The early promise of the potential of inter partes review proceedings for patent challengers is proving out, as another petition results in the unpatentability of all challenged claims in Motorola Mobility LLC v. Arnouse Digital Devices Corp., IPR2013-00010 (Paper 45).
Unsurprisingly, the basis of the Board’s opinion lie in its claim construction analysis. Patent Owner sought narrow constructions in an attempt to save its claims, to no avail. First, Patent Owner failed to obtain a construction for “connector for connecting” that included a reader slot or hole. In the specification, some embodiments required such a slot or hole, but others did not. As such, the Board found that, reading that limitation into the claims would not result in the broadest reasonable interpretation. Order at 6-7. Further, in dicta, the Board went on to comment that, even if the slot/hole embodiment was the only embodiment in the specification, the Board might not construe the claim to require such slot or hole. Order at 8.
The second key claim construction issue in the decision related to the interaction of Patent Owner’s proposed claim construction in the inter partes review, as compared to the claim construction it advocated before the district court in related litigation. In general, the construction offered in the IPR was more narrow than that offered to the district court. Order at 9-10. It was interesting that the Board, at least partially, relied on that fact – past decisions have seen the Board ignore what has happened at the district court. One possible explanation is the fact that Patent Owner’s proposal could not possibly be the “broadest reasonable interpretation” when it was more narrow than that advocated by Patent Owner in the related proceeding.
In the end, these claim construction decisions doomed Patent Owner’s challenged claims, resulting in a finding that all challenged claims were unpatentable.