Trials@uspto.gov
`571-272-7822
`
`Paper 65
`Entered: March 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`
`Petitioner
`
`V.
`
`MOBILEMEDIA IDEAS, LLC
`Patent Owner
`
`Case IPR2013-00036
`
`Patent 6,871,048
`
`Before JAMESON LEE, KEVIN F. TURNER, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`ORDER
`
`Termination of Proceeding
`37 CFR. § 42. 72
`
`1 Petitioner originally identified as Research In Motion Corporation and
`Research In Motion Limited changed their names to “BlackBerry
`Corporation” and “BlackBerry Limited,” respectively. Paper 37.
`
`1
`
`L&H CONCEPTS 2007
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`|PR2014-00438
`
`
`571-272-7822
`
`Paper 65
`Entered: March 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`
`Petitioner
`
`V.
`
`MOBILEMEDIA IDEAS, LLC
`Patent Owner
`
`Case IPR2013-00036
`
`Patent 6,871,048
`
`Before JAMESON LEE, KEVIN F. TURNER, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`ORDER
`
`Termination of Proceeding
`37 CFR. § 42. 72
`
`1 Petitioner originally identified as Research In Motion Corporation and
`Research In Motion Limited changed their names to “BlackBerry
`Corporation” and “BlackBerry Limited,” respectively. Paper 37.
`
`1
`
`L&H CONCEPTS 2007
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`|PR2014-00438
`
`
`
`Case IPR2013-00036
`
`Patent 6,871,048
`
`I.
`
`BACKGROUND
`
`A. Introduction
`
`Petitioner, BlackBerry Corporation and BlackBerry Limited
`
`(“Blackberry”), filed a petition on October 30, 2012, for an inter partes
`
`review of claims 1-12 of US Patent No. 6,871,048 (“the ’048 patent”)
`
`pursuant to 35 U.S.C. §§ 311-319. That petition was followed by a
`
`corrected petition (Paper 7, “Pet.”), filed on November 6, 2012. On March
`
`18, 2013, the Board instituted trial on claims 1-12 of the ’048 patent based
`
`on all grounds of unpatentability alleged in the petition. Paper 15. The
`
`Board has jurisdiction under 35 U.S.C. § 6(c).
`
`After institution of trial, Patent Owner, MobileMedia Ideas LLC
`
`(“MobileMedia”), filed a patent owner response (“PO Resp”). Paper 27.
`
`Blackberry filed a reply. Paper 39. An oral hearing was held on October 18,
`
`2013. A transcript of the oral hearing is included in the record as Paper 63.
`
`On December 16, 2013, the parties filed a joint motion to terminate
`
`proceeding (Paper 60), which was granted-impart. The Board terminated
`
`the proceeding with respect to Blackberry, but not with respect to
`
`MobileMedia. Paper 64.
`
`For the reasons discussed below, we are unable to reach a
`
`determination on the alleged grounds of unpatentability over prior art.
`
`Accordingly, we terminate this proceeding under 37 C.F.R. § 42.72.
`
`
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`Case IPR2013-00036
`
`Patent 6,871,048
`
`B. The ’048 Patent
`
`The ’048 patent relates to “a mobile communication apparatus for
`
`carrying out communication through radio waves” and “an information
`
`providing system using the mobile communication apparatus.” Ex. 1001,
`
`19-13. The specification of the ’048 patent describes that for a Wireless
`
`mobile communication apparatus, audio communication is mainstream, but
`
`there is an increasing need for “composite and multiple data communication
`
`of character information, image information, video information, or the like.”
`
`Id. at 1:22-28. In the Background section, the specification describes that a
`
`user of a mobile communication apparatus often carries, in addition, a
`
`portable sound device for reproducing music data recorded on a magnetic
`
`tape, an optical disc, a magneto-optical disc, or the like, or a portable radio
`
`receiver for receiving AM broadcasting, FM broadcasting, TV sound, or the
`
`like. Id. at 1:36-43. In the Summary section, the specification states:
`
`In view of the fact that usage efficiency of a mobile
`communication apparatus is not absolutely high, and a user
`carries a portable sound device, a portable radio receiver, or the
`like in addition to the mobile communication apparatus, an
`object of the present
`invention is
`to provide a mobile
`communication apparatus and an information providing system
`using the mobile communication apparatus
`in Which the
`functions of these devices are combined so that the user of the
`
`mobile communication apparatus can obtain information of
`desired contents at a desired time Without additionally carrying
`other devices.
`
`Id. at 1:48-58.
`
`
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`Case IPR2013-00036
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`Patent 6,871,048
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`The claimed invention requires reproducing and outputting
`
`downloaded data when the apparatus is in a “stand-by” state. Claims 1 and 7
`
`are the only independent claims. Claim 1 is directed to a mobile
`
`communication apparatus, and claim 7 is directed to an information
`
`providing system comprising a mobile communication apparatus.
`
`Both claims 1 and claim 7 recite elements in means-plus-function
`
`format pursuant to 35 U.S.C. § 112, sixth paragraph, including (emphasis
`
`added):
`
`processing means for encrypting the information signals prior
`to storage in said memory means.
`
`For context, the entirety of claim 1 is reproduced below:
`
`1. A mobile communication apparatus, comprising:
`
`communication means for transmitting and receiving
`a)
`information signals to and from a base station via radio waves;
`said base station further transmitting and receiving information
`signals to and from a service provider through a public line
`network;
`
`input/output means for a user to interact with said
`b)
`mobile communication apparatus;
`said input/output means
`comprising a keypad, display means,
`a speaker, and a
`microphone;
`
`a removable semiconductor memory for storing
`c)
`received information signals; and
`
`processing means for encrypting the information
`(1)
`signals prior to storage in said memory means;
`
`is
`communication apparatus
`whereby said mobile
`selectively operable to perform one of the operations of
`outputting received information signals at the time of reception,
`
`4
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`Case IPR2013-00036
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`Patent 6,871,048
`
`storing received information signals for output at a later time,
`and simultaneously outputting and storing received information
`signals; and
`
`is
`communication apparatus
`whereby said mobile
`operable to reproduce and output downloaded data when said
`apparatus is in a stand-by state.
`
`Notable features of the claimed mobile device are that it transmits and
`
`receives information signals to and from a base station via radio waves, that
`
`the base station further transmits and receives information to and from a
`
`service provider through a public line network, that the device encrypts
`
`received information signals prior to storing them, and that the device may
`
`perform one of three selectable operations: (1) outputting received
`
`information at the time of reception; (2) storing the received signals for
`
`outputting at a later time; and (3) simultaneously outputting and storing the
`
`received information. The device is also operable, while in stand-by mode,
`
`to reproduce and output downloaded data.
`
`
`
`Exhibit
`1002
`
`Exhibit
`1003
`
`.
`
`.
`
`1133(1)?“
`
`Case IPR2013-00036
`
`Patent 6,871,048
`
`C. Prior Art References
`
`Rydbeck et al.
`(“Rydbeck”)
`
`Hageltorn et al.
`(“Hageltom”)
`
`Allard et al.
`
`(6Allard”)
`
`US Patent No. 7,123,936 B1
`
`Oct. 17, 2006
`
`US Patent No. 6,006,1 17
`
`Dec. 21, 1999
`
`US Patent No. 5,422,656
`
`June 6, 1995
`
`
` .
`
`US PatentNo. 5,959,945
`Int. Pub. WO97/28649
`RealPlayer Plus 4.0 Manual,
`Progressive Networks, Inc.
`
`Sept. 28, 1999
`Aug. 7, 1997
`
`1997
`
`1133(1)?“
`1:33?“
`EXhibit
`1005
`
`RealPlayer
`
`D. Alleged Grounds of Unpatentabilily
`
`Claims 1_5 and 7_11
`
`§ 103
`
`.
`Cla1ms 6 and 12
`
`Cla1ms 1-5 and 7-11
`
`Claims 6 and 12
`
`§ 103
`
`§ 103
`
`§ 103
`
`Rydbeck, Hageltorn, Salomak1,
`and RealPlayer
`
`Rydbeck, Hageltorn, Salomaki,
`RealPlayer, and Allard
`
`Rydbeck, Hageltom, Kleiman,
`and RealPlayer
`
`Rydbeck, Hageltom, Kleiman,
`RealPlayer, and Allard
`
`
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`Case IPR2013-00036
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`Patent 6,871,048
`
`II. DISCUSSION
`
`A. Introduction
`
`A determination of anticipation and obviousness over prior art begins
`
`with claim construction. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`
`Cir. 1998) (“[T]he name of the game is the claim.” (quoting Giles
`
`Sutherland Rich, Extent ofProtection and Interpretation of Claimsi
`
`American Perspectives, 21 INT’L REV. INDUS. PROP. & COPYRIGHT L. 497,
`
`499 (1990))). It is axiomatic that we first must know what is being claimed.
`
`Not every such patentability analysis, however, necessarily ends with
`
`a determination with respect to the prior art. The language used in a claim to
`
`define the scope of coverage, read in light of the specification, may be
`
`indefinite and thus fail to indicate the scope of the claimed invention. See,
`
`e.g., In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d
`
`859, 862-63 (CCPA 1962).
`
`A patent claim is unpatentable under § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains. KSR Int'l Co. v. Teleflex, Inc., 550 US. 398, 406 (2007).
`
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art;
`
`(2) differences between the claimed subject matter and the prior art; (3) the
`
`level of ordinary skill in the art; and (4) secondary considerations of
`
`nonobviousness. Graham v. John Deere Co., 383 US. 1, 17-18 (1966).
`
`7
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`Case IPR2013-00036
`
`Patent 6,871,048
`
`As explained below, the scope of the claims of the ’048 patent cannot
`
`be determined without speculation. Consequently, the differences between
`
`the claimed invention and the prior art cannot be determined. In this
`
`circumstance, the analysis begins and ends with the claims, and we do not
`
`attempt to apply the claims to the prior art. See In re Wilson, 424 F.2d at
`
`1385; In re Steele, 305 F.2d at 862-63; accord United Carbon Co. v. Binney
`
`& Smith Co., 317 US. 228, 237 (1942) (indefiniteness moots consideration
`
`of prior art issues).
`
`B. The Law on the Construction of
`
`a Computer-Implemented Means-Plus-Function Element
`
`With regard to a claim element set forth in “means-plus-function”
`
`form, its scope and meaning are governed by 35 U.S.C. § 112, sixth
`
`paragraph, which provides:
`
`in a claim for a combination may be
`An element
`expressed as a means or step for performing a specified
`function without the recital of structure, material, or acts in
`support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the
`specification and equivalents thereof.
`
`(emphasis added).2
`
`2 Section 4(c) of the America Invents Act, Pub. L. 112-29, 125 Stat. 284,
`329 (2011) (“ALA”) re-designated 35 U.S.C. § 112, sixth paragraph, as
`35 U.S.C. § 112(f). Because the ’048 patent has a filing date prior to
`September 16, 2012, the effective date of the AIA, we refer to the pre-AIA
`version of35 U.S.C. § 112.
`
`8
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`Case IPR2013-00036
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`Patent 6,871,048
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`The above-quoted rule of construction applies regardless of the
`
`tribunal attempting to interpret a claim, e. g., the United States Patent and
`
`Trademark Office or a United States District Court. In re Donaldson Co.,
`
`16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
`
`The United States Court of Appeals for the Federal Circuit has given
`
`considerable, clear, and consistent guidance, with regard to the construction
`
`of a computer-implemented means-plus-filnction claim element under
`
`35 U.S.C. § 112, sixth paragraph. Except for a narrow exception explained
`
`in In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011), conceming generic
`
`functions performed by a general-purpose computer, such as “processing,”
`
`“receiving” and “storing,” a computer-implemented means-plus-fiinction
`
`element is indefinite unless the specification discloses the specific algorithm
`
`used by the computer to perform the recited function. Function Media, LLC
`
`v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013); In re Katz, 639 F.3d
`
`at 1315; 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); Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
`
`Cir. 2008); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Techs., Inc.,
`
`521 F.3d 1328, 1333 (Fed. Cir. 2008).
`
`The following explanation from the Federal Circuit in Function Media
`
`is instructive:
`
`Section 112, paragraph 6 allows for a limited exception [to the
`particularly pointing out and distinctly claiming requirement of
`Section 112, second paragraph], permitting “a claim [to] state
`the fiinction of the element or step, and the ‘means’ covers the
`
`9
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`Case IPR2013-00036
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`Patent 6,871,048
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`‘structure, material, or acts’ set forth in the specification and
`equivalents thereof.” [Typhoon Touch Techs., Inc. v. Dell, Inc.,
`659 F.3d 1376, 1383 (Fed. Cir. 2011)]. The trade-off for
`allowing such claiming is that “the specification must contain
`sufficient descriptive text by which a person of skill in the field
`of the invention would ‘know and understand what structure
`
`corresponds to the means limitation.’” Id. at 1383-84 (quoting
`Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
`Cir. 2008)).
`
`. When dealing with a “special purpose computer-
`implemented means-plus-function limitation,” we require the
`specification to disclose the algorithm for performing the
`function. The “specification can express the algorithm in any
`understandable terms including as a mathematical formula, in
`prose, or as a flow chart, or in any other manner that provides
`sufficient structure.” Id.
`
`708 F.3d at 1317-18.
`
`The need for disclosure of the specific algorithm used to program the
`
`computer is explained in WMS Gaming, Inc. v. International Game
`
`Technology: “In a means-plus-function claim in which the disclosed
`
`structure is a computer, or microprocessor, programmed to carry out an
`
`algorithm, the disclosed structure is not the general-purpose computer, but
`
`rather the special purpose computer programmed to perform the disclosed
`
`algorithm.” 184 F.3d 1339, 1349 (Fed. Cir. 1999) (citation and footnote
`
`omitted). Consequently, the specification must disclose enough of a specific
`
`algorithm to provide the necessary structure under § 112, sixth paragraph.
`
`Finisar, 523 F.3d at 1340. Indeed, allowing a computer programmed to
`
`perform a specialized function to be claimed without disclosure of the
`
`algorithm used for that programming would exhibit the same type of
`
`10
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`Case IPR2013-00036
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`Patent 6,871,048
`
`impermissible overbreadth of purely functional claims. Net MoneyIN,
`
`545 F.3d at 1367.
`
`The Federal Circuit stated, in Aristocrat, 521 F.3d at 1333:
`
`For a patentee to claim a means for performing a particular
`function and then to disclose only a general purpose computer
`as the structure designed to perform that function amounts to
`pure functional claiming. Because general purpose computers
`can be programmed to perform very different tasks in very
`different ways, simply disclosing a computer as the structure
`designated to perform a particular function does not limit the
`scope of the claim to “the corresponding structure, material, or
`acts,” that perform the function, as required by section 112[,]
`paragraph 6.
`
`“The point of the requirement that the patentee disclose particular structure
`
`in the specification and that the scope of the patent claims be limited to that
`
`structure and its equivalents is to avoid pure functional claiming.” Id.
`
`Thus, the disclosure of a general-purpose computer is insufficient to
`
`provide the corresponding structure required by 35 U.S.C. § 112, sixth
`
`paragraph, for a means-plus-fiinction element recited as performing anything
`
`other than a basic generic function of a general-purpose computer. For
`
`example, in Aristocrat, 521 F.3d at 1333, the court affirmed a district court’s
`
`ruling that the claims were indefinite because of lack of disclosure of any
`
`specific algorithm used by the disclosed computer to perform the fiinction
`
`recited in a means-plus-function element. The outcome is the same for one
`
`or more claims in Function Media, 708 F.3d at 1319, Net MoneyIN,
`
`545 F.3d at 1367, Blackboard, 574 F.3d at 1385, and Finisar, 523 F.3d
`
`at 1340-41.
`
`1 1
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`Case IPR2013-00036
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`Patent 6,871,048
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`C. “processing means for encrypting the information
`signals prior to storage in said memory means”
`
`Each of independent claims 1 and 7 recites: “processing means for
`
`encrypting the information signals prior to storage in said memory means.”
`
`Both Blackberry and MobileMedia identify this claim language as reciting a
`
`means-plus-fiinction element under 35 U.S.C. § 112, sixth paragraph. Pet.
`
`14; PO Resp. 24. Both Blackberry and MobileMedia recognize the function
`
`recited as “encrypting the information signals prior to storage in said
`
`memory means.” Id. We agree with the identification of the parties.
`
`Blackberry identifies the corresponding structure in the specification
`
`of the ’048 patent as “recording/reproducing section I 8 (Fig. I)” and notes
`
`that that section is described in the specification of the ’048 patent as “made
`
`ofa microprocessor and the like.” Pet. 14 (citing EX. 1001, 4:41-42).
`
`MobileMedia identifies the corresponding structure in the specification of
`
`the ’048 patent as “microprocessor or the like, or an equivalent thereof,
`
`programmed as described in the patent to perform the claimed function.”
`
`PO Resp. 24. For the reasons stated below, we determine that neither
`
`proposed construction provides sufficient corresponding structure, as
`
`required under 35 U.S.C. § 112, sixth paragraph.
`
`The specification describes that recording/reproducing section 18
`
`“encrypts the music data or news data” to keep data in the memory secure
`
`(Ex. 1001, 5:64 to 6:3), and that recording/reproducing section 18 “is made
`
`of a microprocessor and the like” (Ex. 1001, 4:42-43). Because the
`
`“processing means for encrypting the information signals prior to storage in
`
`12
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`Case IPR2013-00036
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`Patent 6,871,048
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`said memory means” is a computer-implemented means-plus-function
`
`element under 35 U.S.C. § 112, sixth paragraph, the specification must
`
`disclose a specific algorithm With Which to program the general-purpose
`
`microprocessor, to provide a corresponding structure. This is not a
`
`circumstance falling Within the narrow exception explained in In re Katz,
`
`639 F.3d at 1316, where the function recited is generic and can be performed
`
`by any general-purpose computer Without special programming, e. g. ,
`7) LC
`7) LC
`
`“processing,
`
`receiving,
`
`storing.” At issue, here is the specialized
`
`function of encrypting information signals prior to storage.
`
`In the circumstance here, involving a specialized function of
`
`encrypting information signals, the corresponding structure to the means-
`
`plus-function recitation cannot be a general-purpose computer, but must be a
`
`special purpose computer programmed to perform a disclosed algorithm
`
`causing the computer to accomplish the recited function. WMS Gaming,
`
`184 F.3d at 1349, see also Harris Corp. v. Ericsson, Inc., 417 F.3d 1241,
`
`1253 (Fed. Cir. 2005) (“A computer-implemented means-plus-function term
`
`is limited to the corresponding structure disclosed in the specification and
`
`equivalents thereof, and the corresponding structure is the algorithm”).
`
`It is not in dispute that the specification of the ’048 patent discloses no
`
`specific algorithm With Which to program the microprocessor to achieve the
`
`function of “encrypting the information signals prior to storage in said
`
`memory means.” In its petition, Blackberry states that the ’048 patent does
`
`not disclose an algorithm for performing the claimed encrypting function.
`
`13
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`Case IPR2013-00036
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`Patent 6,871,048
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`Pet. 14. At final hearing, counsel for MobileMedia acknowledged that the
`
`specification of the ’048 patent does not describe an encryption algorithm:
`
`[Counsel]: The specification describes the hardware for doing
`it, not the encryption algorithm. That’s right. We don’t do the
`encryption algorithm, because it doesn’t matter
`for
`this
`invention what the encryption algorithm is, it’s that there’s a
`processor in the phone for encrypting. And it’s not -- doesn’t
`matter and that’s really what’s important here that it’s all taking
`place on the phone. All right?
`
`Paper 63, 39:3-9.
`
`MobileMedia’s belief that disclosure of an encryption algorithm is
`
`unimportant is refuted by the plain language of the statute and specific
`
`reasons that prompted Congress to enact 35 U.S.C. § 112, sixth paragraph.
`
`The sixth paragraph of 35 U.S.C. § 112, when enacted, was a statutory
`
`response to the Supreme Court’s decision in Halliburton Oil Well
`
`Cementing Co. v. Walker, 329 US. 1, 8-9 (1946),3 which held as
`
`impermissible use of a “means-plus-function” term, purely functional, to
`
`encompass any and all structures for achieving that a result, including those
`
`which were not what an applicant had invented.
`
`In Greenberg v. Ethicon Endo-Surgery Inc., the Federal Circuit stated:
`
`As this court has observed, “[t]he record is clear on why
`paragraph six was enacted.”
`In re Donaldson Ca, 16 F.3d
`1189, 1194, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) (in banc).
`
`3 Halliburton was the culmination of a long line of cases dealing with the
`use of terms such as “means” and “mechanisms” in claims. See, e.g., A.W.
`Deller, Walker on Patents, § 166, 790-94 (Deller’s Ed. 1937).
`
`14
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`Case IPR2013-00036
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`Patent 6,871,048
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`In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1,
`67 S.Ct. 6, 91 L.Ed. 3, 71 USPQ 175 (1946), the Supreme
`Court held invalid a claim that was drafted in means-plus-
`function fashion. Congress enacted paragraph six, originally
`paragraph three,
`to overrule that holding.
`In place of the
`Halliburton rule, Congress adopted a compromise solution, one
`that had support in the pre-Halliburton case law: Congress
`permitted the use of purely functional language in claims, but it
`limited the breadth of such claim language by restricting its
`scope to the structure disclosed in the specification and
`equivalents thereof. See Valmont Indus., Inc. v. Reinke Mfg.
`Co., 983 F.2d 1039, 1041-42, 25 USPQ2d 1451, 1453-54 (Fed.
`Cir. 1993); In re Fuetterer, 50 C.C.P.A. 1453, 319 F.2d 259,
`264 n.11, 138 USPQ 217, 222 n.11, 138 USPQ 217, 222 n.11
`(CCPA1963).
`
`91 F.3d 1580, 1582 (Fed. Cir. 1996).
`
`Thus, means-plus-fiinction type purely functional claim language is
`
`now permissible but only under the restrictive conditions of 35 U.S.C. § 112,
`
`sixth paragraph, i.e., limited in scope to the corresponding structure,
`
`material, or acts disclosed in the specification and equivalents thereof. The
`
`statutory provision creates a quidpro quo—in order to use purely functional
`
`language to set forth a claim element, a patentee must describe in the
`
`specification the corresponding structure, material, or acts, and coverage of
`
`the fiinctional claim language is limited to such disclosed structure, material,
`
`or acts. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d
`
`1374, 1381-82 (Fed. Cir. 1999).
`
`15
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`Case IPR2013-00036
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`Patent 6,871,048
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`1. MobileMedia’s Argument That Encrypting Data Was Well Known
`
`MobileMedia argues that at the time of invention of the ’048 patent,
`
`encryption of digital content was well known, citing the testimony of its
`
`expert witness Dr. Vijay Madisetti. PO Resp. 26:4-5 (citing Ex. 2006 11 40).
`
`That argument is misplaced, and does not help MobileMedia’s position with
`
`regard to the lack of disclosure in the ’048 patent of any algorithm for
`
`performing the recited function. The same argument was made by a
`
`patentee and rejected squarely by the Federal Circuit in Function Media,
`
`708 F.3d at 1319 (“Having failed to provide any disclosure of the structure
`
`for the ‘transmitting’ function, FM cannot rely on the knowledge of one
`
`skilled in the art to fill in the gaps.”). In that case, the court stated:
`
`Furthermore, it is well established that proving that a person of
`ordinary skill could devise some method to perform the
`function is not
`the proper inquiry as to definiteness—that
`inquiry goes to enablement. See Blackboard, 5 74 F.3d at 1385.
`
`Id. The Federal Circuit also has provided additional clear guidance:
`
`A patentee cannot avoid providing specificity as to structure
`simply because someone of ordinary skill in the art would be
`able to devise a means to perform the claimed function. To
`allow that form of claiming under section 112, paragraph 6,
`would allow the patentee to claim all possible means of
`achieving a function. See Atmel Corp. v. Information Storage
`Devices,
`Inc.,
`198 F.3d 1374,
`1380 (Fed. Cir.
`1999)
`(“consideration of the understanding of one skilled in the art in
`no way relieves the patentee of adequately disclosing sufficient
`structure in the specification”).
`
`16
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`Case IPR2013-00036
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`Patent 6,871,048
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`That ordinarily skilled artisans could carry out the recited
`function in a variety of ways is precisely why claims written in
`“means-plus-function”
`form must disclose
`the particular
`structure that is used to perform the recited function. By failing
`to describe the means by which the access control manager will
`create an access control
`list, Blackboard has attempted to
`capture any possible means for achieving that end. Section
`112, paragraph 6, is intended to prevent such pure functional
`claiming. Aristocrat, 521 F.3d at 1333.
`
`Blackboard, 574 F.3d at 1385. Accordingly, in the context of identifying
`
`disclosed structure corresponding to a means-plus-function claim element,
`
`where no algorithm is described for programming the microprocessor to
`
`perform encryption, it is of no moment that one with ordinary skill in the art
`
`would have known how to design and create an encryption algorithm.
`
`2. MobileMedia’s Argument That the Specification’s Mention of
`“and the like” is a Disclosure of Other Structures
`
`MobileMedia points to the specification’s description that
`
`recording/reproduction section 18 “is made of a microprocessor and the
`
`like” (Ex. 1001, 4:42-43, emphasis added), and cites to the testimony of
`
`Dr. Vijay Madisetti (Ex. 2006 11 44), to argue that a person of ordinary skill
`
`at the time of the invention would understand that “and the like” includes
`
`processor structures other than a general purpose computer. PO Resp.
`
`25:2-5. MobileMedia further argues that at the time of the invention of the
`
`’048 patent, it was common for encryption to be performed by specialized
`
`l7
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`Case IPR2013-00036
`
`Patent 6,871,048
`
`dedicated hardware, and not by a general purpose computer. Id. at
`
`25:5-7 (citing Ex. 2006 W 44-45).
`
`These arguments are unpersuasive. They essentially are the same as
`
`the argument already rejected above in Section 11C. 1., only presented again
`
`in a different form. We reiterate that it does not matter what one with
`
`ordinary skill in the art would have known about other structures useable to
`
`perform encryption of data. Those structures must be described specifically
`
`in the specification to be regarded as corresponding to the claimed means-
`
`plus-function element with the function of encrypting data. Also, the phrase
`
`“and the like” does not mean “and anything else.” Rather, it refers to
`
`components comparable to the microprocessor described in the specification,
`
`for which the specification sets forth no specific encryption algorithm.
`
`Thus, all of the “and the like” components are, like the general-purpose
`
`microprocessor, equally without specific structure.
`
`We do not credit the testimony of Dr. Madisetti, that one skilled in the
`
`art at the time of the invention of the ’048 patent would understand that “and
`
`the like” includes processor structures other than a general-purpose
`
`computer (EX. 2006 11 44), because he does not explain why the structure of
`
`a special-purpose computer programmed with a specific encryption
`
`algorithm would be “like” the structure of a general-purpose computer
`
`without the algorithm. Dr. Madisetti also does not explain why the structure
`
`of any specialized dedicated hardware component used for encryption would
`
`be “like” the structure of a general-purpose computer with no encryption
`
`algorithm.
`
`18
`
`
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`Case IPR2013-00036
`
`Patent 6,871,048
`
`In any event, no specific encryption algorithm is disclosed in the
`
`specification, and neither is the structure of any specialized dedicated
`
`hardware encryption component. The phrase “and the like” does not add
`
`specific structure to the disclosure, to constitute a sufficiently specific
`
`structure corresponding to the claimed “processing means for encrypting the
`
`information signals prior to storage in said memory means.”
`
`We do not credit the above-noted testimony of Dr. Vijay Madisetti,
`
`also in part because, in paragraph 44 of his declaration (Ex. 2006), he
`
`testifies, Without explanation, that the description of the ’048 patent does not
`
`link the function of “encrypting” to a microprocessor. That testimony is
`
`contradicted plainly by express description in the specification of the ’048
`
`patent that recording/reproducing section 18 performs the encryption
`
`(Ex. 1001, 6: 1-2) and that recording/reproducing section 18 is made of a
`
`microprocessor and the like (Ex. 1001, 4:42-43). MobileMedia has not
`
`made the argument that the means-plus-function element reciting the
`
`function of encrypting data is not linked to the microprocessor, and even
`
`identifies the microprocessor as the corresponding structure. PO Resp. 24.
`
`Similarly, to the extent that MobileMedia also argues that equivalent
`
`structures are covered, expressly by statute, by the claimed means-plus-
`
`function element, that argument is ineffective to add specific disclosure of
`
`any particular structure to the specification. That a means-plus-function
`
`element is construed to cover corresponding structure described in the
`
`specification and equivalents thereof does not mean the specification is
`
`deemed to have described any non-disclosed structure. In any event, if What
`
`19
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`Case IPR2013-00036
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`Patent 6,871,048
`
`has been described specifically is insufficiently specific, then structures
`
`equivalent thereto also would be insufficiently specific.
`
`3. MobileMedia’s Argument for Doing Prior Art Analysis
`Without the Corresponding Structure
`
`MobileMedia asserts that, with respect to a means-plus-function claim
`
`element, it is not necessary to identify the corresponding structure disclosed
`
`in the specification if the prior art does not account for the recited fiinction.
`
`PO Resp. 22: 15-17. That argument is unpersuasive. In essence,
`
`MobileMedia urges us to conduct the prior art analysis based on only the
`
`functional recitation of the means-plus-fiinction element. We decline to do
`
`so. As discussed above, that is contrary to the requirements of both
`
`35 U.S.C. § 112, sixth paragraph, and 35 U.S.C. § 103. The obviousness
`
`determination is directed to the claimed invention as a whole, not to any
`
`partial invention that does not include all of the requirements of the claim.
`
`35 U.S.C. § 103; Graham, 383 US. at 17-18. Furthermore, an obviousness
`
`determination based on less than all of the claimed elements is speculative as
`
`to the meaning or scope of the claims. See In re Steele, 305 F.2d at 862-63
`
`(the prior art grounds of unpatentability must fall, proforma, because they
`
`are based on speculative assumption as to the meaning of the claims).
`
`Without ascertaining the proper claim scope, we cannot conduct a necessary
`
`factual inquiry for determining obviousness—ascertaining differences
`
`between the claimed subject matter and the prior art. See Graham, 383 US.
`
`at 17 -18.
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`20
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`Case IPR2013-00036
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`Patent 6,871,048
`
`CONCLUSION
`
`For the foregoing reasons, we are unable to determine obviousness of
`
`claims 1-12 of the ’048 patent under 35 U.S.C. § 103. Accordingly, it is
`
`appropriate to terminate the proceeding under 37 C.F.R. § 42.72.
`
`It is
`
`ORDER
`
`ORDERED that Blackberry’s Motion to Exclude Evidence (Paper 50)
`
`is dismissed as moot;
`
`FURTHER ORDERED that we do not proceed to a final written
`
`decision under 35 U.S.C. § 318(a); and
`
`FURTHER ORDERED that this proceeding is hereby terminated
`
`under 37 C.F.R. § 42.72.
`
`For PETITIONER:
`
`Robert Mattson
`
`W. Todd Baker
`
`cpdocketmattson@oblon.com
`CPDocketBakerngbloncom
`
`For PATENT OWNER:
`
`Anthony Coles
`Joseph Capraro
`PROSKAUER ROSE LLP
`
`acoles@proskauer.com
`MMI-USPTO-Commngroskauer.com
`
`21
`
`
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