October 23, 2013

Board’s Broad Reading of Claim Term Results in Institution of IPR Trial

By Matthew L. Cutler, Principal

Continuing its successful challenges of Clouding IP patents, Oracle placed all challenged claims of another Clouding IP patent into inter partes review in a case styled as Oracle Corp. v. Clouding IP, LLC (IPR2013-00088), involving U.S. Pat. No. 7,254,621.

The ‘621 patent relates to methods, systems, and computer programming instructions that enable users to remotely access and manipulate information in a way that may not be possible or practical based on inherent limitations of the users’ pervasive devices (i.e., mobile devices and smart appliances).

The key to the Board’s decision was its interpretation of “receiving a data access request,” and that limitation’s impact on the remainder of the claim.  More specifically, Patent Owner contended that the claim allowed for only one data access request.  To that end, the claimed method goes onto require “obtaining the requested data,” “determining what data manipulation operations are available for the requested data,” and “providing references to the determined data…”  Per Patent Owner’s argument, therefore, the antecedent basis in the claim seemed to reference the “receiving a data access request” step from the claimed method.

The Board, however, disagreed.  Because the claim contains an open-ended transitional phrase “comprising,” the claim was construed as open ended and other “data access requests” could occur and still fall within the scope of the claim. To that end, the Board held, “[o]btaining data in response to other data access requests, in addition to the one particular data access request, is not excluded by the claim language at issue.”  Order at 8.

Based on this construction, the Board initiated an inter partes review trial based on 102(e) grounds, finding that, even though the anticipatory reference discloses a process in which multiple links must be selected by a user, the claims were not limited to a single data access request, as discussed above.  As such, the Board found that all of the claim limitations were met by the reference. Following this finding, the Board did not consider the two obviousness grounds presented by Patent Challenger, deeming them redundant.