Trials@uspto.gov
`571-272-7822
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`Paper 26
`Entered: May 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`NONEND INVENTIONS N.V.,
`Patent Owner.
`____________
`
`Case IPR2016-00174
`Patent 8,090,862 B2
`____________
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
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`
`
`
`
`
`
`Paper 26
`Entered: May 8, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`NONEND INVENTIONS N.V.,
`Patent Owner.
`____________
`
`Case IPR2016-00174
`Patent 8,090,862 B2
`____________
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2016‐00174
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`Patent 8,090,862 B2
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`I.
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`
`INTRODUCTION
`Background
`A.
`Unified Patents Inc. (“Petitioner”), filed a Petition (Paper 2, “Pet.”)
`for inter partes review of claims 1–20 of U.S. Patent No. 8,090,862 B2 (“the
`’862 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Nonend
`Inventions N.V. (“Patent Owner”) filed a Patent Owner Preliminary
`Response (Paper 7, “Prelim. Resp.”). On May 12, 2016, based on the record
`before us at the time, we instituted an inter partes review of all challenged
`claims (1–20) of the ’862 patent. Paper 10 (“Dec.”). Specifically, we
`instituted that review on the following challenges to the claims:
`Claims
`challenged
`1–6 and 8–18
`
`References
`Shastri1
`
`Basis
`§ 102(e)
`
`Goldszmidt2
`
`Goldszmidt and Lumelsky3
`
`§ 103(a)
`
`§ 103(a)
`
`1–20
`
`1–20
`
`Dec. 26.
`After we instituted this review, Patent Owner filed a Patent Owner
`Response (Paper 14, “PO Resp.”) and Petitioner filed a Reply (Paper 17,
`“Pet. Reply”). 4 Petitioner relies on the first Declaration of Dr. Charles
`
`
`1 U.S. Patent Application Publication No. 2002/0065922 A1; May 30, 2002.
`Ex. 1002 (“Shastri”).
`2 U.S. Patent No. 6,195,680 B1; Feb. 27, 2001. Ex. 1004 (“Goldszmidt”).
`3 U.S. Patent No. 6,377,996 B1; Apr. 23, 2002. Ex. 1005 (“Lumelsky”).
`4 Petitioner appears to have filed the Reply twice as Papers 17 and 18. As
`those papers appear to be identical, we will refer to Paper 17 only.
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`Eldering (Ex. 1006) and the second Declaration of Dr. Eldering (Ex. 1018).5
`Patent Owner relies on the Declaration of Dr. John C. Hale (Ex. 2016).
`Patent Owner filed a Motion to Exclude Evidence (Paper 20) to which
`Petitioner filed an Opposition (Paper 23).
`We heard oral argument on February 8, 2017 (“Oral Hearing”). The
`record contains a transcript of the hearing (Paper 25, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`preponderance of the evidence. See 35 U.S.C. § 316(e); see also 37 C.F.R.
`§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has met
`its burden to show, by a preponderance of the evidence, that claims 1–20 are
`unpatentable.
`
`The ’862 Patent
`B.
`According to the ’862 patent, “[s]ystems and methods are disclosed
`for streaming content over a network that enables communication between a
`first consumer node, a second consumer node, and a production node.”
`Ex. 1001, Abstract. The method involves processing, for play-back, part of
`an item of content received over a first connection, while another part of the
`item of content is being received over a second communication channel. Id.
`According to an embodiment, a first consumer node connects to a
`production node and commences receipt of a stream. See id. at 7:26–35. A
`
`
`5 Petitioner appears to have filed the second Declaration of Dr. Eldering
`twice as Exhibits 1012 and 1018. Petitioner also filed a document labelled
`“Transcript of March 11, 2016 Conference” as Exhibit 1012. As Exhibits
`1012 and 1018 appear to be identical, for the second Declaration of Dr.
`Eldering, we will refer only to Exhibit 1018.
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`second consumer node connects with both the production node and the first
`consumer node, tests whether the connection to the production node or to the
`first consumer node is the best, and selects the best node from which to
`receive the content. See id. at 7:44–48.
`Figure 2C of the ’862 patent depicts such a configuration and is
`reproduced below.
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`In Figure 2C (above), consumer nodes 2 and 2’ are connected to
`production node 1, and are also connected to each other. Consumer node 2
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`initially receives a stream from production node 1. When consumer node 2
`connects with production node 1, it is informed of the existence of consumer
`node 2’, and that consumer node 2’ can provide the requested content.
`While receiving the stream, consumer node 2 tests the connection with other
`nodes, such as consumer node 2’, to determine if there is another node that
`can better supply the same stream (i.e., faster, better quality, etc.). If
`consumer node 2 detects a better node from which to receive the stream, it
`receives the stream through that other connection. See, e.g., Ex. 1001, 8:62–
`9:22.
`
`Related Matters
`C.
`Patent Owner identifies several matters in litigation relating to the
`’862 patent, all in the Eastern District of Texas. Paper 6, 2–3.6 Petitioner
`identifies one related case (Pet. 1) that we presume, based on a similar case
`designation, is the same case Patent Owner identified as filed in the Eastern
`District of Texas involving Apple, Inc.
`D.
`Illustrative Claim
`Independent claim 1, reproduced below, is exemplary of the
`invention:
`
`1. A method for receiving data packages of a streaming
`item of content at a receiving media player, using at least two
`communication channels, the method comprising:
`
`receiving one or more data packages corresponding to at
`least a part of the item of content over a first
`communication channel operationally coupled to
`the receiving media player;
`
`
`6 Paper 6 does not have page numbers. We treat the first page as page
`number 1 and number the pages consecutively from there.
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`initiating a request for at least a part of the item of content
`over a second communication channel operationally
`coupled to the receiving media player;
`
`
`
`receiving, in response to initiating the request, one or more
`data packages corresponding to at least a part of the
`item of content, over the second communication
`channel; and
`
`the first
`incoming content received over
`making
`communication channel ready for processing and
`play-back at the receiving media player, such that
`part of the item of content is streamed to a stream
`target at the receiving media player, while another
`part of the item of content is being received by the
`receiving media player over
`the
`second
`communication channel.
`
`Independent claim 12 recites a similar method and independent claim
`18 recites a device providing functionality similar to the method steps of
`claim 1.
`
`
`II. ANALYSIS
`Real Parties in Interest
`A.
`Petitioner certified that Unified Patents Inc. is the real party in
`interest, and “further certifies that no other party exercised control or could
`exercise control over Unified’s participation in this proceeding, the filing of
`this petition, or the conduct of any ensuing trial.” Pet. 1. In support of this
`assertion, Petitioner filed “voluntary interrogatory responses,” signed by its
`counsel for Petitioner and verified by its CEO. Ex. 1007.
`Patent Owner’s Preliminary Response contended that the Petition
`should be denied for failure to name the real party in interest. Prelim. Resp.
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`4–13. Patent Owner’s Response, however, does not address this contention.
`For this reason, we deem this argument waived. See Paper 11, 2–3 (“The
`patent owner is cautioned that any arguments for patentability not raised in
`the response will be deemed waived.”); see also 37 C.F.R. § 42.23(a) (“Any
`material fact not specifically denied may be considered admitted.”).
`B.
`Level of Ordinary Skill
`Petitioner argues a person of ordinary skill in the art related to the
`’862 patent “would have a Master’s Degree in electrical engineering,
`computer science, or a related subject or the equivalent, and would also have
`at least three years of experience working with distributed computer
`networks, or the equivalent.” Pet. 5 (citing Ex. 1006 ¶ 18). Patent Owner
`does not define the level of ordinary skill in the art. We find Petitioner’s
`definition of the level of ordinary skill in the art is commensurate with the
`level of ordinary skill in the art as reflected in the prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
`findings on the level of skill in the art does not give rise to reversible error
`where the prior art itself reflects an appropriate level and a need for
`testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57
`F.3d 1573, 1579 (Fed. Cir. 1995).
`C. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has
`statutory authority to construe claims according to 37 C.F.R. § 42.100(b)).
`Under the broadest reasonable construction standard, claim terms are
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`generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1862 (Fed. Cir.
`2007). “[A] claim construction analysis must begin and remain centered on
`the claim language itself.” Innova/Pure Water, Inc. v. Safari Water
`Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Furthermore, only those
`terms that are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`“Streamed”
`Independent claims 1, 12, and 18 each include a recitation relating to
`part of an item of content being “streamed to a stream target.” Petitioner
`argues “streamed” should be interpreted as “passed from a software or
`hardware component to another software or hardware component.” Pet. 9
`(citing Ex. 1006 ¶ 29). Petitioner notes the ’862 patent does not clearly
`define “streamed” and points to column 5, lines 25–28, column 8, lines 32–
`36, and column 14, lines 1–35 as support for the proposed interpretation. Id.
`at 9–10.
`Patent Owner argues Petitioner’s interpretation of “streamed” is
`unreasonably broad and encompasses “any type of data transmission from
`one point to another,” essentially re-writing the claims changing “streamed”
`to “transmitted.” Prelim. Resp. 25. Patent Owner argues Petitioner’s expert
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`contradicts such a broad interpretation, because Dr. Eldering interprets
`“steaming content” as follows:
`Streaming content, such as streaming media, is content that may
`be played by a receiver while being transmitted . . . . The verb
`“stream” refers to the process of delivering content in this
`manner, and the noun “stream” refers to content that is has been
`[sic], is, or will be streamed. Delivering content via a stream
`allows a receiver to begin to play the content before the entire
`content file is transmitted.
`Prelim. Resp. 26 (quoting Ex. 1006 ¶ 10).7 Patent Owner further contends
`“[a]s made clear from Dr. Eldering’s own testimony, the ordinary and
`customary meaning of ‘streamed’ requires that the content is capable of
`being played while it is still being transmitted.” Id. Furthermore, Patent
`Owner cites a technical dictionary definition of “streaming media” as “audio
`or video files that can begin playing as they are being downloaded to a
`computer.” Id. (citing Ex. 2012, 3). Patent Owner additionally cites the
`claim interpretation from a District Court Order in a related proceeding, that
`interprets “streamed” in the ’862 Patent as “transmitted continuously and
`may be played by the receiver while the transmission is occurring.” Id.
`(citing Ex. 1011, 5).
`In our Decision on Institution, we determined Petitioner’s proposed
`interpretation is unreasonably broad, although we also did not adopt,
`wholesale, Patent Owner’s proposed interpretation. Dec. 11. Specifically,
`we determined the Specification of the ’862 patent supports a different
`interpretation by disclosing:
`
`
`7 We note harmless error in that Patent Owner incorrectly cites paragraph 12
`of Exhibit 1006 in quoting Dr. Eldering’s testimony. The quoted material is
`in paragraph 10 of that Exhibit.
`
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`[s]treaming video and streaming audio are known internet
`applications in which data packages with contents are transmitted
`from a server or station to clients or consumers. The special
`thing about these data packages is that the time sequence of the
`various packages is of importance: a radio broadcast, for
`instance, has a fixed time line. Additionally the continuity of the
`data flow is of importance, as otherwise the broadcast will falter.
`The general principles of such streaming internet application are
`known to the expert.
`Ex. 1001, 7:8–16 (emphasis added). Thus, the act of streaming audio or
`video, consistent with the specification of the ’862 patent, encompasses
`continuity of data flow (i.e., to avoid faltering of the broadcast). This
`important aspect (limitation) of the act of audio/video streaming (i.e.,
`content that is “streamed”) is not captured in Petitioner’s proposed
`interpretation.
`Regarding evidence concerning the ordinary and customary meaning
`of “streamed,” we found in our Decision on Institution a common technical
`dictionary defines the verb “stream” as “[t]o transfer data continuously,
`beginning to end, in a steady flow . . . [o]n the Internet, streaming enables
`user to begin accessing and using a file before it has been transmitted in its
`entirety.” Dec. 12 (quoting Microsoft Computer Dictionary Fifth Edition,
`499 (2002) (Exhibit 3001)). The claims use the term “streamed” as a verb.
`For example, independent claim 1 recites, “such that part of the item of
`content is streamed to a stream target at the receiving media player, while
`another part of the item of content is being received.” Based on the above,
`we determined that the broadest reasonable interpretation of “streamed” is
`“transmitted continuously such that the content may be played by the
`receiver while the transmission is occurring.” Id.
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`In the Patent Owner Response, Patent Owner essentially repeats their
`assertions from the Preliminary Response (PO Resp. 8–10), but additionally
`cites to the testimony of their expert, Dr. Hale, who asserts that “it is my
`opinion that ‘streamed’ should be defined as ‘transmitted such that
`transmission and playback of content can occur simultaneously,’ excluding
`other forms of transmission.” Ex. 2016 ¶ 6. Other than the omission of the
`word “continuously,” an omission that we are unpersuaded is warranted
`given our analysis above, we discern little substantive difference between
`Dr. Hale’s proposed interpretation, and the interpretation set forth in the
`Decision on Institution. Petitioner now adopts our interpretation. Pet Reply
`2 (“While Petitioner believes the ’862 patent supports a broader definition of
`‘streamed’ (see Paper No. 2 at 9-10), Petitioner adopts the Board’s
`construction herein.”).
`After considering all evidence and assertions anew, we discern no
`persuasive reason to alter our preliminary interpretation and conclude that
`the broadest reasonable interpretation of “streamed” is “transmitted
`continuously such that the content may be played by the receiver while the
`transmission is occurring.”
`
`“Another”
`Independent claim 1 includes recitations directed to streaming a part
`of an item of content while another part of the item of content is being
`received. Independent claims 12 and 18 each include a similar recitation.
`As an initial matter, we do not read the parties’ overall assertions as
`disputing that “another part” must be separate from the first “part.” For
`example, by way of analogy, the first “part” and the “another part” cannot
`both refer to the same copy of the song “Happy Birthday.” Instead, as set
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`forth below, our reading of the parties’ overall assertions is that the actual
`dispute as being whether “another part” and the first “part” can be
`substantively the same, e.g., continuing with our analogy, the first “part”
`and the “another part” can be the song “Happy Birthday” and an identical
`duplicate copy of the song “Happy Birthday,” respectively.
`Petitioner argues “[t]he term ‘another part of the item of content’
`should be interpreted to mean any part of the item of content, whether the
`same or different than any other part of the item of content.” Pet. 10–11;
`Pet. Reply 3–4. Petitioner asserts:
`For example, a second part of an item of content can be ‘another’
`part if it is a partial copy of a first part of the item of content, if
`it is a segment of the item of content that includes or excludes
`segments contained within a first part of the item of content, or
`if it is a replica of a first part of the item of content.
`Pet. Reply 4 (citing Ex. 1018 ¶ 5). Petitioner further asserts the ’862 patent
`Specification supports this interpretation by disclosing that a node “specifies
`the portion of the item of content it wishes to receive” and “does not disclose
`or otherwise suggest that the requested part of the media stream could not be
`a copy of a part that the node had already received.” Id. at 5 (citing Ex.
`1001, 9:48–49, 13:27–32; Ex. 1018 ¶ 8).
`Patent Owner argues “another” cannot mean the same part of the item
`of content, as would be encompassed within Petitioner’s interpretation, but,
`instead, must mean a different part of the item of content. PO Resp. 10
`(citing a dictionary definition of the adjective “another” (Ex. 2017)). Patent
`Owner further argues the ’862 patent Specification supports its interpretation
`that another part must be a different part of the item of content. Id. at 10–11
`(citing Ex. 1001, Figs. 2A–2Q, 8:62–9:22, 9:50–59, Figs. 6A–6J, 11:42–
`12:45). Patent Owner further relies on Dr. Hale’s testimony that “another”
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`means a “different piece of content, not the same piece of content.” Id. at 11
`(citing Ex. 2016 ¶¶ 7–9). Based on a definition of “another” set forth in an
`online dictionary (http://merriam-webster.com), Dr. Hale testifies “‘another
`part of the item of the content’ must refer to a different or distinct collection
`of data identified by a different or distinct location in the object or file.” Ex.
`2016 ¶ 9.
`We find no limiting definition or special meaning of “another” in the
`’862 patent Specification. As noted by Petitioner, the phrase “another part
`of the item of content” (or simply “another part”) appears only in the
`Abstract and independent claims 1, 12, and 18 of the ’862 patent. Pet.
`Reply. 4.8 We find Patent Owner’s reliance on Figures 2A–2Q and related
`text at column 8, line 62 through column 9, line 22 and column 9, lines 50
`through 59, of the ’862 patent, immaterial to interpreting “another.” These
`figures and related text describe communications among nodes to identify a
`best (fastest) connection therebetween, and refer only generally to sending
`content over such an identified higher speed connection—i.e., nothing in
`these cited portions identifies which “parts” of content are sent over which
`connections.
`Figures 6A–6J, and related text at column 11, line 42 through column
`12, line 45, of the ’862 patent are more helpful in interpreting “another,”
`although they do not support Patent Owner’s arguments. These portions of
`
`
`8 Petitioner correctly notes the Abstract of the ’862 patent was added by
`amendment just prior to allowance of the patent. Pet. Reply 4. This
`amendment essentially mirrors the language of claim 1. Thus, the
`Specification of the ’862 patent provides little or no context for interpreting
`“another” in the claim recitation referring to “another part of the item of
`content.”
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`the ’862 patent Specification describe how exemplary “data packages” (data
`packages 1 through 8) are distributed to nodes via the fastest connection
`among multiple possible connection paths. As described in the related text,
`a node may request a data package from a first node, but after realizing the
`connection to another node is faster, the node may establish the faster
`connection and request that same data package from the faster node. For
`example, referring to Figure 6D, the ’862 patent Specification describes
`node 122 receiving a request for a data package from node 126. Ex. 1001,
`11:51. Referring next to Figure 6E, the Specification discloses:
`As the connection via node 122 of consumer node 126
`appeared to be slow, consumer node 126 goes looking for a better
`connection and finally ends up at consumer node 129. At the
`request of consumer node 126, consumer node 129 now also
`starts delivering data packages to 126. . . . Consumer node 126
`then disconnects the connection to consumer node 122.
`Id. at 12:1–8 (emphasis added). By use of the word “also,” we find the
`Specification discloses each of nodes 122 and 129 simultaneously and
`independently sending identical copies of requested data packages to
`requesting node 126. In the above example, we find that node 122 is
`transmitting the requested data package to node 126 while node 129 begins a
`faster transmission of an identical copy of the requested data package to
`node 126. Thus, Patent Owner’s reliance on this disclosure of the ’862
`patent appears misplaced. Contrary to Patent Owner’s assertion, this portion
`of the Specification supports Petitioner’s broader interpretation of “another”
`that encompasses the same data package—i.e., another copy (another
`transmission) of the same requested data package.
`Patent Owner’s citation to a dictionary defining the adjective
`“another” as “different or distinct” (PO Resp. 10 (citing Ex. 2017); Ex. 2016
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`¶ 9) is unavailing because two copies of the same song are, nevertheless,
`“different” and “distinct” from each other. Furthermore, other definitions in
`Exhibit 2017 indicate “some other” or “being one more in addition to one or
`more of the same kind.” Ex. 2017, 3. Of those, the second definition makes
`the same point as the first, and the last definition’s use of the words “of the
`same kind” indicates that “another part” can be considered the same as the
`first “part.” In another dictionary cited by Petitioner (Pet. Reply, 4), similar
`definitions are provided, with its first definition being “one or more; an
`additional.” Ex. 1017, 4.9 This definition also supports Petitioner’s
`interpretation.
`In view of the above, we conclude the broadest reasonable
`interpretation of “another” is “an additional, such as one or more,” which is
`an amalgamation of the most common portions of the above definitions.
`Additionally, we find that the above definitions are consistent with Figure
`6E of the Specification, the only portion identified by the parties that we find
`sheds any appreciable light on the interpretation of “another.” In the context
`of the claim recitation “another part of the item of content,” we determine
`the claims encompass “an additional, such as one or more,” parts of the item
`of content, where the “another part” is separate from, but can be identical to
`a first “part.” This interpretation is consistent with Petitioner’s interpretation
`of “another” as “any part of the item of content, whether the same or
`
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`9 We observe the copyright date on the dictionary filed by Petitioner (Ex.
`1017, 2 (1997)) pre-dates the copyright date on the dictionary filed by Patent
`Owner (Ex. 2017, 2 (2004)) and, more importantly, pre-dates the priority
`date of the ’862 patent (2001).
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`different than any other part of the item of content.” Accordingly, we
`conclude that Petitioner’s proposed interpretation is correct.
`“Communication Channel”
`The title and all claims of the ’862 patent refer to “communication
`channel,” but the Specification make no further reference to “channel” or
`“communication channel.” Petitioner proposes, “‘communication channel’
`should be interpreted to mean a path for transmitting signals.” Pet. 8.
`Petitioner explains further that the term should not be limited to a physical
`communication medium, but, instead, should encompass a connection
`including, for example, a logical connection10 created through various
`multiplexing techniques over a single physical medium.11 Id. at 9. Patent
`Owner does not provide an alternative interpretation.
`The Authoritative Dictionary of IEEE Standard Terms defines
`“communication channel” as “[a] facility that permits signaling between
`terminals.” This definition appears to comport with Petitioner’s proposed
`interpretation. Although there is no definition of “communication channel”
`set forth in the Specification, we find that the Specification of the ’862
`patent does define several seemingly related terms. For example, the
`
`
`10 The Authoritative Dictionary of IEEE Standard Terms does not have a
`definition of “logical connection,” however, it defines “logical channel” as
`“[o]ne connection over a single physical communication link. There may be
`multiple logical channels over a single physical communication link.” The
`Authoritative Dictionary of IEEE Standard Terms 636 (7th ed. 2000) (Ex.
`3002).
`11 Petitioner notes Patent Owner had agreed to a narrower interpretation in a
`related litigation in which a “channel” is tied to a physical, transmission
`communication medium, but urges our interpretation in this case should not
`be so limited. Pet. 8, n.4 (citing Ex. 1011, 14–16).
`
`16
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`IPR2016‐00174
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`Patent 8,090,862 B2
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`Specification define a “physical connection,” as a cable that carries data in
`electromagnetic form, as well as a wireless connection for transmitting data
`using wireless electromagnetic radiation (e.g., infrared, radio waves, etc.).
`Ex. 1001, 3:1–6. The Specification also refers to a “connection” being
`“made” and being “broken off.” Id. at 9:55–59. Furthermore, the
`Specification refers to a “connection” being requested (id. at 14:14, 14:48)
`and being closed (id. at 14:28). Claims 11 and 16 then refer to
`“communication channel” as being “over” a wireless network or “over” an
`electricity connection. We find that these portions of the Specification and
`claims are consistent with Petitioner’s proposed interpretation, and the
`aforementioned dictionary definition of a “communication channel,” as
`encompassing both a logical connection operating “over” a physical
`connection, as well as the underlying physical connections themselves.
`For these reasons, we broadly, but reasonably, interpret
`“communication channel” to at least encompass “a logical or physical path
`for transmitting signals.”
`
`Other Claim Terms
`We determine that it is unnecessary to construe explicitly any other
`claim terms.
`D. Claims 1–6 and 8–18 Anticipated by Shastri
`1.
`Antedating Shastri (Ex. 1002)
`Petitioner bears the burden of persuasion that the challenged claims
`are unpatentable, which includes the burden of establishing that any
`reference upon which it relies constitutes prior art under 35 U.S.C. § 102.
`35 U.S.C. § 316(e); see Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576
`(Fed. Cir. 1996) (holding that the challenger bears the burden of persuasion
`
`17
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`IPR2016‐00174
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`Patent 8,090,862 B2
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`“on all issues relating to the status of [the asserted reference] as prior art”).
`Petitioner has the burden of persuasion to prove unpatentability by a
`preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the
`initial burden of production to show that a reference is prior art to certain
`claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has
`met that initial burden, the burden of production shifts to Patent Owner to
`argue or produce evidence that the asserted reference is not prior art to
`certain claims, for example, because those claims are entitled to the benefit
`of priority of an earlier-filed application. Id. at 1380. Once Patent Owner
`has met that burden of production, the burden is on Petitioner to show that
`the claims at issue are not entitled to the benefit of priority of the earlier filed
`application. Id.
`Here, Petitioner relies on Shastri as an anticipatory prior art reference
`under 35 U.S.C. § 102(e). On its face, Shastri shows a publication date of
`May 30, 2002 and a filing date of November 30, 2000. Ex. 1002, 1. The
`’862 patent shows a filing date of June 9, 2010, but claims priority through a
`foreign patent application (in the Netherlands) back to Feb. 16, 2001. Ex.
`1001, 1. Thus, based on the dates on the face of the two patents, we find that
`Petitioner has sufficiently met its initial burden of production showing that
`Shastri is prior art under 35 U.S.C. § 102(e). Therefore, Patent Owner then
`bears the burden of producing evidence antedating Shastri’s filing date
`(November 30, 2000). Mahurkar, 79 F.3d at 1576–77. We find that Patent
`Owner has met that burden by producing the Declarations of the inventors of
`the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–
`2027, 2029) that allegedly show conception prior to Shastri, and reasonable
`
`18
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`IPR2016‐00174
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`Patent 8,090,862 B2
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`diligence through filing of a patent application (constructive reduction to
`practice) to antedate the filing of Shastri. PO Resp. 11–13. Accordingly, the
`burden of persuasion concerning all aspects of this issue are on Petitioner.
`Priority of invention can be awarded to a party who “can show that it
`was the first to conceive the invention and that it exercised reasonable
`diligence in later reducing that invention to practice.” Price v. Symsek, 988
`F.2d 1187, 1190 (Fed. Cir. 1993). To establish conception, a party must
`provide evidence showing possession of every limitation recited in the
`claimed invention, including corroborating evidence showing the invention
`was disclosed to others in such clear terms as to enable those skilled in the
`art to make the invention. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir.
`1985); see also Kridl v. McCormick, 105 F.3d 1446, 1449–50 (Fed. Cir.
`1997). The sufficiency of the party’s corroborating evidence is determined
`under a “rule of reason.” Kridl, 105 F.3d at 1450; see also Price, 988 F.2d
`at 1195. This requires “a reasoned examination, analysis and evaluation of
`all pertinent evidence so that a sound determination of the credibility of the
`inventor’s story may be reached.” Coleman, 754 F.2d at 360. However, the
`analysis “does not dispense with the requirement for some evidence of
`independent corroboration.” Coleman, 754 F.2d at 360; see also Shu-Hui
`Chen v. Bouchard, 347 F.3d 1299, 1310 (Fed. Cir. 2003) (“Evidence of the
`inventive facts must not rest alone on the testimony of the inventor
`himself”).
`Patent Owner argues that the Declarations of the inventors of the ’862
`patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027,
`2029) sufficiently show conception prior to Shastri, and reasonable diligence
`through filing of a patent application (constructive reduction to practi
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