It is common to hear inventors and in-house counsel say how important it is for their outside counsel to be experts in their technology. That way, no time is wasted for the inventors because counsel does not have to ask dumb questions, and counsel can be quick and efficient in patent preparation and prosecution. These are strong reasons indeed. However, on the other side, patent professionals who are experts in a technical field have to be extremely careful not to overlook terms that are open to different interpretations.
Consider a patent professional working with inventors on an advanced approach to deliver ads to various devices in a multimedia networking system asking the inventors “what is a session”. Of course everyone who works in the field knows what constitutes a session, right?
Appeal 2021-003230 (15/985,639) relates to innovative marketing and advertising techniques, and more particularly relates to fine-tuned delivery of content programming from advertisers and brand managers to consumers, in a controlled sequence and/or with different versions of the content directed to different categories of consumer, across multiple categories of device. Claim 1 on appeal is below (underlined terms at issue in the appeal):
1. A method for delivering advertising content sequentially to a consumer across two or more display devices, the method comprising:
receiving a pricepoint and one or more campaign descriptions from an advertiser, wherein each of the campaign descriptions comprises a schedule for sequential delivery of two or more items of advertising content across two or more devices accessed by a consumer, wherein the devices include a TV and
one or more mobile devices, and a target audience, wherein the target audience is defined by one or more demographic factors, wherein the devices include a first device in a first geographic location and a second device in a second geographic location, the first device being associated with a first session, the second device being associated with a second session that is different than the first session;
defining a pool of consumers based on a graph of consumer properties, wherein the graph contains information about the two or more TV and mobile devices used by each consumer, demographic and online behavioral data on each consumer and similarities between pairs of consumers, and
wherein the pool of consumers comprises consumers having at least a threshold similarity to a member of the target audience; receiving a list of inventory from one or more content providers, wherein the list of inventory comprises one or more slots for TV and online;
identifying one or more advertising targets, wherein each of the one or more advertising targets comprises a sequence of slots consistent with one or more of the campaign descriptions, and an overall cost consistent with the pricepoint;
allocating the advertising content of the one or more campaign descriptions to the one or more advertising targets;
for each slot in the sequence of slots, making a bid on the slot consistent with the pricepoint;
for a first slot where a bid is a winning bid, instructing a first content provider to deliver a first item of advertising content in the first slot and a first performance tag to the pool of consumers;
receiving a first datum from the first performance tag to validate whether a particular consumer viewed the first item of advertising content on the first device, wherein the first item of advertising content is related to a second item of advertising content, wherein the first datum comprises an indication that the consumer has declined to view the first item of advertising content; and
responsive to receiving the first datum with the indication that the consumer has declined to view the first item of advertising content, refraining from providing the second item of advertising content to the second device
The rejection turns on the definition of “session.” If session is interpreted more narrowly as applicant desires, the prior art is deficient. If interpreted broadly, the examiner’s rejection stands. The applicant did not point to any details in the specification that would indicate how session should be interpreted. The competing definitions are as follows:
Applicant - the Internet Engineering Task Force (IETF) provides the SDP: Session Description Protocol which defines a multimedia session as “a set of multimedia senders and receivers and the data streams flowing from senders to receivers.” And, a session is first initiated before data flow, citing IETF, the SIP: Session Initiation Protocol.
Examiner - the ordinary and customary meaning of “session” in network communications is simply a connection or communication between two systems. The PTAB replaces this with “the time during which two computers maintain a connection” and cites to the Microsoft Computer Dictionary, 362 (5th ed. 2002).
When there are two competing definitions, both allegedly consistent with the specification, the examiner’s (USPTO’s) dictionary wins by default. From the PTAB’s decision:
However, “[a]bsent an express definition in their specification, the fact that [Appellant] can point to definitions or usages that conform to their interpretation does not make the PTO’s definition unreasonable when the PTO can point to other sources that support its interpretation.” Morris, 127 F.3d at 1056. Accordingly, because Appellant provides no express definition from the Specification, we find unpersuasive Appellant’s argument that the Examiner’s interpretation is unreasonably broad. Appellant’s argument is unpersuasive because Appellant fails to establish the Examiner’s interpretation is not the broadest reasonable interpretation, consistent with the Specification
This is another example where the BRI approach results in substantial deference to the USPTO. To combat an overly broad interpretation, the applicant must point out how the interpretation is not consistent with the specification (and remember, the USPTO’s interpretations cannot survive simply because it is not inconsistent with the specification). Merely presenting a competing definition, by itself, does not move the needle enough, even if the competing definition might be objectively better.
Sometimes it can pay off asking “dumb” questions to ensure a proper understanding and description of the intended scope of an invention. Being deep in a technical field has many advantages, but also some pitfalls.