October 29, 2013
Board Gives No Deference to District Court Litigation Claim Construction in Denying IPR Petition
In a rare Patent Owner victory, Sony and Axis Communications were unsuccessful in placing any of the 3 challenged claims of a Network-1 Security Solutions patent into a trial for inter partes review in a case styled as Sony Corp. of Am.; Axis Comm. AB; and Axis Comm., Inc. v. Network-1 Security Solutions, Inc. (IPR2013-00092), involving U.S. Pat. No. 6,218,930.
The ‘930 patent relates to “the powering of 10/100 Ethernet compatible equipment,” and more specifically, “automatically determining if remote equipment is capable of remote power feed.” Further, the patent states that, “if it is determined that the remote equipment is able to accept power remotely then [power will be provided] in a non-intrusive way.”
The Board began with an in-depth claim construction analysis, construing four claim terms. Interesting in this analysis is how the Board gave no deference to positions taken by the Patent Owner in co-pending litigation, nor did it give deference to the district court’s claim construction rulings in that litigation. Of course, the district court and PTAB have different claim constructions standards, but a gap has seemingly opened up that allows a Patent Owner to make different claim construction arguments in various proceedings. For example, the ’930 patent was actually involved in two prior district court proceedings and for several of the claim terms, Patent Owner argued one definition in one litigation, a second definition in the second litigation, and now a third definition before the Board.
Relatedly, it is not surprising that, as the Board turned from claim construction to its analysis of the proposed challenged grounds, the above claim constructions played a key role in the Board determining that a reasonable likelihood that one or more claims was unpatentable was not met. With regarding to several grounds, the Board determined that one or more limitations was missing based on the Board’s prior interpretation of the claim terms. See, e.g., Order at 23. Further, the Board was unimpressed with Petitioner’s characterizations of the art of record. In short, doomed by those mischaracterizations, Petitioner was unable to get any of the 3 challenged claims of the ‘930 patent into a trial for inter partes review.
Lastly, it is worth noting that Patent Owner tried to get the Petition summarily dismissed by arguing that Petitioner failed to meet comply with 37 CFR §42.104(b), by failing to set forth claim construction positions. The Board did not reach the issue, though, stating instead that the petition was denied on the merits anyway. Stay tuned for confirmation of whether a Petitioner’s mere reliance on previous Patent Owner litigation positions as its claim construction argument is sufficient in IPR proceedings.