In Re Motorola Mobility, LLC

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE MOTOROLA MOBILITY, LLC
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2013-1222
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 90/010,889.
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Decided: November 12, 2013
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SCOTT A. MCKEOWN, Oblon, Spivak, McClelland,
Maier & Neustadt, L.L.P., of Alexandria, Virginia, argued
for appellant. With him on the brief was ALEXANDER B.
ENGLEHART.
NATHAN K. KELLEY, Deputy Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were
MEREDITH H. SCHOENFELD and SYDNEY O. JOHNSON, JR.,
Associate Solicitors.
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Before DYK, MOORE, and WALLACH, Circuit Judges.
2 IN RE MOTOROLA MOBILITY LLC
MOORE, Circuit Judge.
Motorola Mobility, LLC appeals from the Patent Trial
and Appeal Board’s (Board) decision affirming the deci-
sion in reexamination that claims 26 and 27 of U.S.
Patent No. 5,958,006 would have been obvious. We
affirm.
BACKGROUND
The ’006 patent is directed to reducing the amount of
data sent from a host to a remote device. ’006 patent at
[57], col. 1 ll. 49–54. It discloses a system that sends
communications to the remote device that meet certain
filtering criteria, as well as a summary of the communica-
tions that were filtered out. Id. col. 2 l. 66 – col. 3 l. 34.
The remote device stores the summary of unsent commu-
nications in a summary store. Id. col. 3 ll. 18–23, col. 5, ll.
56–59, col. 10, ll. 33–37.
Claim 26 is representative (emphases added):
A controller of a communication unit adapted for
requesting data . . . from a further data processing
host via a communication server, the controller
comprising:
(a) a summary store to store identifying infor-
mation received from the host via the communica-
tions server about data units not sent from the
host to the communication unit and not received
at the communication unit . . . .
During reexamination, the examiner confirmed four
claims as patentable and rejected the claims at issue in
this appeal over Tohru Hoshi et al., A Mobile Pen-Based
Computing System for Cellular Telephone Networks, IEEE
Pub. No. 0-7803-0917-0/93 (1993) (Hoshi) in view of
another reference. The examiner relied on Hoshi to
disclose each claim element. Hoshi describes a system for
reducing the amount of data transmitted to mobile sta-
IN RE MOTOROLA MOBILITY LLC 3
tions. Hoshi’s system includes a Mobile Station Server
(MSS) that generates a list of received e-mails and filters
out non-urgent e-mails. The Mobile Pen Station receives
the filtered e-mail list from the MSS. After a user at the
Mobile Pen Station selects an entry in the list, the e-mail
corresponding to that entry is sent to the Mobile Pen
Station. The examiner found that the claims at issue
would have been obvious to one of skill in the art in light
of Hoshi.
The Board affirmed the examiner’s rejection.
Motorola appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Kotzab,
217 F.3d 1365, 1369 (Fed. Cir. 2000). Claim construction
is a legal question that we review de novo. In re Am.
Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1363 (Fed. Cir.
2004). “[C]laims under examination before the PTO are
given their broadest reasonable interpretation consistent
with the specification.” In re Abbott Diabetes Care Inc.,
696 F.3d 1142, 1148 (Fed. Cir. 2012). Whether an inven-
tion would have been obvious is a question of law based
on underlying findings of fact. In re Gartside, 203 F.3d
1305, 1316 (Fed. Cir. 2000).
Motorola argues that the rejection is based on an in-
correct construction of two claim terms—“host” and
“summary store.” We address each term below.
1. “host”
The examiner determined that Hoshi’s MSS disclosed
the recited “host.” In doing so, the examiner stated that
the claims “do not require the host to . . . host anything.”
The Board affirmed the examiner’s rejection and adopted
the examiner’s findings.
4 IN RE MOTOROLA MOBILITY LLC
Motorola asserts that the examiner’s construction is
unreasonable because the plain meaning of “host” re-
quires that it “host something.” It asserts that the plain
meaning controls because the specification does not
provide a more narrow definition.
The PTO counters that the “host” does not need to
host anything and that the claim only requires the “host”
send information to the communication unit via the
communication server. The PTO argues that Hoshi’s MSS
discloses a “host” even under Motorola’s proposed con-
struction.
We agree with Motorola that the plain meaning of
“host” requires that the host “host something.” However,
Hoshi’s MSS discloses a “host” even under this construc-
tion. As Motorola concedes in its brief, the MSS “receives
e-mail that is hosted at mail servers . . . , creates an
urgent e-mail list, and forwards the urgent e-mail list to
the mobile pen station.” Motorola Br. 19-20; see J.A. 85,
87. Thus, the MSS hosts at least two things—a service
that creates an urgent e-mail list and the urgent e-mail
list itself. We hold that substantial evidence supports the
Board’s finding that Hoshi’s MSS discloses a “host” as
recited in representative claim 26.
2. “summary store”
The examiner determined that a “summary store” can
be any device that stores “identifying information” and
found that a display buffer in Hoshi’s Mobile Pen Station
disclosed the “summary store.” The Board affirmed.
Motorola argues that the Board’s construction reads
“summary” out of the claim. It points to two features of
the “summary store” that the specification describes as
“significant”—enabling a user to access the index stored
in the summary store and storing a substantially similar
index at the communication server. Motorola also argues
IN RE MOTOROLA MOBILITY LLC 5
that the specification consistently depicts the “summary
store” as separate from the display components. It con-
tends that the summary store must be separate from the
display in order to perform the “significant” features
described in the specification.
We disagree. The PTO correctly construed “summary
store.” Its construction is consistent with the plain mean-
ing of the term. The PTO did not read “summary” out of
the claim because it found that Hoshi’s display buffer
enables display of a summary list of e-mails. Moreover,
its construction is consistent with the ’006 patent’s broad
definition of “store” to be “any available device . . . for
storage.” ’006 patent, col. 5 ll. 38–41. We decline to adopt
Motorola’s construction which would read limitations and
functionality in from the specification. The Board’s
construction of summary store is correct. Substantial
evidence supports the PTO’s conclusion that Hoshi dis-
closes the claimed “summary store.”
CONCLUSION
We have considered Motorola’s remaining arguments
and do not find them persuasive. We affirm the rejection
of claims 26 and 27.
AFFIRMED