S. 1, 8-9 (1946),
3
which held as
impermissible use of a “means-plus-function” term, purely functional, to
encompass any and all structures for achieving that a result, including those
which were not what an applicant had invented.
In Greenberg v. Ethicon Endo-Surgery Inc., the Federal Circuit stated:
As this court has observed, “[t]he record is clear on why
paragraph six was enacted.” In re Donaldson Co., 16 F.3d
1189, 1194, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) (in banc).

3 Halliburton was the culmination of a long line of cases dealing with the
use of terms such as “means” and “mechanisms” in claims. See, e.g., A.W.
Deller, Walker on Patents, § 166, 790-94 (Deller‟s Ed. 1937).
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In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1,
67 S.Ct. 6, 91 L.Ed. 3, 71 USPQ 175 (1946), the Supreme
Court held invalid a claim that was drafted in means-plus-
function fashion. Congress enacted paragraph six, originally
paragraph three, to overrule that holding. In place of the
Halliburton rule, Congress adopted a compromise solution, one
that had support in the pre-Halliburton case law: Congress
permitted the use of purely functional language in claims, but it
limited the breadth of such claim language by restricting its
scope to the structure disclosed in the specification and
equivalents thereof. See Valmont Indus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1041-42, 25 USPQ2d 1451, 1453-54 (Fed.
Cir. 1993); In re Fuetterer, 50 C.C.P.A. 1453, 319 F.2d 259,
264 n.11, 138 USPQ 217, 222 n.11, 138 USPQ 217, 222 n.11
(CCPA1963).
91 F.3d 1580, 1582 (Fed. Cir. 1996).
Thus, means-plus-function type purely functional claim language is
now permissible but only under the restrictive conditions of 35 U.S.C. § 112,
sixth paragraph, i.e., limited in scope to the corresponding structure,
material, or acts disclosed in the specification and equivalents thereof. The
statutory provision creates a quid pro quo—in order to use purely functional
language to set forth a claim element, a patentee must describe in the
specification the corresponding structure, material, or acts, and coverage of
the functional claim language is limited to such disclosed structure, material,
or acts. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d
1374, 1381-82 (Fed. Cir. 1999).

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1. MobileMedia‟s Argument That Encrypting Data Was Well Known
MobileMedia argues that at the time of invention of the ‟048 patent,
encryption of digital content was well known, citing the testimony of its
expert witness Dr. Vijay Madisetti. PO Resp. 26:4-5 (citing Ex. 2006 ¶ 40).
That argument is misplaced, and does not help MobileMedia‟s position with
regard to the lack of disclosure in the ‟048 patent of any algorithm for
performing the recited function. The same argument was made by a
patentee and rejected squarely by the Federal Circuit in Function Media,
708 F.3d at 1319 (“Having failed to provide any disclosure of the structure
for the „transmitting‟ function, FM cannot rely on the knowledge of one
skilled in the art to fill in the gaps.”). In that case, the court stated:
Furthermore, it is well established that proving that a person of
ordinary skill could devise some method to perform the
function is not the proper inquiry as to definiteness—that
inquiry goes to enablement. See Blackboard, 574 F.3d at 1385.
Id. The Federal Circuit also has provided additional clear guidance:
A patentee cannot avoid providing specificity as to structure
simply because someone of ordinary skill in the art would be
able to devise a means to perform the claimed function. To
allow that form of claiming under section 112, paragraph 6,
would allow the patentee to claim all possible means of
achieving a function. See Atmel Corp. v. Information Storage
Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999)
(“consideration of the understanding of one skilled in the art in
no way relieves the patentee of adequately disclosing sufficient
structure in the specification”).

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That ordinarily skilled artisans could carry out the recited
function in a variety of ways is precisely why claims written in
“means-plus-function” form must disclose the particular
structure that is used to perform the recited function. By failing
to describe the means by which the access control manager will
create an access control list, Blackboard has attempted to
capture any possible means for achieving that end. Section
112, paragraph 6, is intended to prevent such pure functional
claiming. Aristocrat, 521 F.3d at 1333.
Blackboard, 574 F.3d at 1385. Accordingly, in the context of identifying
disclosed structure corresponding to a means-plus-function claim element,
where no algorithm is described for programming the microprocessor to
perform encryption, it is of no moment that one with ordinary skill in the art
would have known how to design and create an encryption algorithm.
2. MobileMedia‟s Argument That the Specification‟s Mention of
“and the like” is a Disclosure of Other Structures
MobileMedia points to the specification‟s description that
recording/reproduction section 18 “is made of a microprocessor and the
like” (Ex. 1001, 4:42-43, emphasis added), and cites to the testimony of
Dr. Vijay Madisetti (Ex. 2006 ¶ 44), to argue that a person of ordinary skill
at the time of the invention would understand that “and the like” includes
processor structures other than a general purpose computer. PO Resp.
25:2-5. MobileMedia further argues that at the time of the invention of the
‟048 patent, it was common for encryption to be performed by specialized

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dedicated hardware, and not by a general purpose computer. Id. at
25:5-7 (citing Ex. 2006 ¶¶ 44-45).
These arguments are unpersuasive. They essentially are the same as
the argument already rejected above in Section II.C.1., only presented again
in a different form. We reiterate that it does not matter what one with
ordinary skill in the art would have known about other structures useable to
perform encryption of data. Those structures must be described specifically
in the specification to be regarded as corresponding to the claimed means-
plus-function element with the function of encrypting data. Also, the phrase
“and the like” does not mean “and anything else.” Rather, it refers to
components comparable to the microprocessor described in the specification,
for which the specification sets forth no specific encryption algorithm.
Thus, all of the “and the like” components are, like the general-purpose
microprocessor, equally without specific structure.
We do not credit the testimony of Dr. Madisetti, that one skilled in the
art at the time of the invention of the ‟048 patent would understand that “and
the like” includes processor structures other than a general-purpose
computer (Ex. 2006 ¶ 44), because he does not explain why the structure of
a special-purpose computer programmed with a specific encryption
algorithm would be “like” the structure of a general-purpose computer
without the algorithm. Dr. Madisetti also does not explain why the structure
of any specialized dedicated hardware component used for encryption would
be “like” the structure of a general-purpose computer with no encryption
algorithm.
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In any event, no specific encryption algorithm is disclosed in the
specification, and neither is the structure of any specialized dedicated
hardware encryption component. The phrase “and the like” does not add
specific structure to the disclosure, to constitute a sufficiently specific
structure corresponding to the claimed “processing means for encrypting the
information signals prior to storage in said memory means.”
We do not credit the above-noted testimony of Dr. Vijay Madisetti,
also in part because, in paragraph 44 of his declaration (Ex. 2006), he
testifies, without explanation, that the description of the ‟048 patent does not
link the function of “encrypting” to a microprocessor. That testimony is
contradicted plainly by express description in the specification of the ‟048
patent that recording/reproducing section 18 performs the encryption
(Ex. 1001, 6:1-2) and that recording/reproducing section 18 is made of a
microprocessor and the like (Ex. 1001, 4:42-43). MobileMedia has not
made the argument that the means-plus-function element reciting the
function of encrypting data is not linked to the microprocessor, and even
identifies the microprocessor as the corresponding structure. PO Resp. 24.
Similarly, to the extent that MobileMedia also argues that equivalent
structures are covered, expressly by statute, by the claimed means-plus-
function element, that argument is ineffective to add specific disclosure of
any particular structure to the specification. That a means-plus-function
element is construed to cover corresponding structure described in the
specification and equivalents thereof does not mean the specification is
deemed to have described any non-disclosed structure. In any event, if what
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has been described specifically is insufficiently specific, then structures
equivalent thereto also would be insufficiently specific.
3. MobileMedia‟s Argument for Doing Prior Art Analysis
Without the Corresponding Structure

MobileMedia asserts that, with respect to a means-plus-function claim
element, it is not necessary to identify the corresponding structure disclosed
in the specification if the prior art does not account for the recited function.
PO Resp. 22:15-17. That argument is unpersuasive. In essence,
MobileMedia urges us to conduct the prior art analysis based on only the
functional recitation of the means-plus-function element. We decline to do
so. As discussed above, that is contrary to the requirements of both
35 U.S.C. § 112, sixth paragraph, and 35 U.S.C. § 103. The obviousness
determination is directed to the claimed invention as a whole, not to any
partial invention that does not include all of the requirements of the claim.
35 U.S.C. § 103; Graham, 383 U.S. at 17-18. Furthermore, an obviousness
determination based on less than all of the claimed elements is speculative as
to the meaning or scope of the claims. See In re Steele, 305 F.2d at 862-63
(the prior art grounds of unpatentability must fall, pro forma, because they
are based on speculative assumption as to the meaning of the claims).
Without ascertaining the proper claim scope, we cannot conduct a necessary
factual inquiry for determining obviousness—ascertaining differences
between the claimed subject matter and the prior art. See Graham, 383 U.S.
at 17-18.

Case IPR2013-00036
Patent 6,871,048
21
CONCLUSION
For the foregoing reasons, we are unable to determine obviousness of
claims 1-12 of the ‟048 patent under 35 U.S.C. § 103. Accordingly, it is
appropriate to terminate the proceeding under 37 C.F.R. § 42.72.
ORDER
It is
ORDERED that Blackberry‟s Motion to Exclude Evidence (Paper 50)
is dismissed as moot;
FURTHER ORDERED that we do not proceed to a final written
decision under 35 U.S.C. § 318(a); and
FURTHER ORDERED that this proceeding is hereby terminated
under 37 C.F.R. § 42.72.

For PETITIONER:
Robert Mattson
W. Todd Baker
cpdocketmattson@oblon.com
CPDocketBaker@oblon.com

For PATENT OWNER:

Anthony Coles
Joseph Capraro
PROSKAUER ROSE LLP
acoles@proskauer.com
MMI-USPTO-Comm@proskauer.com