Trials@uspto.gov
`571-272-7822
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`
`
`Paper: 42
`Entered: October 1, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MLB ADVANCED MEDIA, L.P.,
`Petitioner,
`
`v.
`
`FRONT ROW TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01127
`Patent 8,583,027 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MATTHEW R. CLEMENTS, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`

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`IPR2017-01127
`Patent 8,583,027 B2
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`
`I. BACKGROUND
`Petitioner MLB Advanced Media, L.P. filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1, 3, 4, 7, 9, and 10 of
`U.S. Patent No. 8,583,027 B2 (Ex. 1001, “the ’027 patent”) pursuant to
`35 U.S.C. § 311(a). On October 3, 2017, we instituted an inter partes
`review of all challenges raised in the Petition, namely, claims 1, 3, 4, 7, 9,
`and 10 on two grounds of unpatentability. Paper 9 (“Dec. on Inst.”); see
`Pet. 3. Patent Owner Front Row Technologies, LLC subsequently filed a
`Patent Owner Response (Paper 16, “PO Resp.”) and Petitioner filed a Reply
`(Paper 29). Patent Owner also filed a Motion to Amend (Paper 25, “Mot.”),1
`Petitioner filed an Opposition (Paper 28, “Opp.”), and Patent Owner filed a
`Reply (Paper 33, “Reply”). An oral hearing was held on May 21, 2018, and
`a transcript of the hearing is included in the record (Paper 41, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we grant Patent Owner’s Motion to Amend to the extent it requests
`the cancellation of claims 1, 3, 4, 7, 9, and 10 of the ’027 patent, and deny
`the Motion to Amend with respect to proposed substitute claims 19–24.
`
`
`A. The ’027 Patent
`The ’027 patent discloses techniques for “remotely delivering sports
`and entertainment data to [handheld] devices” and “providing increased
`viewing opportunities for audiences within and external to venue
`environments, such as stadiums and concert arenas.” Ex. 1001, col. 2,
`
`
`1 Patent Owner refiled its Motion to Amend after the originally filed version
`was stricken. See Papers 18, 24.
`
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`ll. 2–7. The ’027 patent states that “[m]ost modern stadiums and live
`entertainment facilities or arenas . . . typically employ large television
`screens that receive video images and are linked within the stadium to a
`plurality of television cameras positioned to capture video images at diverse
`locations within the stadium.” Id. at col. 2, ll. 13–19. However, audience
`members can only see one view on the screen, the screen may be far away,
`and the screen may show unwanted information (e.g., advertisements when
`the audience member would rather watch an instant replay). Id. at col. 2,
`ll. 29–55. “The audience members, therefore, essentially view the large
`screen at the behest of the camera operator and cannot select their own views
`or camera angles.” Id. at col. 2, ll. 55–58. The ’027 patent attempts to solve
`these problems by providing on-demand video and other information to
`audience members’ wireless handheld devices. Id. at col. 4, ll. 10–22.
`Figure 5 of the ’027 patent is reproduced below.
`
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`Figure 5 depicts “system 59 that provides multiple perspectives of activity at
`a venue 80 through a [handheld] device 60 adapted to receive and process
`real time video data.” Id. at col. 11, ll. 5–8. Real time video of baseball
`player 82 captured by cameras 71, 73, 75, and 77, past video data, and other
`data are provided wirelessly to handheld device 60. Id. at col. 11, ll. 5–52.
`The ’027 patent further describes determining the location of a user based on
`communications from the user’s device and authorizing the device to receive
`a service based on its location. Id. at col. 25, ll. 30–61.
`
`
`B. Illustrative Claim
`Claim 1 of the ’027 patent recites:
`1. A method for authorizing access by a user of at least one
`service associated with an event at a venue based on a location
`of said user as determined by information derived from
`communication between a computing device in the form of a
`wireless handheld device carried and utilized by said user and
`assets of a data communications network, said method
`comprising:
`determining a location of at least one user based on
`communications of at least one computing device comprised of
`a wireless handheld device utilized by said at least one user with
`said
`data
`communications
`network
`supporting
`data
`communications of said at least one computing device;
`authorizing said at least one computing device to receive
`said at least one service based on said location as determined by
`said data communications network, wherein said at least one
`service includes streaming video accessed from a server wherein
`streaming video captured by at least one video camera operating
`within at least one entertainment venue is processed for delivery
`to subscribers of the at least one service and wherein said
`authorizing said at
`least one computing device further
`comprising preventing said at least one computing device from
`receiving said at least one service beyond or within a particular
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`
`geographic area based on said location determination by said
`data communication network.
`
`
`C. Prior Art
`The grounds of unpatentability in the instant inter partes review are
`based on the following prior art:
`U.S. Patent No. 6,496,802 B1, filed July 13, 2000, issued
`Dec. 17, 2002 (Ex. 1032, “van Zoest”);
`U.S. Patent Application Publication No. 2010/0122303
`A1, filed Oct. 23, 2009, published May 13, 2010 (Ex. 1038,
`“Maloney”); and
`U.S. Patent Application Publication No. 2002/0023010
`A1, filed Mar. 20, 2001, provisional application filed Mar. 21,
`2000, published Feb. 21, 2002 (Ex. 1028, “Rittmaster”).
`
`D. Grounds of Unpatentability
`The instant inter partes review involves the following grounds of
`unpatentability:
`Reference(s)
`Maloney
`
`Claims
`Basis
`35 U.S.C. § 103(a)2 1, 3, 4, 7, 9, and 10
`
`Rittmaster and
`van Zoest
`
`35 U.S.C. § 103(a)
`
`1, 3, 4, 7, 9, and 10
`
`
`
`
`
`
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 103 and 112. Because the
`challenged claims of the ’027 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 103 and 112.
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`
`II. ANALYSIS
`A. Original Claims 1, 3, 4, 7, 9, and 10
`In the related litigation between the parties, the district court granted a
`motion for judgment on the pleadings, concluding that the challenged claims
`in this proceeding (claims 1, 3, 4, 7, 9, and 10 of the ’027 patent) are invalid
`under 35 U.S.C. § 101. Ex. 1048. The U.S. Court of Appeals for the
`Federal Circuit affirmed the district court’s decision, and the Supreme Court
`of the United States denied Patent Owner’s petition for a writ of certiorari.
`See Front Row Techs. LLC v. MLB Advanced Media, L.P., 697 F. App’x 701
`(Fed. Cir. 2017), 2018 WL 1142971 (U.S. Apr. 23, 2018).
`Patent Owner states in its Motion to Amend that it “hereby cancels
`instituted claims 1, 3, 4, 7, 9, and 10 of [the ’027 patent] and requests that
`the Board declare as patentable amended substitute claims 19–24.” Mot. 1;
`see also PO Resp. 1 (stating that Patent Owner’s Motion to Amend
`“canceled claims 1, 3, 4, 7, 9, and 10 and substituted new amended claims
`19–24,” and “[s]ubstitute new amended claims 19–24 moot the patentability
`of the original claims”). Patent Owner confirmed that its Motion to Amend
`is non-contingent, i.e., Patent Owner seeks to cancel claims 1, 3, 4, 7, 9, and
`10 (regardless of any decision in this proceeding as to the patentability of
`those claims) and substitute claims 19–24 in their place. Paper 36, 2.
`Accordingly, we grant Patent Owner’s Motion to Amend to the extent it
`seeks to cancel claims 1, 3, 4, 7, 9, and 10.3 See 35 U.S.C. § 316(d)(1)(A).
`
`
`3 Given this disposition, we need not assess the patentability of claims 1, 3,
`4, 7, 9, and 10 based on Maloney, Rittmaster, and van Zoest. Petitioner also
`does not argue that proposed substitute claims 19–24 are unpatentable based
`on any of these references.
`
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`B. Proposed Substitute Claims 19–24
`Patent Owner seeks to substitute claims 19–24 for claims 1, 3, 4, 7, 9,
`and 10, respectively. Mot. 1. Claims 19 and 22 are independent, and recite
`similar limitations. Claim 19 recites (with underlining indicating language
`added to claim 1 and brackets indicating language removed from claim 1):4
`19. A method for authorizing access by a user of at least
`one service associated with an event at a venue based on a
`location of said user as determined by information derived from
`communication between a computing device in the form of a
`wireless handheld computing device carried and utilized by said
`user and assets of a wireless data communications network, said
`method comprising:
`connecting a wireless handheld computing device
`associated with at least one user to the data communications
`network, the data communication network comprising a wireless
`data communications network, the wireless data communications
`network allowing one or more mobile carriers to provide wireless
`data communications services
`to said wireless handheld
`computing device, the wireless data communications network
`including the use of mobile switching centers, the mobile
`switching centers having access to one or more network servers
`and one or more network databases, wherein the wireless data
`communication network provides for updating of and use of
`information from the one or more network databases;
`determining a
`location of said wireless handheld
`computing device associated with said at least one user based on
`communications of at least one computing device comprised of
`[[a]] said wireless handheld computing device utilized by said at
`
`4 Patent Owner filed with its Motion to Amend a clean copy of the proposed
`substitute claims (Appendix A), a version showing the changes made to the
`original claims (Appendix B), and a version showing how certain limitations
`in the original claims allegedly were reorganized (Appendix C). See
`37 C.F.R. § 42.121(b). All citations herein are to the proposed substitute
`claims as listed in Appendix A. See Mot. 4 (“Appendix A contains a
`complete listing of amended substitute claims 19–24.”).
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`least one user, with said wireless data communications network
`supporting said wireless data communication[[s]] services of
`said [[at least one]] wireless handheld computing device,
`wherein the communications between said wireless handheld
`computing device and the wireless data communications network
`access information in at least one of the one or more network
`databases, the one or more network databases including a
`plurality of wireless handheld computing device information
`associated with a plurality of users, including said at least one
`user, and wherein the location of said wireless handheld
`computing device is determined at least in part according to the
`wireless handheld computing device information associated with
`said at least one user stored in the one or more network databases;
`authorizing said [[at least one]] wireless handheld
`computing device, by a security unit of said wireless handheld
`computing device, to receive [[said]] at least one streaming
`service based on said location as determined by said wireless data
`communication[[s]] network, wherein authorizing said wireless
`handheld computing device based on said location further
`comprises preventing said wireless handheld computing device
`from receiving said at least one streaming service at a location
`beyond or within a particular geographic area, wherein said
`location beyond the particular geographic area further comprises
`a location selected from the group of locations comprising a
`location beyond a particular frequency range and a location
`outside of a particular geographical area associated with a
`wireless network;
`transmitting for display if authorized, and preventing
`transmission for display if unauthorized, said at least one
`streaming service, wherein said at least one streaming service
`includes streaming video accessed from a server, wherein
`streaming video is captured by at least one video camera
`operating within at least one entertainment venue, and wherein
`captured video is processed for delivery to and display by said at
`least one user, wherein said at least one user comprises at least
`one subscriber[[s]] of [[the]] said at least one streaming service
`[[and wherein said authorizing said at least one computing device
`further comprising preventing said at least one computing device
`
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`
`from receiving said at least one service beyond or within a
`particular geographic area based on said location determination
`by said data communication network]].
`
`
`1. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’027 patent would have had “a minimum of a B.S. in Electrical or
`Computer Engineering and two to three years of experience in the
`communication industry, including at least some experience in wireless data
`communications/networks and video transmission,” and would have had
`“knowledge of conventional communications systems” of the time. Pet. 4
`(citing Ex. 1002 ¶¶ 22–23). Patent Owner does not propose a different level
`of ordinary skill in the art in its Patent Owner Response or Motion to
`Amend. Based on the record developed during trial, including our review of
`the ’027 patent and the types of problems and solutions described in the
`’027 patent and cited prior art, we agree with Petitioner’s assessment of the
`level of ordinary skill in the art and apply it for purposes of this Decision.
`
`
`2. Claim Interpretation
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b). Under this standard, we interpret
`claim terms using “the broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of ordinary skill in the
`art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`
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`1997); see In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)
`(“[The] broadest reasonable interpretation . . . is an interpretation that
`corresponds with what and how the inventor describes his invention in the
`specification.”). “Under a broadest reasonable interpretation, words of the
`claim must be given their plain meaning, unless such meaning is inconsistent
`with the specification and prosecution history.” Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`In the Decision on Institution, based on the parties’ arguments and
`record at the time, we preliminarily concluded that the preambles of
`independent claims 1 and 7 were limiting, and concluded that no other claim
`terms required interpretation. Dec. on Inst. 6–8. The parties did not dispute
`that interpretation during trial. Claims 19 and 22 are proposed substitutes
`for claims 1 and 7, respectively. They include additional terms in their
`respective preambles, but do not remove any language from the original
`preambles. Accordingly, we adopt our previous analysis for purposes of this
`Decision and conclude that the preambles of claims 19 and 22 are limiting as
`well.
`
`As explained herein, the parties make certain arguments regarding the
`scope of proposed substitute claims 19–24 in their Motion to Amend,
`Opposition, and Reply, but do not propose specific interpretations for any of
`the terms at issue. We address the parties’ arguments below, and conclude
`that no further interpretation is necessary to determine whether Patent
`Owner’s Motion to Amend should be granted. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (“Because we need only construe terms ‘that are in controversy, and
`only to the extent necessary to resolve the controversy,’ we need not
`
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`construe [a particular claim limitation] where the construction is not
`‘material to the . . . dispute.’” (citations omitted)).
`
`
`3. Claim 19
`Before considering the patentability of proposed substitute claims in a
`motion to amend, we first determine whether the motion meets the statutory
`and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
`§ 42.121. In Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1305–1306 (Fed.
`Cir. 2017), a plurality of judges of the en banc Court stated that “the patent
`owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b)
`and § 316(d)(3) are met and that any reasonable procedural obligations
`imposed by the Director are satisfied.” See also id. at 1317 (“To the extent
`Rule 42.20(c) imposes a burden on the patent owner as the ‘movant,’ it is a
`burden to show that the amendments do ‘not enlarge the scope of the claims
`of the patent or introduce new matter’ as required by 35 U.S.C. § 316(d)(3),
`not a burden to prove the overall patentability of the amended claim.”).
`
`
`a. Broadening of Scope
`A motion to amend “may not enlarge the scope of the claims of the
`patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii) (“A motion
`to amend may be denied where . . . [t]he amendment seeks to enlarge the
`scope of the claims of the patent . . . .”); Western Digital Corp. v. SPEX
`Techs., Inc., Case IPR2018-00082, slip op. at 6 (PTAB Apr. 25, 2018)
`(Paper 13) (informative) (“[A] patent owner may not seek to broaden a
`challenged claim in any respect, in the name of responding to an alleged
`ground of unpatentability. For example, a proposed substituted claim may
`
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`not remove a feature of the claim, thus broadening it.”). “A new claim
`enlarges if it includes within its scope any subject matter that would not have
`infringed the original patent.” Thermalloy, Inc. v. Aavid Eng’g, Inc., 121
`F.3d 691, 692 (Fed. Cir. 1997). After considering the arguments of the
`parties, see Opp. 3–5; Reply 2–3, and based on the record presented in this
`proceeding, we conclude that proposed substitute claim 19 improperly
`enlarges the scope of claim 1 in two respects.
`First, proposed substitute claim 19 removes the requirement that
`streaming video be processed for delivery to multiple “subscribers.”
`Claim 1 recites “wherein streaming video captured by at least one video
`camera operating within at least one entertainment venue is processed for
`delivery to subscribers of the at least one service.” Claim 19 modifies that
`limitation as follows (with underlining indicating added language and
`brackets indicating removed language):
`wherein streaming video is captured by at least one video camera
`operating within at least one entertainment venue, and wherein
`captured video is processed for delivery to and display by said at
`least one user, wherein said at least one user comprises at least
`one subscriber[[s]] of [[the]] said at least one streaming service.
`Thus, claim 19 covers the situation where captured video is “processed for
`delivery” to just a single subscriber (i.e., “at least one user, wherein said at
`least one user comprises at least one subscriber”), which would not be
`covered by claim 1, which requires that streaming video be “processed for
`delivery” to multiple “subscribers.”
`Patent Owner argues that the term “subscribers” in claim 1 merely
`“describes a class of ‘user,’” such that claim 1 actually does not require
`processing streaming video for delivery to more than one subscriber. Reply
`3. According to Patent Owner, “[t]he term ‘subscribers’ provides a specific
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`class or limiting characteristic to the number of users (‘at least one’) recited
`in the claim. The class of subscribers may be comprised of a single user.”
`Id. As support, Patent Owner cites the Specification of the ’027 patent,
`which discloses that “[i]n some embodiments, the at least one user can be,
`for example, a subscriber.” Ex. 1001, col. 4, ll. 59–61, col. 25, ll. 45–47;
`see Reply 3. Patent Owner also cites a portion of a parent application to the
`’027 patent disclosing that “[i]ntelligent wireless networks generally include
`the use of mobile switching centers (MSCs) having access to network
`servers and databases . . . for providing applications and data to networks,
`service providers and service subscribers (wireless device users).” Ex. 1006,
`p. 46, l. 29–p. 47, l. 2; see Reply 3.
`We do not agree. Claim 1 recites a method for authorizing access to a
`service by “a user,” comprising two steps: (1) determining a location of
`“at least one user” based on communications of a computing device utilized
`by the “at least one user,” and (2) authorizing the computing device to
`receive a service based on the location as determined. The claim further
`recites, in a “wherein” clause, that “streaming video captured by at least one
`video camera operating within at least one entertainment venue is processed
`for delivery to subscribers of the at least one service.” Therefore, regardless
`of who the “at least one user” may be, the claim expressly requires that
`“streaming video . . . is processed for delivery to subscribers of the at least
`one service.” Importantly, claim 1 uses the plural term “subscribers,” rather
`than the singular term “subscriber” or the phrase “at least one user” used
`earlier in the claim. See Tr. 6:14–20 (acknowledging that proposed
`substitute claim 19 removes the term “subscribers”).
`
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`Nor are we persuaded that the Specification supports reading out the
`plural “subscribers” language of claim 1. The Specification discloses
`exemplary embodiments in which “the at least one user can be, for example,
`a subscriber.” Ex. 1001, col. 4, ll. 59–61, col. 25, ll. 45–47. In other words,
`a “subscriber” is a particular type of user. But this single disclosure cannot
`negate the express language of claim 1, which recites more than just the
`existence of “subscribers” in general. Namely, the claim requires that
`streaming video must be “processed for delivery”5 to plural “subscribers.”
`Patent Owner also argued at the hearing that it incorporated the
`language of dependent claim 3 into proposed substitute claim 19, and
`“[i]f original claim 1 required two subscribers, original claim 3 would make
`literally no sense.” Tr. 6:3–13, 7:1–7. We do not agree. Claim 3, which
`depends from claim 1, recites that “said at least one user comprises a
`subscriber.” This language pertains solely to “said at least one user,” i.e.,
`the “at least one user” recited in parent claim 1. Claim 3 limits that user
`(or users) to being a subscriber, whereas in claim 1 the user can be a
`subscriber or a non-subscriber. Again, though, the limitations in claim 1
`pertaining to “at least one user,” such as determining the location of “at least
`one user,” are separate from the limitation requiring that streaming video be
`“processed for delivery” to “subscribers.” Claim 1 does not specify any
`connection between the recited “at least one user” and the recited
`“subscribers.” Thus, there is no inconsistency in claim 1 requiring
`
`
`5 We need not expressly interpret “processed for delivery” to determine
`whether claim 19 enlarges the scope of claim 1. Regardless of the phrase’s
`exact scope, it is a limitation of claim 1—the claimed method is satisfied
`only when “streaming video . . . is processed for delivery to subscribers of
`the at least one service.”
`
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`processing of streaming video for delivery to multiple “subscribers” and
`claim 3 requiring the specific “at least one user” referenced in parent claim 1
`to be a subscriber. Patent Owner’s interpretation of claim 1 would read all
`of the limitations as pertaining to “at least one user,” even though the claim
`uses the plural term “subscribers.” We are not persuaded that such a reading
`is proper, particularly given the different terminology used.
`Second, proposed substitute claim 19 removes the requirement of
`preventing a computing device from receiving a service beyond or within a
`particular geographic area “based on said location determination by said data
`communication network.” Claim 1 recites:
`authorizing said at least one computing device to receive
`said at least one service based on said location as determined by
`said data communications network, . . . wherein said authorizing
`said at least one computing device further comprising preventing
`said at least one computing device from receiving said at least
`one service beyond or within a particular geographic area based
`on said location determination by said data communication
`network.
`Proposed substitute claim 19 removes the above “wherein” clause from
`claim 1. Patent Owner acknowledges that the language is not present, but
`argues that claim 19 includes the clause “in nearly the same manner as
`original claim 1.” Reply 2 (emphasis omitted); see Tr. 9:22–26
`(acknowledging that proposed substitute claim 19 does not use the same
`language as the “wherein” clause of claim 1). Specifically, Patent Owner
`points to the “authorizing” step earlier in the claim, Reply 2, which is
`modified from claim 1 as follows (with underlining indicating added
`language and brackets indicating removed language):
`authorizing said [[at least one]] wireless handheld
`computing device, by a security unit of said wireless handheld
`
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`computing device, to receive [[said]] at least one streaming
`service based on said location as determined by said wireless data
`communication[[s]] network, wherein authorizing said wireless
`handheld computing device based on said location further
`comprises preventing said wireless handheld computing device
`from receiving said at least one streaming service at a location
`beyond or within a particular geographic area, wherein said
`location beyond the particular geographic area further comprises
`a location selected from the group of locations comprising a
`location beyond a particular frequency range and a location
`outside of a particular geographical area associated with a
`wireless network.
`Importantly, however, claim 1 recites that “authorizing” reception of a
`service further comprises “preventing” the computing device from receiving
`the service beyond or within a particular geographic area “based on said
`location determination by said data communication network.” Because
`claim 19 does not include the “based on said location determination by said
`data communication network” phrase of claim 1, claim 19 covers the
`situation where a computing device is prevented from receiving a service
`based on something other than the location determination by the data
`communication network.
`U.S. Patent Application Publication No. 2004/0199635 A1 (Ex. 1049,
`“Ta”) provides an example of such a situation. See Opp. 4. Ta describes a
`system for “allocating bandwidth on a per user basis” where a user connects
`to a control device on a network and the control device authenticates the user
`“based on a network communication from a network application such as a
`web browser . . . running on a user device.” Ex. 1049, Abstract, ¶¶ 29, 31.
`The control device retrieves a profile for the user, initiates and tracks a
`control session for the user based on, for example, the user’s IP address,
`establishes rules based on attributes in the user profile, and regulates
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`bandwidth usage by the user based on the established rules. Id. ¶¶ 32–41.
`For example, the system can drop network communication when a
`maximum bandwidth limit for the user is reached. Id. ¶ 41. The user profile
`also can include attributes specifying “whether the user can use streaming
`services.” Id. ¶ 84. In that way, Ta discloses a situation where a computing
`device is authorized to receive services, but subsequently prevented from
`receiving a service based on a parameter other than a location determination
`by a data communication network. For example, an attribute in a user
`profile may specify that the user is not permitted to receive streaming video,
`or is only permitted to receive a certain amount, such that the user’s device
`would be prevented from receiving streaming video based on that attribute
`(which has nothing to do with location). Thus, we are persuaded that claim
`19 includes within its scope subject matter that would not have infringed
`claim 1.
`Patent Owner argues that claim 19 is narrower than claim 1, quoting
`portions of the “wherein” clauses of claims 1 and 19:
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`Reply 2. Patent Owner, however, omits the following phrase from its
`quotation of claim 1: “based on said location determination by said data
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`communication network.” See id. That language is removed in proposed
`substitute claim 19, making the claim broader than claim 1.
`Patent Owner also argued at the hearing that the “based on said
`location determination by said data communication network” phrase in
`claim 1 is “basically redundant” because the “authorizing” step as a whole
`must be “based on said location.” Tr. 10:2–10. We are not persuaded that
`the original phrase is meaningless. Claim 1 recites “authorizing said at least
`one computing device to receive said at least one service based on said
`location as determined by said data communications network,” “wherein
`said authorizing . . . comprising preventing said at least one computing
`device from receiving said at least one service beyond or within a particular
`geographic area based on said location determination by said data
`communication network.” The fact that different terminology is used for
`each limitation (“based on said location as determined” and “based on said
`location determination”) is indicative that both phrases have meaning. See
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249,
`1257 (Fed. Cir. 2010) (“Claims must be ‘interpreted with an eye toward
`giving effect to all terms in the claim.’” (citation omitted)); Merck & Co.,
`Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)
`(“A claim construction that gives meaning to all the terms of the claim is
`preferred over one that does not do so.”). Further, “authorizing” reception of
`a service and “preventing” reception beyond or within a particular
`geographic area are different actions. It is unclear—and Patent Owner did
`not explain in its papers or at the hearing—how the latter can be considered
`a subset of the former.
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`Moreover, as Petitioner correctly points out, the “preventing”
`limitation was the basis on which the claims were allowed during
`prosecution of the ’027 patent. See Pet. 7–8; Opp. 3. Following an
`interview with the applicants, the examiner entered an examiner’s
`amendment incorporating the “preventing” limitation from pending
`dependent claim 6, expressly stating that the amendment would “further
`limit the scope of the invention,” and allowed the claims. Ex. 1039, 7–9.
`Thus, we are not persuaded that the “based on said location determination by
`said data communication network” phrase in the “preventing” limitation of
`claim 1 is meaningless, as Patent Owner contends.
`Accordingly, we determine that proposed substitute claim 19
`improperly enlarges the scope of claim 1 under 35 U.S.C.