Genius Sports Ltd. v. SportsCastr Inc. (d/b/a PANDA Interactive)

The Director granted Patent Owner's request, vacated the Final Written Decision in part, and remanded. The Board did not address Patent Owner's webserver-limitation arguments for claim 1 when deciding Ground 1B, even though it understood them. Those arguments were referenced on the same Response page as Ground 1B and set out in detail right after that section, so the Board did not have to construct them and should have addressed them. Cross-referencing an argument across grounds is the safer course. Even so, the Director will require the Board to address an argument it clearly understood, if the argument was referenced and developed in the Response close to the relevant ground. The Board's silence on an argument it understood is a basis for vacatur and remand, despite the waiver and "no duty to parse" objections. Decision under review: the Final Written Decision (Paper 47) held claims 1–11 unpatentable under Ground 1B. Patent Owner sought Director Review, arguing the Board failed to address its arguments on the 'webserver' limitation of claim 1. Patent Owner's webserver arguments sat in the Response section on Ground 2A. The Response stated that they 'apply equally to all grounds' challenging claims 1-2, 4-5, and 8-10. The limitation is in claim 1 but not in independent claim 12, so the arguments reach Grounds 1B and 2A but not Ground 1A. Petitioner argued the Board did not overlook the arguments because it found claim 1 unpatentable, and that Patent Owner waived them by not presenting them under Ground 1B. The Director agreed the Board did not address the limitation in its Ground 1B analysis (Decision 56–58). The Director agreed with Petitioner that the Board need not parse the papers to construct arguments a party did not present for a particular ground, citing Netflix v. DivX and Parus Holdings v. Google. Here, though, the arguments were referenced on the same page as Ground 1B and detailed immediately after it (Response 51–59), and oral argument showed the Board understood them. Order: Director Review granted; Final Written Decision vacated-in-part; remanded for the Board to consider the webserver arguments in deciding whether Petitioner proved claims 1–11 unpatentable under Ground 1B by a preponderance of the evidence. Absent good cause, the Board is to decide within 30 days. KEY QUOTE: "Under these circumstances, and although Patent Owner did not present them in an optimal manner, it is appropriate to require the Board to address Patent Owner’s arguments in reaching a decision on patentability." (Paper 50, p. 4)