Fresh From the Bench: Recent Patent Cases From the Federal Circuit
Imes – The Circuit reverses the rejection of claims by the PTAB, showing how willing the Circuit is to reverse Board decisions, both on what constitutes the "broadest reasonable interpretation" of claim language, and as to obviousness, even when the latter review is only looking for substantial evidence. After reversing a claim construction determination (based on de novo review), the panel refuses to consider a new ground of rejection presented for the first time on appeal to the Circuit. The panel then turns to the rejection presented below, finding that there is no substantial evidence to support the rejection, ruling that a series of email images does not constitute the streaming of video.
In re Kevin R. Imes,
Fed. Cir. Case No. 2014-1206 (January 29, 2015)
The Board's construction of "wireless" is not the broadest reasonable interpretation.
The claims at issue recite a communications device comprising a "communications module operable to wirelessly communicate streaming video to a destination." The examiner rejected claims based upon patents to Schuetzle, Aihara, and Knowles, but the panel concludes that the Board erred in concluding that Schuetzle's removable memory card 35 discloses the claimed second wireless communication module. Whether removable memory card 35 is a wireless communication module turns on the construction of the term "wireless." The Patent Office construed "wireless" to include communications along metal contacts of the removable memory card and the computer system. However, the panel finds this is inconsistent with the broadest reasonable interpretation in view of the specification, which expressly and unambiguously defines wireless: "wireless refers to a communications, monitoring, or control system in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire."
The opinion states that it was applying de novo review to the construction of "wireless," noting in a footnote: "Nothing in this case implicates the deference to fact findings contemplated by the recent decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841-42 (2015)." Presumably this is because it is an appeal from the PTO and not from a district court.
New bases of rejection will not be considered on appeal.
For the first time on appeal, the PTO advances an additional theory for why a removable card discloses the second wireless communications module. However, this rationale was not previously articulated by the examiner or the Board, and the panel determines that it will not consider it for the first time on appeal. Even if the Board had used this reasoning below, it would have constituted a new ground of rejection because it relies on new facts and rationales not previously raised to the applicant by the examiner.
There is no substantial evidence to support the other rejections.
The examiner found that Knowles discloses the claimed communications module operable to wirelessly communicate streaming video to a destination. Knowles discloses a wireless digital camera system that transmits images over the Internet. Knowles' camera system allows a user to take multiple consecutive still images and queues the images so that they can be serially transmitted to a server while allowing the user to take subsequent pictures without waiting for the previous picture to be transmitted. The server then transmits the images via e-mail. Noting that Knowles shows a repetitive loop where images are transmitted so long as they are in the queue, the examiner concluded that Knowles discloses "streaming video." The Board affirmed, construing "operable to wirelessly communicate streaming video to a destination" as "capable of wirelessly communicating continuous video transmission." Like the examiner, it determined that Knowles and implementation on a Sony Vaio C1 Picturebook disclose this limitation.
The panel concludes that there is no substantial evidence supporting the Board's determination that Knowles discloses streaming video. Knowles discloses a system that sends a series of individual still images as e-mail attachments. Sending a series of e-mails with attached still images is not the same as streaming video, which is the continuous transmission of video. A series of e-mails with attachments does not meet the definition of "streaming" and still images do not meet the definition of "video."
The panel also concludes that substantial evidence does not support the Patent Office's finding that Knowles' reference to a Sony Vaio C 1 Picturebook discloses the streaming video limitation. Knowles itself indicates that its invention may be implemented on a number of different devices, including the Sony Vaio C 1 Picturebook. Knowles does not mention any specific features of the Sony Vaio C1 Picturebook other than that it incorporates a digital camera. Instead, the examiner relied on a press release in which Sony announced its new Vaio notebook computer to show the inherent characteristics of the Sony Vaio C1 Picturebook. In particular, this press release indicates that the digital camera is capable of capturing digital still images and video clips and sending them as attachments to email messages. A second reference may be used to show that a feature is inherent in a first reference if the first reference is silent with regard to the inherent feature. However, the evidence must make clear that the missing characteristic is "necessarily present"" in the first reference. Here, the Sony Vaio press release does not disclose that the Sony Vaio C1 Picturebook is capable of "streaming video" or "continuous video transmission" - it merely discloses sending a video file as an attachment to an e-mail.
Nowhere in the record did the examiner or the Board explain how implementing Knowles' disclosed image transmission method on a Sony Vaio C1 Picturebook discloses streaming video or continuous video transmission. Instead, both the Board and the examiner found that Knowles discloses continuous image transmission and that Knowles can be implemented on the Sony Vaio C1 Picturebook, which is capable of sending video files via email. These two findings do not provide substantial evidence that Knowles discloses, expressly, inherently, or even implicitly, streaming video capabilities. For these reasons, the panel holds that the Board erred in concluding that Knowles discloses the claimed "communications module operable to wirelessly communicate streaming video to a destination."
Comment: This case presents yet another example of how willingthe Circuit is to reverse Board determinations, even when they are only looking for substantial evidence to support a decision. Recall the inter partes reexamination cases of In Re Rambus, Inc., 753 F.3d 1253 (Fed. Cir. 2014) and Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2014), where the Circuit reversed, finding no substantial evidence to support the Board's determinations of obviousness, and the interference case of Tobinick v. Olmarker, 753 F.3d. 1220 (Fed. Cir. 2014), where the Circuit found no substantial evidence to support a finding of lack of an adequate written description. These cases show the close review the Circuit will be giving Inter Partes Review and Post Grant Review determinations.