Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 32
`
` Entered: February 25, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`Petitioners
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016
`Patent 6,441,828
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 The Board terminated Petitioners’ involvement without terminating the
`proceeding under 35 U.S.C. § 317(a). Paper 31.
`
`
`571-272-7822
`
`
`
` Paper 32
`
` Entered: February 25, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`Petitioners
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016
`Patent 6,441,828
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 The Board terminated Petitioners’ involvement without terminating the
`proceeding under 35 U.S.C. § 317(a). Paper 31.
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`INTRODUCTION
`On October 12, 2012, BlackBerry Corporation and BlackBerry
`Limited2 (collectively “BlackBerry”) filed a petition, requesting an inter
`partes review of claims 6, 7, 15, 17, and 18 of U.S. Patent No. 6,441,828
`(“the ’828 patent”). Paper 1 (“Pet.”). The patent owner, MobileMedia Ideas
`LLC (“MobileMedia”), waived the patent owner preliminary response.
`Paper 15. Upon review of the petition, the Board determined that the
`information presented in the petition demonstrated that there was a
`reasonable likelihood that BlackBerry would prevail with respect to at least
`one challenged claim. Pursuant to 35 U.S.C. § 314, the Board issued a
`Decision on Institution on March 18, 2013. Paper 16 (“Dec.”).
`After institution, MobileMedia did not file a patent owner response
`pertaining to the patentability of claims 6, 7, 15, 17, and 18. Rather,
`MobileMedia filed a motion to amend claims, which included cancelling
`claims 6, 7, 15, 17, and 18, and proposing substitute claims 19-23. Paper 21
`(“Mot.”). During a conference call on October 16, 2013, MobileMedia
`conceded that it had cancelled original challenged claims 6, 7, 15, 17, and 18
`of the ’828 patent. Paper 28. Therefore, claims 6, 7, 15, 17, and 18 of the
`’828 patent are cancelled.
`As to proposed substitute claims 19-23, BlackBerry filed an
`opposition to MobileMedia’s motion to amend claims, and MobileMedia
`
`
`2 Real parties-in-interest Research In Motion Corporation and Research In
`Motion Limited have changed their names to “BlackBerry Corporation” and
`“BlackBerry Limited,” respectively (collectively, “BlackBerry”). Paper 22.
`2
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`Patent 6,441,828
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`filed a reply to BlackBerry’s opposition. Paper 23 (“Opp.”); Paper 24 (“PO
`Reply”). No oral hearing was held. Paper 28. After the parties filed all of
`their substantive papers, the parties filed a joint motion to terminate the
`instant proceeding. Papers 28, 30; Ex. 2013. In light of the advanced stage
`of the instant proceeding, the Board granted-in-part the motion to terminate.
`Paper 31. Consequently, the proceeding has been terminated with respect to
`Blackberry, but it is not terminated with respect to MobileMedia. Id.
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is entered pursuant to 35 U.S.C. § 318(a).
`Claims 6, 7, 15, 17, and 18 of the ’828 patent are cancelled.
`MobileMedia’s motion to amend is denied.
`
`A. Related Proceedings
`Blackberry identifies the following related proceedings: MobileMedia
`Ideas LLC v. Apple, Inc., 10-cv-00258 (D. Del.); MobileMedia Ideas LLC v.
`Research In Motion Ltd., 11-cv-02353 (N.D. Tex); and Sandisk Corp. v.
`MobileMedia Ideas LLC, 11-cv-00597 (N.D. Cal.). Pet. 1.
`
`B. The ’828 Patent
`The ’828 patent relates to an apparatus (e.g., an electronic picture
`frame) for displaying a digital image in a normal direction regardless of
`whether the apparatus is placed with the shorter or longer side down.
`Ex. 1001, 1:6-8, 1:65-67.
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`Patennt 6,441,8228
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`16A and 1
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`6B of the
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`ow: oduced belo’828 patennt are repro
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`16A and 1
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`he directioon of the diisplayed immage.
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`hematic epicts a schd below, dereproduced28 patent, rFigure 66 of the ’82
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`blockk diagram of an imagge display apparatus::
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`As showwn in Figurre 6 of the ’828 patennt, image ddisplay appparatus 1
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`has mmemory caard 12, memmory card controller r 40, controol microcommputer 42
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`imagge processiing block 443, and dissplay panell 4 (e.g., a
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`liquid crysstal displayy
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`(LCDD)). Id. at 3:38-41; 55:48-59. TTo display aan image rrecorded inn memory
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`card 12, controol microcommputer 42 reads the ccompresseed image daata from
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`memory card 12 via memory card controller 40 and stores them into a built-
`in dynamic random-access memory (DRAM). Id. at 5:51-59. The
`compressed image data are decompressed in image processing block 43, and
`then the decompressed image data are stored back into the DRAM. Id. The
`image data in the DRAM are processed by image processing block 43 for
`display on the display panel 4. Id.
`
`DISCUSSION
`An inter partes review is more adjudicatory than examinational in
`nature. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
`2013). A motion to amend claims in an inter partes review is not, itself, an
`amendment. As the moving party, MobileMedia bears the burden of proof
`to establish that it is entitled to the relief requested. 37 C.F.R. § 42.20(c).
`In sum, MobileMedia’s proposed substitute claims are not entered
`automatically, but only upon MobileMedia having demonstrated the
`patentability of the substitute claims.
`In support of its motion, MobileMedia proffers a declaration of
`Dr. Vijay K. Madisetti. Ex. 2001. We have reviewed MobileMedia’s
`motion and supporting evidence. For the reasons stated below,
`MobileMedia’s motion to amend claims is denied. The substitute claims
`will not be incorporated into the ’828 patent.
`In its motion to amend claims, MobileMedia proposes substitute
`claims 19-23. Mot. 3. Substitute claim 19 is an independent claim, and
`substitute claims 20-23 depend from substitute claim 19. Mot. 4-7.
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`Substitute claim 19 is reproduced below with markings to show the
`changes made relative to claim 6:
`19. (new claim, proposed substitute for claim 6) An image
`displaying apparatus for displaying image data read from a
`recording medium, comprising:
`image signal generating means for generating an image
`signal for display based on image information read from the
`recording medium;
`image displaying means for displaying the image signal
`produced by the image signal generating means; and
`means for determining a direction in which an image of
`the image signal is to be displayed on the image displaying
`means according to a posture in which the apparatus is placed
`and information on a direction in which an image of the image
`signal is to be displayed read from the recording medium,
`said means for determining a direction comprising (a) a
`position sensor having a moving element that is movable in all
`directions to automatically detect which position the image
`display apparatus is placed, (b) an image processing block
`which displays said image signal in a correct direction
`regardless of the posture of the apparatus in response to a signal
`from said position sensor, and (c) a microcomputer,
`the apparatus further comprising a recognition sensor that
`provides a detection signal to said microcomputer based on
`which a displaying status of the image displaying means is
`changed.
`
`A. Claim Construction
`Claim construction is an important step in a patentability
`determination. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339
`(Fed. Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933
`(Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under
`§ 103 are two-step inquiries. The first step in both analyses is a proper
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`construction of the claims. . . . The second step in the analyses requires a
`comparison of the properly construed claim to the prior art.” (Internal
`citations omitted.)).
`To construe means-plus-function language in a claim, one “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.” In re Donaldson, 16
`F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). That is, a means-plus-function
`limitation shall be construed to cover the corresponding structure described
`in the specification and equivalents thereof. See 35 U.S.C. § 112, ¶ 6.3
`For the purposes of the Decision on Institution, we construed seven
`means-plus-function limitations that invoke 35 U.S.C. § 112, ¶ 6, by
`identifying the recited functions and the corresponding structures disclosed
`in the specification for performing the recited functions. Dec. 7-16. For
`example, we construed the following three limitations recited in claim 6,
`which also are recited in substitute claim 19.
`
`1. “Image signal generating means for generating an
`image signal for display”
`We first identified the recited function for this limitation to be
`“generating an image signal for display.” Dec. 8. The specification
`of the ’828 patent contains the following description related to the
`
`3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’828 patent has a filing date before September 16,
`2012 (effective date), we will refer to the pre-AIA version of § 112.
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`ing blockss 43 and 655
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`omputer 4
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`contrrol microc
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`2 and imagge process
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`showwn in Figurre 6 (reproduced prevviously) annd Figure 115:
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`Foor playbackk of an im
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`age recordded in the mmemory caard
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`12, a coontrol microcomputeer 42 readds the commpressed immage
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`data fromm the memmory card
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`12 via a mmemory carrd controll
`er 40
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`and stores it into aa built-in DDRAM. Thhe compresssed imagee data
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`is expannded or deccompresseed in an immage proceessing blocck 43
`tored
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`and storred back innto the DRRAM. Thee image ddata thus s
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`the DRAMM is processsed by thee image prrocessing bblock
`back in
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`43 for diisplay on tthe display panel 4.
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`Ex. 11001, 5:51-59 (emphhasis addedd).
`esses in a k 65 processing blockThe imaage proces
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`predetermmined
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`a digital immage dataa read fromm the builtt-in memorry 63
`manner
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`and suppplied via tthe commuunication/mmedium seelect switcch 64
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`or a onne supplieed from tthe sockeet 53 andd sent viaa the
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`ect switchh 64, to ggenerate immage
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`communnication/meedium sel
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`signal foor display oon the dispplay panel
`52.
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`Id. aat 9:17-22 ((emphasis added).
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`Figure 1
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`ced below5 of the ’8828 patent is reproduc
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`FFigure 15 of the ’8288 patent deepicts a schhematic bloock diagramm of an
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`embodimment of thee image dissplay apparratus.
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`correesponding structures for performming the rrecited funcction (“gennerating ann
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`Based onn those porrtions of thhe specific
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`ation, we ddeterminedd the
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`imagge signal foor display””) to be thee control mmicrocompuuter and immage
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`proccessing block for the ppurposes oof the Deciision on In
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`stitution. DDec. 9.
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`’828 patennt
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`2. “IImage disp
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`laying meaans for dispplaying thee image siggnal”
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`For this limitation,, we determmined the rrecited funnction to bee
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`“dispplaying thee image siggnal.” Decc. 10. The
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`specificatiion of the
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`provvides:
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`The dispplay panel l 4 is a thin, lightweiight structture such aas an
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`LCD dissplay or pllasma dispplay to dispplay an immage based
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`m an
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`immage
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`to-be-dissplayed
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`iimage siggnal suppplied
`from
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`processing block wwhich will further be
`described
`later.
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`Ex. 11001, 3:38-39 (emphhasis addedd).
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`Figure 33 of the ’8228 patent iss reproduceed as follo
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`ws:
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`Figuree 3 shows aa front vieww of the immage displaay apparattus.
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`correesponding structure ffor performming the reecited functtion (“dispplaying thee
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`Based onn those porrtions of thhe specific
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`ation, we iidentified tthe
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`asma
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`imagge signal”) to be a dissplay paneel such as aan LCD dissplay or pl
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`displlay panel. Dec. 11.
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`3. “Means for determining a direction in which an image of the image
`signal is to be displayed on the image displaying means according to
`a posture in which the apparatus is placed and information on a
`direction in which an image of the image signal is to be displayed
`read from the recording medium”
`We determined that the recited function for this limitation is
`“determining a direction in which an image of the image signal is to be
`displayed on the image displaying means according to a posture in which the
`apparatus is placed and information on a direction in which an image of the
`image signal is to be displayed read from the recording medium.” Dec. 11.
`The specification of the ’828 patent provides the following description
`for determining a display direction:
`[A] position detection switch 41 is provided to detect whether
`the image display apparatus 1 is placed with the longer or
`shorter side down, and send a detection signal to the control
`microcomputer 42 which will read the displaying-direction
`information from the memory card 12 via the memory card
`controller 40. Thus the image can be displayed in the same
`normal direction. The position detection switch 41 may be
`either a type of which a moving element is moved in two
`directions or a type of which a pendulum type element is moved
`in all directions.
`Ex. 1001, 6:26-35 (emphasis added).
`There is also provided a position detection switch 66 to
`determine a direction in which an image is to be displayed the
`display panel 52 according to the posture of the enclosure 51 of
`the image display apparatus 50. In particular, the position
`detection switch 66 is a direction select switch to allow the user
`to selectively set a direction in which an image is to be
`displayed, an automatic position detector provided with a
`gravity sensor or the like to automatically detect in which
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`position the image display apparatus 50 is placed and set a
`position in which an image is to be displayed, or the like. Note
`that to save the user's labor to select such a displaying direction,
`the automatic position detector should desirably be adopted in
`the position detection switch 66. A position detection signal
`from the position detection switch 66 is sent to the image
`processing block 65.
`Therefore, the image processing block 65 determines a
`direction in which an image is to be displayed on the display
`panel 52 according to the position detection signal, and allows
`to display the image on the display panel 52 in the determined
`direction.
`Id. at 9:27-46 (emphasis added). For the purposes of the Decision on
`Institution, we considered the corresponding structures for performing
`the recited function to be the control microcomputer, the position
`detection switch, and the image processing block. Dec. 12.
`However, because in a means-plus-function limitation, the
`corresponding structure is not the general purpose computer, but rather the
`special purpose computer programmed to perform the disclosed algorithm,
`WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
`1999), and because we could not identify an algorithm associated with the
`microcomputer and the image processing block in the specification that
`performs the recited functions, we provided MobileMedia the opportunity to
`inform the Board as to its claim constructions of the means-plus-function
`limitations including the specific algorithm that performs the recited
`functions. Dec. 8.
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`4. MobileMedia’s Claim Construction
`In its motion to amend claims, MobileMedia states that the “image
`signal generating means,” as recited in substitute claim 19, should construed
`as a means-plus-function limitation invoking 35 U.S.C. § 112, ¶ 6, as the
`Board construed it with respect to claim 6 in the Decision on Institution.
`Mot. 8 (citing Dec. 8-10). MobileMedia further indicates that the
`corresponding structure for the recited function (“generating an image signal
`for display”) is “the control microcomputer 42 and image processing blocks
`43 and 65.” Id. (citing Ex. 1001, 5:51-59, 9:17-22; figs. 6, 15). However,
`MobileMedia fails to identify the specific algorithm associated with the
`microcomputer or image processing blocks for performing the functions
`recited in substitute claim 19, or explain why an algorithm is not necessary
`for performing the recited functions. See Aristocrat Technologies Australia
`Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (ruling
`that the claims were indefinite because of lack of disclosure of any specific
`algorithm used by the disclosed computer to perform the function recited in
`a means-plus-function element.).
`In its motion to amend claims, MobileMedia also takes the position
`that the following limitation set forth in substitute claim 19 does not invoke
`35 U.S.C. § 112, ¶ 6:
`means for determining a direction in which an image of
`the image signal is to be displayed on the image displaying
`means according to a posture in which the apparatus is placed
`and information on a direction in which an image of the image
`signal is to be displayed read from the recording medium,
`said means for determining a direction comprising (a) a
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`position sensor having a moving element that is movable in all
`directions to automatically detect which position the image
`display apparatus is placed, (b) an image processing block
`which displays said image signal in a correct direction
`regardless of the posture of the apparatus in response to a signal
`from said position sensor, and (c) a microcomputer.
`Mot. 5, 9-10 (citing to Ex. 2001 ¶¶ 55-57) (emphases added).
`It is well settled that a limitation that uses the term “means for”
`creates a rebuttable presumption that the drafter intended to invoke § 112,
`¶ 6. Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703-04
`(Fed. Cir. 1998). “This presumption can be rebutted where the claim, in
`addition to the functional language, recites structure sufficient to perform the
`claimed function in its entirety.” Altiris, Inc. v. Symantec Corp., 318 F.3d
`1363, 1375-76 (Fed. Cir. 2003). Therefore, in order to take the “means for
`determining a direction” limitation outside the bounds of § 112, ¶ 6, the
`claim must recite sufficient structure for performing the recited function.
`See Personalized Media, 161 F.3d at 704 (“In deciding whether [the]
`presumption has been rebutted, the focus remains on whether the claim as
`properly construed recites sufficiently definite structure to avoid the ambit of
`§ 112, ¶ 6.”).
`MobileMedia, however, does not explain adequately why the features
`added in substitute claim 19 would provide sufficient structures for
`performing the recited function—“determining a direction in which an
`image of the image signal is to be displayed on the image displaying means
`according to a posture in which the apparatus is placed and information on a
`direction in which an image of the image signal is to be displayed read from
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`the recording medium.” Mot. 7-10.
`Dr. Madisetti attempts to substantiate MobileMedia’s position by
`referring to the Board’s claim construction set forth in the Decision on
`Institution (Ex. 2001 ¶¶ 56-57), which stated:
`For the purposes of this decision [on institution], we therefore
`consider the corresponding structure for this limitation to be the
`control microcomputer, the position detection switch, and the
`image processing block.
`Dec. 12 (citing Ex. 1001, 6:26-35; 9:27-46). However, merely referencing
`that claim construction without further explanation as to how the features
`added in substitute claim 19 provide sufficient structures to perform the
`recited function is insufficient to establish that the limitation is not a means-
`plus-function limitation under § 112, ¶ 6. Notably, Dr. Madisetti does not
`articulate adequately how the features added in substitute claim 19—
`“a position sensor,” “an image processing block,” and “a microcomputer”—
`should be construed. Stating that the limitation should be construed
`“according to its plain, ordinary meaning in light of the specification”
`(Mot. 9) is not sufficient for a proper construction of claim limitations under
`§ 112, ¶ 6. For example, Dr. Madisetti’s testimony does not indicate
`whether the claim term “position sensor” should be construed as the
`“position detection switch” disclosed in the specification. In fact, the claim
`term “position sensor” is not recited in the specification. And we note that
`different claim terms are presumed to have different meanings. See CAE
`Screen plates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
`1317 (Fed. Cir. 2000). More importantly, MobileMedia’s motion and expert
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`testimony fail to identify the specific algorithm associated with the
`microcomputer for performing the functions recited in the substitute claims,
`or explain why an algorithm is not necessary for performing the recited
`functions. See Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385
`(Fed. Cir. 2009); Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367
`(Fed. Cir. 2008).
`For the foregoing reasons, MobileMedia fails to set forth a reasonable
`claim construction for each claim feature added in the substitute claims.
`Without reasonable claim constructions of the claim features,
`MobileMedia’s motion to amend claims fails to demonstrate the
`patentability of its substitute claims.
`
`B. Amendment Must be Responsive to a Ground of Unpatentability
`Pursuant to 35 U.S.C. § 316(a)(9), and taking into account the
`statutory considerations under 35 U.S.C. § 316(b)—“the effect of any such
`regulation on the economy, the integrity of the patent system, the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings instituted”—the Office promulgated 37 C.F.R. § 42.121 to set
`forth the standards and procedures for allowing a patent owner, in an inter
`partes review, to move to amend the patent “to cancel a challenged claim or
`propose a reasonable number of substitute claims.” As set forth in 37 C.F.R.
`§ 42.121(a)(2), a motion to amend may be denied where the amendment
`does not respond to a ground of unpatentability involved in the trial.
`Here, MobileMedia eliminates all of the features of original
`challenged claims 7, 15, 17, and 18. Mot. 6-7. MobileMedia does not
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`explain adequately why the removal of all those features is responsive to a
`ground of unpatentability. For example, substitute claim 20 (the proposed
`substitute for claim 7) eliminates the only element in claim 7—“means
`whereby the recording medium is set into the apparatus from outside.”
`Substitute 20 is reproduced below with markings showing the changes made
`relative to claim 7:
`20. (new claim, proposed substitute for claim 7) The apparatus
`as set forth in claim 619 further comprising means whereby the
`recording medium is set into the apparatus from outside,
`wherein said recognition sensor (a) emits light and (b) detects
`the light returned from a human body or object.
`Mot. 6.
`
`MobileMedia asserts that the feature recited in substitute claim 20 is
`“written in non-means plus function format.” Mot. 11. However, we
`indicated, in the Decision on Institution, that the corresponding structure for
`the means-plus-function limitation recited in claim 7 is “the socket 53”
`shown in Figure 13 of the ’828 patent. Dec. 14. MobileMedia does not
`dispute that claim construction, nor indicate that the feature added in
`substitute claim 20, a recognition sensor, is the corresponding structure for
`performing the function recited in claim 7. Therefore, contrary to its
`assertion, MobileMedia did not rewrite claim 7 simply in a non-means plus
`function format. In fact, the feature recited in substitute claim 20 has little to
`do with the corresponding structure for performing the function recited in
`claim 7.
`
`16
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`As another example, substitute claim 21 (the proposed substitute for
`
`claim 15) eliminates all of the elements recited in claim 15—“means for
`detecting an amount of light around the apparatus; and means for adjusting
`an operation of the image displaying means based on a decision signal from
`the light detecting means.” Substitute claim 21 is reproduced below with
`markings to show the changes made relative to claim 15:
`21. (new claim, proposed substitute for claim 15) The apparatus
`as set forth in claim 620further comprising:
`means for detecting an amount of light around the
`apparatus; and
`means for adjusting an operation of the image displaying
`means based on a decision signal from the light detecting
`means, wherein the displaying status remains changed for at
`least an expiration time unless the microcomputer receives said
`detection signal again.
`Mot. 6.
`Again, MobileMedia asserts that the feature recited in substitute
`claim 21 is “written in non-means plus function format.” Mot. 11.
`However, we indicated, in the Decision on Institution, that the corresponding
`structures for the means-plus-function limitations recited in claim 15 are
`“the light sensor 55” and “the display brightness controller 69” shown in
`Figure 15 of the ’828 patent. Dec. 14. MobileMedia does not dispute that
`claim construction. Contrary to its assertion, MobileMedia did not rewrite
`claim 15 merely in a non-means plus function format. In fact, the feature
`recited in substitute claim 21 has little to do with the corresponding
`structures for performing the functions recited in claim 15.
`
`17
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`Case IPR2013-00016
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`
`MobileMedia further asserts that each substitute dependent claim
`“more specifically” defines the invention of the previous claim to which it
`refers, without any explanation. See, e.g., Mot. 11. At best, that assertion is
`merely an explanation as to why the features are added in the substitute
`claims. Without a reasonable explanation as to why the features recited in
`the original patent claims are eliminated, MobileMedia has not demonstrated
`that such amendments are responsive to a ground of unpatentability involved
`in the trial. Therefore, MobileMedia’s motion to amend claims does not
`comply with 37 C.F.R. § 42.121(a)(2).
`
`C. Reasonable Number of Substitute Claims
`In a motion to amend, a patent owner may, “[f]or each challenged
`claim, propose a reasonable number of substitute claims.” 35 U.S.C.
`§ 316(d)(1)(B). The presumption is that only one substitute claim would be
`needed to replace each challenged claim, although the presumption may be
`rebutted by a demonstration of need. 37 C.F.R. § 42.121(a)(3). A desire to
`obtain a new set of claims having a hierarchy of different scope typically
`would not constitute a sufficient special circumstance. Absent special
`circumstances, a challenged claim can be replaced by only one claim. Each
`proposed claim should be traceable to an original challenged claim as a
`proposed substitute claim for that challenged claim.
`In its motion to amend claims, MobileMedia asserts that claim 19 is
`the proposed substitute for claim 6; claim 20 is the proposed substitute for
`claim 7; claim 21 is the proposed substitute for claim 15; claim 22 is the
`proposed substitute for claim 17; and claim 23 is the proposed substitute for
`18
`
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`
`claim 18. Mot. 4-7. However, that assertion is not adequate to establish that
`proposed claims 20-23 are substitute claims for challenged claims 7, 15, 17,
`and 18. As discussed above, all of the features recited in these challenged
`claims are being eliminated. For instance, substitute claim 21 purportedly
`replaces claim 15, but it eliminates all of the features recited in claim 15.
`Mot. 6. MobileMedia does not explain sufficiently how the feature added in
`substitute claim 21 would be pertinent to the removed features. Mot. 11-12.
`Although MobileMedia states that substitute claim 21 defines the invention
`of substitute claim 20 “more specifically” (id. at 11), MobileMedia does not
`explain why it is necessary to eliminate all of the limitations recited in
`claim 15. In sum, substitute claim 21 is not traceable to claim 15. Each of
`the other substitute dependent claims, likewise, is not traceable to the
`challenged claim it allegedly replaces. Therefore, substitute claims 20-23
`are not proper substitute claims for challenged claims 7, 15, 17, and 18.
`Moreover, contrary to MobileMedia’s assertion that its motion
`presents a reasonable number of substitute claims (Mot. 1), we observe that
`proposed claims 20-23 each are instead substitute claims for challenged
`claim 6. Claim 6 is the only challenged claim for which each proposed
`claim includes all of the features. Consequently, claims 20-23, as well as
`claim 19, are substitute claims for challenged claim 6. However,
`MobileMedia does not provide any explanation as to why it needs five
`substitute claims for one challenged claim. Thus, MobileMedia fails to rebut
`the presumption that only one substitute claim would be needed to replace
`each challenged claim.
`
`19
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`For the foregoing reasons, MobileMedia has proposed more than a
`reasonable number of substitute claims in violation of 37 C.F.R.
`§ 42.121(a)(3).
`
`D. Patentability Over Prior Art
`An inter partes review is neither a patent examination proceeding nor
`a patent reexamination proceeding. The proposed substitute claims, in a
`motion to amend, are not entered automatically and then subjected to
`examination. Rather, the substitute claims will be added directly to the
`patent, without examination, if the patent owner’s motion to amend claims is
`granted. The patent owner is not rebutting a rejection in an Office Action, as
`though this proceeding is a patent examination or a patent reexamination.
`Instead, the patent owner bears the burden of proof in demonstrating
`patentability of the proposed substitute claims over the prior art in general,
`and thus entitlement to add these proposed substitute claims to its patent.
`There is no presumption of validity as to the challenged claims or
`substitute claims in an inter partes review. In fact, upon consideration of the
`information presented in the petition, we determined that there is a
`reasonable likelihood that claims 6, 7, 15, 17, and 18 are unpatentable under
`35 U.S.C. §§ 102 and 103. Dec. 17-26. MobileMedia did not file a patent
`owner preliminary response or a patent owner response, arguing the
`patentability of claims 6, 7, 15, 17, and 18, but instead it has cancelled those
`claims. Therefore, there is no inference of patentability of substitute
`claims 19-23 by virtue of that they purportedly are replacing claims 6, 7, 15,
`17, and 18.
`
`20
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`In its motion to amend claims, MobileMedia only presents the
`following statements concerning the patentability of the substitute claims:
`As explained in greater detail in the Madisetti Declaration, new
`claims 19-23 are patentably distinct from the Petition Prior Art
`(Ex. 2001 at ¶¶ 68 - 132.) The proposed new claims recite an
`apparatus with the automatic display features described above
`that incorporate additional combinations of features that would
`not have been obvious to a person of ordinary skill at the time
`of the invention based on the Petition Prior Art. (Id.)
`Mot. 14.
`At the outset, MobileMedia’s arguments attempt to incorporate by
`reference Dr. Madisetti’s testimony (Ex. 2001 ¶¶ 68-132), but incorporation
`of arguments from one document into another is prohibited by 37 C.F.R.
`§ 42.6(a)(3). MobileMedia’s attempt to incorporate Dr. Madisetti’s
`testimony also violates the page l
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