UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner,
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0086
`Patent No. 7,010,536
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`
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`PRELIMINARY RESPONSE BY PATENT OWNER
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`UNDER 37 C.F.R. § 42.107
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0086
`Patent No. 7,010,536
`
`
`
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`I. TECHNOLOGY BACKGROUND .................................................................... 5
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`II. OVERVIEW OF THE ASSERTED PRIOR ART .......................................... 9
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`III. THE PETITION SHOULD BE DENIED. .................................................... 10
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`A. The Petition Fails To Explain the Relevance Of The References To The
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`Claims As Required By 37 C.F.R. § 104(b)(5)................................................ 10
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`B. The Petition Violates Rule 42.6 By Incorporating the Substance of Its
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`Arguments By Reference ................................................................................. 14
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`C. The Prior Art Raised in the Petition is Cumulative with the Prior Art Asserted
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`by the Petitioner in Another Petition. .............................................................. 18
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`D. There Is No Reasonable Likelihood of the Claims Being Invalidated. ........... 20
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`1. The Petitioner Fails to Construe and/or Incorrectly Construes Terms Material
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`to all Claims. ................................................................................................... 20
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`a. “Container” ................................................................................................. 23
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`b. “Register” ................................................................................................... 25
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`c. “Gateway” ................................................................................................... 27
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`d. “Encapsulated”/”Encapsulating” ................................................................ 29
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`e. ““Active Space Register” / “Passive Space Register” / “Neutral Space
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`Register” ............................................................................................................ 30
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`f. “Acquire Register” ...................................................................................... 31
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`ii
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`2. There Is No Reasonable Likelihood Of Claims 2-14 or 16 Being Anticipated
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`by Gibbs (Ex. 1006). ..................................................................................... 31
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`IV. CONCLUSION ................................................................................................ 33
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`ii
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`PRELIMINARY RESPONSE BY PATENT
`OWNER UNDER 37 C.F.R. § 42.107
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`Patent Owner Evolutionary Intelligence LLC hereby respectfully submits
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`this Preliminary Response to the Petition seeking inter partes review of U.S. Patent
`
`No. 7,010,536.
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`The Petition is deficient and relies on prior art references that are entirely
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`distinct from the ’536 patent. The Petition should be rejected for four independent
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`reasons. First, the Petition fails to explain the relevance of the prior art to the
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`claims as required by 37 C.F.R. § 104(b)(5), including failing to establish that the
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`prior art discloses all elements “arranged as in the claims.” Second, the Petition is
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`deficient because it violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against
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`incorporating other arguments by reference. Third, the Petition relies on prior art
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`that is cumulative of prior art raised in another pending petition filed by Petitioner,
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`as well as with prior art considered during the prosecution of the underlying
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`application. Finally, even setting aside these critical defects, the Petition should be
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`rejected on the merits, because it fails to demonstrate a reasonable likelihood of
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`any claims being invalid—particularly because it relies on unreasonably broad
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`constructions for and fails to construe terms that are material to all of the claims at
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`issue. For at least these reasons, the Petition does not show a reasonable likelihood
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`of prevailing with respect to any of the challenged claims, and inter partes review
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`should not be instituted.
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`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
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`being filed within three months of the October 29, 2013 mailing date of the Notice
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`granting the Petition a filing date of October 23, 2013.
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`I.
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`Technology Background
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`The ’536 patent describes a “System and Method for Creating and
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`Manipulating Information Containers With Dynamic Registers.” The invention is
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`directed at improving the processing of “containerized” data, such as the data that
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`makes up web pages and documents. At the time of the invention, processing
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`information resources on a computer network (e.g., the internet) was primarily
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`static, in that the processing did not result in dynamic modifications that would
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`improve future processing efforts. For example, the searching of data was
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`“accomplished by individuals directing a search effort by submitting key words or
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`phrases to be compared to those key words or phrases contained in the content or
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`description of that information resource, with indices and contents residing in a
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`fixed location unchanging except by human input.” Ex. 1001 at 1:22-28. As the
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`’536 patent notes, this “static” information model was limited, because, inter alia,
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`the information being processed did not evolve to reflect its actual utility to the
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`people using it, and successful search strategies were not available to be used to
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`process future searches. Ex. 1001 at 1:37-2:48. At most, the prior art allowed
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`“hits” for a given web page to be tracked—a static process. See Ex. 1001, 2:8-13.
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`5
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`The invention solved this problem through the use of “dynamic” information
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`containers. The dynamic information containers include dynamic registers that
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`attach to and form part of the container. Ex. 1001 at 2:66-3:5. Each container has
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`an information element (e.g., an advertisement, article, or a text string), a plurality
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`of registers, and a gateway. The plurality of registers for each container include
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`(i) a unique identification register for that container; (ii) a second register
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`governing the interactions of the container according to utility of the information in
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`the information element relative to space or time; (iii) an active register controlling
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`whether the container acts upon other containers according at a given time or
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`location; (iv) a passive register controlling whether the container can be acted upon
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`by other containers at a given time or location; and (v) a neutral register controlling
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`whether a container may interact with other containers at a given time or location.
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`“Gateways” are programmed with rules to enable the interaction among the various
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`containers, gateways, and system components. Id. at 4:54-5:11.
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`In the invention of the ’536 patent, information containers are populated
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`with information elements and time- and space-based dynamic registers, thereby
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`facilitating access to the information at appropriate times and in relation to
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`pertinent locations. This facilitates access to information that is useful to the user.
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`As users access the information containers, the dynamic registers are updated with
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`information regarding their use, allowing them to evolve. This is made more
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`evident in the claims of U.S. Patent 6,702,682, whose underlying application is a
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`continuation of the application leading to the ’536 patent. In the ’2,682 patent, “a
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`search query may be run against a plurality of container registers encapsulated and
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`logically defined in a plurality of containers to identify one or more container
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`registers responsive to the search query,” and “a list characterizing the identified
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`containers may be provided.” See U.S. Patent 6,702,682 at Abstract. The dynamic
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`nature of the invention of the ’536 patent is also evident in its other continuation,
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`U.S. Patent No. 7,873,682. The ’3,682 patent is directed to methods and systems
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`using at least two information containers with dynamic registers to evolve
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`information containers over time.
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`Independent claim 1 of the ’536 patent is directed to “an apparatus for
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`transmitting, receiving and manipulating information on a computer system”
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`comprised of a plurality of dynamic containers, each having an information
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`element, a plurality of registers, and a gateway. The plurality of registers for each
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`container include the five types of registers discussed above.
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`Claim 2, also an independent claim, is identical to claim 1, except that
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`“space” and “three-dimensional space” replace “time” and “event time” in the
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`second register. Claim 2 is not at issue in this proceeding.
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`Claims 3-14 are multiply dependent from claims 1 and 2. These claims
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`further comprise at least one “container history register” (claim 3); “system history
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`register” (claim 4); “predefined register” (claim 5); “user-created register” (claim
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`6);”system-defined register” (claim 7); “acquire register for controlling whether the
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`container adds a register from other containers or adds a container from other
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`containers when interacting with them” (claim 8); OR an apparatus wherein the
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`gateway includes “means for acting upon another container” (claim 9); “means for
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`allowing interaction (claim 10); “means for gathering information,” (claim 11);
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`means for reporting information (claim 12); or “an expert system” (claim 13); OR
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`an apparatus wherein the “information element is one from the group of text,
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`graphic images, video, audio, a digital pattern, a process, a nested container, bit,
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`natural number and a system” (claim 14).
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`Claims 15 and 16 of the ’536 patent are each directed to “an apparatus for
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`transmitting, receiving and manipulating information on a computer system”
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`comprised of a plurality of dynamic containers, each having an information
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`element, a plurality of registers, and a gateway. The plurality of registers for each
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`container includes (i) a unique identification register for that container, (ii) a
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`second register designating time (claim 15) or space (claim 16) governing the
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`interactions of the container according to utility of the information in the
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`information element relative to event time (claim 15) or three-dimensional space
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`(claim 16), and (iii) at least one acquire register controlling whether the container
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`adds a register or container from another container.
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`As with claims 1 and 2, claims 15 and 16 differ only with respect to each
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`claim’s second register. Claim 15 recites a second register “having a
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`representation designating time and governing interactions of the container with
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`other containers, systems or processes according to utility of information in the
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`information element relative to an external‐to‐the‐apparatus event time.” Claim
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`16, which is not at issue in this proceeding, recites a second register designating
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`“space” and governing interactions of “the container” of which it is part “according
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`to the utility of the information in the information element relative to three-
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`dimensional space.”
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`II. Overview of the Asserted Prior Art
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`The petition for IPR2014-0083 relies upon one reference:
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`• Gibbs et al., U.S. Patent No. 5,836,529 (Ex. 1006) (“Gibbs”).
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`The Petition asserts that Gibbs anticipates claims 2-14 and 16. Gibbs is
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`directed to “An Object Based Transportation Network Management System and
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`Method.” Gibbs discloses a database that creates a library of “transport objects”
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`representing different aspects of a railroad network (e.g., trains, locomotives, cars,
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`crew, etc.) within a geographic region, which interacts with a library of distinct
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`“service objects” (e.g., various maps). See Ex. 1006 at Fig. 5 (listing exemplary
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`“transport objects”); Fig. 6b (listing exemplary “service objects”), 2:37-47
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`(describing database and general function). Gibbs describes a preferred
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`embodiment of the “transport objects” as having “locational attributes.” See Ex.
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`1006 at Fig. 7 (listing preferred attributes of “transport objects” as “locational,”
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`“labeling” “consist,” and “timing.”) Gibbs’ preferred embodiment of “locational
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`9
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`attributes” for a train includes “a geographic location, a division code and a name
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`of the corridor.” Id. at 10:46-48.
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`III. The Petition Should Be Denied.
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`The Petition should be rejected for four independent reasons. First, the
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`Petition fails to explain the relevance of the prior art to the claims as required by
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`37 C.F.R. § 104(b)(5), including failing to establish that the prior art discloses all
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`elements “arranged as in the claims.” Second, the Petition is deficient because it
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`violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against incorporating other
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`arguments by reference. Third, the Petition relies on prior art that is cumulative of
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`prior art raised in another pending petition filed by Petitioner, as well as with prior
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`art considered during the prosecution of the underlying application. Finally, even
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`setting aside these critical defects, the Petition should be rejected on the merits,
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`because it fails to demonstrate a reasonable likelihood of any claims being
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`invalid—particularly because it relies on unreasonably broad constructions for and
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`fails to construe terms that are material to all of the claims at issue.
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`A. The Petition Fails To Explain the Relevance Of The References
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`To The Claims As Required By 37 C.F.R. § 104(b)(5)
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`37 C.F.R. § 104(b)(5) states (emphasis added): “the petition must set forth:
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`. . . (5) The exhibit number of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge. The
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`Board may exclude or give no weight to the evidence where a party has failed to
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`state its relevance or to identify specific portions of the evidence that support the
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`challenge.” In addition, in order to invalidate a claim, a prior art reference “must
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`not only disclose all elements of the claim within the four corners of the document,
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`but must also disclose those elements ‘arranged as in the claim.’” See MPEP 2131;
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`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Failure
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`to satisfy these requirements is grounds to dismiss an IPR petition in its entirety.
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`See, e.g., Synopsis, Inc. v. Mentor Graphics Corp., IPR 2012-0041, Dkt. No. 16,
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`12-13 (PTAB 2013) (declining to institute IPR due to petitioner’s failure to
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`establish that elements were “arranged as in the claim”).
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`The Petition fails to mention, let alone satisfy, these requirements. For
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`example, the Petition provides no explanation of how Gibbs shows each and every
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`element “arranged as required by the claim,” as required for a proper anticipation
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`rejection. See id. Instead, the Petition consists of a series of conclusory statements
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`that various elements of the claims are present in the asserted prior art. There is
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`little or no explanation in the Petition of specifically how the claim terms are being
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`applied by the Petitioner or why the highlighted language corresponds to (or is
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`otherwise relevant to) the claim elements. Even the Declaration of Henry Houh
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`(Ex. 1003), upon which the Petition is based, contains many conclusory statements
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`11
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`that elements are met, but fails to provide the explanation required by the PTO’s
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`regulations.1
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`A prime example of the Petition’s failure to explain how Gibbs meet the
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`limitations is the Petition’s total failure to explain the relation between the various
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`elements in relation to their antecedent elements. The Petition identifies at least
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`nine different types of alleged containers. See Petition at 11 (“Ex. 1006 describes a
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`train object, a locomotive object, a car object, a crew object, a terminal object, a
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`yard object, a shop object, a coal zone object, and many other objects. Ex. 1003 at
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`¶¶ 75-76.”).2 But the Petition does not indicate which of these nine “objects” is
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`“the container” of the claims.
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`Even assuming that each of objects disclosed by Gibbs is a “container,” the
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`Petition has the burden of showing that at least one of those containers has all the
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`required attributes of the “containers” set forth by the claim (i.e., an information
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`element, a first register, a second register governing interactions of the container
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`according to the utility of information in the information element, the active,
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`passive, and neutral space registers, and a gateway).
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`1 The supporting declaration of Apple’s expert also repeatedly omits the “arranged
`as required by the claim” requirement for anticipation. See Ex. 1003 at ¶ 28
`(representing that § 102 is satisfied because “every element” is present, without
`addressing how the elements are arranged).
`2 The Petition did not include page numbers. For reference purposes, Patent
`Owner has assumed that the first page of the Petition after the Table of Contents is
`page 1, and assigned subsequent page numbers accordingly.
`12
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`But the Petition’s discussion of which “objects” “contain” all of the registers
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`is not consistent. When discussing the “information element” and “plurality of
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`registers” of claim 2, the Petition references the “train object,” as “the container.”
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`But when the Petition discusses the “second register” of “the container,” it
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`switches to a generic discussion of location-related processing performed by the
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`system through interaction between “transport objects” and “map objects” and
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`“report objects.”
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`And there is no apparent way to read the “second register” onto the few
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`specific disclosures from Gibbs that the Petition identifies in a way that satisfies
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`the entire limitation of “governing interactions of the container with other
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`containers, systems or processes according to utility of information in the
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`information element relative to an external-to-the-apparatus three-dimensional
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`space.” For example, the Petition identifies the following “information elements”
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`for a “train object”: “train name, the number of cars in the train, the length of the
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`train, the train direction, the train’s terminal of origin, and the train’s destination
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`terminal.” The Petition never identifies a “second register” of the train object that
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`represents space and controls interactions of the “train object” based on the utility
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`of the train’s name, number of cars, length, origin, or destination. Instead, the
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`Petition asserts “second registers” of other objects, such as the “report” objects.
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`This does not establish anticipation of claim 2.
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`13
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`The Petition similarly fails to connect the dots regarding the “passive
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`register identifying space in which the container can be acted upon.” The petition
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`identifies a number of generic computer functions that involve representations of
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`space, but doesn’t specifically identify the antecedent container that is being acted
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`upon, nor the exact register that controls being acted upon. The same is true for
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`the neutral register. Instead, the petition discusses different “reports.” But the
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`“report” is not “the container “onto which the Petition read the earlier limitations.
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`Accordingly, just like the petition at issue in Synopsis, which the PTO
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`rejected (see IPR 2012-0041, Dkt. No. 16, 12-13 (PTAB 2013)), the instant
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`Petition fails to satisfy § 104(b)(5)’s requirement that “the Petition must set forth . .
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`. the relevance of the evidence to the challenge raised.” Accordingly, the instant
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`Petition should also be rejected. See Synopsis.
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`B.
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`The Petition Violates Rule 42.6 By Incorporating the Substance of
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`Its Arguments By Reference
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`Rule 42.24 of the PTAB’s Rules for Trial Practice limits petitions for inter
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`partes review to 60 pages. The PTO adopted this page limit after substantial
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`public commentary, in an attempt to reduce the burden of petitions for review on
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`the PTAB and patent owners. To ensure that Petitioners adhere to this page limit,
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`the PTO explicitly prohibits incorporation of arguments by reference. See 37
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`C.F.R. 42.6(a)(3) (“Arguments must not be incorporated by reference from one
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`document into another document.”) (emphasis added); see also Rules of Practice
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`for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent
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`Trial and Appeal Board Decisions (“Rules of Practice”), Fed. Reg. 77, No. 157, p.
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`48617 (noting that, under § 42.6, petitions are subject to Fed. R. App. Proc. 32,
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`which prohibits incorporation by reference). As the PTO explained:
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`incorporation by reference
`The prohibition against
`minimizes the chance that an argument would be
`overlooked and eliminates abuses
`that arise from
`In DeSilva
`incorporation
`and
`combination.
`v.
`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), the
`court rejected ‘‘adoption by reference’’ as a self-help
`increase in the length of the brief and noted that
`incorporation is a pointless imposition on the court’s time
`as it requires the judges to play archeologist with the
`record. The same rationale applies to Board proceedings.
`Cf. Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005
`WL 3077915, *1 (D. N.J. 2005) (Defendants provided
`cursory statements in motion and sought to make its case
`through incorporation of expert declaration and a claim
`chart. Incorporation by reference of argument not in
`motion was held to be a violation of local rules governing
`page limitations and was not permitted by the court). . . .
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`The PTO noted that that Board applied page limits to both arguments and findings
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`of fact because the failure to do so resulted in “abuses of the system.” Fed. Reg.
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`77 at 48620. The PTO noted that patent cases before the PTAB are no exception to
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`the standards of district courts, where motion practice does not require federal
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`judges to “shovel through steaming mounds of pleonastic arguments in Herculean
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`effort to uncover a hidden gem of logic.” Id.
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`Despite this prohibition on incorporation by reference, the Petition
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`incorporates at least 47 pages of the 78-page supporting declaration by reference.
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`15
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`The Petition itself never directly cites either of the two asserted references.
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`Instead, it cites the supporting declaration, which then often cites other portions of
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`itself before finally citing actual language from the underlying patents.
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`The Petitioner’s failure to abide by the regulations is not merely technical; it
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`directly impacts the substance of the issues in the Petition. The Petition’s use of
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`incorporation by reference enabled the Petitioner to assert conclusions without
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`having to show that the underlying references actually make the asserted
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`disclosures. And by moving all actual evidence into 47 pages of argument in the
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`declaration, the Petition disguises its leaps in logic and mischaracterizations.
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`For example, the Petition states that Gibbs discloses an “an active space
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`register for identifying space in which the container will act upon other containers,
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`processes, systems or gateways.” Petition at 15. The Petition asserts this based on
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`Gibbs’ disclosure that users can set up alerts and warnings which will be
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`automatically displayed to a user when specified conditions regarding particular
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`objects are met. Id. (citing Ex. 1003 at ¶¶ 90-94 and 103-106):
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`• Paragraph 90 cites Ex. 1006 at 8:53-63, which describes “map
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`objects” retrieving data from “transport objects.”
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`• Paragraph 91-93 redundantly cite Ex. 1006 at 12:49-13:12, which
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`describes how the system constructs a map of a railroad based on
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`railpoints. There is no discussion of a “train object” or the “transport
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`16
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`object” discussed in ¶ 90. Paragraph 94 shows the map thus
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`generated.
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`• Paragraph 103 cites Ex. 1006 at 2:26-35 for a general disclosure that
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`the system may be used to generate warnings. There is no discussion
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`of any registers in any of the “objects” asserted as containers.
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`• Paragraph 104 cites Ex. 1006 at 22:16-21, which again states
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`generically that “warning” criteria can be set by map and report
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`objects.
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`• Paragraph 105 cites Ex. 1006 at 6:3-7 and 22:36-47 to establish that
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`visual and audible signals can be generated as part of the warnings.
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`• Paragraph 106 cites Ex. 1006 at 12:33-48, which explains in general
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`terms that warnings can be triggered when values of a given data item
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`deviate from criteria set by the user. But there is again no discussion
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`of triggers based on location.
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`The Petition also asserts that zooming on a map “requires” the map object to
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`determine which transport objects are within the selected area, citing Ex. 1003 at ¶
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`93. An examination of ¶ 93 of Ex. 1003 presents a quotation of Gibbs (Ex. 1006)
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`at 12:61-13:12. The quoted portion of Ex. 1006 does not even mention transport
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`objects. In short, the actual text of Gibbs never discloses an apparatus comprised
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`of the elements set forth by the claims of the ’536 patent.
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`17
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`These are exactly the kinds of abuses that § 42.6’s prohibition against
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`incorporating by reference was designed to prevent. Walking the PTAB through
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`every Byzantine argument presented by Petitioner would require parsing over 78
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`pages of Ex. 1003 and the Petition, which would exceed the page limit for this
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`Preliminary Response. The Petition never once presents a direct quotation of any
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`evidence in the asserted prior art. Instead, the Petition presents all the actual
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`disclosures of the prior art in Ex. 1003. The overwhelming bulk of Petitioner’s
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`argument—even more than the 23 pages that Petitioner had left at its disposal—is
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`in the underlying declaration and incorporated by reference. This creates an
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`unreasonable amount of work for the PTO, is unfair to the Patent Owner, and
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`violates § 42.6 of the PTAB’s Rules of Practice for inter partes review
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`proceedings. In light of this violation by Petitioner, the Petition should be denied.
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`C. The Prior Art Raised in the Petition is Cumulative with the Prior
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`Art Asserted by the Petitioner in Another Petition.
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`The prior art asserted in this case is cumulative with the prior art asserted by
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`Petitioner in its petition for inter partes review in case No. 2014-0085. The prior
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`art asserted here in Petition No. 2014-0086, U.S. Patent No. 5,836,529 (“Gibbs”) is
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`directed to an “Object Based Railroad Transportation Network Management
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`System and Method.” The references asserted in Petitioner’s concurrent Petition
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`No. 2014-0085 (Anderson and Dussell) are asserted as anticipatory based on their
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`disclosure of location-based databases that interact with devices in the real world
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`based on location. The Gibbs patent similarly discloses the use of an object-
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`oriented database in combination with external devices (e.g., railroad cars, stations,
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`and cargo).
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`The basic functionality disclosed by the prior art asserted in this petition is
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`identical to the basic functionality disclosed by Anderson and Dussell, at least
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`insofar as it is material to the ’536 patent. In both petitions, the Petitioner
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`essentially contends that (i) any software file is a container (location records in
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`Anderson and Dussell; location, crew, and locomotive objects in Gibbs), (ii) any
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`location-based software action satisfies all four space-based limitations in claims
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`2-14, and (iii) any process that adds anything to any file proves the existence of at
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`least one “acquire register” in claim 16. In petition 0085, Petitioner contends that
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`Anderson and Dussell anticipate claims 2-14 and 16. In petition 0086, Petitioner
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`contends that Gibbs anticipates these same claims. In essence, the two petitions
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`are identical in their allegations.
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`Patent Owner submits that it is inefficient to initiate two proceedings to
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`answer the question of whether prior art that discloses location-based databases
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`interacting with objects in the real world invalidates claims 2-14 and 16 of the ’536
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`patent. Accordingly, Patent Owner submits that even if the PTO decides that the
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`Petitioner has carried their burden of showing a reasonable likelihood of prevailing
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`on at least one claim in both petitions (Nos. 2014-0085 and 2014-0087), it would
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`19
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`be within the PTO’s discretion to choose one petition on which to proceed and
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`deny the other.
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`D. There Is No Reasonable Likelihood of the Claims Being
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`Invalidated.
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`1.
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`The Petitioner Fails to Construe and/or Incorrectly
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`Construes Terms Material to all Claims.
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`The initial step in an analysis of whether to institute a trial is to determine
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`the meaning of the claims. Consistent with the statute and the legislative history of
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`the AIA, the Board interprets claims using the broadest reasonable construction in
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`light of the specification in which they appear. See Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR § 42.100(b). Claim
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`terms are also given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire disclosure.
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`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). There is a
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`“heavy presumption” that a claim term carries its ordinary and customary meaning.
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`“Plain meaning” refers to the ordinary and customary meaning the term would
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`have to a person of ordinary skill in the art. Such terms require no construction.
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`See, e.g., Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp,
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`Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of
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`20
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`“melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380
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`(Fed. Cir. 2001) (finding no error in court’s refusal to construe “irrigating” and
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`“frictional heat”).
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`A patentee may act as his own lexicographer by redefining the meaning of
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`particular claim terms away from their ordinary meaning, by clearly expressing
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`that intent in the written description. See Merck & Co., Inc. v. Teva
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`Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005). If an inventor acts
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`as his or her own lexicographer, the definition must be set forth in the specification
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`with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
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`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
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`The Petition urges the Board to utilize two additional rules in construing the
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`claims, neither of which has any support in the law. First, Petitioner asserts that
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`the “[t]he broadest reasonable construction should reflect subject matter that Patent
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`Owner contends literally infringes the claims, as well as constructions proposed by
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`Patent Owner in past or concurrent litigation.” Petition at 8. No law is cited to
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`support this position, because there is no legal support for this position. In fact, the
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`Federal Circuit has explicitly ruled that legal opinions offered by patentees during
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`litigation warrant no deference during claim construction. Howmedica Osteonics
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`Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346 (Fed. Cir. 2008); see also
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 985 (Fed.Cir.1995) (en banc)
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`(“[I]t is not unusual for there to be a significant difference between what an
`21
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`
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`inventor thinks his patented invention is and what the ultimate scope of the claims
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`is after allowance by the PTO.”); Reexamination No. 95/000,639, Action Closing
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`Prosecution, 8-9 and 21-22 (declining to construe claims in accordance with patent
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`owner’s positions taken in litigation).3
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`Next, the Petition asserts that, “if Patent Owner contends terms in the claims
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`should be read to have a special meaning, those contentions should be disregarded
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`unless Patent Owner also amends the claims compliant with 35 U.S.C. § 112 to
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`make them expressly correspond to those contentions.” Petition at 8, (citing 77
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`Fed. Reg. 48764 at II.B.6 (August 14, 2012) and In re Youman, 679 F.3d 1335,
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`1343 (Fed. Cir. 2012)). The authorities cited by Petitioner, however, simply do not
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`establish that that any such amendments are necessary.
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`In addition to misunderstanding the proper legal standard for claim
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`construction, the Petition completely fails to construe the terms “encapsulates”—a
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`term that is material to every claim in
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