Trials@uspto.gov
`571-272-7822
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`Paper 32
`Entered: December 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`
`v.
`
`STRAGENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01522
`Patent 8,209,705 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, PATRICK M. BOUCHER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 32
`Entered: December 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`
`v.
`
`STRAGENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01522
`Patent 8,209,705 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, PATRICK M. BOUCHER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2017-01522
`Patent 8,209,705 B2
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`In response to a Petition (Paper 2, “Pet.”) filed by BMW of North
`America, LLC (“Petitioner”), we instituted an inter partes review of claims
`7–14 and 16–19 of U.S. Patent No. 8,209,705 B2 (“the ’705 patent”).
`Paper 7 (“Dec.”); Paper 18. During the trial, Stragent, LLC (“Patent
`Owner”) filed a Response (Paper 10, “PO Resp.”) to which Petitioner filed a
`Reply (Paper 25, “Reply”). An oral hearing was held with the parties, and a
`copy of the transcript was entered into the record. Paper 31 (“Tr.”).1
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 7–14 and 16–19
`are unpatentable.
`
`
`I. BACKGROUND
`A. The ’705 Patent
`The ’705 patent describes systems and methods “for sharing
`information in a distributed system.” Ex. 1001, 1:29–30. Such systems and
`methods are illustrated for system architectures such as “may be situated in
`automotive electronics or industrial control and monitoring systems.” Id. at
`3:11–13. An example is provided in Figure 1 of the ’705 patent, which is
`reproduced below.
`
`
`1 The hearing was a consolidated hearing for IPR2017-01519,
`IPR2017-01520, IPR2017-01521, and IPR2017-01522.
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`Figure 1 generally depicts elements of a distributed embedded
`communication and computing system. Id. at 3:9–11.
`In an automotive environment, various electronic control units
`(“ECUs”) control such applications as engine control, brake control, or
`diagnostics through connections to various sensors and actuators organized
`into separate subnetworks. Id. at 3:13–18. Such applications are themselves
`grouped into backbone system functions, such as “body control, power train
`and chassis.” Id. at 3:19–21. With a hierarchical organization that includes
`gateways 101, 103, 104, 105, messages are relayed up and down through the
`system layers. Id. at 3:24–26. Each layer may contain multiple ECUs
`connected through wired serial multiplexing bus systems, with the ’705
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`patent noting several examples that include Controller Area Network
`(“CAN”), Local Interconnect Network (“LIN”), and Flexray. Id. at 3:26–33.
`At the highest level in the hierarchy, “the system level,” system
`gateway 101 is connected via various busses to other system-level ECUs, to
`subsequent gateways 103, and to external components 120. Id. at 3:60–67.
`In addition, system gateway 101 may be connected to external gateway 131
`to link the system to remote device 132. Id. at 4:1–6. “Subsequent to the
`system level may be several layers of groups and subgroups that are link[ed]
`to the higher levels via gateways (101, 103, 104, 105).” Id. 4:7–9.
`In operation, ECU 102 receives “real-time” input variables from local
`sensors 108 or from networked sensors 106, respectively via signal lines 113
`or multiplexing bus system 112. Id. at 3:39–42. “[R]eal-time may include
`any response time that may be measured in milli- or microseconds, and/or is
`less than 1 second.” Id. at 3:36–38. ECU 102 processes the input variables
`and generates output variables that may be shared with other ECUs 102. Id.
`at 3:46–51. Two relevant modes of sharing are described.
`First, ECUs 102 “typically share information with devices that are
`connected on the same physical multiplexing system. This method of
`information sharing is called horizontal information sharing in a hierarchical
`system.” Id. at 3:51–55.
`Second, a bulletin board may be used so that “the information is
`shared, in real-time, among a plurality of heterogeneous processes.” Id. at
`1:31–33. According to the ’705 patent, “heterogeneous networks may refer
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`to any different communication networks with at least one aspect that is
`different.” Id. at 7:27–29. Figure 7 of the ’705 patent, reproduced below,
`illustrates a logical architecture between three heterogeneous network
`controllers using such a bulletin board.
`
`
`Figure 7 illustrates a system architecture in which a bulletin board acts as a
`shared memory interacting with multiple communication busses, with data
`received from one communication bus stored on the bulletin board and
`shared as a new message with other network types. Id. at 7:4–37.
`The illustrated architecture includes four principal components:
`(1) network controllers 702, 703, and 704 (first column) for each of multiple
`heterogeneous networks; (2) associated operating system interfaces 705 for
`each of the heterogeneous networks (second column); (3) remote message
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`communication processes 706 for stripping out network-specific information
`(third column); and (4) the bulletin board, which may contain events 607,
`real-time variables 608, configuration parameters, and firmware. Id. at
`5:63–67, 6:33–37. In operation, external event 701, such as a flag indicating
`that data from a sensor are available, is transmitted on a network to a
`communication bus controller, such as network controller 703 in the
`drawing. Id. at 7:4–9. This causes an operating system interface (such as
`communication interface 709) to notify a remote message communication
`process (such as remote message conversion method 710) that data are
`available, with notification provided in turn to application process 606. Id.
`at 7:4–17.
`
`
`B. Prosecution History
`The ’705 patent is a continuation of U.S. Patent No. 7,802,263 (“the
`’263 patent”), filed December 15, 2003, and claims the benefit of the filing
`date of U.S. Provisional Application No. 60/434,018 (“the ’018 provisional
`application”), filed December 17, 2002. Ex. 1001 at [60], [63].
`At the time of filing the application that matured into the ’263 patent,
`independent claim 1 recited the following:
`1. A method for sharing information in a distributed system,
`comprising:
`receiving information;
`storing the information on a bulletin board; and
`sharing, in real-time, the information among a plurality
`of heterogeneous processes.
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`Ex. 1011, 649. Although certain amendments were made to the claim during
`prosecution, allowance was secured only after an interview with the
`Examiner in which the applicants authorized the addition of several
`limitations that Petitioner characterizes as “memory-related”:
`(1) “requesting a bulletin board resource of one or more bulletin boards”;
`(2) “determining whether the bulletin board resource is available”; (3) “in
`the event the bulletin board resource is not available, re-requesting the
`bulletin board resource until a threshold has been reached”; and (4) storing
`the information on the bulletin board resource “in the event the bulletin
`board resource is available.” Id. at 250–252 (emphasis omitted); see Pet. 5–
`6.
`
`The claim that matured into independent claim 7 of the ’705 patent
`(originally filed claim 19) generally paralleled the form of independent
`claim 1 of the ’263 patent at the time of filing, but recited a “computer
`program product” rather than a “method”:
`19. A computer program product for sharing information in a
`distributed system, comprising:
`computer code for receiving information;
`computer code for storing the information on a bulletin
`board; and
`computer code for sharing, in real-time, the information
`among a plurality of heterogeneous processes.
`
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`Ex. 1002, 257. During prosecution, the applicants authorized, among other
`amendments, the addition of what Petitioner characterizes as “memory-
`related limitations similar to those in the claims of the ’263 patent”:
`computer code for, in the event the storage resource is not
`available, determining whether a timeout has been reached and
`causing a re-request in connection with the storage resource;
`computer code for, in the event the storage resource is
`available, causing storage of the information utilizing the on a
`bulletin board storage resource if the timeout has not been
`reached; [and]
`computer code for, in the event the timeout has been
`reached, causing an error notification to be sent.
`
`Id. at 87–90 (underscoring in original to identify material added by
`amendment). These added limitations were among those identified by the
`Examiner in allowing the application as not “disclose[d] or suggest[ed]”
`“when taken in the context of [the] claims as a whole.” Id. at 98–99.
`
`
`C. Illustrative Claim
`Challenged claim 7, which is illustrative of the challenged claims, is
`reproduced below with numbers added to identify specific elements of the
`claim in accordance with the scheme used by Petitioner. See Pet. 10–11.
`7. [0] A non-transitory computer-readable medium storing a
`computer program product for sharing information, the computer
`program product comprising:
`[1] computer code for allowing receipt of information
`associated with a message, utilizing a first network protocol
`associated with a first network;
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`[2] computer code for causing a determination as to
`whether a storage resource is available;
`[3] computer code for, in the event the storage resource is
`not available, determining whether a timeout has been reached
`and causing a re-request in connection with the storage resource;
`[4] computer code for, in the event the storage resource is
`available and the timeout has not been reached, causing storage
`of the information utilizing the storage resource;
`[5] computer code for, in the event the timeout has been
`reached, causing an error notification to be sent; and
`[6] computer code for causing the information to be shared
`
`by:
`[7] in real-time, sharing the information utilizing at
`
`
`least one message format corresponding to a second network
`protocol associated with a second network which is different
`from the first network protocol;
`[8] wherein the computer program product is associated
`with an electronic control unit with at least one gateway function,
`and a plurality of interface portions including:
`
`
`[9] a first interface portion for interfacing with the
`first network, the first interface portion including a first interface-
`related first layer part for receiving first interface-related first
`layer messages and a first interface-related second layer part, the
`first interface-related first layer messages being processed after
`which first interface-related second layer messages are provided,
`where the first network is at least one of a Controller Area
`Network, a Flexray network, or a Local Interconnect Network;
`and
`[10] a second interface portion for interfacing with
`
`
`the second network, the second interface portion including a
`second interface-related first layer part for receiving second
`interface-related first layer messages and a second interface-
`related second layer part, the second interface-related first layer
`messages being processed after which second interface-related
`second layer messages are provided, where the second network
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`is different from the first network and is at least one of the
`Controller Area Network, the Flexray network, or the Local
`Interconnect Network.
`
`Ex. 1001, 13:5–52.
`
`
`D. Evidence
`Petitioner relies on the following references. Pet. 15–24.
`Millsap
`US 6,484,082 B1
`Nov. 19, 2002
`Ex. 1015
`
`
`OSEK/VDX Binding Specification, Version 1.3 (Sept. 17, 2001) (“OSEK
`Binding”) (Ex. 1007)
`
`OSEK/VDX Communication Specification, Version 2.2.2 (Dec. 18, 2000)
`(“OSEK COM”) (Ex. 1008)
`
`OSEK/VDX Network Management Concept and Application Programming
`Interface, Version 2.51 (May 31, 2000) (“OSEK NM”) (Ex. 1009)
`
`OSEK/VDX Fault-Tolerant Communication, Version 1.0 (July 24, 2001)
`(“OSEK FTCom”) (Ex. 1010)2
`
`William Wong, Software And Hardware Standards Help, But In-Vehicle
`Network Growth Will Be Conservative: CAN networks and OSEK/VDX-
`compatible operating systems will drive tomorrow’s vehicles, 49 Elec.
`Design 62 (Jan. 8, 2001) (“Wong”) (Ex. 1012).
`
`
`
`2 Petitioner refers to OSEK Binding, OSEK COM, OSEK NM, and OSEK
`FTCom collectively as “OSEK/VDX.” Where we deem appropriate, we use
`the same terminology herein.
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`In addition, Petitioner provides Declarations by Vijay K. Madisetti,
`Ph.D., Christopher Butler, and R. Benjamin Cassady, which we have also
`considered. Exs. 1003, 1013, 1014. No cross-examination testimony of
`these witnesses was filed in the proceeding.
`Patent Owner provides a Declaration by Jeffrey A. Miller, Ph.D.
`Ex. 2001. Dr. Miller was cross-examined by Petitioner, and a transcript of
`his deposition was entered into the record. Ex. 1027.
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claims 7–14 and 16–19 over the following
`combinations of references. Pet. 12.
`References
`OSEK/VDX
`OSEK/VDX
`OSEK/VDX, Millsap, and Wong
`
`Basis
`§ 102(b)
`§ 103(a)
`§ 103(a)
`
`
`We instituted this proceeding on all of the above-identified challenges,
`except the anticipation ground over OSEK/VDX. Dec. 27. Subsequent to
`instituting the proceeding, the Supreme Court held that a final written
`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
`challenged in a petition for inter partes review. SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018). Accordingly, we notified the parties that “[w]e
`modify our institution decision to institute on all of the challenged claims
`and all of the grounds presented in the Petition.” Paper 18, 2. Neither party
`requested further briefing in light of that notification.
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`F. Real Parties in Interest
`Petitioner identifies BMW of North America, LLC, BMW
`Manufacturing Co., LLC, and Bayerische Motoren Werke, AG as real
`parties-in-interest in this proceeding. Pet. 66.
`Patent Owner identifies only itself as a real party-in-interest. Paper 4,
`
`1.
`
`
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`G. Related Proceedings
`The parties identify the following district-court proceedings as
`involving the ’705 patent: (1) Stragent, LLC v. BMW of North America,
`LLC, No. 6:16-cv-00446 (E.D. Tex.); (2) Stragent, LLC v. Mercedes-Benz
`USA, LLC, No. 6:16-cv-00447 (E.D. Tex.); and (3) Stragent, LLC v. Volvo
`Cars of North America, LLC, No. 6:16-cv-00448 (E.D. Tex.). Pet. 66;
`Paper 4, 1–2.
`The following inter partes review proceedings also involve the ’705
`patent: IPR2017-00458, IPR2017-00676, IPR2017-01502, and IPR2017-
`01521.
`The following inter partes review proceedings involve U.S. Patent
`No. 8,556,843 B2 (“the ’843 patent”), which is a continuation of the ’705
`patent: IPR2017-00457, IPR2017-00677, IPR2017-01503, IPR2017-01504,
`IPR2017-01519, and IPR2017-01520.
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding based on a petition filed prior to
`November 13, 2018, the Board interprets 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(b) (2016); Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
`use of the broadest reasonable interpretation standard).3 An inventor may
`provide a meaning for a term that is different from its ordinary meaning by
`defining the term in the specification with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`
`1. “real-time”
`Independent claim 7 recites “in real-time, sharing the information.”
`Ex. 1001, 13:24–25. The term “real-time” also appears in dependent claim
`17. Id. at 14:28. Petitioner argues that the Specification of the ’705 patent
`
`
`3 The Office recently promulgated changes to the claim-construction
`standard applied in inter partes review proceedings. Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018).
`Because the Petition was filed before November 13, 2018, effective date of
`the rule change, however, those changes do not apply to this proceeding. Id.
`at 51,345 (“The Office will continue to apply the BRI standard for
`construing unexpired patent claims . . . in AIA proceedings where a petition
`was filed before the effective date of the rule.”).
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`expressly defines “real-time”: “In the context of the present description,
`real-time may include any response time that may be measured in milli- or
`microseconds, and/or is less than 1 second.” Pet. 12; Ex. 1001, 3:35–38.
`Accordingly, Petitioner proposes that “‘real-time’ should be construed as
`responses that occur in less than one second.” Pet. 6 (citing Ex. 1003 ¶ 56).
`Patent Owner contends that the definition from the Specification should be
`adopted. PO Resp. 14.
`We construe “real-time” as Petitioner proposes, i.e., as including
`responses that occur in less than one second. The first part of the quote cited
`above provided in the Specification (“may be measured in milli- or
`microseconds”) is not limiting because any response time, no matter how
`large or small, may be measured in milli- or microseconds.
`
`
`2. “isolated from temporal characteristics”
`Dependent claim 10 recites that “at least one of the different processes
`process the information in a manner that is isolated from temporal
`characteristics associated with at least one of a plurality of heterogeneous
`networks.” Ex. 1001, 13:54–67. Petitioner proposes that “isolated from
`temporal characteristics” be construed as “unaffected by the temporal
`behavior,” and supports its proposed construction with examples provided in
`the Specification and with testimony by Dr. Madisetti. Pet. 13 (citing Ex.
`1001, 8:47–51, 8:64–9:2, 11:10–13; Ex. 1003 ¶ 57). Patent Owner does not
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`address construction of the term. Petitioner’s proposed construction is
`reasonable, and we adopt it.
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`3. “heterogeneous networks”
`As noted above, dependent claim 10 recites isolation from temporal
`characteristics associated “with at least one of a plurality of heterogeneous
`networks.” Ex. 1001, 13:66–67. The Specification of the ’705 patent
`defines “heterogeneous networks”: “In the context of the present
`description, heterogeneous networks may refer to any different
`communication networks with at least one aspect that is different.” Ex.
`1001, 7:26–29. In light of this explicit definition, we construe
`“heterogeneous networks” as Petitioner proposes, i.e., as “networks having
`at least one aspect that is different.” Pet. 13–14 (citing Ex. 1003 ¶ 58).
`Patent Owner does not address construction of the term.
`
`
`4. “diagnostic mode”
`Dependent claim 18 recites that “multiple modes of operation are
`enabled, wherein at least one of the modes includes a diagnostic mode.” Ex.
`1001, 14:33. The Specification of the ’705 patent states the following as an
`enhancement that addresses shortcomings of traditional computer networks:
`The concept that an embedded communication and computing
`network can run in multiple modes in order to provide for a
`guaranteed deterministic behavior of the system. This property
`can be achieved by only allowing change to the configuration
`and/or the functions (SW code) in a secured configuration and
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`upgrade mode. If the network is booted in the normal operating
`mode, all processors execute the existing code and only allow
`data sharing through the bulletin boards. The emergency or
`debug mode lets the network run in a fail-safe reduced operation
`mode or in a diagnostic mode that allows inspection of the
`system, while it is running. For each operating mode, the
`gateway can store a processing image on the bulletin board. The
`advantage of this procedure is that only the communication hubs
`need to deal with secure data transfer and encryption while the
`peripheral nodes in the network can be relative[ly] simple in
`design.
`
`Id. at 11:51–67 (emphases added). In light of this disclosure, the parties
`agree that a “diagnostic mode” is a mode that allows inspection of the
`system while it is running. Pet. 14; PO Resp. 18–19; Reply 9. But Patent
`Owner contends, in view of the emphasized portions of the disclosure
`reproduced above, that a “diagnostic mode” is also “a distinct mode from the
`‘normal operating mode.’” PO Resp. 19.
`Patent Owner has the more compelling position, particularly in light
`of the claim’s recitation that “multiple modes of operation are enabled.”
`Ex. 1001, 14:32. Within the context of such multiple modes, and the
`Specification’s description of different modes as distinct from “the normal
`operating mode,” it would be unreasonable to adopt a construction in which
`a “normal operating mode” that has diagnostic capability falls within the
`scope of the recited “diagnostic mode.”
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`Accordingly, we construe “diagnostic mode” similarly to how Patent
`Owner proposes, as a mode, distinct from normal operation, that allows
`inspection of the system while it is running.
`
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`5. Information Sharing
`Patent Owner addresses limitations 7.6, 7.7, and 7.10 of the only
`challenged independent claim, i.e., claim 7, in the context of how they relate
`to sharing of information. PO Resp. 13–18. Limitations 7.6 and 7.7 recite
`“computer code for causing the information to be shared by: in real-time,
`sharing the information utilizing at least one message format corresponding
`to a second network protocol associated with a second network.” Ex. 1001,
`13:23–27. According to Patent Owner, “the words ‘the information’ clearly
`refer to information previously identified in the claims.” PO Resp. 13–14.
`Patent Owner contends that such information is “the ‘information associated
`with a message, utilizing a first network protocol associated with a first
`network’ (limitation 7.1) which was caused to be stored utilizing the storage
`resource (limitation 7.4) – i.e., it is information whose storage was
`completed to the bulletin board or the storage area.” Id. Bootstrapping this
`argument, Patent Owner similarly contends that “the second network”
`recited in limitation 7.10 is “utilizing a second different protocol which is
`the recipient of the ‘shared’ information connected to the storage resource.”
`Id. at 15–16 (citing Ex. 2001 ¶ 33).
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`Patent Owner thus contends that information sharing requires
`completion of storage to the recited bulletin board or storage resource.
`Patent Owner also cites a general-dictionary definition of “share” as “to
`partake of, use, experience, occupy, or enjoy with others; to have in
`common.” Id. at 14 (citing Ex. 2003).
`We are not persuaded by Patent Owner’s contention. Outside of the
`preamble, claim 7 first recites “information” as part of the requirement of
`“computer code for allowing receipt of information associated with a
`message, utilizing a first network protocol associated with a first network.”
`Ex. 1001, 13:8–10. The claim includes recitations for various code that
`contemplate potentially different actions depending on the satisfaction of
`different conditions. For example, code causes a “determination as to
`whether a storage resource is available,” and, “in the event the storage
`resource is available,” code “caus[es] storage of the information utilizing the
`storage resource.” Ex. 1001, 13:11–12, 13:18–20. But additional code
`causes “a re-request in connection with the storage resource” in the event the
`storage resource is not available, and causes an error notification to be sent if
`“the timeout has been reached.” Id. at 13:14–17, 13:21–22. The plain
`language of the claim does not require that “the information” be stored using
`the “storage resource” under all conditions.
`The plain language of the claim does, though, always require the
`presence of “computer code for causing the information to be shared,”
`specifically by “in real-time, sharing the information utilizing at least one
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`message format corresponding to a second network protocol associated with
`a second network.” Id. at 13:24–27. Nothing in the plain language of this
`element requires that “the information” have been stored with the storage
`resource. Indeed, Petitioner identifies “embodiments of the specification
`that share information not using a shared storage.” Reply 6–7. In particular,
`the Specification of the ’705 patent describes “horizontal information
`sharing in a hierarchical system” where output variables generated by an
`ECU are output to local actuators, which are connected via discrete signal
`lines or networked actuators connected via a multiplexing bus. See Ex.
`1001, 8:51–59, 7:38–49 (“In an alternate embodiment of the remote message
`communication process . . . [t]o communicate between two heterogeneous
`networks, this process may then be repeated in reverse by adding back the
`header information for the various layers of the second network, and
`eventually putting the message onto the second network’s physical link.”);
`see Tr. 10:19–12:7 (Petitioner, at oral hearing, discussing embodiment that
`shares information without using a shared storage). Furthermore, the
`description of “information” as “capable of being stored and shared” in the
`’705 patent Specification is consistent with storage and sharing being
`distinct concepts. See Ex. 1001, 3:56–59 (emphasis added).
`At the oral hearing, in discussing similar limitations that appear in
`independent claim 1 of the related ’843 patent, Patent Owner argued that
`“the information” recited in element 1.7 (“in real-time, sharing the
`information utilizing at least one message format corresponding to a second
`
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`network protocol associated with a second network”) (emphasis added)
`necessarily refers to “the information” recited in element 1.5 (code for, in
`the event the storage resource is available, causing storage of the
`information utilizing the storage resource”) (emphasis added):
`Our position is that the information then appears in Element 1.5,
`which says the information is stored utilizing a storage resource.
`Therefore, the next time the word the information is used, it’s
`now referring to the last antecedent basis, which is no longer
`Element 1.1. The last antecedent basis is Element 1.5.
`
`Tr. 48:10–14. But Patent Owner is unable to identify sufficient legal basis
`for its “last antecedent” theory. See id. at 40:8–15 (“I have not found the
`concept in patent claim construction.”).
`In addition to these considerations, we note that Patent Owner has
`submitted a definition of “share” drawn from a technical dictionary into the
`record of this proceeding. Ex. 2004.4 We find the technical dictionary
`provided by Patent Owner to be more probative than the general-purpose
`dictionary Patent Owner quotes.
`The language of the general-purpose dictionary definition that states
`“to partake of, use, experience, occupy, or enjoy with others; to have in
`
`4 We note that, even if Patent Owner had not entered Exhibit 2004 into this
`proceeding, judges are free to rely on extrinsic dictionary definitions when
`construing claim terms, so long as the dictionary definition does not
`contradict any definition found in or ascertained by a reading of the patent
`documents. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6
`(Fed. Cir. 1996) see Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed.
`Cir. 2005) (en banc).
`
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`common,” does not appear to contemplate the sharing of “information,”
`which the ’705 patent Specification describes as “includ[ing] data, a signal,
`and/or anything else capable of being stored and shared.” See Ex. 2003
`(general definition of “share”); Ex. 1001, 3:56–59. Instead, the technical
`definition of “[t]o make files, directories, or folders accessible to other users
`over a network” is more relevant because it expressly contemplates the same
`context as the ’705 patent, i.e., sharing over a network. Ex. 2004 (technical
`definition of “share”).
`Thus, the plain language of the claim, intrinsic evidence in the form of
`the Specification, and extrinsic evidence in the form of a technical-
`dictionary definition all support a construction of information sharing that
`requires making the information accessible, without requiring storage of the
`information. We accordingly construe the various recitations of information
`sharing in the claims in accordance with such requirements.
`
`
`6. Other Terms
`We do not find it necessary, for purposes of this Decision, to construe
`any other terms explicitly. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (only
`terms in controversy need to be construed, and only to the extent necessary
`to resolve the controversy).
`
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`B. Effective Filing Date
`Petitioner contends that the challenged claims are entitled to claim the
`benefit of only the December 15, 2003, filing date of the ’263 patent, and, in
`particular, that they are not entitled to the December 17, 2002, filing date of
`the ’018 provisional application. Pet. 7–9. Petitioner argues that “the ’263
`patent is the first instance where Patent Owner even arguably disclosed” the
`“memory-related limitations,” and that the ’018 provisional application does
`not disclose
`at least the following limitations of claim 7: “computer code for,
`in the event the storage resource is not available, determining
`whether a timeout has been reached and causing a re-request in
`connection with the storage resource,” “computer code, in the
`event the storage resource is available and the timeout has not
`been reached, causing storage of the information utilizing the
`storage resource,” and “computer code for, in the event the
`timeout has been reached, causing an error notification to be
`sent.” EX 1001, claim 7, see generally EX1005.
`
`Id. at 9. Petitioner further contends that “the [’018] provisional application
`simply and generally states that ‘the bulletin board manager provides
`mechanisms for access control,’” and that “[t]his broad statement in no way
`discloses the claim limitations described above.” Id. (citing Ex. 1005, 8).
`Patent Owner does not present any evidence or argument that the ’705 patent
`is entitled to claim the benefit of the ’018 provisional application filing date.
`For a claim of a patent to claim priority from the filing date of its
`provisional application, the provisional application must contain a written
`description of the claim in the manner set forth under 35 U.S.C. § 112. 35
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`U.S.C. § 119(e)(1). Although a petitioner bears the ultimate burden of
`persuasion to show a claim is unpatentable, a second and distinct burden—
`the burden of production—is a shifting burden. Dynamic Drinkware, LLC v.
`National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). In cases
`such as here, where Petitioner has presented sufficient evidence and
`argument of unpatentability based on a reference that pre-dates the filing
`date of the ’705 patent, Petitioner meets its initial bur
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