Bradium Technologies LLC v. Andre Iancu (USPTO (Intervenor)
Docket No. 2017-257, -2580 (IPR2016-00448, -00449)
MOORE, REYNA, CHEN
May 13, 2019
Brief summary: Board claim construction and obviousness determinations affirmed (e.g., no “clear and unambiguous definition limiting the term to only one cause, contrary to its plain and ordinary meaning”; no teaching away, art “fairly suggests” claimed subject matter).
Summary: Bradium appealed USPTO (“Board”) decisions finding the claims of US 7,908,343 and CIP 8,924,506 (having a “shared written description”) relating to “retrieving large sacalle images over network communication channels in low-bandwith conditions and displaying” (claiming display systems and methods) the same unpatentable as obvious. Microsoft request the IPRs and the USPTO intervened in this appeal. The Board instituted the IPRs on one ground, obviousness over “Reddy” in view of “Hornbacker”. Prior to institution, neither party requested claim construction, and after institution the Board “rejected Bradium’s proposed construction” of “limited bandwidth communications channel” and instead “adopted the term’s plain and ordinary meaning” based in part of expert testimony (broadest reasonable construction (“BRI”)). The FC panel reviewed “the Board’s ultimate claim construction de novo” and its “subsidiary factual findings involving extrinsic evidence for substantial evidence” (AC Techs., FC 2019; Polaris, FC 2018 (“if a reasonable mind might accept the evidence to support the finding”); Phillips, FC 2005 (“read…in the context of the particular claim” and “in the context of the entire patent, including the specification…the single best guide”); Microsoft, FC 2004 (“When the specification ‘makes clear that the invention does not include a particular feature, that feature is deemed outside the reach of the claims…even though the language, read without reference to the specification, might be considered broad enough to encompass the feature in question.”)) The FC panel disagreed with Bradium regarding its proposed construction requiring “a specific cause for the bandwidth limitation” because the “single statement describing two causes for limited bandwidth is not a clear and unambiguous definition limiting the term to only one cause, contrary to its plain and ordinary meaning” and the Board’s determination is consistent with inventor testimony (Thorner, FC 2012 (“the patentee must ‘clearly express an intent’ to redefine the term”); Howmedica, FC 2008) (e.g., the Board’s “construction follows the claim’s plain language read in light of the written description”)). The FC panel also found the Board’s obviousness determinations were supported by substantial evidence finding, e.g., no teaching away (In re Fulton, FC 2004 (“reference teaches away if it “criticize[s], discredit[s], or otherwise discourage[s] the solution claimed”)); that Bradium did not preserve certain arguments for appeal; that Reddy’s algorithms “would fairly suggest to a person of ordinary skill in the art” the claimed prioritizations (In re Baird, 1994 (“[A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests.); In re Aslanian, CCPA 1979); that a “particular prioritization value” not claimed and cannot be read into claims from written description (Wenger, FC 2011); and that Bradium improperly “attack[ed] the disclosures of the two references individually” (In re Merck, FC 1986). The Board decision was therefore affirmed.