Paper 38
`Trials@uspto.gov
`Entered: July 10, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC. and
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`Petitioner,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-00946
`Patent 7,268,703 B1
`____________
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`ORDER ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121
`
`
`
`
`

`

`IPR2017-00946
`Patent 7,268,703 B1
`INTRODUCTION
`I.
`FLIR Systems, Inc. and FLIR Maritime US, Inc. (f/k/a Raymarine,
`Inc.) (collectively, “Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–7, 12–23, 25–29, and 41–45 of U.S. Patent No.
`7,268,703 B1 (Ex. 1001, “the ’703 patent”) pursuant to 35 U.S.C. §§ 311–
`319. Paper 1 (“Pet.”). After Garmin Switzerland GmbH (“Patent Owner”)
`filed a Patent Owner Preliminary Response (Paper 6 (“Prelim. Resp.”)), we
`instituted inter partes review of the challenged claims on all asserted
`grounds (Paper 7 (“Institution Decision” or “Inst. Dec.”)).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”) and a Contingent Motion to Amend under
`37 C.F.R. § 42.121 (Paper 15, “Motion to Amend”); Petitioner filed a Reply
`(Paper 22, “Pet. Reply”) and an Opposition to Patent Owner’s Contingent
`Motion to Amend under 37 C.F.R. § 42.121 (Paper 23 “Opposition” or
`“Opp.”); and Patent Owner filed a Reply in Support of its Motion to Amend
`(Paper 28, “Reply to Petitioner’s Opposition” or “Reply to Opp.”).
`Additionally, Patent Owner filed a Motion for Observation Regarding
`Cross-Examination of Reply Witness (Paper 31) and Petitioner filed a
`Response to Patent Owner’s Motion for Observation Regarding Cross-
`Examination of Reply Witness (Paper 34).
`Petitioner relies on, inter alia, Declarations by Michael S. Braasch,
`Ph.D. (Ex. 1003, 1025), Christine Middleton (Ex. 1014), Scott Bennett,
`Ph.D. (Ex. 1015), and Martinus van der Drift (Ex. 1016). Patent Owner
`relies on, inter alia, Declarations by Captain Steven Browne. Ex. 2003,
`2007.
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`IPR2017-00946
`Patent 7,268,703 B1
`The Board filed a transcription of the Oral Hearing held on April 11,
`2018. Paper 37 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that challenged claims 28, 29, and 45 are
`unpatentable, Petitioner has not shown by a preponderance of the evidence
`that challenged claims 1–7, 12–23, 25–27, and 41–44 are unpatentable,
`Patent Owner’s contingent motion to amend is dismissed as moot with
`respect to proposed claims 51–71, and Patent Owner’s contingent motion to
`amend is granted with respect to cancelling claim 45 and substituting
`proposed claims 72 and 73 for claims 28 and 29.
`
`Related Proceedings
`A.
`The parties identify the following patent litigation proceedings in
`which the ’703 patent is or has been asserted: (1) Garmin Switzerland
`GmbH v. Navico, Inc., Case No. 16-2706 (D. Kan.);1 and (2) Garmin
`Switzerland GmbH v. FLIR Maritime US, Inc. (f/k/a Raymarine, Inc.), Case
`No. 16-2806 (D. Kan.). Pet. 1; Paper 3, 2.
`
`The ’703 Patent
`B.
`The ’703 patent “relates generally to navigational devices, and in
`particular to marine navigational devices with cartographic alert
`capabilities.” Ex. 1001, 1:6–8. The invention of the ’703 patent is directed
`
`
`1 Although neither Petitioner not Patent Owner updated its Mandatory
`Notices as required by 37 C.F.R. § 42.8(a)(3), Patent Owner stated it has
`entered into a Settlement and Patent License Agreement that terminated this
`proceeding. Paper 25, 2–3.
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`IPR2017-00946
`Patent 7,268,703 B1
`to devices and methods of marine navigation. Id. at 1:45–47. More
`specifically, the ’703 patent uses a “marine route calculation algorithm to
`analyze a course between the first location and [a] potential waypoint in
`view of preselected conditions of the cartographic data, including the marine
`craft data.” Id. at 5:20–23.
`Figure 4A of the ’703 patent is reproduced below.
`
`
`Figure 4A is “a map display 400 showing cartographic data 402, including
`the marine craft data,” and “include[s] a portion of a course 404 . . . between
`a first location 410 and a potential waypoint 414 that passes through land
`416.” Id. at 8:25–26, 8:36–42. As shown in Figure 4A, the course is a
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`IPR2017-00946
`Patent 7,268,703 B1
`straight line between first location 410 and potential waypoint 414
`regardless of conditions, such as land, along the route. Id., Fig. 4A.
`The ’703 patent further describes how, if one or more of the
`preselected conditions is present on the route, “the processor 310 operates on
`the route calculating algorithm to re-route the course to avoid the preselected
`conditions.” Id. at 5:42–46. In doing so, “the processor operates on the
`route calculating algorithm to identify one or more non-user waypoints
`between the first location and the potential waypoint.” Id. at 5:46-51.
`Figure 4B of the ’703 patent is reproduced below.
`
`
`Figure 4B shows “map display 400 having course 403 recalculated to avoid
`the one or more preselected conditions (e.g., avoid the land in region 418 of
`the previous course 404).” Id. at 8:52–55. Recalculated course 403 shown
`in Figure 4B “is relative to the original calculation of course 404 shown in
`FIG. 4A” above “with one or more additional waypoints, shown as 420. The
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`IPR2017-00946
`Patent 7,268,703 B1
`additional waypoints 420 have been included to allow the course 403 to
`avoid the preselected conditions. . . . In other words, waypoints 420 were
`determined by the system, and not the user.” Id. at 8:55–62.
`
`The Challenged Claims
`C.
`Petitioner challenges claims 1–7, 12–23, 25–29, and 41–45. Claims 1,
`12, 20, 27, and 28 are independent claims. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`1. A method for marine navigation, comprising:
`receiving one or more preselected conditions from a user;
`identifying a potential waypoint; and
`performing a marine route calculation algorithm to route a course
`between a first location and the potential waypoint avoiding the
`preselected conditions, including analyzing cartographic data
`between the first location and the potential waypoint and re-
`routing the course to avoid the preselected conditions by
`identifying one or more non-user selected waypoints.
`Id. at 13:2–11.
`
`Asserted Grounds of Unpatentability
`D.
`We instituted trial based on the following grounds of unpatentability:
`Reference(s)
`Basis2
`Challenged Claims
`§ 102(b) 1, 7, 12, 19, 27, and 28
`
`de Jong3
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’703 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
`3 W.J. de Jong, Automated Route Planning – A Network-Based Route
`Planning Solution for Marine Navigation, University of Nottingham
`(December 2001) (Ex. 1005, “de Jong”).
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`IPR2017-00946
`Patent 7,268,703 B1
`Reference(s)
`de Jong and Tetley4
`
`Challenged Claims
`Basis2
`§ 103(a) 2–6, 13–18, 20–23, 25, 26,
`29, and 41–45
`
`II. ANALYSIS
`Constitutionality of Inter Partes Review Proceedings
`A.
`As a preliminary matter, Patent Owner argues that inter partes review
`proceedings are unconstitutional. PO Resp. 54–55 (citing Oil States Energy
`Servs., LLC v. Greene’s Energy Group, LLC, 137 S. Ct. 2239 (2017) (grant
`of petition for writ of certiorari)). However, the Supreme Court held that
`inter partes review does not violate Article III or the Seventh Amendment to
`the Constitution. Oil States Energy Servs., LLC v. Greene’s Energy Group,
`LLC, 138 S. Ct. 1365 (2018).
`
`Claim Construction
`B.
`We interpret claim terms using “the broadest reasonable meaning of
`the words in their ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever enlightenment by way
`of definitions or otherwise that may be afforded by the written description
`contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
`1054 (Fed. Cir. 1997). “Under a broadest reasonable interpretation, words
`of the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history.” Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Any special
`definitions for claim terms or phrases must be set forth with reasonable
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`
`
`4 Tetley et al., ELECTRONIC NAVIGATION SYSTEMS (3d ed. Butterworth-
`Heinemann 2001) (Ex. 1006, “Tetley”).
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`(Fed. Cir. 1994). In the absence of such a definition, limitations are not to
`be read from the specification into the claims. See In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993).
`We need only construe those claim limitations “that are in
`controversy, and only to the extent necessary to resolve the controversy.”
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)).
`Petitioner proposed constructions of two terms: “waypoint” and
`“marine route calculation algorithm.” Pet. 15–17. In the Preliminary
`Response, Patent Owner proposed constructions for those terms, as well as
`the term “navigation,” as used in the preamble of the claims. Prelim. Resp.
`23–28, 49–52. In its Response, Patent Owner proposed the construction of
`two additional terms, “re-route”/“re-routing” and “course.” PO Resp. 14–
`28. Petitioner disagreed with those constructions and proposed alternate
`constructions. Pet. Reply 2–16. Based on the parties’ arguments presented
`during trial, we construe the terms as follows.
`
`1.
`
`“Re-route the Course” / “Re-Routing the Course”
`(Claims 1, 12, 20, and 27)
`Patent Owner asserts that the broadest reasonable construction of the
`“term ‘re-routing the course’ (independent claims 1 and 12) and ‘re-route the
`course’ (independent claims 20 and 27) is ‘to change at least a portion of the
`route of the course relative to a previous routing.’” PO Resp. 15 (emphasis
`omitted). According to Patent Owner, this construction is supported by the
`specification, which shows an initial route (404) in Figure 4A and, in Figure
`4B, a re-routed course (403) that avoids the pre-selected user conditions.
`PO. Resp. 16–18 (citing Ex. 1001, Fig. 4A, Fig. 4B, 5:41–51, 8:40–63); see
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`Patent 7,268,703 B1
`also Paper 31, 1–3 (citing Ex. 2008, 38:25–40:2, 40:22–41:9). Patent Owner
`further discusses how the ’703 patent describes an iterative process in which
`the course is re-routed relative to a previous course. PO Resp. 18–19 (citing
`Ex. 1001, Fig. 4C, 8:52–55, 9:9-23, 12:16–18, 12:23–34). Patent Owner
`also asserts that the ’703 patent draws a distinction between analyzing a
`course and re-routing the course. Id. at 20–21 (citing Ex. 1001, 5:42–51,
`7:43–50, 7:60–8:7, 8:43–51, 11:48–53).
`Petitioner argues Patent Owner’s proposed claim construction should
`be rejected “as it improperly introduces an additional ‘routing’ step that is
`inconsistent with the broadest reasonable interpretation (BRI) in light of the
`specification.” Pet. Reply 2–3. According to Petitioner, Patent Owner’s
`“proposed construction is inconsistent with the claim language itself.” Id. at
`3. Petitioner also argues, based on the words of the claims, that re-routing
`“does not occur after or modify some initial ‘routing;’ instead, ‘re-routing’ is
`simply the mechanism by which the algorithm ‘rout[es] a course’ that avoids
`the preselected conditions.” Id. Because the claims do not recite distinct
`routing and re-routing steps, Petitioner asserts “it is clear that ‘routing’ and
`‘re-routing’ are used synonymously.” Id. at 4 (citing Ex. 2025 ¶¶ 19–20);
`see also Paper 34, 1–4.
`Petitioner further argues that its construction of “the mechanism by
`which the algorithm ‘rout[es] a course’ that avoids the preselected
`conditions” is confirmed by the specification. See Pet. Reply 3–5.
`Petitioner asserts that “Figure 4A cannot represent a ‘route’ calculated by the
`claimed ‘marine route calculation algorithm,’ . . . as it fails to account for
`preselected conditions.” Id. at 4 (emphases omitted). Therefore, Petitioner
`states, Patent Owner’s attempt to require a two-step process “is not claim
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`construction, but impermissible claim re-writing.” Id. at 4–5 (citing Chef
`Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004)).
`Moreover, Petitioner argues, the specification does not unambiguously
`delineate between re-routing and routing. Id. at 5 (citing Ex. 1001, 5:46–51,
`11:11–16, 12:28–30; Ex. 2025 ¶ 22).
`Finally, Petitioner contends that Patent Owner’s proposed
`construction “is directly contrary to its litigation position” in the related
`district court case involving the ’703 patent. Id. According to Petitioner,
`Patent Owner’s infringement contentions in that case do not show a previous
`route that was changed. Id. at 5–7 (citing Ex. 1021, 25; Ex. 1030, 28; Ex.
`1026, 31–32, 105). Petitioner further asserts that Patent Owner opposed a
`materially identical construction to the one Patent Owner proposes in this
`proceeding. Id. at 7–9 (citing Ex. 1027, 17; Ex. 1028, 15–17).
`We have reviewed the parties’ contentions and supporting evidence
`and agree with Patent Owner that the terms “re-routing the course” and “re-
`route the course” mean “to change at least a portion of the route of the
`course relative to a previous routing.” That is, there must be a first routing
`of a course and that routing must be changed by performance of the marine
`route calculation algorithm to avoid preselected conditions by identifying
`one or more non-user selected waypoints.
`The construction is consistent with the words of the claims. The
`claims do not merely require routing a course, but “re-routing the course.”
`The ordinary meaning of the prefix “re” is that something is being done
`again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a
`word, normally that means it’s occurring a second time”). Although the
`claims do not explicitly recite both an original “routing” of a course that is
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`changed by “re-routing the course,” the original “routing” is implicitly
`required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing
`that although the claims do not explicitly require an initial routing, the initial
`routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that
`“re-routing” ordinarily implies an initial routing).
`Although Petitioner asserts that “routing” and “re-routing” are
`synonymous, two different words are used. The use of two different words
`in the same limitation persuades us that the limitations are not synonymous.
`See Ethicon Endo–Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579
`(Fed. Cir. 1996) (“If the terms ‘pusher assembly’ and ‘pusher bar’ described
`a single element, one would expect the claim to consistently refer to this
`element as either a ‘pusher bar’ or a ‘pusher assembly,’ but not both,
`especially not within the same clause. Therefore, in our view, the plain
`meaning of the claim will not bear a reading that ‘pusher assembly’ and
`‘pusher bar’ are synonyms.”). Instead, we conclude that “routing” and “re-
`routing” refer to two different things.
`Patent Owner’s proposed construction also is consistent with the
`description of the invention in the specification. The specification describes
`how initial course 404 is generated between first location 410 and user
`selected waypoint 414. Ex. 1001, 8:20–51, Fig. 4A. Initial course 404 is
`shown as a straight line between first location 410 and user selected
`waypoint 414 and passes over unnavigable conditions, such as land 416. Id.
`Figure 4B then shows recalculated course 403 that avoids preselected user
`conditions, such as land, that is generated “relative to the original calculation
`of course 404 shown in FIG. 4A . . . with one or more additional waypoints.”
`Id. at 8:52–65, Fig. 4B; see also id. at 12:23–34 (disclosing that “the present
`
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`invention provides a system, device and method by which information
`received for a course and a reroute calculation can be maintained,” and
`“calculating the re-route can include calculating the re-route with a
`preference for avoiding one or more preselected conditions in any previous
`course”). The specification’s description of recalculating a course “relative
`to” an original course mirrors Patent Owner’s proposed construction.
`We also are not persuaded by Petitioner’s argument that Patent Owner
`is asserting a different interpretation in this proceeding than it is advocating
`in the district court. For example, the claim chart relied on by Petitioner
`addresses the claim term at a high level of abstraction and consists primarily
`of repeating the language of the claims, including “re-routing.” See Ex.
`1026, 31–325. Although some of the description of the accused
`instrumentalities in that document mentions “autoroute,” Petitioner has not
`offered any explanation of the details of the autoroute function. Without
`more details, such as expert reports or depositions describing the
`functionality of the autoroute feature in more detail, we are not persuaded
`that Patent Owner is taking inconsistent positions. Moreover, “extrinsic
`evidence may be used only to assist in the proper understanding of the
`disputed limitation; it may not be used to vary, contradict, expand, or limit
`the claim language from how it is defined, even by implication, in the
`specification or file history.” Bell Atl. Network Servs., Inc. v. Covad
`Commc’ns Group, Inc. 262 F.3d 1258, 1269 (Fed. Cir. 2001).
`For similar reasons, we are not persuaded that Patent Owner’s
`identification of the same functionality to show infringement of both claim
`
`
`5 All pincites to pages in exhibits are to the page numbers added by the
`parties.
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`1—which requires “re-routing”—and claim 28—which does not recite “re-
`routing”—shows that “routing” and “re-routing” have the same meaning, as
`Petitioner contends. See Pet. Reply 7. Further, although claim 28 does not
`require “re-routing the course,” there is nothing in the language of the claim
`that appears to preclude it. Accordingly, we are not persuaded the Patent
`Owner’s claim charts from the district court case are inconsistent with its
`proposed claim construction in this proceeding.
`We also are not persuaded by Petitioner’s argument that Patent
`Owner’s proposed construction is inconsistent with the one it propounded
`during claim construction briefing in the district court case. To the contrary,
`reviewing the briefing in its entirety—as opposed to focusing on a few
`words of the proposed constructions without context—it appears that,
`contrary to Petitioner’s argument, Patent Owner’s proposed constructions in
`the district court litigation and this proceeding are consistent. For example,
`Patent Owner begins its claim construction argument in the district court
`case by stating that the claim requires “re-routing the course” and showing
`Figures 4A and 4B as an example:
`The ‘703 Patent uses that term in its plain and ordinary sense,
`which is just that the route is changed by creating a route through
`non-user selected waypoints “to avoid preselected conditions.”
`For example, Claim 12 recites that a marine route calculation
`algorithm “analyze[s] a course between a first location and the
`potential waypoint.” [Ex. 1, ‘703 Patent at Claim 12.] If the
`analyzed course includes preselected conditions, it is re-routed
`“to avoid the preselected conditions by identifying one or more
`non-user selected waypoints.” [Id.; see also id.at 11:17-20; Ex.
`3, Michalson Decl. at ¶¶ 95-104.] Illustrated graphically in
`connection with Figures 4A and 4B, the patent thus contemplates
`analyzing a potential route (shown in red) and, where a portion
`of the analyzed course includes a preselected condition (e.g., the
`land shown in green), changing impacted portions of the course
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`through a route that includes non-user selected waypoints (the
`portion shown in purple). [See id. at 8:40-65. FIGS. 4A, 4B.]
`Ex. 1027, 17–18 (emphasis and color omitted); see also Ex. 1028, 15 (“On
`the contrary, the claims and specification make clear that ‘re-routing’ refers
`to the concept of making certain corrections during course analysis and
`routing—namely, ‘performing a marine route calculation algorithm to
`analyze a course’ and, based on that analysis, ‘re-routing the course’ through
`‘one or more non-user selected waypoints’ in order ‘to avoid the preselected
`conditions.’ See Doc. 95-2 (‘703 Patent) at Claim 1.”), 16 (arguing that
`“re-routing inherently implies some iteration to the process”); Tr. 32–33.
`That description is consistent with the claim construction proposed in this
`proceeding.
`Moreover, the briefing in the district court litigation shows that the
`issue in dispute there bears no relation to the issue being disputed here. See
`Ex. 1027, 17–18; Ex. 1028, 15–17; Tr. 32–33. That is, it appears that the
`parties’ dispute before the district court was whether the re-routing step must
`begin anew and re-route the entire course. See Ex. 1027, 18 (“Nothing in the
`intrinsic evidence requires that the course calculation process must start
`anew, which is what Defendants’ proposed construction would entail.”); Ex.
`1028, 16 (“While re-routing inherently implies some iteration to the process,
`there is no requirement that the routing start over ‘again’ every time, as
`Defendants argue.”). By contrast, in this proceeding, the parties dispute
`whether the claim language requires an initial routing at all and then a “re-
`routing.” Because the focus of the dispute in the district court litigation
`involved an issue not relevant to this proceeding and Patent Owner’s
`description of the scope of the claim language is consistent in both, we are
`not persuaded by Petitioner’s argument that there is any inconsistency.
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`Accordingly, we interpret “re-routing the course” and “re-route the
`course” to mean “to change at least a portion of the route of the course
`relative to a previous routing.”
`
`“Course” (Claims 1, 12, 20, 27, and 28)
`2.
`Patent Owner argues “course” means “the path of intended travel of a
`craft with respect to the earth.” PO Resp. 21 (emphasis omitted). Patent
`Owner explains that “a course is not merely an outline of the areas where the
`craft is intended to pass but rather, the actual path of intended travel.” Id.
`That is, Patent Owner’s construction includes both a positive and a negative
`limitation.
`In support of its construction, Patent Owner asserts that “the
`[s]pecification includes several disclosures related to routing a course that is
`the path of intended travel of the marine craft with respect to the earth.” Id.
`For example, the specification discusses a buffer zone around the calculated
`course. Id. at 21–24 (citing Ex. 1001, 5:28–41; Ex. 2003 ¶¶ 32–37).
`According to Captain Browne, a person of ordinary skill in the art “would
`understand that establishing a zone ‘on either side of the calculated course’
`means that the course is the intended path of travel” and that “[i]t would not
`make sense to establish a zone on either side of an outline, e.g., intermittent
`points, of an area to pass.” Id. at 22 (citing Ex. 2003 ¶¶ 33, 34).
`Patent Owner further contends that the ’703 patent “discusses the
`marine navigational device traveling along a course” and that a person of
`ordinary skill in the art would have understood that “the course is the
`intended path of travel of the marine craft carrying the marine navigational
`device.” Id. 24–25 (citing Ex. 1001, 5:52–66); see also Ex. 2003 ¶ 38. As
`Captain Browne testified, “[m]erely providing an outline of a path of
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`intended travel, as opposed to the actual path of intended travel, raises the
`possibility of encountering an obstacle or unsafe area within the outline
`delineations” and “[n]o prudent mariner would set out to travel along a mere
`outline of a path out of concern that the outline does not establish a safe path
`of travel.” PO Resp. 25 (citing Ex. 2003 ¶ 38). Moreover, the ’703 patent
`teaches displaying a “plotted course” which alerts the user of preselected
`conditions. Id. (citing Ex. 1001, 7:60–81). According to Captain Browne,
`such features would not be helpful “[i]f the ‘line of the plotted course’ on the
`map display was merely an outline of the path of intended travel.” Ex. 2003
`¶ 37; see also PO Resp. 25–26.
`Patent Owner further argues that the ’703 patent uses the term
`“course” in a manner different from in ordinary use by a professional
`mariner. PO Resp. 26–27. According to Captain Browne, the ordinary
`usage of “course” would be “the horizontal direction in which a vessel is
`intended to be steered, expressed as angular distance from north clockwise
`through 360 degrees.” Ex. 2003 ¶ 28 (quoting Ex. 2001, 16). Instead, based
`on dependent claim 41, which recites “displaying the course from the first
`location to the potential waypoint via the non-user selected waypoints,”
`Captain Browne testifies that “course” as used in the ’703 patent “is ‘the
`path of intended travel of a craft with respect to the earth,’ rather than the
`direction of travel.” PO Resp. 26–27 (citing Ex. 2003 ¶ 28) (emphases
`omitted). Relying on Captain Browne’s testimony, Patent Owner argues that
`instead of using the ordinary meaning of the term “course,” “course” is used
`in the ’703 patent in a manner similar to the word “track,” which means
`“1. The intended or desired horizontal direction of travel with respect to the
`earth. . . . 2. The path of intended travel with respect to the earth as drawn
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`on the chart.” Id. at 28 (quoting Ex. 2001, 855); see also id. (noting that “de
`Jong’s definition of ‘track’ is very similar to the manner in which the ’703
`Patent uses the term ‘course’”) (citing Ex. 1005, 101; Ex. 2003 ¶ 30).
`For the reasons explained below, we do not adopt Patent Owner’s
`proposed construction of “course” as “the path of intended travel of a craft
`with respect to the earth.” Instead, we need only focus on the words recited
`in the claim. Claim 1, which is representative, recites that performing the
`marine route calculation algorithm to “route a course between a first location
`and the potential waypoint avoiding the preselected conditions,” where such
`performance includes “identifying one or more non-user selected
`waypoints.” Ex. 1001, claim 1. The other independent claims recite similar
`limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited
`in the claim, the broadest reasonable interpretation of routing a “course”
`encompasses the identification of one or more non-user selected waypoints
`between a first location and a potential waypoint. No further construction is
`necessary for purposes of this Decision.
`Petitioner asserts that Patent Owner’s analysis does not “comport[]
`with recognized canons of claim construction.” Pet. Reply 10. Specifically,
`Petitioner argues that although Patent Owner proposes a construction that is
`inconsistent with the ordinary meaning of “course,” “it offers no evidence of
`claim scope disavowal or indication that the applicant acted as his own
`lexicographer.” Id. (citing GE Lighting Sols., LLC v. AgiLight, Inc., 750
`F.3d 1304, 1309 (Fed. Cir. 2014)). Petitioner also argues Patent Owner’s
`“construction introduces a negative limitation that is clearly not supported
`by the intrinsic evidence—a practice the Board has repeatedly criticized.”
`Id. at 11 (citing CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`
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`Patent 7,268,703 B1
`Case IPR2013-00033, slip op. at 9 (PTAB March 3, 2014) (Paper 122);
`Canon Inc. v. Papst Licensing GMBH & Co. KG, Case IPR2016-01199, slip
`op. at 46 (PTAB December 11, 2017) (Paper 20)).
`With regard to Patent Owner’s discussion of the specification and the
`use of the buffer zone, Petitioner argues none of the claims of the ’703
`patent recite the use of a buffer zone. Id. at 11–12. Moreover, even if the
`buffer zone embodiment were relevant, Petitioner asserts that Patent Owner
`“proffers no persuasive reason for why it justifies the proposed negative
`limitation.” Id. at 12.
`Additionally, Petitioner argues Patent Owner’s proposed construction
`is improper because it is a “‘post hoc attempt[] to redefine the claimed
`invention’ in order ‘to avoid the anticipating disclosure’ of the prior art,” an
`approach which the Federal Circuit has rejected. Id. at 13 (quoting In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)).
`Instead, Petitioner argues that, to the extent a construction of “course”
`is necessary, “the Board should construe it to mean ‘route,’ in view of the
`overwhelming evidence showing that ‘course’ and ‘route’ are used
`interchangeably in [the ’703 patent].” Id. at 14 (citing Wasica Fin. GmbH v.
`Cont’l Auto. Sys., 853 F.3d 1272, 1282 (Fed. Cir. 2017)). According to
`Petitioner, because “[a]ll challenged claims make clear that the ‘course’ is
`‘re-route[d]’ (or, in the context of claim 28, ‘route[d]’) by a marine route
`calculation algorithm,” a person of ordinary skill in the art would have
`understood “that the output of this marine route calculation algorithm is, in
`fact, a ‘route.’” Id. at 14 (citing Ex. 1025 ¶¶ 18-20, 35–36) (emphases
`omitted). Similarly, Petitioner asserts that this construction is consistent
`with the specification, which “repeatedly equat[es] the operation of the
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`Patent 7,268,703 B1
`marine route calculation algorithm with ‘course’ calculation.” Id. (citing Ex.
`1001, Abstract, 11:44–46, Fig. 5, 6). Petitioner further contends the
`construction is consistent with Patent Owner’s construction of the term
`“navigation” in its Preliminary Response, Motion to Amend, and claim
`construction briefing in the district court case. Id. at 15–16 (citing Paper 6,
`24; Ex. 2003 ¶ 30; Paper 15, 5; Ex. 1027, 5, 14; Ex. 1029, 31; Ex. 1030, 12;
`Ex. 1021, 11; Ex. 1031, 28).
`We are persuaded by Petitioner’s arguments that Patent Owner’s
`proposed construction is not consistent with the broadest reasonable
`interpretation of the claims. Although the ’703 patent describes the
`advantages of using a buffer zone, none of the claims recite using such a
`buffer zone.
`Though understanding the claim language may be aided by the
`explanations contained in the written description, it is important
`not to import into a claim limitations that are not a part of the
`claim. For example, a particular embodiment appearing in the
`written description may not be read into a claim when the claim
`language is broader than the embodiment.
`SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
`1054 (Fed. Cir. 1994)). “[C]laims may embrace ‘different subject matter
`than is illustrated in the specific embodiments in the specification.’”
`Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)
`(citations omitted). Although the buffer zone may be a feature that could be
`incorporated into the claimed invention, it is not required. Thus, we are not
`persuaded that the specification’s description of a “buffer zone” supports
`Patent Owner’s proposed construction.
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`For the same reason, we also are not persuaded by Patent Owner’s
`arguments regardi