Paper No. 30
`Trials@uspto.gov
`Entered: July 17, 2018
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. INTRODUCTION
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`The evidentiary standard is a preponderance of the evidence. See 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). For the reasons that follow, we determine that
`FedEx Corporation (“Petitioner”) has shown by a preponderance of the
`
`
`Trials@uspto.gov
`Entered: July 17, 2018
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. INTRODUCTION
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`The evidentiary standard is a preponderance of the evidence. See 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). For the reasons that follow, we determine that
`FedEx Corporation (“Petitioner”) has shown by a preponderance of the
`
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`IPR2017-00741
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`evidence that claim 1 of U.S. Patent No. 6,633,900 B1 (Ex. 1001, “the
`’900 Patent”) is unpatentable.
`A. Background
`Petitioner filed a Petition (Paper 2, “Pet.”) to institute an inter partes
`review of claim 1 of the ’900 Patent. Petitioner indicates that FedEx Corp.,
`FedEx Corporate Services, Inc., Federal Express Corporation, FedEx
`Ground Package System, Inc., FedEx Freight, Inc., FedEx Custom Critical,
`Inc., FedEx Office and Print Services, Inc., and GENCO Distribution
`System, Inc., are real parties in interest. Pet. 41. Intellectual Ventures II
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). Pursuant to 35 U.S.C. § 314, we instituted trial on the only
`challenged claim and on the only asserted ground. Paper 7 (“Inst. Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 16, “PO Resp.”), to which Petitioner filed a Reply (Paper 21, “Pet.
`Reply”). A transcript of the hearing held on April 26, 2018, has been
`entered into the record as Paper 29 (“Tr.”).
`B. Related Matters
`The parties indicate that the ’900 Patent has been asserted against
`Petitioner in Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-cv-980
`(E.D. Tex.). Pet. 42; Paper 5, 1. Petitioner indicates that the ’900 Patent
`also has been asserted in Intellectual Ventures II LLC v. FTD Cos. Inc.,
`No. 6:16–cv-195 (E.D. Tex.) and Intellectual Ventures II LLC v. Sally
`Beauty Holdings,. Inc., No. 2:15–cv-1414 (E.D. Tex.), but these cases have
`been terminated. Pet. 42.
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`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`July 6, 1999
`Ex. 1002 (“Storch”)
`US 5,920,846
`(Filed Feb. 27, 1996)
`
`
`
`
`
`
`
`Ex. 1003 (“Butler”)
`US 4,922,516 May 1, 1990
`
`
`
`
`
`
`
`Petitioner also relies on the Declaration of Tal Lavian, Ph.D.
`(Ex. 1004). Patent Owner relies on the Declaration of Jacob Sharony, Ph.D.
`(Ex. 2010).
`D. The Asserted Ground
`Petitioner asserts that claim 1 is unpatentable, under 35 U.S.C.
`§ 103(a), over Storch and Butler. Pet. 3.
`E. The ’900 Patent
`The ’900 Patent describes a method for managing work order
`assignments. Ex. 1001, 2:29–40. Figure 5, reproduced below, illustrates an
`example:
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`Figure 5 is flow diagram of a process for distributing work order assignment
`data to a field crew having a mobile unit. Id. at 2:59–61. As shown in
`Figure 5, at step 300, a database is updated by an application program to
`indicate a work order has been assigned to a particular field crew. Id. at 9:2–
`4. At step 302 the field crew is notified of the assignment. Id. at 9:4–5.
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`In accordance with Figure 5, at steps 304 and 306, login data input by
`the field crew is verified and the field crew is notified if the login was
`successful. Id. at 9:5–10. At step 308 a list of assignments is retrieved and
`presented to the field crew. Id. at 9:10–11. At steps 310 and 312, in
`response to a selection by the field crew of an assignment from the list of
`assignments, detailed assignment data for the selected assignment is
`retrieved from the database and displayed on the mobile field unit. Id. at
`9:11–16. At step 314 in response to field crew input identifying that an
`action was taken with regard to the assignment, the detailed assignment data
`is updated in the database. Id. at 9:16–19.
`Claim 1, reproduced below, is illustrative of the invention:
`1.
`A method for distributing work order assignment
`data to a field crew using a system having an enterprise
`computing system and at least one mobile field unit, comprising
`the following steps:
`(A) updating a database on the enterprise computing
`system to indicate an assignment has been assigned
`to the field crew;
`(B) notifying the field crew of the assignment;
`(C) in response to the input of field crew login data,
`verifying field crew identity;
`(D) notifying the field crew of successful login;
`(E) retrieving and presenting a list of assignments to the
`field crew;
`(F) in response to field crew input selecting an assignment
`from the list of assignments, retrieving detailed
`assignment data for the selected assignment;
`(G) displaying the detailed assignment data to the field
`crew; and
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`(H) in response to field crew input identifying an action
`was taken with regard to the assignment, updating
`the detailed assignment data.
`Ex. 1001, 15:6–27.
`
`II. ANALYSIS
`Principles of Law—Obviousness
`A.
`A claim is unpatentable 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.
`35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).1 In that regard, an obviousness analysis
`“need not seek out precise teachings directed to the specific subject matter of
`the challenged claim, for a court can take account of the inferences and
`creative steps that a person of ordinary skill in the art would employ.” See
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`Level of Skill in the Art
`B.
`Petitioner contends that a person of ordinary skill in the art “would
`have held at least a Bachelor’s Degree in Electrical Engineering, Computer
`Engineering, Computer Science or an equivalent” and “would also have had
`
`
`1 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
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`two or more years of industry experience in the field of computer
`networking generally, and wireless networking or mobile communications
`specifically, or the academic equivalent thereof.” Pet. 10. Petitioner bases
`its argument on the testimony and experience of Dr. Lavian. Id. (citing
`Ex. 1004 ¶¶ 42–49). Patent Owner does not challenge Petitioner’s
`statement. See, e.g., PO Resp. 41–50. For the reasons given by Petitioner
`(Pet. 10; Ex. 1004 ¶¶ 42–49), we adopt Petitioner’s statement of the level of
`skill in the art.
`Claim Construction
`C.
`Patent Owner contends, “[t]he term ‘mobile field unit,’ the only term
`that needs to be construed to resolve this proceeding, appears in the
`preamble of claim 1” and “the preamble of claim 1 is limiting.” PO Resp. 8.
`Petitioner disputes Patent Owner’s contentions regarding the broadest
`reasonable interpretation of the term “mobile field unit.” See, e.g., Pet.
`Reply 1. Petitioner, however, does not dispute Patent Owner’s contention
`that “mobile field unit” in the preamble is limiting and, instead, identifies
`teachings in Storch and Butler for the preamble. Pet. 10–11, 18–19; Pet.
`Reply 1–18. Because we need not address Patent Owner’s contentions
`pertaining to whether the preamble is limiting to resolve a controversy
`between the parties, we proceed on the basis that the preamble should be
`given patentable weight, without further discussion. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`[claim] terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy.”). We discuss the parties’
`contentions regarding “mobile field unit” below.
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`1. Principles of Law—Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100. In applying a broadest reasonable
`construction, claim terms generally are 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. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own
`lexicographer of patent claim terms by providing a definition of the term in
`the specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`2. “mobile field unit”
`Starting with the language of the claim, the dispute between the
`parties centers on only the term “mobile,” as no other claim language has
`been identified, nor do we find any that supports limiting claim 1 to wireless
`communications. Pet. 4–9, 10–11, 23; PO Resp. 8, 12–31; Pet. Reply 1–18.
`At institution, after consideration of the Petition and Preliminary Response,
`we declined to limit the broadest reasonable interpretation of the term
`“mobile field unit” to require “wireless” communication. Inst. Dec. 9–10.
`In response, Patent Owner contends “the ‘mobile’ in ‘mobile field unit’
`refers to communications over a wireless network,” relying on the ’900
`Patent Specification and extrinsic evidence. PO Resp. 8, 12–31. Petitioner
`contends we should maintain our determination at institution that “‘mobile’
`does not require ‘wireless.’” Pet. Reply 1. Petitioner, more specifically,
`contends that the term “mobile field unit” encompasses “portable” field
`units, such as portable computers, and relies on the ’900 Patent
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`Specification, prosecution history, and extrinsic evidence. Pet. 4–9, 10–11,
`23; Pet. Reply 1–18.
`a. The ’900 Patent Claim Language and Specification
`We turn to the words of the claims and the ’900 Patent Specification.
`In the Institution Decision, we declined to limit the term “mobile field unit”
`“in light of the example of a portable computer, set forth in the ’900 [P]atent
`Specification, as well as the description [ ] indicating that the wireless
`modem is optional.” Inst. Dec. 9 (citing Ex. 1001, 4:14–34).
`In response, Patent Owner asserts, “[t]he specification consistently
`refers to a wireless network as being a part of the invention,” as it is “the
`only type of network” over which communication occurs. PO Resp. 23.
`Patent Owner, more specifically, contends “all of the networks” in the
`’900 Patent “are wireless networks” (id. at 14) and “every figure” depicts the
`mobile field unit communicating “via a wireless communication
`network 54” (id. at 15). Patent Owner discusses Dr. Sharony’s testimony
`regarding exemplary wireless networks described in the ’900 Patent
`Specification, as well as reproductions of the figures of the ’900 Patent with
`Patent Owner’s annotations highlighting the wireless network. Id. at 14–23.
`Claim 1, however, does not recite “wireless network” or “network.”
`Ex. 1001, 15:7–27. Instead, the preamble of claim 1 recites “a system
`having an enterprise computing system and at least one mobile field unit.”
`Id. at 15:7–9. Consistent with Petitioner’s contentions (see, e.g., Pet. 2, 4–9,
`23; Pet. Reply 1–18), the ’900 Patent Specification describes a wireless
`network as an element that is separate from the recited enterprise computing
`system and mobile field unit: “[T]he inventive system comprises enterprise
`computing system 50, mobile field unit 52, and wireless communication
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`network 54 operably connecting the two.” Ex. 1001, 3:50–54 (emphasis
`added); see also id. at 14:45–50 (“The system comprises an enterprise
`computing system, a wireless network, and a mobile field unit.”). Notably
`missing from claim 1 is “wireless communication network 54 operably
`connecting the two,” which is described in the ’900 Specification. Id. at
`3:50–54.
`Patent Owner does not provide a proposed construction for “system”
`or “enterprise computer system.” See generally PO Resp. Consistent with
`Petitioner’s contentions (see, e.g., Pet. 2, 4–5), the enterprise computing
`system is a dispatch system comprising servers and a database connected
`over local area network (LAN). Ex. 1001, 3:38–49, 3:55–4:12, 15:7–13.
`Although Patent Owner contends that communications between the mobile
`field unit and the enterprise computing system are over a wireless network,
`in so contending, Patent Owner acknowledges that the mobile field unit,
`enterprise computing system, and wireless network are separate and distinct.
`PO Resp. 14–23 (explaining networks for communicating between the
`mobile field unit and the enterprise computing system are wireless
`networks).
`Regarding the term “mobile field unit,” as we explained at institution
`(Inst. Dec. 7–10), the ’900 Patent Specification sets forth an example that is
`consistent with Petitioner’s contentions that “‘mobile’ does not require
`‘wireless,’” but, instead, also encompasses “portable” (Pet. 4–9, 10–11, 23;
`Pet. Reply 1–18). In particular, the examples of mobile field units provided
`in the ’900 Patent Specification include a portable computer that does not
`employ wireless communication. The portion of the ’900 Patent
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`Specification to which we referred in the Institution Decision is reproduced
`below.
`
`Mobile field unit 52 comprises computing device 72
`which may be a portable computer, a personal digital
`assistant (PDA), or similar device. Typically computing
`device 72 comprises random access memory (RAM), web
`browser
`software
`for
`internet
`and
`intranet
`communications, and an interactive display mechanism.
`Computing device 72 may also include: storage capability
`(flash or electromechanical), a serial interface, an audio
`playback device, and software to support a TCP/IP
`protocol stack and point-to-point protocol (PPP).
`Mobile field unit 72 may also comprise wireless
`radio modem 74. Wireless radio modem 74 provides a
`means for communicating over wireless network 54
`between computing device 72 and enterprise computing
`system 50. Wireless radio modem 74 supports PPP
`protocol and TCP/IP protocol over wireless radio network
`54. Wireless radio modem 74 may be internal or external
`to computing device 72.
`Ex. 1001, 4:14–34 (emphases added).
`Patent Owner relies on the testimony of Dr. Sharony that a person of
`ordinary skill in the art would have a different understanding of the
`aforementioned description in the ’900 Patent Specification. See, e.g., PO
`Resp. 21–22 (citing Ex. 2010 ¶¶ 65–67). Patent Owner, more specifically,
`contends the portable computer “could be” provided with an external
`wireless modem “in order to constitute a mobile field unit.” PO Resp. 21
`(citing Ex. 2010 ¶¶ 65–66). Regarding the ’900 Patent Specification’s
`description that “[m]obile field unit 72 may also comprise wireless radio
`modem 74” (Ex. 1001, 4:24–5 (emphasis added)), Patent Owner asserts “the
`statement only indicates that the wireless radio modem may be internal to
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`the mobile field unit . . . or external to the mobile field unit.” PO Resp. 22
`(citing Ex. 2010 ¶ 67).
`“[E]xtrinsic evidence may be used only to assist in the proper
`understanding of the disputed limitation; it may not be used to vary,
`contradict, expand, or limit the claim language from how it is defined, even
`by implication, in the specification or file history.” Bell Atl. Network Servs.
`v. Covad Commc’ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001). Our
`reviewing court also has explained, “extrinsic evidence consisting of expert
`reports and testimony is generated at the time of and for the purpose of
`litigation and thus can suffer from bias that is not present in intrinsic
`evidence.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en
`banc). According to the ’900 Patent Specification, mobile field unit 52
`“comprises” the required component, i.e., computing device 72. Ex. 1001,
`4:14–34. In contrast, the ’900 Patent Specification describes that the mobile
`field unit “may also comprise” wireless radio modem 74, thereby indicating
`that wireless radio modem 74 is an optional component. Id. Patent Owner’s
`argument that “may” refers to whether the modem is internal or external (PO
`Resp. 22) is inconsistent with the ’900 Patent Specification’s description that
`the mobile field unit itself “may” comprise the wireless radio modem and
`that such modem also “may be internal or external” to the computing device.
`Ex. 1001, 4:14–34. Thus, the ’900 Patent Specification describes “mobile”
`as encompassing “portable,” and not being limited to wireless. Id.
`Furthermore, the ’900 Patent Specification describes “a portable computer”
`as exemplary. Ex. 1001, 4:13–16. Patent Owner does not dispute that the
`portable computer itself is not wireless. See generally PO Resp.
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`Expert testimony is not necessary in light of the aforementioned clear
`description in the ’900 Patent Specification. However, as further support for
`our analysis, we credit Dr. Lavian’s testimony over the testimony of
`Dr. Sharony because we find that Dr. Lavian’s testimony is consistent with
`the evidence of record while Dr. Sharony’s testimony is not. Patent Owner
`contends Dr. Lavian’s testimony deserves little or no weight in part because
`it lacks analysis of the intrinsic record. PO Resp. 25–31. Patent Owner,
`however, does not take into account all of Dr. Lavian’s testimony, including
`that portion regarding the ’900 Patent Specification’s description of a
`portable computer as exemplary and wireless as optional. See
`Ex. 1004 ¶ 82. Dr. Sharony testifies that, “[g]iven that all of the networks
`disclosed for communication between the mobile field unit and the
`enterprise computing system are wireless, a person of ordinary skill in the art
`would have recognized that a portable computer would need to have wireless
`communication capabilities in order to qualify as a mobile field unit.”
`Ex. 2010 ¶ 66. Dr. Sharony’s testimony regarding “mobile field unit” is
`premised on the description in the ’900 Patent Specification of the wireless
`network, which is not recited in claim 1. Furthermore, we do not find Patent
`Owner’s contentions regarding Dr. Lavian’s testimony in a different
`proceeding involving a different patent explaining that wireless technology
`was known, background technology and prior art to that patent
`(Ex. 2009 ¶ 44) to be evidence supporting that claim 1 of the ’900 Patent
`should be limited to wireless communications. Indeed, Petitioner asserts in
`the instant proceeding that wireless communications were well known and
`widely available. See, e.g., Pet. 4–7 (citing Ex. 1004 ¶¶ 39–41).
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`Patent Owner provides additional contentions regarding the
`’900 Patent Specification. In particular, Patent Owner argues that the
`inventors acted as their own lexicographer by defining mobile field unit in
`the Summary of the Invention. Tr. 16:3–6; PO Resp. 13–14. In particular,
`Patent Owner contends that “[t]he specification expressly defines a mobile
`field unit to communicate over a wireless network in the summary of the
`invention” and points to the following in the summary of the invention: “[a]
`mobile field unit comprises a computing device and modem for
`communicating over the wireless network to the enterprise computing
`system.” PO Resp. 13–14 (citing Ex. 1001, 2:32–34).
`We do not find that the summary of the invention sets forth a
`definition of the term “mobile field unit” with reasonable clarity,
`deliberateness, and precision such that the meaning of the term is restricted
`to be more limited than the ordinary and customary meaning. In re Paulsen,
`30 F.3d at 1480. The portion of the summary of the invention relied upon by
`Patent Owner (PO Resp. 13–14) states “the present invention provides a
`system,” which “comprises an enterprise computing system, a mobile field
`unit, and wireless communication network.” Ex. 1001, 2:20–26 (emphasis
`added). The summary of the invention also states “[a]ccording to another
`aspect of the invention[,] there is provided a method for managing work
`order assignments.” Id. at 2:39–41 (emphasis added). Claim 1 recites “[a]
`method for distributing work order assignment data.” Id. at 15:7–8
`(emphasis added). We are not persuaded that the method recited in claim 1
`should be limited to distribute work orders only wirelessly because the
`summary of the invention describes a system comprising a wireless
`communication network, which is not recited in claim 1.
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`Patent Owner’s remaining contention regarding the ’900 Patent
`Specification is that its construction is required as it is essential to the
`problem that was solved by the ’900 Patent. More specifically, Patent
`Owner contends “the problems to be solved by the ’900 Patent require
`wireless communication,” for example, “‘it is essential that the field crew
`have a means for communicating that does not rely on functioning telephone
`landline connections’ because field crews are often deployed to repair
`telephone outages.” PO Resp. 20, 21, 23 (citing Ex. 2010 ¶ 60); see also id.
`at 22–23 (citing Ex. 2010 ¶ 68) (asserting that the wireless network is
`needed “to provide up-to-date information” when field crews “are dispersed
`over a widespread geographic area.”). The ’900 Patent, however, indicates
`“[w]hile the invention has been described and illustrated with reference to
`specific embodiments, those skilled in the art will recognize that
`modification and variations may be made without departing from the
`principles of the invention.” Ex. 1001, 14:61–64. The ’900 Patent further
`describes the “utility environment” as “exemplary” and specifies that the
`asserted invention may be employed “in other environments” including “any
`other operation which communicates work order to field personnel.” Id. at
`14:65–15:4 (emphasis added).
`That the ’900 Patent Specification recognizes the advantages of a
`preferred embodiment over prior art systems does not require limiting
`claim 1 to require wireless communication. Use of a wireless
`communication network is described in the Specification with respect to a
`preferred embodiment, not the only embodiment contemplated. Compare
`Ex. 1001, 15:7–27 with id. at 3:50–54, Fig. 1. Claim 1 is a method claim,
`and does not recite a wireless communication network. As our reviewing
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`court has explained, “patentees [are] not required to include within each of
`their claims all of [the] advantages or features described as significant or
`important in the written description.” Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327, 1331 (Fed. Cir. 2004). “An invention may possess a number
`of advantages or purposes, and there is no requirement that every claim
`directed to that invention be limited to encompass all of them.” E-Pass
`Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003).
`b. The Prosecution History
`Importantly, the prosecution history of the ’900 Patent confirms that
`“‘mobile’ does not require ‘wireless,’” but, instead, also encompasses
`“portable,” as asserted by Petitioner (Pet. 4–9, 10–11, 23; Pet. Reply 1–18).
`Consistent with Petitioner’s contentions (id.), during prosecution the
`Examiner issued a restriction requirement distinguishing original claims 54
`through 80 as lacking recitation of “a wireless communication network.”
`Ex. 1005, 193–201. Applicants elected, without traverse, original claims 54
`through 80. Id. at 202. The Examiner subsequently allowed those original
`claims, which issued as claims 1 through 27 of the ’900 Patent. Id. at 210–
`11.
`
`Patent Owner asserts that the election was to expedite prosecution and
`we, instead, should look to only the ’900 Patent Specification. PO Resp.
`12–31; Tr. 24:4–22. For instance, Patent Owner contends “[w]here the
`specification consistently describes and refers to a claim term as having a
`limiting feature, it is error to construe the claim term so broadly that the
`claim term does not require that feature.” PO Resp. 12–13 (citing In re
`Smith Int’l, Inc., 871 F.3d 1375, 1381–83 (Fed. Cir. 2017)). During the
`hearing, Patent Owner clarified that in its view “the modern approach” is
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`that “the specification is superior to the file history in understanding the
`meaning of the claims.” Tr. 20:12–24 (citing Honeywell Int’l, Inc. v. ITT
`Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006); Phillips v. AWH Corp., 415
`F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).
`Patent Owner, however, relies on cases in which the patent
`specification discloses only one embodiment or its multiple embodiments
`are consistent. Honeywell, 452 F.3d at 1319 (“[T]he written description
`provides only a fuel filter . . . . No other fuel injection system component
`with the claimed limitations is disclosed or suggested”); In re Smith, 871
`F.3d at 1382 (“There is no dispute that the ’817 patent specification
`consistently describes and refers to the body as a component distinct from
`[the] others.”). In the instant proceeding, the ’900 Patent Specification
`describes “a portable computer” as exemplary (Ex. 1001, 4:14–34) and
`Patent Owner does not dispute that the portable computer described in the
`’900 Patent is itself not wireless (PO Resp. 21).2 The ’900 Patent
`Specification also describes the wireless radio modem as optional.
`Ex. 1001, 4:14–34. Patent Owner’s contentions center on a term, i.e.,
`wireless communications network, which is not recited in claim 1. PO Resp.
`14–23. We find that the Examiner’s restriction requirement distinguishing
`the original claim that issued as claim 1 as lacking recitation of “a wireless
`communication network,” and Applicants’ election confirms that claim 1
`does not require wireless communications. Ex. 1005, 193–202, 210–11.
`
`
`2 Patent Owner contends that the portable computer described in the ’900
`Patent “could be” provided with “an external wireless radio modem.” PO
`Resp. 21 (emphasis added).
`
`17
`
`
`
`IPR2017-00741
`Patent 6,633,900 B1
`
`Patent Owner agreed that the prosecution history is not ambiguous.
`Tr. 21:1–6; 24:23–25:7.
`Contrary to Patent Owner’s argument regarding “the modern
`approach” (Tr. 20:12–24), in the instant proceeding, we are persuaded that
`the aforementioned prosecution history of the ’900 Patent should be
`consulted. As our reviewing court has explained recently, “[t]he PTO
`should also consult the patent’s prosecution history in proceedings in which
`the patent has been brought back to the agency for a second review.”
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
`In the instant proceeding, a careful review of the ’900 Patent prosecution
`history shows that the claims expressly recited “wireless” in the claim
`language for claims limiting communications to wireless communications.
`Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1095 (Fed. Cir. 2003)
`(“Rambus elected to prosecute the latency claims . . . [t]herefore, the claims
`. . . do not require a multiplexing bus.”).
`c. Extrinsic Evidence
`In addition to the expert testimony discussed above, both parties
`submit extrinsic evidence regarding the term “mobile” and neither party
`disputes that “mobile” encompasses wireless communications. PO Resp.
`23–25 (citing e.g., Ex. 2001, 6; Ex. 2002, 9; Ex. 2007, 257, 335;
`Ex. 2010 ¶¶ 69–75); Ex. 2013, 103; Ex. 2014, 334); Pet. Reply 13–18 (citing
`e.g., Exs. 1013–1024). We find that the extrinsic evidence provided by both
`parties supports that “mobile” encompasses portable in certain contexts.
`See, e.g., Exs. 1021, 1022 (defining “mobile computing” as “[t]he process of
`using a computer while traveling,” which “usually requires a portable
`computer”), Ex. 1024 (defining “mobile computing” as “[t]echniques used to
`
`18
`
`
`
`IPR2017-00741
`Patent 6,633,900 B1
`
`establish links to a network by employees who move from one location to
`another”); Ex. 2002, 9 (describing “mobile” as equipment mounted for
`moving).
`We agree with Petitioner (Pet. Reply 11–13) and find that Patent
`Owner’s extrinsic evidence pertains to wireless communications, not the
`meaning of “mobile.” PO Resp. 23–25. For instance, Patent Owner
`provides extrinsic evidence regarding the meaning of “mobile station,”
`which is a station in a wireless network and “mobile radio service,” which is
`a radio communication service. Ex. 2002, 9; Ex. 2007, 335; Ex. 2013, 103;
`Ex. 2014, 334. The terms “mobile station” and “mobile radio service,”
`however, are not recited in claim 1.3 Additionally, consistent with
`Petitioner’s contentions (Pet. Reply 11–13 (citing e.g., Ex. 1012, 4, 7)),
`Patent Owner selects definitions relating to vehicular technology and from
`government standards pertaining to wireless communications. PO Resp. 24–
`25 (citing Exs. 2002, 2013, 2014). The term “mobile field unit” recited in
`claim 1, however, more broadly encompasses portable computing, such as
`the exemplary portable computer in the ’900 Patent Specification. Ex. 1001,
`4:13–29.
`Dr. Sharony’s testimony pertains to the same extrinsic evidence relied
`upon by Patent Owner and suffers from the aforementioned deficiencies.
`PO Resp. 23–25 (citing e.g., Ex. 2010 ¶¶ 69–75). For the reasons given, we
`
`
`3 Patent Owner’s extrinsic evidence includes a definition for “mobile,”
`which pertains to any mobile equipment including x-ray equipment not at
`issue here. Ex. 2002, 9. However, this evidence shows that “mobile” more
`broadly encompasses “portable” in contexts outside of wireless networking.
`Id.
`
`19
`
`
`
`IPR2017-00741
`Patent 6,633,900 B1
`
`are not persuaded by Dr. Sharony’s testimony (id.) that the extrinsic
`evidence supports limiting “mobile field unit” to a unit that communicates
`only wirelessly. Instead, we find that the extrinsic evidence of record
`provides additional evidentiary support for Petitioner’s contentions that
`“mobile” in “mobile field unit” is not limited to wireless communications,
`but also encompasses “portable,” such as a portable computer. See, e.g.,
`Exs. 1021, 1022 (defining “mobile computing” as “[t]he process of using a
`computer while traveling,” which “usually requires a portable computer”),
`Ex. 1024 (defining “mobile computing” as “[t]echniques used to establish
`links to a network by employees who move from one location to another”);
`see also Exs. 1013–1020, 1023 (explaining that mobility is achieved without
`a wireless network by a portable computer that changes its point of
`attachment into a network).
`d. Conclusion—“mobile field unit”
`Our reviewing court “has repeatedly ‘cautioned against limiting the
`claimed invention to preferred embodiments or specific examples in the
`specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`(Fed. Cir. 2015); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
`870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into a
`claim limitations that are not a part of the claim.”). “[I]t is the claims, not
`the written description, which define the scope of the patent right.”
`Williamson, 792 F.3d at 1346–47; se
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