AOL Inc., et al. v. Coho Licensing LLC

In a decision denying institution of an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB or Board) decided that the threshold for institution had not been met regarding the petitioners’ two priorart–based grounds.  One administrative patent judge issued a dissenting opinion, and, in doing so, may have set the stage for a rehearing on the institution decision.  AOL Inc., et al. v. Coho Licensing LLC, Case No. IPR2014-00771 (PTAB, Nov. 10, 2014) (Quinn, APJ) (Capp, APJ, dissenting-in-part).

Petitioners AOL and Cloudera filed a petition seeking IPR of Coho’s patent directed to distributed computer processing in a network environment. According to the claimed invention, for this distributed computing, a computer that has been allocated a portion of a task may reallocate a portion of its task to another computer in the network. The petitioners challenged the claims of the patent based on three grounds, anticipation based on the Spawn reference, obviousness based on the Spawn reference in light of the Kisor reference and obviousness based solely on the knowledge and skill of a person of ordinary skill in the art.

In the majority decision, the Board stated that the petitioner had failed to sufficiently demonstrate that Spawn disclosed the transfer and allocating limitations. The majority also expressed belief that the Kisor reference failed to remedy the shortcomings of the Spawn reference. The majority decision rejected the third ground, obviousness based on the knowledge and skill of one of ordinary skill in the art, as being conclusory and failing to provide a detailed explanation of the significance of the evidence and for failing to identify where each element of each challenged claim is found in the prior art.  As to the supporting declaration testimony for the latter ground, the Board characterized the declarant’s testimony as referring “generally to voluminous excerpts from three computer science treatises.”

In his dissent, Judge Capp agreed with the majority decision as to the third ground, but argued that the petitioner had made a sufficient threshold showing that Spawn discloses each and every limitation of the challenged claims and thus anticipates. Noting that the claims at issue utilized the open-ended transition phrase “comprising,” Judge Capp explained that the Spawn reference was actually more sophisticated than the challenged invention.  The dissent also noted that under the applicable broadest reasonable construction, the term “allocating computer” should be no narrower than “a user’s computer from which a distributed processing task originates.” The dissent faults the majority who, in turn, faulted the petitioner for not detailing “how” the date processing task is allocated and distributed (in the prior art) but that such a fault allocation was inappropriate as the claims only required “that” the data processing task is allocated and sub-allocated while the only “how” requirement was that “all the foregoing transferring occurs by network connection.”  The dissent stated “[g]iven the breadth of the claim language, I do not believe that a detailed showing of ‘how’ the transfer occurs is or should be required as part of a threshold showing institute trial in this case.” The dissent relied on essentially the same logic for the obviousness position (based on the combination of Spawn and Kisor) noting that, based on the record, the challenged patent does nothing more than arrange old elements with each performing the same function it had been known to perform.