By Matthew L. Cutler, Principal
The Patent Trial and Appeal Board (PTAB) has impressed with its detailed and well-grounded claim construction analyses to date in its decisions instituting inter partes review trials. Examples of such analyses were on display in two related institution orders, styled as Oracle Corp. v. Clouding IP, LLC (IPR2013-00098, IPR2013-00099, and IPR2013-00100), involving U.S. Pat. Nos. 6,918,014, 7,065,637, and 5,825,891.
Briefly, from a technology perspective, the ‘014 patent relates to systems and methods for maintaining the consistency of storage objects across distributed storage networks. More specifically, the invention relates to a, “dynamic distributed data system and method which provides for minimized latency, reduced complexity, and is extensible, scalable, and isotropic.” The ‘637 patent relates to an interactive computer system that allows the dynamic design and creation of a computing environment. More specifically, the ‘637 patent discloses that the system permits computer system architects to design the computing environment by allocating resources and specifying how they will be used. The ‘891 patent relates to a method for enabling computers to communicate using encrypted network packets. More precisely, the invention relates to a method for generating tunnel records and subsequently updating the tunnel records.
With regard to the ’014 patent, the Board defined “storage object” and “storage object routing table.” With regard to “storage object,” the Board mostly agreed with Patent Owner’s proposal, but ultimately adopted a definition that was more consistent with the verbiage used in the patent specification. Order at 12. Further, to assist in the clarity of the definition, the Board also relied upon a dictionary definition. With regard to “storage object routing table,” the Board again tweaked the proposed construction from Patent Owner to make it more consistent with the specification. Order at 13. Guided by the strong advice of the Federal Circuit, the Board’s Order demonstrates it will look for definitions grounded in the intrinsic evidence.
With regard to the ’637 patent, the Board focused on three claim terms that needed construction for purposes of deciding whether to institute the IPR trial. Relying heavily on the specification and other claim language, the Board first construed “resources” to mean “any hardware, software, or communication components in the system.” Order at 7. Second, with regard to the term “visual construction,” the Board lacked explicit disclosure of a definition from the specification, given that the phrase “visual construction” was not found in the specification. The Board, however, performed a detailed analysis of related disclosures from the specification to settle on a definition of the claim term. Lastly, regarding the term “configuration,” despite the parties agreeing upon a proposed construction, the Board disagreed, finding the parties’ proposal imprecise and vague.
With regard to the ’891 patent, the Board first rejected Patent Owner’s narrow construction of “temporary configuration password,” and instead based its definition firmly in the patent specification. Second, the Board departed from both parties’ constructions of the term “authenticating,” again turning to the ‘891 specification to come up with the term’s meaning as “a process which validates a computer or user.” Lastly, the terms “tunnel record” and “tunnel record information” were again construed with strong reference to the specification. Imprecise proposed definitions from Patent Owner were discarded in favor of direct quotes from the specification. Order at 10-12.
In the end, these three decisions provide a good overview of a typical PTAB claim construction analysis – heavy reliance on intrinsic evidence, with a healthy does of skepticism regarding the parties’ own proposals for claim construction.