Takeaway: In order to show prior art is analogous, one must show it is in the same field of endeavor as the patent at issue or that it is reasonably pertinent to the particular problem with which the inventor was concerned.

In its Decision, the Board denied institution of inter partes review of the ’216 Patent. The ’216 Patent is directed to a system that allows software to run without restrictions if a specified licensing procedure has taken place. 
The Board began with claim construction. The ’216 Patent is expired, therefore, the claims are given their ordinary and customary meaning as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. This is the same standard as in a district court litigation. The Board adopted the claim construction issued in Uniloc USA, Inc. v. Microsoft Corp., No. 03-440 S (D.R.I.).

The Board then turned to the asserted grounds of unpatentability. First, the Board reviewed whether claim 19 is obvious over Hellman and Waite. Petitioner explained that Hellman was reviewed in Reexam I and Waite was reviewed in Reexam II. In each reexam, the art was found to lack at least one element of claim 19, but they were never considered in combination. The Board found Petitioner had not adequately explained why an ordinary artisan would have a reason to modify Hellman in view of Waite as required by claim 19 because Petitioner’s reasoning was conclusory and unpersuasive. The Board found that Petitioner improperly relied on the disclosure of the ’216 Patent itself to justify its obviousness theory, which was not permissible.

The Board then reviewed whether claim 19 is obvious over Hellman and Mehnert. The Board agreed with Patent Owner that Mehnert is not analogous art because it is not in the same field of endeavor as the ’216 Patent nor is it reasonably pertinent to the particular problem with which the inventor was concerned. Specifically, the Board found that Petitioner did not provide sufficient evidence and explanation to show that it is reasonably pertinent. The Board also found that Petitioner had not adequately explained why an ordinary artisan would have a reason to combine the art because Petitioner’s arguments were conclusory and unpersuasive.

Lastly, the Board discussed whether claim 19 is obvious over Moseley and Johnson. The Board once again found that Petitioner had not adequately explained why an ordinary artisan would have considered it obvious to modify Moseley in view of Johnson because Petitioner’s arguments are conclusory and unpersuasive.

Kaspersky Lab, Inc. v. Uniloc USA Inc. and Uniloc Luxembourg S.A., IPR2015-00178
Paper 10: Decision Denying Institution of Inter Partes Review
Dated: April 21, 2015
Patent 5,490,216 C2
Before: William V. Saindon, Donna M. Praiss, and Patrick R. Scanlon
Written by: Praiss
Related Proceedings: Uniloc USA, Inc. and Uniloc Luxembourg S.A. v. Kaspersky Lab, Inc., No. 6:13-cv-00795 (E.D. Tex.); IRP2014-01453; Uniloc USA, Inc. and Uniloc Singapore Private Limited v. Microsoft Corp., (D. Del.) (Fed. Cir.); Reexamination Control No. 90/010,831; Rexamination Control No. 90/012,179