B.E. Technology, L.L.C. v. Sony Mobile Communications , 657 F. App'x 982 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
SONY MOBILE COMMUNICATIONS (USA) INC.,
Appellee
______________________
2015-1882
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00029.
………………………………………...................
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
GOOGLE, INC.,
Appellee
______________________
2015-1883, 2015-1884
______________________
2 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-00031, IPR2014-00033.
……………………………………………………
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
MICROSOFT CORPORATION,
Appellee
______________________
2015-1887
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00040.
……………………………………………………
B.E. TECHNOLOGY, L.L.C.,
Appellant
v.
SAMSUNG ELECTRONICS AMERICA, INC.,
Appellee
______________________
2015-1888
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00044.
______________________
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 3
Decided: August 12, 2016
______________________
DANIEL J. WEINBERG, Freitas Angell & Weinberg LLP,
Redwood City, CA, argued for appellant. Also represent-
ed by ROBERT E. FREITAS.
JEFFREY PAUL KUSHAN, Sidley Austin LLP, Washing-
ton, DC, argued for appellees Sony Mobile Communica-
tions (USA) Inc., Microsoft Corporation, Samsung
Electronics America Inc. Sony Mobile Communications
(USA), Inc., also represented by JOHN FLOCK, Kenyon &
Kenyon LLP, New York, NY; PAUL T. QUALEY, Washing-
ton, DC; Microsoft Corporation, also represented by RYAN
C. MORRIS, SCOTT BORDER, SAMUEL DILLON, ANNA
MAYERGOYZ WEINBERG, Sidley Austin LLP, Washington,
DC; Samsung Electronics America, Inc., also represented
by JOSHUA LEE RASKIN, Greenberg Traurig LLP, New
York, NY.
BRIAN ROSENTHAL, Mayer Brown LLP, Washington,
DC, argued for appellee Google, Inc. Also represented by,
ANDREW JOHN PINCUS, PAUL WHITFIELD HUGHES, CLINTON
BRANNON.
______________________
Before LOURIE, CHEN, and STOLL, Circuit Judges.
LOURIE, Circuit Judge.
B.E. Technology, L.L.C. (“B.E.”) appeals from four fi-
nal written decisions of the U.S. Patent and Trademark
Office, Patent Trial and Appeal Board (“the Board”),
across five inter partes reviews (“IPR”), finding all three
claims of its U.S. Patent 6,771,290 (“the ’290 patent”)
unpatentable. See Google, Inc. v. B.E. Tech., L.L.C., Nos.
2014-00031, IPR2014-00033, 2015 WL 1570822, at *14
(P.T.A.B. Apr. 6, 2015) (“Google Written Decision”); Mi-
4 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
crosoft Corp. v. B.E. Tech., L.L.C., No. IPR2014-00040,
2015 WL 1570824, at *15 (P.T.A.B. Apr. 6, 2015) (“Mi-
crosoft Written Decision”); Samsung Elecs. Am., Inc. v.
B.E. Tech., L.L.C., No. IPR2014-00044, 2015 WL 1570825,
at *10 (P.T.A.B. Apr. 6, 2015) (“Samsung Written Deci-
sion”); Sony Mobile Commc’ns (USA) Inc. v. B.E. Tech.,
L.L.C., No. IPR2014-00029, 2015 WL 1570821, at *10
(P.T.A.B. Apr. 6, 2015) (“Sony Written Decision”). As the
above-captioned appeals present similar or identical
issues, we consolidated them for oral argument, Order,
B.E. Tech. LLC v. Sony Mobile Commc’ns., No. 15-1882
(Fed. Cir. May 24, 2016), and now address them in a
single opinion. For the reasons that follow, we affirm.
BACKGROUND
The ’290 patent describes a computer program that al-
lows access of data stored on a server through a user’s
personal computer. See ’290 patent col. 5 ll. 5–42. The
server stores a library of files for each user, as well as a
profile that provides links to files in the user library. Id.
col. 5 ll. 43–61. When launched, the user enters login
information, which allows the program to fetch the user
profile from the server. Id. col. 26 l. 49–col. 27 l. 5. The
program then uses the profile to populate a graphical user
interface (“GUI”) with icons representing applications and
links to files in the user’s library. Id. The GUI is divided
into several regions, and each region can be selected by
the user to open an associated program or item. See, e.g.,
id. col. 10 ll. 35–55; id. col. 13 ll. 41–58; id. col. 14 ll. 38–
46. The user can then click the links to access the asso-
ciated files. Id. col. 8 ll. 3–50. Figure 5b, below, shows
one embodiment of the invention:
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 5
Id. fig.5b.
The three challenged claims are reproduced below.
Claim 1 reads as follows:
1. A computer-readable memory for use by a
client computer to provide a user of the computer
with an integrated, customized, graphical user in-
terface to a plurality of computer resources, the
computer-readable memory comprising:
a non-volatile data storage device;
a program stored on said non-volatile data
storage device in a computer-readable format;
said program being operable upon execution to
display a graphical user interface comprising an
application window separated into a number of
regions,
6 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
a first one of said regions including a number
of graphical objects, at least some of which are
each representative of a different software appli-
cation and are selectable by the user via an input
device, wherein said program is operable upon se-
lection of one of said graphical objects to initiate
execution of the software application associated
therewith;
a second one of said regions including a num-
ber of user-selectable items, at least some of which
are each associated with a different data set, said
data sets each comprising a number of links to dif-
ferent information resources, wherein said pro-
gram is operable in response to selection of at
least one of said items to provide the user with ac-
cess to its associated data set;
said program including a login module that is
operable upon execution to identify the user of the
computer; and
said program being operable following execu-
tion of said login module to provide an identifica-
tion of the user to the server and to receive from
the server a user profile containing one or more
user data sets and user links to information re-
sources, with said program further being operable
to display in one of said regions a user-selectable
item for each of said user data sets and each of
said user links.
Id. col. 38 ll. 30–67.
Claim 2 is somewhat different in scope, focusing more
on the networked aspect of the invention and omitting the
“regions” of the GUI. Claim 2 reads as follows:
2. A computer-readable memory for use by a
client computer in conjunction with a server that
is accessible by the client computer via a network,
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 7
the server storing a user profile and user library
for each of a number of different users, with the
user library containing one or more files and the
user profile containing at least one user link that
provides a[] link to one of the files in the user li-
brary, the computer-readable memory comprising:
a non-volatile data storage device;
a program stored on said non-volatile data
storage device in a computer-readable format;
said program being operable upon execution to
display a graphical user interface comprising an
application window having a number of user-
selectable items displayed therein, wherein each
of said items has associated with it a link to an in-
formation resource accessible via the network and
wherein said program is operable upon execution
and in response to selection by a user of one of
said items to access the associated information re-
source over the network;
said program being operable upon execution to
receive from server one of the user profiles and to
display a user-selectable item for user links con-
tained within the user profile, said program fur-
ther being operable in response to selection by a
user of one of the user links to access the file asso-
ciated with the selected user link from the user li-
brary associated with the received user profile.
Id. col. 39 l. 1–col. 40 l. 11.
Claim 3 depends on claim 2, and further requires:
3. A computer-readable memory as defined
in claim 2, wherein said program is operable upon
execution and in response to selection by a user of
one of said items to access the associated infor-
8 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
mation resource over the network using a brows-
er.
Id. col. 40 ll. 12–17.
Google, Inc. (“Google”), Microsoft Corp. (“Microsoft”),
Samsung Electronics America, Inc. (“Samsung”), and
Sony Mobile Communications (USA) Inc. (“Sony”) (collec-
tively, “Appellees”) filed petitions for inter partes review of
the ’290 patent. Sony and Samsung both alleged that
claims 2 and 3 were unpatentable as anticipated by
international patent application publication WO
97/09682, published March 12, 1995 (“Kikinis”). Kikinis
describes a personalized Internet home page that can
display links to a user’s email and other electronic docu-
ments. See, e.g., Kikinis at 3:2–21. Figure 3 depicts a
preferred embodiment, the relevant portion of which is
shown below:
Id. fig.3.
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 9
In that embodiment, home page 73 acts as “an inter-
face to data and other Web destinations.” Id. at 7:32. The
home page also includes link buttons 117, 118, 120, and
122, which can be used to access “e-mail, fax, and other
electronic documents.” Id. at 8:13. Those documents are
stored on a server, and the server runs programs specific
to each particular type of document. See id. fig.2; id. at
7:11–16.
Google, like Sony and Samsung, alleged that Kikinis
anticipated claims 2 and 3 of the ’290 patent, and also
alleged that claims 2 and 3 would have been obvious in
view of U.S. Patent 5,706,502 (“Foley”). Microsoft alleged
that Kikinis anticipated claims 1–3 of the ’290 patent.
B.E. did not file a preliminary response, and the Board
instituted review on all asserted grounds.
In the final written decision in the Microsoft case, the
Board determined that each challenged claim had been
proven unpatentable as anticipated by Kikinis. Microsoft
Written Decision at *14–15. First, the Board construed
“region” in claim 1 to mean an “area,” rejecting B.E.’s
argument that the term should be construed to mean “a
non-overlapping part of an application window that is
distinct or separate from other parts of the application
window wherein each part is characterized by the pres-
ence of related functions or features that are different
from the functions or features of another part.” Id. at *6.
The Board determined that the ’290 patent did not explic-
itly define “region,” and noted that B.E.’s proposed con-
struction was drawn from its own characterization of
embodiments depicted in the specification, rather than
language in the specification itself. Id. Accordingly, the
Board determined that “area” was the ordinary meaning
of “region,” based on a dictionary and testimony from
Microsoft’s expert as to the understanding of a person of
ordinary skill in the art. Id.
10 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
The Board found that Kikinis discloses the “program
stored on a non-volatile data storage device” required by
each claim of the ’290 patent because Kikinis discloses an
Internet browser, which allows display of the home page
and fetching of data from the server. Id. at *9, *12.
Regarding claim 1, the Board found that Kikinis dis-
closed that its GUI was divided into a number of regions.
Id. at *13–14. Specifically, the Board found that the left
portion of Kikinis’s Figure 3 is divided into two regions:
Buttons ABC and XYZ, and buttons 117, 118, 120, and
122. Id. at *13. The Board determined that this finding
was also supported by Kikinis’s written description and
testimony by B.E.’s expert. Id. Moreover, the Board
rejected B.E.’s argument that the two regions needed to
be functionally distinct; nevertheless, the Board found
that the two areas of Kikinis were functionally distinct,
and so fulfilled even B.E.’s construction of “region.” Id. at
*14.
Regarding claims 2 and 3, the Board found that Kiki-
nis discloses “file[s] associated with [a] selected user link”
by disclosing that the on-screen links were to “electronic
documents reserved for the home page ‘owner.’” Id. at *10
(quoting Kikinis at 7:35–36). The Board noted that B.E.’s
expert agreed that the cited passage disclosed links to
electronic documents. Id. Accordingly, the Board rejected
B.E.’s argument that Kikinis only discloses links to data-
bases, rather than to individual files. Id. at *10–11. In
addition, the Board found that Kikinis’s databases were
files as defined by the ’290 patent. Id. at *11.
In the other IPRs, the Board found claims 2 and 3, the
only claims challenged in those proceedings, unpatentable
as anticipated by Kikinis for identical reasons. See Google
Written Decision at *6–9; Samsung Written Decision at
*6–9; Sony Written Decision at *6–9. The Board also
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 11
concluded that Foley rendered claims 2 and 3 unpatenta-
ble as obvious. 1 Google Written Decision at *10–13.
B.E. timely appealed. We have jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
I. CLAIM CONSTRUCTION
We begin with B.E.’s argument that the Board erred
in its construction of the term “region.”
In an IPR, a patent claim is given “its broadest rea-
sonable construction in light of the specification of the
patent in which it appears.” Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2142 (2016) (quoting 37 C.F.R.
§ 42.100(b)). 2 “[W]e review the Board’s ultimate claim
constructions de novo and its underlying factual determi-
nations involving extrinsic evidence for substantial evi-
dence.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1297 (Fed. Cir. 2015) (citing Teva Pharm. USA Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015)).
B.E. argues that the Board’s construction is unsup-
ported because, it asserts, the Board relied on a nontech-
1 As addressing B.E.’s arguments relating to
whether Kikinis anticipates claims 1–3 resolves these
appeals, we need not, and do not, address B.E.’s argu-
ments relating to the Board’s conclusion that the claims
are unpatentable as obvious in view of Foley.
2 In each of the present appeals, in which briefing
was completed before the Supreme Court decided Cuozzo,
B.E. challenges the Board’s use of the broadest reasonable
interpretation standard for claim construction. The
Supreme Court has since ruled that use of the broadest
reasonable interpretation standard is proper, Cuozzo, 136
S. Ct. at 2142–46, and therefore there was no error in its
use in these cases.
12 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
nical dictionary and Microsoft’s expert, rather than the
claim language or specification of the ’290 patent itself.
B.E. contends that the Board’s construction does not
account for narrower embodiments described in the
specification, and that the context of the ’290 patent
demonstrates that the broader construction is unreasona-
ble.
Microsoft responds that the Board’s construction is
consistent with the intrinsic record, and that B.E.’s con-
struction is unsupported by the evidence. “Region” is not
as narrow as B.E. argues, Microsoft contends, because the
patent specification contains examples that would not fall
within B.E.’s proposed construction.
We agree with Microsoft that the Board properly con-
strued the term “region” in claim 1 of the ’290 patent.
The specification of the ’290 patent does not use “region”
in a manner that indicates that the term has a special
definition. For example, the written description specifi-
cally sets out explicit definitions for twenty terms that
appear in the patent. ’290 patent col. 3 l. 65–col. 5 l. 4.
“Region” is not among them. See id. Indeed, the Board
noted that “[t]he ’290 patent does not provide an explicit
definition for ‘region’” and that “[t]he portion of the writ-
ten description relied upon by [B.E.] does not define the
claim term ‘region.’” Microsoft Written Decision at *6.
Those sections show that, far from B.E.’s argument to the
contrary, the Board specifically considered the written
description of the ’290 patent, and determined that “re-
gion” was not defined.
The extrinsic evidence cited by the Board supports its
determination of the ordinary meaning. Microsoft’s
expert explained that a person of ordinary skill would
understand “region” to mean “an area on the screen,” and
the Board cited a dictionary as further support. Id.
Although B.E. complains that the Board relied on a
nontechnical dictionary, and the ’290 patent is a technical
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 13
patent, B.E. does not explain how the technical nature of
the patent would change the definition, or provide contra-
ry evidence from a technical dictionary. Accordingly,
there was no error in construing “region” to mean “area.”
B.E.’s arguments do not convince us otherwise. B.E.
contends that the Board’s construction is incorrect be-
cause it is broader than the examples depicted in the
patent; however, we have rejected the notion that claim
terms are limited to the embodiments disclosed in the
specification, absent redefinition or disclaimer. Phillips v.
AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005)
(en banc). B.E. does not argue that the ’290 patent con-
tains any such redefinition or disclaimer. Moreover, and
as the Board noted, B.E.’s construction is based on its own
characterization of those embodiments, rather than any
language appearing in the patent. See Microsoft Written
Decision at *6. B.E. also ignores portions of the patent
specification that are broader than its proposed construc-
tion. See, e.g., ’290 patent col. 17 ll. 15–21.
Finally, B.E. argues that the Board did not consider
that its expert disagreed with the testimony of Microsoft’s
expert relating to the construction of “region.” The testi-
mony on which B.E. relies, however, essentially repeats
B.E.’s construction without further support. See Joint
App. in Appeal No. 15-1887 (“J.A.”) 3132. By rejecting
B.E.’s construction and crediting Microsoft’s expert, the
Board rejected B.E.’s evidence. See Microsoft Written
Decision at *6. Accordingly, the Board did not err in its
construction of “region.”
II. ANTICIPATION
We turn next to B.E.’s argument that the Board erred
in finding that Kikinis anticipates claims 1–3 of the ’290
patent. “Anticipation is a question of fact reviewed for
substantial evidence.” In re Rambus, Inc., 753 F.3d 1253,
1256 (Fed. Cir. 2014). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
14 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
dence as sufficient to support the finding. Consol. Edison
Co. v. NLRB, 305 U.S. 197, 229 (1938).
A. Claim 1
B.E. argues that Kikinis does not anticipate claim 1
because it does not disclose two regions that meet the
requirements of the claims. Specifically, B.E. argues that
the Board erred in finding that buttons ABC and XYZ are
a different region from buttons 117, 118, 120, and 122,
and that the Board should have instead found that the
buttons, together, constituted a single region because
there is nothing to distinguish one set of buttons from the
other. Microsoft responds that the Board’s finding is
supported by substantial evidence because the disclosure
of Kikinis establishes that the buttons are in separate
regions, as that term was construed by the Board.
We agree with Microsoft that there is substantial evi-
dence supporting the Board’s finding that Kikinis depicts
the two required regions of claim 1. The cited buttons are
in two areas of Figure 3, which meets the Board’s con-
struction of “region.” Moreover, Kikinis states that the
user’s home page may contain both links to email, faxes,
voicemail, and other electronic documents, as well as
links to a personal dictionary, spell checker, or thesaurus.
Kikinis at 8:8–18. These two groups of buttons constitute
two “areas” of the home page. The Board relied on both
Figure 3 and the cited disclosure to find that Kikinis
discloses the required regions. Microsoft Written Decision
at *13. Accordingly, the Board’s finding is supported by
substantial evidence.
B. Claims 2 and 3
B.E. argues that the Board’s determination that Kiki-
nis anticipates claims 2 and 3 of the ’290 patent is not
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 15
supported by substantial evidence for two reasons. 3 First,
B.E. argues that the Internet browser disclosed by Kikinis
does not meet the requirements of the “program” limita-
tion in the claims. Second, B.E. argues that Kikinis only
allows a user to select links to a database, not to a partic-
ular file as required by the claims. We address each
argument in turn.
B.E. first argues that the Board erred in determining
that the browser disclosed by Kikinis is a “program”
because Kikinis’s browser stored on the user computer
interacts with software stored on the server to access files.
B.E. argues that the claims require a program stored on
the client computer, not the server, to access the files.
Moreover, B.E. contends that because claim 3 requires the
program to access a resource “using a browser,” ’290
patent col. 40 ll. 15–16, the doctrine of claim differentia-
tion counsels that the program in claim 2 cannot itself be
a browser.
Appellees respond that the Board’s finding is support-
ed by substantial evidence because the claims do not
require the client computer to access the files directly.4
Instead, Appellees contend, the claims simply require that
the program is “operable . . . to access the file,” ’290 pa-
tent col. 40 ll. 4, 9, and do not contain any requirements
relating to how the file is accessed. Appellees also re-
spond that a server must contain software that responds
to requests from the client computer in order for any such
system to function. Finally, Appellees respond that claim
differentiation is a presumption that can be overcome,
3 B.E. presents the same arguments relating to
claims 2 and 3 in each of the four present appeals.
4 Appellees’ responses to B.E.’s arguments relating
to claims 2 and 3 do not meaningfully differ, and so are
addressed collectively.
16 B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
and that the specification of the ’290 patent specifically
defines an Internet browser as a “program.”
We agree with Appellees that the Board’s determina-
tion that Kikinis discloses the program of claims 2 and 3
is supported by substantial evidence. Kikinis discloses
that a user at the client computer can access files through
the home page. Kikinis at 6:27–31; 7:26–8:10. The claims
themselves do not contain any language that would
require files to be accessed without the aid of server
software. As the Board noted, B.E.’s expert admitted that
a server requires some form of software in order to pro-
vide any files to the client computer. Microsoft Written
Decision at *9. Therefore, the presence of intermediary
software on the server does not preclude a finding of
anticipation. See id.
B.E.’s claim differentiation argument does not counsel
otherwise. Claim differentiation “is a rebuttable pre-
sumption that may be overcome by a contrary construc-
tion dictated by the written description or prosecution
history.” Howmedica Osteonics Corp. v. Zimmer, Inc., 822
F.3d 1312, 1323 (Fed. Cir. 2016). In this case, the specifi-
cation specifically defines a “browser” as “[a] program
that can communicate over a network using http or an-
other protocol and that can display html information and
other digital information.” ’290 patent col. 3 ll. 65–67
(emphasis added). Thus, the written description of the
’290 patent dictates that an Internet browser is a “pro-
gram,” and B.E. does not contest that the browser dis-
closed by Kikinis falls within the ’290 patent’s definition
of “browser.” Accordingly, the Board’s finding that Kiki-
nis discloses the claimed program is supported by sub-
stantial evidence.
B.E. next argues that Kikinis does not anticipate
claims 2 and 3 because Kikinis does not disclose that the
home page contains links to specific files. Instead, B.E.
argues, Kikinis discloses a system where the user selects
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS 17
a link to a database, from which the user may access a
specific document. Moreover, B.E. argues that it was
improper for the Board to find that Kikinis’s databases
could be the claimed files because, it alleges, that ground
was not presented in the petition for review.
Appellees respond that the Board’s finding is support-
ed by substantial evidence because Kikinis discloses that
the user home page contains links to specific files. Appel-
lees further respond that the databases disclosed by
Kikinis also meet that limitation.
We agree with Appellees that the Board’s finding that
Kikinis discloses links to specific files is supported by
substantial evidence. As the Board found, Kikinis specifi-
cally discloses that the home page has “on-screen links to
electronic documents reserved for the home page ‘owner,’
such as e-mail and faxes.” Microsoft Written Decision at
*10 (quoting Kikinis at 7:35–8:1). B.E.’s expert admitted
that this passage discloses links to electronic documents.
Id.; J.A. 3222. This evidence is sufficient to support the
Board’s finding. Because the Board’s finding that Kikinis
discloses links to specific files is supported by substantial
evidence, we need not reach B.E.’s arguments relating to
Kikinis’s databases.
Accordingly, substantial evidence supports the
Board’s determinations that claims 1–3 of the ’290 patent
are unpatentable as anticipated by Kikinis.
CONCLUSION
We have considered B.E.’s remaining arguments, but
find them unpersuasive. For the foregoing reasons, the
decisions of the Board are affirmed.
AFFIRMED