RECEIVED
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`MAY 1 7 2013
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`CENTRAL
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`REEXAMINATIOPIDNWHE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Ex Parte Reexamination of:
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`US. Patent No. 7,010,508 to LOCKWOOD
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`Confirmation No.2 1015
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`Control No.: 90/012,671
`Filed: September 15, 2012 ’
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`‘
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`Art Unit: 3992
`Examinerf REICHLE, Karin M.
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`For: Automated Multimedia Data
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`Patent Owner’s Atty. Docket: 3323.002REX5
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`Processing Network
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`Patent Owner’s Reply to Office Action in Ex Parte Reexamination
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`Mail Stop “Ex Parte Reexam”
`Attn: Central Reexamination Unit
`Commissioner for Patents
`PO. Box 1450
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`Alexandria, VA 22313—1450
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`Sir:
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`The intrinsic and extrinsic evidence demonstrate “stored data” recited in “means for
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`analyzing and for combining an user’s entry with a set of stored data” is broadly interpreted by a
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`person having ordinary skill in the art at the time of the invention to mean data accessed from a
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`remote location. Johnson’s standalone computer uses “rules,” i.e., machine instructions, to operate
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`on facts and user input and cannot perform any bi-directional communication — cannot access
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`anything remote from the standalone computer. Hence, neither Johnson’s “rules” nor any other
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`disclosure can anticipate at
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`least
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`the claimed “stored data.” Patent Owner therefore requests
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`reconsideration and confirmation of rejected independent claim 8 and its dependents 9-15.
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`The Office granted a one-month extension of time in its petition decision mailed on March
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`14, 2013 to extend the due date for this Reply to from April 20, 2013 to May 20, 2013.
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`Fees for additional claims are being paid. If additional
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`fees are necessary to prevent
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`abandonment of this reexamination, then such fees are hereby authorized to be charged to our
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`Deposit Account No. 19-0036.
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`1
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`Lockwood Exhibit 2012
`G81 v. Lockwood
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`IPR2014-00025
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`1
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`Lockwood Exhibit 2012
`GSI v. Lockwood
`IPR2014-00025
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`Lockwood 35 (1.5. C. § 1.131 Declaration Exhibits
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`Lockwood Exhibit A
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`Lockwood Exhibit B
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`Lockwood Exhibit C
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`
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`Conception Claim Chart — Mapping claim terms to conception documents
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`Priority Claim Chart Mapping of 508 patent claims to ’525 application
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`Lawrence Lockwood Rule 131 Declaration
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`Lockwood Exhibit D
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`Henri J A Charmasson Rule 131 Declaration
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`Lockwood Exhibit 1
`US Patent No. 4,359,631 (now RE32,115) Filed July 11, 1980
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`Lockwood Exhibit 2
`Letter from State of California Department of Insurance - July 27, 1982
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`Lockwood Exhibit 3
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`US. Patent No D286 956 - Filed September 26 1982
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`Lockwood Exhibit 4
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`Automated Insurance Centers (AIC) Painting - Fall 1982
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`Lockwood Exhibit 5
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`Centron Automated Insurance Centers Spring 1983
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`Lockwood Exhibit 6
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`Letter from PIA Merchandismg Co
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`January 4 1983
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`Lockwood Exhibit 7
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`The Research Project - Automated Insurance Centers - May 1983
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`.
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`LOCkWOOd Exmblt 8
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`Gerald K. Moore’s Summary of Expended Time - June 1983 to December
`1983; Insurance Company Letters August to September 1983
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`Lockwood Exhibit 9
`Lockwood Exhibit 1 0
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`Centron Automated Insurance Centers Busmess Plan - August 1983
`Cgoégsumer Marketing Inc. and Centron 5 Marketing Agreement - October
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`Lockwood Exhibit 1 1
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`Automated Insurance Centers Scale Model - November 21, 1983
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`Consumer Marketing Inc., Security Pacific Insurance Services, Inc., and
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`LOCkWOOd EXhlblt 12
`Automated Insurance Centers Proposal - February 1984
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` . .
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`LOCkWOOd EXhlblt 13
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`Com Technology, Inc. and Centron AIC Demonstration Agreement - October
`1983; Proprietary Rights Agreement - February 1984
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`Lockwood Exhibit 14
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`Com Technology, Inc., The Automated Insurance System — August 1983
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`
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`Proprietary Rights Agreement - February 1984
`Lockwood Exhibit 15
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`Lockwood Exhibit 16
`Automated Insurance Network - April 1984
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`US. Patent No. 4,567,359 - Filed May 24, 1984
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`Com Technology, Inc. Digital Equipment Corporation Inv0ice September
`1 984
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`Lockwood Exhibit 17
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`Lockwood Exhibit 18
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`Smoot 35 US. C. § 1.132 Declaration Exhibits
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`Exhibit
`Description
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`Smoot Exhibit A
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`Smoot Exhibit B
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`Smoot Exhibit C
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`Smoot Exhibit D
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`Curriculum Vitae for Steven W. Smoot
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`PDPI 1 Systems and Options Summary - April to June 1982
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`fig-FORTHfor PDP11 - Assembly Source Listing with Compiler
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`Security and Variable Length Names - January 1980
`Steven W. Smoot Rule 132 Declaration
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`Table of Contents
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`1.
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`11.
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`III.
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`IV.
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`Status of the Claims ................................................................................................................... 5
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`Introduction ............................................................................................................................. 12
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`Statement of Substance of the Examiner Interview of April 24, 2013 .................................... 13
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`Response to rejections ............................................................................................................. 14
`A.
`“Stored data” should be interpreted to mean data accessed from a remote location
`in the claim feature “means for analyzing and for combining an user’s entry with a
`set of stored data” ........................................................................................................ 14
`1.
`Reexamination claim construction case law .................................................... 15
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`2.
`3.
`4.
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`Patent Owner can be his own lexicographer ................................................... 15
`“Means-plus-function” case law ...................................................................... 16
`Proper interpretation of the term “means for analyzing and for combining
`an user’s entry with a set of stored data,” requires interpretation of the term
`“set of stored data” to mean data accessed from a remote location ................ 18
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`a)
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`b)
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`c)
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`d)
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`e)
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`Patent Owner was his own lexicographer for “stored data” showing the
`term meant data accessed from a remote location ............................... 18
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`Structure in the specification: terminal’s general purpose computer
`performs an algorithm that “analyzes” and “combines” both inputted
`19
`“user entry” and accessed “stored data” ...........................................
`Technical expert’s understanding of what a POSITA would interpret as
`“stored data” is data accessed from a remote location ........................ 23
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`The Board’s understanding of “stored data” is data accessed from a
`remote location, and is consistent with the specification and expert
`declaration evidence ............................................................................ 24
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`The intrinsic evidence points to only one broad interpretation for
`“stored data” — data accessed from a remote location ......................... 26
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`B.
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`2.
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`Johnson’s “rules,” i.e., machine instructions, cannot anticipate the claimed “stored
`data,” e.g., data accessed from a remote location ..................................'...................... 26
`1.
`Johnson’s use of rules does not disclose the claimed combining a user’s
`entry with data accessed from a remote location ............................................. 27
`Johnson is a standalone expert system that has no ability to communicate
`with any other device, and thus cannot access data from a remote location,
`e. g., cannot disclose “stored data” ................................................................... 31
`Johnson’s standalone system that operates using rules cannot disclose
`“means for analyzing and for combining an user’s entry with a set of stored
`data” where the “stored data” is accessed from a remote location .................. 32
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`3.
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`C.
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`Summary of why claim 8 patentably distinguishes from Johnson .................. 32
`4.
`The combination of Johnson and AIC fails to establish prima facie obviousness
`because AIC fails to cure the deficiencies of Johnson with respect to claim 8 ........... 33
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`V.
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`Patent Owner’s Rule 131 Declarations prove conception, diligence and a reduction to practice
`that removes Johnson as a reference ........................................................................................ 35
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`A.
`B.
`C.
`D
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`Overview of a legal “invention” .................................................................................. 35
`Conception ................................................................................................................... 35
`Diligence ...................................................................................................................... 36
`Constructive reduction to practice ............................................................................... 37
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`-3-
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`

`

`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`E.
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`F.
`G.
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`H.
`1.
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`Patent Owner has antedated Johnson ........................................................................... 37
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`Conception prior to September 1983 ........................................................................... 37
`Diligence from just before the effective date until the constructive reduction
`practice ......................................................................................................................... 37
`Mr. Lockwood signed the Rule 131 Declaration on behalf of Patent Owner ............. 38
`Conclusion ................................................................................................................... 39
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`VI.
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`Discussion of new claims ........................................................................................................ 39
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`VII.
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`Conclusion ............................................................................................................................... 4O
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`

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`Control‘No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`I.
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`Status of the Claims
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`Claims 1-17 of US. Patent No. 7,010,508 (“the’508 patent”) are subject to the present
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`reexamination. Claims 1—7 and 16-17 are confirmed, claims 8-15 are rejected, and claims 18-25 are
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`sought to be added, of which claims 18 and 22 are independent. A listing of all Original Patent
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`Claims (claims 1-17) from the ’508 patent is presented here for convenience:
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`1.
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`(Original Patent Claim) An automated multimedia system for data processing which
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`comprises:
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`a computerized installation including a database, means for entering data into said database,
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`and a program means for storing, processing, updating, and retrieving data items in response to
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`coded requests from stations in communication with said installation;
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`at least one station including a general purpose computer and a program applicable to said
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`computer for sending said requests to said installation;
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`means for communicating data back and forth between said installation and said station;
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`said station further including:
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`a mass memory and means associated therewith for storing and retrieving textual and
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`graphical data;
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`a video display and means associated therewith for displaying textual and graphical data;
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`means for entering information into said computer;
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`means for programming sequences of inquiring messages on said video display in accordance
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`with preset routines and in response to said information;
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`said sequences including instructions to an operator of said station for operating said station;
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`and
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`means for selectively and interactively presenting to said operator interrelated textual and
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`graphical data describing a plurality of transaction options, and for selectively retrieving data from
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`said mass memory;
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`means for storing information, inquiries, and orders for transactions entered by said operator
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`via said means for entering information;
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`means for transmitting said inquiries and orders to said installation via said means for
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`communicating;
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`means for receiving data comprising operator-selected information and orders from said
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`installation via said means for communicating; and
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`means for interactively directing the operation of said computer, video display, data receiving
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`and transmitting means, and mass memory comprising means for holding an operational sequencing
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`list, means for processing said operator-entered information,
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`inquiries, and orders according to
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`backward-chaining and forward-chaining sequences, and means responsive to the status of said
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`computer, display, mass memory, and data receiving and transmitting means for controlling their
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`operation;
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`said means for processing including means for analyzing said operator-entered information
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`and means, responsive to said means for analyzing, for presenting additional inquiries in response to
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`said operator-entered information;
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`said computerized installation further including:
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`means responsive to items received from said station for immediately transmitting selected
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`data retrieved from said database to said station;
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`means responsive to an order received from said station for updating data in said database
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`including means for correlating to a particular set of data received from said station;
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`whereby said system can be used by a plurality of entities, each using one of said stations, to
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`exchange data, and to respond to inquiries and orders instantaneously or over a period of time.
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`2.
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`(Original Patent Claim) The data processing system of claim 1, wherein at least one of
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`said stations comprises a tangible record-generator and means associated therewith to generate a
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`document.
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`3.
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`(Original Patent Claim) The system of claim 1, wherein said textual data comprise
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`codes, words, phrases, numbers, and letters.
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`4.
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`(Original Patent Claim) The system of claim 3, wherein said graphical data include
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`still pictures, and moving images.
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`5.
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`(Original Patent Claim) The system of claim 4, wherein said station further comprises
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`means for generating audio information.
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`6.
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`(Original Patent Claim) The system of claim 1, wherein said mass memory comprises
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`an optical disc.
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`7.
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`(Original Patent Claim) The system of claim 5, wherein said means for selectively and
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`interactively presenting comprises means for retrieving and combining textual data and graphical
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`data, to process said textual and graphical data into audio-visual signals, and to apply said signals to
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`said video display.
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`8.
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`(Original Patent Claim) An automated multimedia system for data processing for
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`delivering information on request to at least one user, which comprises:
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`at least one computerized station;
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`means for accepting and processing an user’s entry according to backward-chaining and
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`forward-chaining sequences, including:
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`means for analyzing and for combining an user’s entry with a set of stored data, and
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`means, responsive to said means for analyzing and for combining, for formulating a
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`query and outputting said query to said user; and
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`means for delivering information to said user.
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`9.
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`(Original Patent Claim) The system of claim 8, wherein said means for formulating
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`comprise means for presenting a question to said user.
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`10.
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`(Original Patent Claim) The system of claim 9, wherein said means for formulating
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`further comprise means for requesting information for said user.
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`1 1.
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`(Original Patent Claim) The system of claim 9, wherein:
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`said means for combining comprise means for searching said set of stored data; and
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`said means for formulating comprise means for selectively retrieving said question from a
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`plurality of stored questions.
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`12.
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`(Original Patent Claim) The System of claim 10, wherein:
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`said means for combining flirther comprise means for matching part of said user’s entry with
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`part of said set of stored data; and
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`said means for requesting comprise means for generating an information request message.
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`13.
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`(Original Patent Claim) The system of claim 10, which further comprises:
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`a storage means;
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`means for addressing said storage means with said request message; and
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`computer programs for controlling said various means.
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`14.
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`(Original Patent Claim) The system of claim 13, wherein said means for delivering
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`further comprise means for translating textual information into graphical information.
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`15.
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`(Original Patent Claim) The system of claim 13, wherein said means for delivering
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`further comprises means for translating textual information into audio—visual information.
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`16.
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`(Original Patent Claim) An automated multimedia data processing system which
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`comprises:
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`at least two computerized stations, each including:
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`at least one access means;
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`a mass memory and a database stored in said mass memory;
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`means for storing, processing, updating, and retrieving data;
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`program means for controlling said storing, processing, updating, and retrieving data means
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`in response to coded requests entered on said access means;
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`means, associated with said mass memory, for storing and retrieving textual and graphical
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`data;
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`means for processing interrelated textual and graphical data describing a plurality of
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`transaction options, and
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`for selectively retrieving data from said mass memory; interrelated textual and graphical data
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`stored in said mass memory, and accessible through interrelated textual and graphical access path
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`means;
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`means for accepting and processing said requests according to backward-chaining and
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`forward-chaining sequences;
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`means responsive to said coded requests for automatically displaying selected data;
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`means for interactively directing the operation of said various means,
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`and of said mass memory, said means for directing comprising means for holding an
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`operational sequencing list and means responsive to the status of said mass memory, and said various
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`means, for controlling their operations.
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`17.
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`(Original Patent Claim) The system of claim 16, which further comprises:
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`a computerized installation; wherein each of said stations comprises:
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`means for entering and transmitting requests to said installation;
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`means for receiving data from said installation; and
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`means for displaying said data.
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`18. (New) An automated data processing system configured to communicate with at least two
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`computerized stations, each station located at a remote site and comprising a remote data access
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`interface, the system comprising:
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`a processor;
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`a database' and
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`a memog configured to store instructions, execution of which by the processor cause the
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`processor to perform operations comprising,
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`receiving a request from the remote data access interface of at least one of the
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`computerized stations in response to the computerized station analyzing an entg of a user,
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`accessing stored data in the remote database associated with the entry,
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`transmitting the accessed stored data to the computerized workstation thereby causing
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`the computerized workstation to perform operations comprising,
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`combining the accessed stored data from the remote database with the enfl,
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`processing interrelated locally stored textual and graphical data describing transaction
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`options,
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`

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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`performing forward-chaining and backward-chaining seguences based on the
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`combining to formulate a guepy, and
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`outputting the gueg and any respective related data to the user.
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`19. (flew) The system of claim 18, further comprising:
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`a communication interface configured to receive the reguest from the remote data access
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`interface of the at least one of the computerized stations.
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`20. (flew) The system of claim 19, further comprising:
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`an update unit configured to periodically poll at least one of the computerized stations, and to
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`update the interrelated locally stored textual and graphical data.
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`21. “flew! The system of claim 19, further comprising:
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`a communication control unit configured to control transfer of the stored data to at least one
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`of the computerized stations.
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`22. (New) An automated data processing system including a computerized station with a
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`remote data access interface in communication with a remote database, the system comprising:
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`a processor“, and
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`a memory configured to store instructions, execution of which by the processor cause the
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`processor to perform operations comprising,
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`analyzing, at the computerized station= an enfl of a user,
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`transmitting, using the remote data access interface, a request based on the entg to
`access stored data from the remote database
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`receiving the stored data,
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`combining the received stored data with the entg,
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`-10-
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`

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`Control No. 90/012,671
`Patent Owner’ 5 Atty. Dkt. No. 3323 .002REX5
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`processing interrelated locally stored textual and graphical data describing transaction
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`options,
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`performing forward-chaining and backward-chaining seguences based on the
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`combining to formulate a gueg, and
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`outputting the gueg and any respective related data to the user.
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`23. (flew) The system of claim 22, further comprising:
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`an output device configured to output the gueg, wherein the output device is configured to
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`provide at least one of aural and visual output.
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`24. (flew) The system of claim 22, further comprising:
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`an input device configured to accept the entgg, wherein the input device is configpred to
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`accept at least one of tactile and coded input.
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`25. (flew) The system of claim 22, wherein the system is configured to translate textual data
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`into at least one of aural and visual output.
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`-11-
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`

`

`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`II.
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`Introduction
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`Patent Owner respectfully requests that the Office reconsider and withdraw the rejections of
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`claims 8-15 of the ’508 patent, and confirm them in a Notice of Intent to Issue a Reexamination
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`Certificate (“NIRC”) for at least the following reasons:
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`1)
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`The proper claim construction of “stored data” in the claim feature “means for
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`analyzing and for combining an user’s entry with a set of stored data” requires identifying the
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`structure disclosed in the specification that supports the clamed fimction. That disclosed
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`structure incudes an algorithm (e.g., a self-service terminal including a computer with one or
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`more of the algorithm’s identified in Figures 3, 4, and 5 to analyze and combine user entry
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`with stored data, e. g., data accessed from a remote location). (See Section IV.A.)
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`2)
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`Johnson does not anticipate “stored data,” e.g., data accessed from a remote location,
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`because Johnson discloses a “standalone terminal” using “rules,” i.e., machine instructions, to
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`process local information and user entries, but with no ability to perform “bi-directional”
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`communication. (See Section NB.)
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`3)
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`Finally, the claimed invention antedates Johnson, such that Johnson is not available as
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`a reference. (See Section V.)
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`In this Reply, Patent Owner discusses the Examiner Interview in Section III, the reasons why
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`Johnson cannot anticipate the properly interpreted claim 8 in Section IV, why Johnson is not a
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`proper reference in Section V, and support for the new patentable claims, claim 18—25, in Section
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`VI.
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`-12_
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`

`

`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`III.
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`Statement of Substance of the Examiner Interview of April 24, 2013
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`Pursuant to 37 C.F.R. § 1.560(b), Patent Owner submits herewith a written statement
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`summarizing the substance of the interview held on Wednesday, April 24, 2013. Present at the
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`interview were:
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`For CRU
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`Primary Examiner Karin M. Reichle
`Conferee SPE Daniel J. Ryman
`Conferee Primary Examiner Eric B. Kiss
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`For Patent Owner:
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`Lawrence B..Lockwood, Inventor
`Raymond A. Mercado
`Steve Smoot
`Donald J. Featherstone (Reg. No. 33,876)
`Jason D. Eisenberg (Reg. No. 43,447)
`Richard M. Bemben (Reg. No. 68,658)
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`Landmark Technologies LLC, Managing Partner
`Landmark Technologies LLC
`Technical Expert
`Sterne, Kessler, Goldstein & Fox PLLC
`Sterne, Kessler, Goldstein & Fox PLLC
`Sterne, Kessler, Goldstein & Fox PLLC
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`Patent Owner made a presentation summarizing the claimed invention, and addressed the
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`patentable distinctions between independent claim 8 and the publication: Expert System for Diesel
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`Electric Locomotive Repair, Harold E. Johnson, Jr. et al., Journal of Forth Application and Research,
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`vol.1, no.1, pp.7-16, published September 1983 (“Johnson”). A copy of the presentation was
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`previously included in the Office’s Ex Parte Reexamination Interview Summary mailed on April 26,
`2013.
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`Patent Owner and Expert Smoot demonstrated that Johnson does not disclose each and every
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`element of independent claim 8, as required by the pending anticipation and obviousness rejections
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`of claims 8-15. For example, Johnson does not disclose, inter alia, “means for analyzing and for
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`combining an user’s entry with a set of stored data,” where the “set of stored data” includes data
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`accessed from a remote location. Patent Owner and Expert Smoot demonstrated that Johnson
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`discloses a standalone expert system that analyzes an operator’s input using a discrete and static set
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`of “rules.” The “rules” are defined in Johnson as machine instructions. The machine instructions
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`operate on local facts and user input. Therefore, Johnson lacks a “means for” analyzing and
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`combining a user’s entry with “a set of stored data,” e.g., data accessed from a remote location.
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`Patent Owner submits that the inventive features discussed during the interview distinguish
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`the claims from Johnson. No final agreement was reached on the patentability of the claims in the
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`-13-
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`

`

`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`reexamination. However, Examiner Reichle indicated that further analysis of Johnson, as well as
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`consideration of statements and evidence to be submitted would occur.
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`IV.
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`Response to rejections
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`Claims 8-14 are rejected under 35 U.S.C. § 102(b) as allegedly being anticipated by Johnson.
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`(Office Action, pp. 3-78.) Claim 15 is rejected under 35 U.S.C. § 103(a) as allegedly obvious over
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`Johnson in view of Principles of Rule-Based Expert Systems, Advances in Computers, Marshall C.
`Yovits ed., Academic Press Inc., N.Y., Volume 22, pp. 163-216, 1983 (“Advances in Computers” or
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`“AIC”). (Office Action, pp. 78-82.) Patent Owner traverses these rejections.
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`The Court of Appeals for the Federal Circuit held that any analysis of anticipation or
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`obviousness must first begin with the construction of the claim term. Medichem, S.A. v. Rolabo, S.L.,
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`353 F.3d 928, 933 (Fed. Cir. 2003) (citations omitted); see also Power MOSFET Tech. v. Siemens,
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`378 F.3d 1396, 1406 (Fed. Cir. 2004) (accord); Amazon v. EN, 239 F.3d 1343, 1351 (Fed. Cir. 2001)
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`(accord).
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`At least the claim term “stored data” in the claim feature “means for analyzing and for
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`combining an user’s entry with a set of stored data” is required to be constructed. Patent Owner will
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`show that “stored data” is data accessed from a remote location when broadly interpreting “means
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`for analyzing and for combining an user’s entry with a set of stored data.”
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`In Section IV.A, Patent Owner explains claim construction case law for reexamination,
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`lexicographer, and means-plus-function. In Section IV.B, Patent Owner explains why Johnson’s
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`“rules,” i.e., machine instructions, cannot anticipate the claimed “stored data,” e.g., data accessed
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`from a remote location. In Section IV.C, Patent Owner explains why, if arguendo the references are
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`properly combinable, the combination of Johnson and AIC fails to establish prima facie obviousness
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`because AIC fails to cure the deficiencies of Johnson with respect to claim 8.
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`A.
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`“Stored data” should be interpreted to mean data accessed from a remote
`location in the claim feature “means for analyzing and for combining an user’s
`entry with a set of stored data”
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`Patent Owner stated at the Interview that it agrees with the Office that the term “means for
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`analyzing and for combining an user’s entry with a set of stored data” invokes 35 U.S.C. § 112(t) (35
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`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`U.S.C. § 112(6) pre-AIA)‘. (Office Action, pp. 9-17.) But the Office’s construction of this term is
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`incomplete. Patent Owner generally agrees with the Office’s conclusion that the function of the term
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`“means for analyzing” under § 112(f)
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`is “the ability to automatically and onsite,
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`i.e by the
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`computerized station, analyze (i.e. engage in ‘analysis’ of) and combine a user’s entry with a set of
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`stored data.” (Office Action, pp. 16-17.) But Patent Owner disagrees with the Office’s blanket
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`conclusion that the structure includes the “hardware and software of the computerized station.” Id.
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`The Federal Circuit has clearly held that when a means-plus-function limitation relates to a
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`computer process,
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`the corresponding structure must be more than simply a general-purpose
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`computer. Thus, hardware and software of the computerized station -— alone — is not
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`the
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`corresponding structure of this claim term; rather, the corresponding structure must include the
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`algorithm or method that performs the term’s stated function.
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`1.
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`Reexamination claim construction case law
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`The Office must give claims their broadest reasonable interpretation consistent with the
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`specification (“BRI” or “BRI standard”). In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
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`2010) (citation omitted); M.P.E.P § 2258 (G). The Court in Suitco further explained that the Office
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`must give claims a construction that reasonably reflects the plain language and disclosure of the
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`patent “as [they] would be interpreted by one of ordinary skill in the art,” e.g., based on an expert’s
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`understanding of what the claim term would have meant to one of ordinary skill in the art. Suitco,
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`603 F.3d at 1259. The Federal Circuit has made clear that this holding requires consideration of both
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`“intrinsic and extrinsic evidence,” and that such a reasonable “construction cannot be divorced from
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`the specification and the record evidence” including “extrinsic evidence show[ing] [w]hat a person
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`of ordinary skill in the art would recognize” regarding the subject matter claimed. In re NTP, Inc.,
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`654 F.3d 1279, 1288 (Fed. Cir. 2011). Evidence that needs to be considered by the Office is: claim
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`language, specification disclosure, prosecution history, expert declarations, dictionaries, etc. Id.
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`2.
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`Patent Owner can be his own lexicographer
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`Additionally, an inventor may choose to be his own lexicographer in two ways. “First, the
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`claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and
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`clearly set forth a definition of the disputed claim term in either the specification or prosecution
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`' Only 35 U.S.C. § 112(1) will be referred to herein.
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`Patent Owner’s Atty. Dkt. No. 3323.002REX5
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`Control No. 90/012,671
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`history.” CCS Fitness, Inc. v. Brunswick Corp, 288 F.3d 1359, 1366 (Fed. Cir. 2002) (emphasis
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`added). “Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that
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`the patentee distinguished that term from prior art on the basis of a particular embodiment,
`expressly disclaimed subject matter, or described a particular embodiment as important to the
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`invention.” Id. at 1366-67 (citing SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc, 242 F.3d
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`1337, 1343-44 (Fed. Cir. 2001) (emphasis added) (limiting a claim term based in part on statements
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`in the specification indicating that “all embodiments” of the claimed invention used a particular
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`structure»; Spectrum Int ’1, Inc. v. Sterilite Corp, 164 F.3d 1372, 1378 (Fed. Cir. 1998) (narrowing a
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`claim term’s ordinary meaning based on statements in intrinsic evidence that distinguished claimed
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`invention from prior art)
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`3.
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`“Means—plus-function” case law
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`35 U.S.C. § 112(f) allows a patentee to draft a claim limitation in “means-plus-fimction”
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`form, by reciting a fimction to be performed as a claim limitation rather than definite structure.
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`Odetics, Inc. v. Storage Tech. Corp, 185 F.3d 1259, 1266 (Fed. Cir. 1999). The construction of a
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`means-plus-function limitation follows a two-step approach: (1) identify the claimed function; and
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`(2) identify the corresponding structures in the written description. All Voice Computing PLC v.
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`Nuance Commc’ns, Inc, 504 F.3d 1236, 1240 (Fed. Cir. 2007). And to satisfy the requirements of §
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`1 12, second paragraph, a person of ordinary skill in the art must be able to recognize that structure in
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`the specification and associate it with the corresponding function in the claim. Id. at 1241.
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`When a means-plus-function limitation relates to a computer process,
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`the corresponding
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`structure must be more than simply a general-purpose computer. Aristocrat Techs. v. Int ’1 Game