The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The dissent, however, disagreed with the majority’s construction of a term and would have instituted trial based on a different construction of that term. Petitioner filed a request for Director Review of the PTAB’s denial of institution. In its request, Petitioner argued that the majority’s construction of the term “background” improperly relied on a subjective understanding of a “user.” The Director agreed that Director review was appropriate and, after review, vacated the PTAB’s decision denying institution and remanded for further proceedings.
The claim term at issue here is “non-promotional background object.” Relevantly, the specification of the challenged patent does not define or even use the phrase “non-promotional background object” or “background object.” And neither party requested construction of “non-promotional background object.” In its prior art analysis, however, Petitioner relied on statements made during prosecution to provide the meaning of the term “non-promotional background object.” Patent Owner similarly relied on statements made during prosecution to argue that its interpretation of “non-promotional background objects” was the correct one. In its Decision denying institution, the PTAB majority did not expressly construe any claim term, but addressed “the parties’ implicit claim constructions” in its merits analysis.
The Director Review focused on the “background” element of the “non-promotional background object” term. In its decision denying institution, the PTAB first determined that “‘background’ objects are not primary objects.” The PTAB then agreed with Patent Owner that a reference’s interactive elements were not “background objects” because “nothing in the cited paragraphs indicates that those interactive information elements are ‘outside the primary focus of game play and as unexpectedly interactive components.’”
On review, the Director sided with Petitioner and stated that the PTAB’s claim construction of the term “a non-promotional background object” was improperly based on the subjective views of the user. Specifically, with respect to the “background” element, the PTAB majority’s analysis turned on whether an element is “outside the primary focus of game play and [] unexpectedly interactive.” According to the Director, the PTAB’s consideration of what a user would expect (“unexpectedly interactive”) was improperly based on the subjective perspective of a user.
Thus, the Director vacated and remanded further proceedings. The Director noted that the PTAB should resolve the proper meaning of the term “a non-promotional background object” by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.
