In an inter partes review (IPR) proceeding challenging a SimpleAir patent that described a method of transmitting data to remote computing devices, the Patent Trial and Appeal Board did not err in concluding that IPR petitioner Google failed to establish that a combination of prior art references rendered the challenged claims unpatentably obvious, the U.S. Court of Appeals for the Federal Circuit has held. Under the "broadest reasonable interpretation" (BRI) claim construction standard, the Board determined that Google’s cited prior art did not teach a crucial claim limitation—a "central broadcast server"—thereby precluding Google’s obviousness argument. Google waived its argument that the Board’s claim construction was incorrect because it failed to make this argument before the Board, and instead agreed with the Board’s BRI interpretation of "central broadcast server." The court rejected Google’s contention that its cited prior art taught a "central broadcast server" even under the Board’s construction (Google Inc. v. SimpleAir, Inc., March 28, 2017, Clevenger, R.).
Patent at issue. The patent at issue—U.S. Patent No. 8,601,154 ("the ’154 patent")—contained a single independent claim, which described a method to transmit data from an information source via a central broadcast server to remote computing devices. The parties disputed the meaning of the term "central broadcast server." The Board, using the BRI construction standard, construed the term to mean "one or more servers that are configured to receive data from a plurality of information sources and process the data prior to its transmission to one or more selected remote computing device." Google argued that the correct BRI construction for "central broadcast server" should not be limited to receipt of data from a plurality of information sources but, instead, should only require receipt from one, or more, information sources. Under this construction, which covered a server configured to receive from a single source, Google’s cited prior art reference seemed to teach a central broadcast server, the Federal Circuit noted.
Waiver. SimpleAir argued—and the court agreed—that Google waived its opportunity to assert its current claim construction argument. Google failed to articulate this argument before the Board and, instead, actually agreed with the Board’s construction of the term. The court noted that Google had had opportunities to put forth its construction of "central broadcast server" prior to the IPR proceeding. Specifically, the ’154 patent and other patents from the same family had been the subject of three district court litigations, in which courts in the Eastern District of Texas construed the term. In each of those lawsuits, the courts adopted the same construction of the term as that later adopted by the Board. In the IPR proceeding, Google provided the Board with the constructions applied by the district courts for several terms, including "central broadcast server." Google did not request that the Board apply a different construction. Throughout the IPR proceeding, there did not seem to be any disagreement as to the construction of the term. The record showed that Google agreed with the Board’s BRI construction of "central broadcast server." Therefore, Google could not now object to that construction, the court said.
Application of construction. Google next argued that the Board, when reviewing the prior art reference to determine whether it taught a central broadcast server, did not faithfully apply its own construction. According to Google, the PTAB imported an unstated requirement that the central broadcast server receive data "directly" from a plurality of information sources. Google further asserted that the Board erroneously relied on this implicit "direct" receipt limitation in finding that the prior art failed to teach a central broadcast server. The court disagreed with Google’s "mischaracterization" of the Board’s ruling. The Board was not persuaded by Google’s argument that the prior art taught servers configured to receive data indirectly from a plurality of information sources, but the Board did not create a requirement that a central broadcast server receive data directly from the information sources. Instead, the Board found that the prior art described a server configured to receive data from one source—a local host. There was no legal error in the Board’s review of the prior art teachings, the court determined.
The court also rejected Google’s contention that the Board imported an unnecessary requirement that multiple servers must be "interconnected" in order to function together as a central broadcast server. The Board did not require that separate servers be interconnected; rather, it found that Google failed to meet its burden of proving that the servers described in the prior art were "configured to receive data from a plurality of information sources," despite seeming to be entirely independent. This finding was supported by substantial evidence, the court said. Therefore, the Board’s decision was affirmed.
The case is No. 2016-1901.
Attorneys: Jon Wright (Sterne Kessler Goldstein & Fox, PLLC) for Google Inc. John Jeffrey Eichmann (Dovel & Luner, LLP) for SimpleAir, Inc.
Companies: Google Inc.; SimpleAir, Inc.
MainStory: TopStory Patent FedCirNews
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