Patent Owner’s Lack of Candor Not Enough to Save Petitioner from Narrow Claim Construction

May 17, 2016

smikleIn Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, the Patent Trial and Appeal Board found that testimony of the Patent Owner’s declarant was owed diminished weight due to misstatements in the declarant’s Curriculum Vitae (“CV”).  However, despite the reduced weight, the Board nevertheless found that the Patent Owner had a winning claim construction argument as to the meaning of a claimed “graphical symbol.”  As a result, the Board determined that the Petitioner failed to establish that any claims of the patent-at-issue were disclosed or made obviousness by the art of record.

The patent-at-issue, U.S. Patent No. 7,894,837 (“the ‘837 Patent”), is directed to an instant messaging terminal device that allows graphical symbols such as “emoticons” to be entered using dedicated and programmable keys.  See IPR2014-01506, Paper 50, page 5.  Claim 1 recites, inter alia:

A handheld instant messaging terminal comprising…a data entry device integrated in the terminal housing, the data entry device being configured to generate textual characters and graphical symbols in response to actuation of the data entry device[.]

At issue was whether the claimed “graphical symbols” could include textual characters, including ‘:’, ‘-’, ‘)’ ,’$’, ‘=’, and ‘&’.  Id. at 13.

In support of its position that the claimed “graphical symbols” were limited to pictorial emoticons not including textual characters, the Patent Owner offered testimony from its expert, Dr. Alon Konchitsky, that there is a distinction in the art between emoticons made of known textual characters and those made of graphical emoticons, e.g.,  “☺.”  Id. at 14. In response, the Petitioner maintained that “graphical symbols” are not limited to such emoticons, and may include emoticons of typed textual characters. Id. at 15.

The Petitioner also argued that Dr. Konchitsky’s testimony should be afforded diminished weight due to discrepancies in his CV as provided to the Board.  For instance, Petitioner noted that although Dr. Konchitsky’s Master’s degree was issued in “Tourism and Hospitality Management” from Bournemouth University, Dr. Konchitsky’s CV submitted to the Board stated that he obtained an “M.A., Management and Business”.  Id. at 9-10. Petitioner further argued that Dr. Konchitsky demonstrated a lack of credibility in producing an incorrect translation of a document supporting his academic credentials that he himself had translated from Hebrew to English. Id. at 11-12.

In response, the Patent Owner reasoned that Dr. Konchitsky’s CV was accurate because his Master’s program was focused on “computers and computer science.”  Id. at 9-10.  The Patent Owner further reasoned that the misstatements were harmless, as Dr. Konchitsky was qualified to testify based on his undergraduate degrees in computer science and electrical engineering, along with his extensive professional experience. Id.  Also, with respect to the incorrect translation, the Patent Owner noted that the error was inadvertent, as there was a “mismatching” problem between drafts that resulted in the inaccurate submission. Id. at 11. The Patent Owner further noted that because Dr. Konchitsky translated the supporting documents himself, it was unable to detect the erroneous translation. Id.

The Board agreed with the Petitioner that Dr. Konchitsky’s testimony was entitled to reduced weight based on the noted discrepancies.  First, the Board found that Dr. Konchitsky’s “artful rewording” rose to the level of misrepresenting his academic credentials to the Board.  Id. at 10. For instance, even though Dr. Konchitsky may have been qualified to testify based on his undergraduate degrees and professional experience alone, the Board held that such qualifications do not preclude it from affording lessened weight to Dr. Konchitsky’s testimony.  Id. The Board reiterated the duty of candor under 37 C.F.R. § 42.11, stating that “even the slightest accommodation of deceit or a lack of candor in any material respect quickly erodes the validity of the process.” Id. (citing United States v. Shaffer Equip. Co., 11 F.3d 450, 457 (4th Cir. 1993)).

Additionally, with respect to the inaccurate translations, the Board criticized the Patent Owner for undermining the foundations of the trial process, reasoning that “Patent Owner’s reliance on Dr. Konchitsky’s self-translated evidence strongly undermines the credibility of the facts submitted in support of Konchitsky Ph.D. credentials.”  Id. at 11-12. The Board held that the weight afforded to Dr. Konchitsky’s testimony was to be reduced accordingly.

However, despite the lessened weight afforded to its declarant, the Board sided with the Patent Owner in determining that the claimed “graphical symbols” do not include emoticons consisting of textual characters.  Id. at 13, 16. The Board reasoned that Petitioner’s proffered interpretation would conflict with the ‘837 Patent’s specification, which distinguishes between characters and symbols.  Id. at 14-15. Consequently, as Petitioner’s obviousness argument was predicated on the overly broad interpretation of the claimed “graphical symbols,” the Board concluded that the Petitioner failed to demonstrate that any claims of the ‘837 patent were unpatentable over the art of record.

In view of the Board’s decision in Blackberry Corp. v. Zipit Wireless, Inc., Petitioners and Patent Owners alike must take care to accurately represent the educational background of their declarants.  For instance, the full name of degree programs should be faithfully reproduced on each declarant’s CV, for instance, as shown on his or her diploma.  Additionally, when the original documents supporting a declarant’s credentials are in a foreign language, parties must obtain third-party translations such that they may be independently verified.


Brian Hill

Email: bhill

Mr. Hill is an associate in the firm’s Electrical/Mechanical Practice ‎Group.

Mr. Hill has experience in patent preparation and prosecution, post-grant proceedings including inter partes review, patent litigation in front of the District Courts and the Court of Appeals for the Federal Circuit, due diligence investigations, and preparation of legal opinions. His experience includes a wide range of technologies, including heart pumps, prosthetic valves, joint arthroplasty devices, consumer electronics, mobile banking technology, wireless communication devices, and agricultural textiles.

Prior to joining the firm, Mr. Hill was an examiner with the U.S. Patent and Trademark Office, where he reviewed patent applications in the areas of solar technology, heat storage devices, and fuel burning systems. Mr. Hill also worked as an attorney with the U.S. International Trade Commission.

Admitted in New Jersey and New York only. Not a member of the DC Bar. Practice limited to certain matters before federal agencies and federal courts.