Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 11
`Entered: December 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`v.
`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`
`
`
`
`
`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
`Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
` Paper 11
`Entered: December 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`v.
`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`
`
`
`
`
`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
`Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
`Unified Patents Inc. (“Petitioner”) filed a Inter Partes Review petition
`(Paper 3, “Pet.”) to institute an inter partes review of claims 2, 7, 10, 11, 13,
`16, and 19 (the “challenged claims”) of U.S. Patent 7,174,362 B1 (Exhibit
`1001, the “’362 Patent”) (35 U.S.C. § 311). Blackbird Tech LLC (“Patent
`Owner”) timely filed a Preliminary Response (Paper 9, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314, which provides that an inter partes review
`may not be instituted unless the information presented in the petition “shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we decline to institute an inter partes
`review of claims 2, 7, 10, 11, 13, 16, and 19 of the ’362 patent.
`
`
`I. BACKGROUND
`
`A. Related Matters
`The parties advise us that the ’362 patent is at issue in the following
`proceedings: Blackbird Tech LLC d/b/a Blackbird Technologies v. Studio 3
`Partners LLC d/b/a EPIX, 1-17-cv-00098 (D. Del.); Blackbird Tech LLC
`d/b/a Blackbird Technologies v. Mubi, Inc., 1-17-cv-00099 (D. Del.);
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Netflix, Inc., 1-17-cv-
`00100 (D. Del.); Blackbird Tech LLC d/b/a Blackbird Technologies v.
`SoundCloud, Inc., 1-17-cv-00101 (D. Del.); Blackbird Tech LLC d/b/a
`Blackbird Technologies v. Starz Entertainment LLC, 1-17-cv-00102 (D.
`Del.); Blackbird Tech LLC d/b/a Blackbird Technologies v. Vimeo, Inc., 1-
`17-cv-00103 (D. Del.) (Pet. 1–2; Paper 6, 2–3). The parties additionally
`indicate the ’362 patent was asserted in forty-five (45) additional district
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`court proceedings, which have been dismissed (Pet. 2, n.1 (citing Ex. 1010);
`Paper 6, n.1 (citing Ex. 1010)).
`
`B. The ’362 Patent (Ex. 1001)
`The ’362 patent, entitled “Method and System for Supplying Products
`from Pre-Stored Digital Data in Response to Demands Transmitted via
`Computer Network,” relates to “a digital data duplication system that utilizes
`one or more computer networks to automate the process from order-taking to
`delivery” (Ex. 1001, Abstract). CD (Compact Disc) Writer Server 100
`processes customer requests using Log Manager 200, Resource Manager
`200, and CD Writer Control 400 (id. at 2:39–44, Fig. 1).
`Figure 2 illustrates “a block diagram depicting the process flow from
`order receipt to production” (id. at 2:23–24) and is reproduced below.
`
`
`
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`3
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
`Figure 2 illustrates “a block diagram depicting the process flow from
`order receipt to production,” the process flow including customer interface
`10; CD Writer Server 100 (Log Manager 200, Resource Manager 300, and
`CD Writer Control 400); and CD Writers 1, 2, N 500 (id. at Fig. 2). A
`customer, through customer interface 10 such as a website, a web server, an
`electronic commerce transaction system, a customized start page, or an e-
`mail subsystem, enters a request which includes content to be duplicated (id.
`at 2:48–53, Fig. 2). Customer interface 10 sends the request to Log Manager
`200 which receives and processes the request (id. at 3:5–16). Log Manager
`200 interprets and time-stamps each incoming e-mail 220 (id. at Fig 3, steps
`210, 220); creates a log of e-mails received, in order of receipt (id. at Fig. 3,
`step 230); and schedules production of CDs (id. at Fig. 3, step 240) (id. at
`3:8–20).
`As shown in Figure 2, “Resource Manager [300] maintains two types
`of files: a set of resource files 310, one for each of the output devices
`controlled by CD Writer Server [100], and an archive 320 of all the sounds,
`images, and characters” that represent content that can be transferred to a
`blank medium (CD-R) during the duplication process (id. at 3:23–30, 50–
`52). CD Writer Control 400 retrieves information from Log Manager 200
`and Resource Manager 300, and schedules duplication for each CD Writer
`500 connected (id. at 3:63–65). CD Writer Control 400 selects a CD Writer
`500 (CD Writer 1, CD Writer 2, . . . CD Writer N), based on hardware
`configuration data stored in resource files 310 stored in Resource Manager
`300 (id. at 4:23–25). Once scheduled, CD Writer Control 400 commands
`the selected CD Writer 500 to begin the duplication process (id. at 4:31–34).
`
`
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
`C. Exemplary Claim
`The ’362 patent has three independent claims, claims 2, 7, and 10, and
`four dependent claims, claims 11, 13, 16, and 19, at issue (Ex. 1001,
`Claims). Claim 2 of the ’362 patent is exemplary of the claims at issue:
`2. A computer-implemented method of digital data duplication
`comprising:
`
`taking requests at one or more user interfaces;
`transmitting said requests through a network to a computer;
`assigning each of said requests to one of a plurality of output devices;
`and
`executing the duplication process,
`wherein said computer comprises:
`at least one first module configured to create a task log
`based on incoming requests;
`
`at least one second module configured to store all data
`necessary for executing said duplication process,
`
`
`
`
`
`wherein said data stored in said second module
`comprises:
`
`
`an expandable indexed archive of digital data,
`said data representing contents available for
`request by customers; and
`
`at least one resource file for each of said output
`devices in communication with said computer;
`
`
`at least one third module configured to create a subset of
`said data stored in said second module, further configured
`to download said subset to one of said output devices, and
`further configured to command said output device to
`transfer said subset onto blank media; and
`5
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
` a
`
` connection through which said second module
`communicates with said first module and said third
`module.
`
`
`
`II. ANALYSIS
`
`A. Prior Art Relied Upon
`Petitioner relies upon the following references (Pet. 3–6):
`Reference
`Patent Number
`Yamashita et al. (“Yamashita”)
`6,853,985 B1
`Dockes et al. (“Dockes”)
`6,011,758
`Cook
`5,860,068
`
`Exhibit
`1002
`1003
`1004
`
`
`Petitioner also relies on the Declaration of Mr. David McGoveran (Ex.
`
`1005) (hereinafter, “McGoveran Decl.”).
`
`B. The Asserted Grounds of Unpatentability
`Petitioner challenges claims 2, 7, 10, 11, 13, 16, and 19 of the ’362
`patent on the following grounds (Pet. 5–6):
`Claim(s)
`Basis
`§ 103 (a)
`2
`§ 103 (a)
`19
`7, 10, 11, 13, and 16 § 103 (a)
`
`Reference(s)
`Yamashita and Dockes
`Yamashita, Dockes, and Cook
`Yamashita and Cook
`
`C. Analysis
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear (37 C.F.R.
`
`6
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016)). Under that standard, and absent any special definitions, we give
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention (In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)). Additionally,
`any special definitions for claim terms must be set forth with reasonable
`clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994)).
`Petitioner proposes specific constructions for the recitations “resource
`file” and “connection through which said second module communicates with
`said first module and said third module,” and requests all other claim terms
`“be given their broadest reasonable interpretation in light of the
`specification, as commonly understood by those of ordinary skill in the art”
`(Pet. 16–18).
`Patent Owner asserts Petitioner has failed to properly construe critical
`terms of the challenged claims (Prelim. Resp. 1). Specifically, Patent Owner
`contends Petitioner did not construe the recited “first module,” “second
`module,” and “third module,” instead reading them out of the claims entirely
`(id.). According to Patent Owner,
`Petitioner fails to even address the threshold question of what
`type of construction should apply to these terms: (1) a
`sufficiently definite meaning of “module” that connotes
`structure to a person of ordinary skill in the art; or (2) as a
`nonce word like “means,” invoking construction as a means-
`plus-function term under 35 U.S.C. § 112 ¶ 6
`(id. at 17).
`Initially, we note the ’362 Patent defines explicitly, the term
`“module,” stating “[a] ‘module’ as used herein, refers to the functionality
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
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`and not the configuration of components” (Ex. 1001, 2:44–45). Petitioner
`agrees in so defining the term “module,” Patent Owner eliminates physical
`components from the interpretation of “module” (see Pet. 6).
`Petitioner, however, contends “the ’362 patent explicitly describes the
`“modules” as functional” and further, “[t]he ’362 patent does not limit the
`alleged invention to a type of computer, electrical component, or software”
`(id.). According to Petitioner, an ordinarily skilled artisan “would
`understand that any ‘computer system’ that at least teaches the claimed
`functionality would therefore at least teach (1) the claimed modules, and (2)
`that the modules are connected to each other” (id. at 7 (citing McGoveran
`¶ 30; Ex. 1001, Fig. 2))
`In light of the explicit definition of “module” in the ’362 patent,
`Patent Owner has not eliminated software from the interpretation of the term
`“module.” Further, each of the independent claims recites that a computer
`comprises at least one first, second, and third modules (Ex. 1001, claims).
`Thus, in light of the definition of module as referring to the functionality and
`not the configuration of components, and the recitation as a computer
`comprising the modules, we conclude an ordinarily skilled artisan would
`have interpreted each of the first, second, and third modules as software.
`Next, we look to the specific recitation of the “at least one” first,
`second, and third modules, in the claim. We note none of claims 2, 7, and
`10 recite the terms “means for” (Ex. 1001, claims). Rather, each claim
`recites “at least one first module configured to create,” “at least one second
`module configured to store,” and “at least one third module configured to
`create[,] . . . download[,] . . . and . . . command” (Ex. 1001, Claims). In light
`of this recitation, we first address whether the recited “module configured
`
`
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`for” is in means-plus-function form pursuant to 35 U.S.C. § 112 (6) (see
`Robert Bosch, LLC v. Snap–On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014)).
`If we find that the relevant claim terms recite a means-plus-
`function limitation, we proceed to our second inquiry and
`“attempt to construe the disputed claim term by identifying the
`corresponding structure, material, or acts described in the
`specification to which the term will be limited.” [Robert Bosch,
`LLC, 769 F.3d at 1097] (internal quotation marks and citation
`omitted); see also O.I. Corp. v. Tekmar Co., 115 F.3d 1576,
`1583 (Fed. Cir. 1997) (“The price that must be paid for use of
`[a means-plus-function claim] is limitation of the claim to the
`means specified in the written description and equivalents
`thereof.”). However, “[i]f the specification is not clear as to the
`structure that the patentee intends to correspond to the claimed
`function, then the patentee has not paid that price but is . . .
`attempting to claim in functional terms unbounded by any
`reference to structure in the specification.” Med.
`Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d
`1205, 1211 (Fed. Cir. 2003)
`(Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1346
`(Fed. Cir. 2016)).
` “[T]he failure to use the word ‘means’ creates a rebuttable
`presumption . . . that § 112, para. 6 does not apply” (see Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (citation
`omitted)). However, if the claim term “fails to recite sufficiently definite
`structure or else recites function without reciting sufficient structure for
`performing that function,” this presumption may be rebutted (id. (internal
`quotation marks, brackets, and citation omitted)). “The standard is whether
`the words of the claim are understood by persons of ordinary skill in the art
`to have a sufficiently definite meaning as the name for structure” (id. at
`1349). Here, the claims at issue do not include the word “means.”
`
`
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`
`Nonetheless, the claims themselves do not recite any structure.
`Specifically, all of the independent claims recite “at least one first module,”
`“at least one second module,” and “at least one third module,” each
`configured to perform a function –– “create a task log,” “store all data
`necessary,” and “create a subset, . . . download said subset . . . and . . .
`command said output device,” respectively (Ex. 1001, claims).
`Accordingly, none of the first, second, and third module is a defined
`structure that informs one of ordinary skill in the art what structure performs
`the claimed function.
`Moreover, none of the limitations includes any structure that would
`convey structure to an ordinarily skilled artisan; rather, these limitations
`each recite a function (Ex. 1001, claims). Specifically, claim 2 recites “at
`least one first module configured to create a task log based on incoming
`requests” (id.), a recitation lacking in any structure. Similarly, claim 2’s
`recitation of “at least one second module configured to store all data
`necessary for executing said supplication process” lacks structure as to the
`recited module. Instead, the “at least one second module” recites what data
`is stored (id.). Lastly, no structure is recited for the “at least one third
`module configured to create a subset of said data stored in said second
`module,” “download said subset,” and “command said output device to
`transfer said subset” (id.). Moreover, we are not persuaded an ordinarily
`skilled artisan would understand the recitations to have a sufficiently definite
`meaning as the name for structure (see Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1350 (Fed. Cir. 2015) (“Generic terms such as ‘mechanism,’
`‘element,’ ‘device,’ and other nonce words that reflect nothing more than
`verbal constructs may be used in a claim in a manner that is tantamount to
`
`
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`using the word ‘means’ because they ‘typically do not connote sufficiently
`definite structure’ and therefore may invoke § 112, para. 6.”)). Indeed, even
`the modifiers “first,” “second,” and “third” fail to apprise an ordinarily
`skilled artisan of the structure of the recited “modules.” Thus, a plain
`reading of the term “module configured to” in context of the claim language
`suggest the term “module configured to” is analogous to “means for.”
`A petition for inter partes review must
`[p]rovide a statement of the precise relief requested for each
`claim challenged. The statement must identify . . . [h]ow the
`challenged claim is to be construed. Where the claim to be
`construed contains a means-plus-function or step-plus-function
`limitation as permitted under 35 U.S.C. 112(f), the construction
`of the claim must identify the specific portions of the
`specification that describe the structure, material, or acts
`corresponding to each claimed function.
`(37 C.F.R. § 42.104(b)).
`The Federal Circuit has stated that section 112, “‘paragraph six
`applies regardless of the context in which the interpretation of means-plus-
`function language arises, i.e., whether as part of a patentability
`determination in the PTO or as part of a validity or infringement
`determination in a court’” (IPCom GmbH v. HTC Corp., 861 F.3d 1362,
`1369 (Fed. Cir. 2017) (quoting In re Donaldson Co., 16 F.3d 1189, 1193
`(Fed. Cir. 1994) (en banc))). Therefore, “the construction of a means-plus-
`function limitation under § 112 ¶ 6 ‘must look to the specification and
`interpret that language in light of the corresponding structure, material, or
`acts described therein, and equivalents thereof, to the extent that the
`specification provides such disclosure’” (id.).
`We determine Petitioner does not provide the requisite claim
`construction analysis for the means-plus-function limitations.
`
`11
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`
`
`“In cases involving a computer-implemented invention in which the
`inventor has invoked means-plus-function claiming, [the Federal Circuit] has
`consistently required that the structure disclosed in the specification be more
`than simply a general purpose computer or microprocessor” (Aristocrat
`Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed.
`Cir. 2008)). “A computer-implemented means-plus-function term is limited
`to the corresponding structure disclosed in the specification and equivalents
`thereof, and the corresponding structure is the algorithm’” (Harris Corp. v.
`Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (quoted with approval
`in Aristocrat)). “The algorithm may be expressed as a mathematical
`formula, in prose, or as a flow chart, or in any other manner that provides
`sufficient structure” (Williamson v. Citrix, 792 F.3d at 1352 (citing Noah v.
`Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012))). Here, Petitioner merely
`identifies functionality that may include a computer processor but does not
`identify any algorithm in the Specification for performing the claimed
`function.
`Petitioner contends
`[a] POSA would appreciate that while “boxes” in a flow chart
`are shown above in Figure 2, the ’362 patent specification does
`not define these boxes or modules as differing structurally.
`(McGoveran ¶¶ 28-30). The ’362 patent explicitly describes
`the “modules” as functional. (’362 patent, 2:44-45) . . . . None
`of the log manager 200, resource manager 300, or CD writer
`400 are anywhere described as being limited to a physical unit
`that is distinct from any other
`(Pet. 6). Regardless of whether the at least first, second, and third modules
`are not “limited to a physical unit that is distinct from any other” (id.),
`
`
`
`
`12
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`Case IPR2017-01525
`Patent 7,174,362 B1
`
`Petitioner has still not shown any algorithm for the modules, which we
`determined to be computer-implemented means-plus-function terms.
`If the scope and meaning of the challenged claims cannot be
`determined without speculation, the differences between the claimed
`invention and the prior art cannot be ascertained (BlackBerry Corp. v.
`MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 8, 20 (PTAB
`Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA
`1962), and reasoning that “the prior art grounds of unpatentability must fall,
`pro forma, because [the grounds] are based on speculative assumption as to
`the meaning of the claims.”)). Stated in other terms, “[w]ithout ascertaining
`the proper claim scope, we cannot conduct a necessary factual inquiry for
`determining obviousness—ascertaining differences between the claimed
`subject matter and the prior art” (id. at 20 (citing Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966))). The Board has terminated proceedings or
`denied institution of inter partes review when the scope of the challenged
`claims could not be determined without speculation (see, e.g., BlackBerry,
`slip op. at 13–14; Facebook, Inc. v. TLI Commc’ns LLC, Case IPR2014-
`00566, slip op. at 9–12 (PTAB Sept. 15, 2014) (Paper 14); Space
`Exploration Techs. Corp. v. Blue Origin LLC, Case IPR2014-01378, slip op.
`at 7–9 (PTAB Mar. 3, 2015) (Paper 6); Micron Tech., Inc., v. Innovative
`Memory Sys., Inc. Case IPR2016-00324, slip op. 9–20 (PTAB June 13,
`2016) (Paper 11)).
`
`Petitioner has not identified any structure corresponding to the recited
`functions and, specifically, any algorithms corresponding to the recited
`functions required for our proceedings under our Rules and in view of the
`guidance of the Federal Circuit on this issue (see 37 C.F.R. § 42.104(b)(3);
`
`
`
`
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`IPCom GmbH v. HTC Corp., 861 F.3d at 1369–71). Specifically, Petitioner
`does not “identify the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function,” as
`required by our Rules (37 C.F.R. § 42.104(b)(3)), to enable us to determine
`if the asserted prior art teaches such structure. Thus, Petitioner fails to
`demonstrate a reasonable likelihood of prevailing in its challenge to
`independent claims 2, 7, and 10 as well as its challenge to claims 11, 13, 16,
`and 19.
`
`
`III. CONCLUSION
`We conclude that Petitioner has not demonstrated a reasonable
`likelihood of prevailing on the following grounds of unpatentability asserted
`in the Petition:
`Claim 2 under 35 U.S.C. § 103 (a) for obviousness over
`Yamashita and Dockes;
`Claim 19 under 35 U.S.C. § 103 (a) for obviousness over
`Yamashita, Dockes, and Cook; and
`Claims 7, 10, 11, 13, and 16 under 35 U.S.C. § 103 (a) for
`obviousness over Yamashita and Cook.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`
`
`
`
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`PETITIONER:
`
`David L. Cavanaugh
`Daniel V. Williams
`Vera A. Shmidt
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`vera.shmidt@wilmerhale.com
`
`Ashraf Fawzy
`Jonathan Stroud
`UNIFIED PATENTS INC.
`afawzy@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Walter D. Davis, Jr.
`Wayne M. Helge
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`wdavis@dbjg.com
`whelge@dbjg.com
`anoto@dbjg.com
`
`
`
`
`15
`
`
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