Takeaway: To be anticipatory, a reference must disclose within its four corners not only all of the claim limitations, but also all of the limitations arranged or combined in the same way as recited in the claim.

In its Decision, the Board declined to institute inter partes review of any claim of the ‘347 patent. Thus, the Petition was denied.

The ‘347 patent “relates to customizing the storage of data according to data attributes.” Petitioner had challenged claims 1, 3, 4, 8–12, and 17-20. The asserted grounds of unpatentability were: (1) anticipation of claims 1, 3, 4, 8-12, and 17-20 under 35 U.S.C. 102(e) in view of Monroe; and (2) obviousness of claims 1, 3, 4, 9, 10, 17, and 20 under 35 U.S.C. § 103 in view of Mangasarian and Walker.

The Board construed certain claim terms using the broadest reasonable interpretation (BRI) standard. Specifically, the Board construed “archival attribute” as not encompassing an attribute relating to the storage of data in buffer memory or RAM, and construed “archival profile” as not encompassing a profile relating to the storage of data in buffer memory or RAM.

As for the anticipation ground asserted under 35 U.S.C. 102(e), Petitioner had alleged that “the claimed ‘monitoring device data processor’ is disclosed by Monroe’s descriptions of ‘processor[s] of servers, PCs, intelligent cameras, or intelligent sensors.’” The Board disagreed, finding that Petitioner had failed to identify a single “monitoring device data processor” in Monroe that performs all of the steps recited for the “monitoring device data processor” recited in the claims. Citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008), the Board expressed that Petitioner had failed to “demonstrate that Monroe discloses ‘not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.’”

Regarding the obviousness ground asserted under 35 U.S.C. 103, the Board did not find either of two alternative interpretations of Mangasarian (referred to as the “First Perspective” and “Second Perspective”) proposed by Petitioner to be persuasive. With respect to the “First Perspective,” for example, the Board concluded that “[t]he Petition . . . does not provide any persuasive evidence or argument that one of ordinary skill would consider storage of information in packet buffer 208 of Mangasarian to be ‘archival’ storage.”

Unified Patents Inc. v. Olivistar, LLC, IPR2015-01217

Paper 15: Decision Denying Institution of Inter Partes Review

Dated: November 20, 2015

Patent: 8,239,347 B2

Before: Jameson Lee, Barbara A. Parvis, and Scott C. Moore

Written by: Moore

Related Proceedings: 21 separate lawsuits filed by Patent Owner alleging infringement of the ‘347 patent