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Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

December 22, 2015

Overview

By Peter E. Heuser and Joanna Lee

Openwave – Unwired Planet sued Apple and Research in Motion for infringement of patents by the sale of their iPhone and Blackberry smartphones. The Circuit affirms the district court's claim construction that a "mobile device" is a portable wireless two-way communication device that does not contain a computer module. The district court's construction was based on what the court found was a disavowel in the specification of mobile devices with computer modules, which at the time of the patent application were clumsy and inconvenient devices. To find disavowal, the specification needs to include clear and unambiguous evidence of disclaimer. The panel finds such a clear disavowel to be present here so affirms the claim construction and the judgment of non-infringement premised on that construction.

SightSound – SightSound sued Apple for infringement of patents directed to methods for the electronic sale and distribution of digital audio and video signals, alleging that Apple's iTunes music store infringes the patents. Apple petitioned the PTO for covered business method ("CBM") review of certain claims of the patents based upon a prior art digital music system developed in the 1980s. The PTAB issued a final decision finding all the challenged claims to have been obvious, even though the petitions had only argued that the claims were anticipated. Citing In re Cuozzo, the panel holds that it lacks jurisdiction to review the PTO's decision to consider an issue not explicitly raised in the petitions (anticipation), but it does, under Versata, have jurisdiction to review whether the patents qualify as CBM patents. The Board's determination that the patents qualify as CBM patents is affirmed, as well as the Board's final decision with respect to claim construction and obviousness.

Merck – Merck appeals the PTAB's decision that the contested claims of its patent are invalid for obviousness, arguing that the prior art teaches away from the claimed method, and that objective indicia of non-obviousness support patentability. In a split decision the majority holds that the Board's factual findings to the contrary are supported by substantial evidence. Specifically, the majority finds inadequate the evidence of teaching away based on descriptions of alternate embodiments in the specification. Despite an extensive offering of evidence of commercial success, licensing, copying, industry praise, long-felt but unmet need, unexpected results, and industry skepticism, the majority affirms that, while another trier of fact might have "reasonably evaluated Merck's evidence of objective indicia of nonobviousness differently in the first instance, the Board's conclusion that this evidence was not persuasively tied to the novel features of the asserted claims is supported by substantial evidence." Because the majority agrees with the Board's ultimate conclusion of obviousness, the decision is affirmed. The PTAB's decision in this case was its first on pharmaceutical patents under the AIA, and the Circuit's decision is its first in an appeal involving such patents.

In dissent, Judge Newman argues that to effect the goals of the AIA "to restore an effective and balanced system of patents, whereby valid patents may reliably be confirmed and invalid patents efficiently invalidated," the Circuit should not defer to the Board by applying the highly deferential "substantial evidence" standard of review. Applying what she feels is a more appropriately stringent standard of review, Judge Newman would reverse the obviousness rulings.

South Alabama – This is a companion case to the Merck case discussed above, involving closely related patents, the same prior art and the same issues, so will not be individually discussed.

DiStefano – The panel vacates and remands a Board decision that misapplies the so-called "printed matter doctrine." The doctrine states that if a limitation claims (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis. Prior cases have applied the doctrine to a chart listing the characteristics of real estate, markings on meat to identify the meat, and a label providing dosage instructions for taking a drug. The test to determine if the doctrine applies is two tiered: the printed matter must be matter claimed for what it communicates. If the limitation in question is determined to be printed matter, then the court turns to the question of whether the printed matter nevertheless should be given patentable weight. Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate. Where a court finds that not to be the case, it should not give patentable weight to the printed matter.

In one prior case, a computer-based structural database was not printed matter because the data structures contained both information used by application programs and information regarding their physical interrelationships within a memory. In another case, while a sequence of digits printed on a wrist band constituted printed matter, the sequence deserved patentable weight because the informational content of the sequence (what numbers were represented) was functionally related to the endless band physical structure of the substrate.
 

Openwave Systems, Inc. v. Apple, Inc.,Fed. Cir. Case 2015-1108
(December 15, 2015)

Openwave Systems (now known as Unwired Planet) first sued Apple and Research in Motion in ‎district court and shortly thereafter initiated an ‎action in the ITC. ‎The district court stayed its litigation pending resolution ‎of the ITC proceedings. After receiving an unfavorable ‎claim construction ruling in the ITC, Unwired ‎Planet dismissed its ITC action so the district court lifted its stay.

Unwired Planet informed the district court that if it ‎adopted a construction of the disputed claim term that ‎matched the construction from the ITC proceedings, ‎Unwired Planet would concede non-infringement by ‎stipulation and file a motion to terminate the case. After ‎considering the briefing and hearing oral argument, the ‎district court issued an order adopting a construction that ‎closely tracked that employed by the ALJ. Believing one ‎difference between the two constructions to be material, Unwired Planet did not immediately stipulate to ‎non-infringement. However, Unwired Planet then reconsidered its course, filed a stipulation of ‎non-infringement, and the district court entered ‎final judgment of non-infringement as to all asserted ‎patent claims in favor of defendants. ‎This appeal followed. Because we agree with the district ‎court's claim construction, we affirm.‎

The Specification Clearly Disclaims Devices Containing Computer Modules

There are three claim terms at issue: "mobile device," "wireless mobile telephone," and "two-way communication device." The parties agreed that the claim terms should be analyzed and construed together, so we construe them together under the umbrella term "mobile device." The only relevant issue on appeal is whether the claims should be given their ordinary meaning or whether, as the district court found, the patents, through repeated disparagement in the specification, disclaim mobile devices containing "computer modules." Because the district court's construction was based entirely on intrinsic evidence, the Circuit reviews the issue de novo.

To find disavowal, we must find that the specification is both so clear as to show reasonable clarity and deliberateness, and so unmistakable as to be unambiguous evidence of disclaimer. We ask whether "the specification goes well beyond expressing the patentee's preference such that its repeated derogatory statements about a particular embodiment reasonably may be viewed as a disavowal."

At the time of the invention—1995—mobile devices did not have processors that were both powerful enough and small enough to operate the devices without running into these commercialization problems. To overcome these difficulties, the inventor of the patents-in-suit "devised ways to divide the computing power between a device and its remote server," thus "eliminating the need for devices to employ full computing capacity on their own."

The Background of the Invention defines the problems that accompanied the prior art, which the invention purported to solve:

For at least the last five years, the wireless communication industry has tried to merge computing with wireless communications. . .

Typically, the intelligent communication devices resulting from these efforts include both the hardware necessary for a computer module and the hardware for a wireless communications module.

The combination of a wireless communication module with a computing module leads to a device that is too bulky, too expensive, and too inflexible to address the market requirements.

The combination of the two modules is too large and too heavy to fit in a user's pocket. Pocket size is a key requirement of the mobile communication market which remains unmet by these devices.

…[I]t would take five years for the combination [of computer module and of the communications module] to meet today's customers' price requirements. It is therefore unlikely that devices designed by combining a computer and a wireless module, no matter how miniaturized and cost reduced, can satisfy the cost requirement of the market during this decade.

… [T]he current crop of intelligent communication devices run only the few applications which were burned into their ROMs at the factory or which are contained in a ROM card plugged into a slot designed for this purpose. This scheme lacks the flexibility needed to run the thousands of applications required to address the fragmented requirements of the market and provides no simple method for updating the applications after the device has been sold.

The import of this section of the specification could not be clearer: the perceived problem with the prior art "intelligent devices" was the attempt to combine mobile devices with computer modules, resulting in a device that was too expensive, too bulky, too inflexible, and, therefore, commercially infeasible.

The Summary of the Invention begins by continuing along these lines, distinguishing the invention of the patents-in-suit from the prior art devices that include computer modules:

According to the principles of this invention, the prior art limitations of combining a computer module with a wireless communication module have been overcome.

The summary continues, indicating that "the two-way data communication device of this invention utilizes a client module to transmit a message including a resource locator selected by the user over the two-way data communication network to a server on a server computer on the computer network." In this way, the patents-in-suit specify that the solution to the problems with the prior art is to employ a "client module" executed on a "microcontroller"—rather than a "computer module." It is the lightweight nature of the patents' "client module," run on the "microcontroller," that gives rise to the benefits of the claimed invention, avoiding the problems identified with the prior art "intelligent devices."

There is no doubt a high bar to finding disavowal of claim scope through disparagement of the prior art in the specification. In this case, however, it is difficult to envisage how, in light of the repeated disparagement of mobile devices with "computer modules" discussed above, one could read the claims of the patents-in-suit to cover such devices.

Comment: There have been many cases in the past two years in which a party has alleged that there was a disavowel in either the specification or the prosecution history but the Circuit has rarely found that the disavowel has been sufficiently clear. See Tom Tom, Inc. v. Adolph, 790 F.3d 1315 (Fed. Cir. 2015)(prosecution history); Shire Dev., LLC v. Watson Pharms., Inc., 787 F.3d 1359 (Fed. Cir. 2015)‎(prosecution history);Vederi, LLC v. Google, Inc., 744 F.3d 1376 (Fed. Cir. 2014)‎(prosecution history), Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014)(specification), ‎and Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021 (Fed. Cir. 2015)(specification). Contrast, Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362 (Fed. Cir. 2014)‎(prosecution history), E2Interactive, Inc. v. Blackhawk Network, Inc., 561 Fed. Appx. 895 (Fed. Cir. 2014)‎(prosecution history), and X2Y Attenuators, LLC v. ITC, 757 F.3d 1358 (Fed. Cir. 2014)(specification), where clear disavowals were found.

SightSound Technologies, LLC v. Apple, Inc., Fed. Cir. Case 2015-1159, -1160
(December 15, 2015)

The relevant claims of the '573 and '440 patents require (1) forming a connection, through telecommunications lines, between a first party's first memory and a second party's second memory; (2) selling the desired digital video or digital audio signals to the second party for a fee through telecommunications lines; (3) transmitting the desired signal from the first memory to the second memory via telecommunications lines; and (4) storing the transmitted signal in the second memory.

Apple filed petitions seeking CBM review, arguing that certain claims were anticipated. The Board first determined that the patents are CBM patents because they recite the electronic movement of money between financially distinct entities, an activity that is "financial in nature," and do not include novel and non-obvious technological features that would otherwise excluded them from CBM treatment. The Board then determined that there was a reasonable likelihood that the asserted claims were anticipated or rendered obvious by a series of disclosures relating to a computer system developed by CompuSonics in the 1980s. Although Apple's petitions included the grounds on which the PTO instituted review with respect to anticipation and alleged facts to support obviousness, the petitions did not specifically allege obviousness over CompuSonics. The Board nonetheless held that it was appropriate to initiate review on obviousness grounds in addition to Petitioner's asserted ground of anticipation.

The Circuit Has Jurisdiction Over the Final CBM Determination

Decisions relating to the institution of CBM review are not appealable, but the Board's final decision is subject to review. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015). SightSound contends that we should set aside the final decision because the proceedings were improperly initiated since Apple did not explicitly raise the issue of obviousness in its petitions. The PTO and Apple argue that the statute and Cuozzo bar this Court from reviewing whether the Board properly initiated review when obviousness was not explicitly raised in the petitions. We agree. As in Cuozzo, the statute does not limit the Board's authority at the final decision stage to grounds alleged in the CBM petitions. The reasoning of Cuozzo and Achates Reference Publishing. Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) applies not only to § 314(d), involved in Cuozzo and Achates, but also to § 324(e), the identical provision applicable to CBM review.

The Circuit Has Jurisdiction to Review Whether These Patents Are CBM Patents

SightSound also contends that the '573 and '440 patents are not CBM patents. The PTO and Apple again argue that we are barred from reviewing this question. Here we disagree. We previously addressed our jurisdiction to review the Board's determination of whether patents are CBM patents in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d ‎1306 (Fed. Cir. 2015) ("Versata II"). There we held that the question of whether a patent falls within the scope of the Board's authority under AIA § 18 as a CBM patent is a limitation on the Board's authority to issue a final decision and may be reviewed on appeal from a final written decision of the Board. Accordingly, SightSound's contention that the Board lacked jurisdiction to review the '573 and '440 patents because they are not CBM patents is not barred by § 324(e).

These Are In Fact CBM Patents

CBM review is available only for patents that fall under the definition of a "covered business method patent." ‎The statute defines that term as meaning: "‎a patent that ‎claims a method or corresponding apparatus for ‎performing data processing or other operations ‎used in the practice, administration, or management of a financial product or service, except that ‎the term does not include patents for technological ‎inventions.‎"

The Board explained that claim 1 of both of the patents is directed to activities that are financial in nature, namely the electronic sale of digital audio. The specifications repeatedly refer to electronic "sale," "purchase," and "money," and claims 3 and 4 of the '573 and '440 patents respectively, which recite "providing a credit card number of the second party so the second party is charged money." The Board's reasoning is not arbitrary or capricious and its findings are supported by substantial evidence.

The Board next explained that the patents do not claim a "technological invention." It found that, while the claims of the patents utilize technical components such as a "first memory," "second memory," "telecommunications line," "transmitter," and "receiver," those components were all generic hardware devices known in the prior art. The Board also found that the steps recited in the patents did not amount to a technological feature that is novel and non-obvious over the prior art. Finding that the claims merely recited "known technologies to perform a method" and the "combination" of those technologies would have been obvious, the Board concluded that the patents did not claim a "technological invention." The Board's reasoning is not arbitrary or capricious and substantial evidence supports its findings here.

The Board's Construction of the Relevant Claims Is Proper

Several of the claims include the term "second memory," as in "a method for transmitting a desired digital audio signal stored on a first memory of a first party to a second memory of a second party." The Board construed "second memory" as meaning "a second storage space in a computer system or medium that is capable of retaining data or instructions." The specification notes some disadvantages of the "three basic mediums (hardware units) of music" then available: "records, tapes, and compact discs." Addressing the specification, the Board appeared to conclude that "second memory" would not exclude those three media based on the specification, because the Board required a "clear disclaimer" in the specification to overcome the ordinary meaning and to exclude records, tapes, and CDs.

The Board's analysis in this respect was incorrect. Claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2004) (en banc). We have explained that the specification is "the single best guide to the meaning of a disputed term and that the specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Thus "a claim term may be clearly redefined without an explicit statement of redefinition." The disadvantages identified by the specification of records, tapes, and CDs amount to implied disclaimer of those three media. Thus we disagree with the Board's interpretation insofar as it included records, tapes, and CDs in its construction of "second memory."

Nonetheless, the Board did not err in rejecting SightSound's contention that floppy disks—a medium referenced in the CompuSonics prior art—should also be excluded. The specification's description of the disadvantages of records, tapes, and CDs does not "indicate that the identified disadvantages extend to all removable media or that the disadvantages occur specifically because the devices are removable. . . . To the contrary, some of the identified disadvantages, like limited capacity and playback capability, have nothing to do with whether the device can be removed." The specification suggests that the patent's objective was not to overcome the alleged disadvantages associated with the removable nature of the three hardware units, as SightSound suggests, but rather to overcome the disadvantages associated with distributing the three types of units: "hardware units need to be physically [transferred] from the manufacturing facility to the wholesale warehouse to [the] retail warehouse to the retail outlet, resulting in [lengthy], lag time between music creation and music marketing." These disadvantages would not apply to storing digitally purchased music on a floppy disk, for example. Accordingly, SightSound's reading of "secondary memory" to exclude all removable media is not supported by the specification.

The Board also reviewed the prosecution history and found certain statements contradicting SightSound's proposed limitation. The doctrine of claim differentiation additionally supports the Board's construction that "second memory" is not limited to a non-removable hard disk. Claim 1 and 64 of the '440 patent include identical language except that claim 64 of the '440 patent states: "[T]he second memory including a second party hard disk." "Second memory" must be different from a non-removable "hard drive," because otherwise the additional language of claim 64 would be redundant.

The Board's Decision That the Claims Would Have Been Obvious Is Affirmed

The Board found that "Apple explains in detail in its Petitions how the CompuSonics publications teach every limitation" of the primary claims. SightSound conceded that the CompuSonics publications "describe prior art elements working according to their established functions in a predictable manner," but argued that a skilled artisan would have had no reason to combine those elements. The Board rejected this argument, finding that the references "expressly contemplate that it would be commercially desirable to have a system that allowed users to buy" and store music and video electronically. Finding that the reason to combine was manifested by the references themselves, the Board thus concluded that a person of ordinary skill in the art would have had reason to combine the teachings of the CompuSonics references.

As for claims 1, 2, 4, and 5 of the '573 patent and claim 1 of the '440 patent, SightSound argues that the Board erred in rejecting objective indicia of nonobviousness. On appeal, SightSound contends only that the Board lacked substantial evidence to conclude that there was no nexus between the success of the iTunes Music Store ("iTMS") and the claimed invention. To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer "proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter." Here the Board found that "iTMS embodies numerous inventions other than the general purchasing and downloading of music relied upon by SightSound." The Board further found that SightSound failed to offer proof that the commercial success of iTMS is the direct result of a unique characteristic of the claimed invention, noting that there was "persuasive evidence that the commercial success of the iTMS is due to features other than those of the claimed methods."

The Board found that iTMS was successful largely because of its ability to acquire licensed content from the major record labels. SightSound admits that its inability to do the same was in part responsible for its failed business model. We see no error in the Board's conclusion that claims 1, 2, 4, and 5 of the '573 patent and claim 1 of the '440 patent would have been obvious.
 

Merck v. Gnosis S.P.A., Fed. Cir. Case 2014-1779
(December 17, 2015)

After being accused of infringement, Gnosis petitioned for IPR of Merck's '040 patent, which relates to dietary supplements using folates to treat vitamin deficiencies in the human body. Homocysteine is an amino acid that, when present in excessive quantities, can cause severe cardiovascular, ocular, neurological, and skeletal disorders. One way the body regulates homocysteine levels is through a metabolic process called the methionine cycle, in which homocysteine is converted to methionine. A common cause of elevated homocysteine levels, or hyperhomocysteinemia, is a deficiency of the enzymes and other compounds used in the methionine cycle to dispose of homocysteine.

Serfontein discloses a pharmaceutical preparation for lowering levels of homocysteine in a patient. Although Serfontein does not specify what constitutes a "suitable active metabolite of folate," Marazza identifies L-5-MTHF as a "natural metabolite" that may be used as at least one active compound in a treatment for folate deficiency. Ubbink is a study of folate levels in men with elevated levels of homocysteine. Ubbink affirms that numerous studies have indicated that elevated plasma homocysteine concentrations are associated with increased risk for premature vascular disease. Ubbink describes the positive results of treating these conditions with a vitamin supplement containing folic acid.

The Board's Findings

The Board found that, because of the close similarity of purpose and disclosure between Serfontein and Marazza, a person of ordinary skill in the art would have been motivated to combine the two references to arrive at a method of treating elevated levels of homocysteine with L-5-MTHF, as recited in claims of the '040 patent. Further, the Board found a person of skill would have been motivated to use this method in the situation disclosed in Ubbink, in which the elevated homocysteine levels are associated with certain enzyme deficiencies. The Board found that this combination of Serfontein, Marazza, and Ubbink discloses the limitations of the other claims at issue.

The Board also considered objective indicia of nonobviousness. The Board concluded that Merck failed to demonstrate an adequate nexus between the novel features of the '040 patent and the evidence of commercial success, licensing, copying, and industry praise. It also found that the evidence of long-felt but unmet need, unexpected results, and industry skepticism was unpersuasive.

The Majority Finds Support for the Board's Rejection of Arguments as to Motivation to Combine, Teaching Away and Objective Indicia

Merck appeals the Board's obviousness determination, anticipation finding, and claim construction. Because we affirm the Board's determinations that the asserted claims are invalid as obvious, we need not reach Merck's arguments with respect to anticipation and claim construction.

The record amply supports the Board's finding of a motivation to combine Serfontein and Marazza. Serfontein explains that elevated levels of homocysteine are often associated with folate deficiencies. Accordingly, Serfontein discloses a method of treating elevated levels of homocysteine using a "suitable active metabolite of folate" and B-vitamins. While Serfontein does not specifically identify which metabolites of folate are "suitable" for addressing folate deficiencies, Marazza does. It highlights L-5-MTHF as a "natural metabolite" of folate in which there is an "increasing interest" for the treatment of folate deficiencies. Thus, as the Board found, a person of ordinary skill viewing Serfontein and Marazza would have been motivated to use L-5-MTHF as the "suitable active metabolite of folate" called for by the method disclosed in Serfontein.

Merck argues that the prior art teaches away from this combination by suggesting: (1) administering 5-MTHF would actually increase levels of homocysteine, (2) 5-MTHF would be too unstable for therapeutic use, and (3) L-5-MTHF is a poor substrate for polyglutamation, a process that facilitates retention and use of L-5-MTHF in the cell. Merck cites isolated prior art disclosures for support. Viewing the prior art as a whole, however, the Board's finding that the prior art does not teach away from combining Serfontein and Marazza is supported by substantial evidence; that is, the prior art as a whole supports the Board's conclusion that a person of ordinary skill would not have avoided L-5-MTHF because it does not accumulate within the cells.

The Board's additional finding of a motivation to use the method disclosed in Serfontein and Marazza to treat elevated homocysteine levels associated with certain enzyme deficiencies, as disclosed in Ubbink, is also supported by substantial evidence. Merck's sole argument against this finding is that Ubbink used folic acid, not reduced folates such as L-5-MTHF, to treat elevated levels of homocysteine associated with certain enzyme deficiencies. As the Board found, however, this distinction would not have undermined a person of ordinary skill's motivation to combine. Ubbink involved a deficiency in the enzyme methylenetetrahydrofolate reductase. According to the prior art, this enzyme is important because it helps produce 5-MTHF for the methionine cycle. As mentioned above, a person of skill would have known that administering 5-MTHF directly would accomplish a similar result.

Merck complains that the Board never made an express finding that a person of ordinary skill would have a reasonable expectation of success in combining the references. Merck is correct that under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), a factfinder's analysis of a reason to combine known elements in the art "should be made explicit." But KSR does not require an explicit statement of a reasonable expectation of success in every case. Here, the Board addressed Merck's arguments against a reasonable expectation of success in the context of its teaching away arguments. By rejecting Merck's argument that the prior art taught away from combining Serfontein, Marazza, and Ubbink, the Board impliedly found a reasonable expectation of success. We decline to overturn the decision for failure to state expressly that a person of ordinary skill would have had a reasonable expectation of success.

Here, the Board properly considered Merck's evidence regarding objective indicia of nonobviousness, but found that the nexus between the merits of the invention and the evidence of commercial success, licensing, copying, and industry praise was weak. The Board also found the evidence of long-felt but unmet need was unpersuasive. The Board therefore afforded the evidence of objective considerations little weight. We conclude that these factual findings are supported by substantial evidence. Although another factfinder may have reasonably evaluated Merck's evidence of objective indicia of nonobviousness differently in the first instance, the Board's conclusion that this evidence was not persuasively tied to the novel features of the asserted claims is supported by substantial evidence. In light of this finding, we agree with the Board that these objective indicia carry little weight.

Judge Newman Dissents, Arguing Against the Substantial Evidence Review Standard

Judge Newman argues that to effect the goals of the AIA "to restore an effective and balanced system of patents, whereby valid patents may reliably be confirmed and invalid patents efficiently invalidated," and because the petitioner is estopped from challenging the patent on grounds that were or could have been raised in the PTO, the Circuit should not defer to the Board by applying the "substantial evidence" standard of review. Noting that "[t]he substantial evidence standard determines when the decision could reasonably have been made, not whether it was correctly made," she argues a more stringent standard of review is far more appropriate, particularly since invalidity needs only be proved by a preponderance of the evidence in AIA proceedings. Applying a more stringent standard of review, Judge Newman would reverse the Board's determination of obviousness in this case.

Comments: Given the majority's ruling and other decisions by the Circuit applying the "substantial evidence" standard of review for AIA rulings, the only way to change that would be through legislation. Such legislation might be one way in which AIA proceedings could be improved. Such a legislative change could mean that fewer patents would be invalidated in AIA proceedings, which would please patent owners and others who are critical of AIA proceedings.

Judge Newman has consistently dissented in appeals of AIA rulings where she thinks the majority is not adequately examining the PTAB ruling. In addition to this case, where she criticizes the "substantial evidence" standard of review, in In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) she dissented from the majority's ruling (and the Circuit's refusal to consider rehearing en banc) that a decision whether or not to institute an IPR was not appealable, and in Prolitec, Inc. v. ScentAir Techs, Inc., 2015 U.S. App. LEXIS 21037 (Fed. Cir.), where she thought the majority had not closely examined whether amendments to the claims should be permitted in IPRs.

In re Thomas L. DiStefano, III, Fed. Cir. Case 2015-1453 (December 17, 2015)

Thomas DiStefano appeals from the PTAB's rejection of claims 24-26 of his patent application. In so doing, the Board determined that one of the limitations of independent claim 24 fell within the printed matter doctrine and therefore was not entitled to patentable weight. This court vacates and remands.

DiStefano's application claims a method of designing web pages. The purported invention is a method that enables an individual to design a web page without requiring them to "learn HTML or to interact extensively with a web page designer." The application's primary embodiment includes a graphical user interface composed of a primary display screen and an overlaid design plate. The overlaid design plate is composed of several parts, including menu buttons to assist in editing the website and a design place that can be used to display and edit web assets. The application describes web assets as including Java applets, scripts, stock art, digital art, background images, textures, etc. The web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent third party websites. When the user finishes editing a web asset, the user can drag the web asset from the design plate onto the website.

Claim 24, the only independent claim at issue, reads:

A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, comprising:

selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;

displaying the first element in the second display region;

interactively displaying the electronic document in the first display region;

modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display region; and

displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.

We previously held in this case that the Board had not properly designated its anticipation rejection as a new ground of rejection and we therefore remanded this case back to the Board. On remand, the Board found that D'Arlach anticipated claims 24 through 26. The Board's analysis focused on claim 24's limitation "selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user" (the "Selecting Limitation") as the parties agreed that all of the other limitations were anticipated by D'Arlach. The Board determined that the Selecting Limitation should not be afforded patentable weight under the printed matter doctrine.

In performing the printed matter analysis, the Board concluded that web assets' origination from third party authors and the user cannot patentably distinguish the claimed method, particularly because the web assets' origins have no functional relationship to the claimed method. That conclusion treats the "origins" as printed matter.

The Printed Matter Doctrine

When determining a claim's patentability, the Board must read the claim as a whole, considering each and every claim limitation. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). However, we have long held that if a limitation claims (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis. Id. In performing this analysis we do not strike out the printed matter and analyze a "new" claim, but simply do not give the printed matter any patentable weight: it may not be a basis for distinguishing prior art.

The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter. Our past cases establish a necessary condition for falling into the category of printed matter: a limitation is printed matter only if it claims the content of information.

The printed matter doctrine did not fully develop until 1931 in the case In re Russell, 48 F.2d 668 (CCPA 1931). The claimed invention in Russell related to "improvements in indexes particularly to the indexing of names in directories, and is claimed to be applicable to dictionaries, etc." Our predecessor court held that "the mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof."

Since 1931, both our predecessor court and our court have consistently limited the printed matter rule to matter claimed for its communicative content. After Russell, our predecessor court found that "a chart listing the characteristics of real estate in such manner as to expedite real estate assessments" and markings on meat "arranged in a certain manner for the purpose of identifying the meat" were both printed matter. In re McKee, 64 F.2d 379 (CCPA 1933). More recently we concluded that an FDA label providing the dosage instructions for using a medical product was printed matter, that a label instructing a patient to take a drug with food was printed matter, that instructions on how to perform a DNA test were printed matter, and that numbers printed on a wristband were printed matter." By contrast, we found in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), that a computer-based structural database was not printed matter, not because it involved a computer, but because the data structures contained both information used by application programs and information regarding their physical interrelationships within a memory.

The common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates. Only if the limitation in question is determined to be printed matter does one turn to the question of whether the printed matter nevertheless should be given patentable weight. Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate. For example, in Gulack we determined that while a sequence of digits printed on a wrist band constituted printed matter, the sequence deserved patentable weight because the informational content of the sequence (what numbers were represented) was functionally related to the endless band physical structure of the substrate. We have consistently held that once it is determined that the limitation is directed to printed matter, one must then determine if the matter is functionally or structurally related to the physical substrate, and only if the answer is "no" is the printed matter owed no patentable weight.

The Board Erred in Determining Whether the Origin of the Web Assets Constituted Printed Matter

Here, the Board erred at the threshold step. Although the selected web assets can and likely do communicate some information, the content of the information is not claimed. And where the information came from, its "origin," is not part of the informational content at all. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. Therefore, the Board erred in finding that the origin of the web assets constituted printed matter in the claims at issue and erred in assigning the origin no patentable weight under the printed matter doctrine in finding anticipation by D'Arlach.

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