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Realtime Data, LLC v. Iancu

No Error in Reliance on Dependent Claim to Construe Limitation

Realtime Data, LLC v. Iancu, __ F.3d __, 2019 WL 149835 (Fed. Cir. Jan. 10, 2019) (Dyk, Taranto, STOLL) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR cancellation of Realtime’s patent claims as obvious. The Board did not err in its “motivation to combine” analysis. As to six claims where the obviousness argument was single-reference, “the Board was not required to make any finding regarding a motivation to combine given its reliance on [one] reference alone.” Op. at 8. That such an argument might be properly raised under § 102 did not preclude treatment under § 103. The opinion rejects Realtime’s argument that the Board was relying on arguments not raised in the IPR petition; the petition had relied on a second reference solely to establish that the first reference disclosed a certain type of encoder, which Realtime did not dispute. And even if a finding as to motivation to combine were required, such would be supported by substantial evidence in the record.

The Board also did not err in finding that the reference disclosed the limitation “maintaining a dictionary.” Applying BRI, the Board properly relied on one of the dependent claims (i.e., “wherein the step of maintaining a dictionary comprises the steps of . . . .”) to give content to what “maintaining a dictionary” means, though the Board did not expressly construe the term. The opinion rejects Realtime’s argument that because the dependent claim used “comprising,” the Board should have recognized that “maintaining a dictionary” could require more activity than the dependent claim recited. “The word ‘comprising’ does not mean that the claim can be read to require additional unstated elements, only that adding other elements to the device or method is not incompatible with the claim.” Op. at 13 (citing Genentech, 112 F.3d 495 (Fed. Cir. 1997)). The opinion discusses the specification and rejects Realtime’s argument that “maintaining a dictionary” requires more than was recited in the dependent claim.

KEYWORDS: INTER PARTES REVIEW; CLAIM CONSTRUCTION; OBVIOUSNESS (YES)