Insufficient Specificity to Constitute an Improvement to Computer Functionality

In Universal Secure Registry LLC v. Apple, Inc., [2020-2044] (August 26, 2021), the Federal Circuit affirmed the dismissal under Rule 12(b)(6) that U.S. Patent Nos. 8,856,539; 8,577,813; 9,100,826; and 9,530,137 asserted by Universal Secure Registry because the four asserted patents were ineligible under 35 U.S.C. § 101.

Although the patents are otherwise unrelated, they are directed to similar technology—securing electronic payment transactions.  The district found the patents ineligible under both prongs of the Alice test, explaining that the claimed invention was directed to the abstract idea of “the secure verification of a person’s identity” and that the patents do not disclose an inventive concept—including an improvement in computer functionality— that transforms the abstract idea into a patent-eligible application.

The Federal Circuit began by noting that in cases involving authentication technology, patent eligibility often turns on whether the claims provide sufficient specificity to constitute an improvement to computer functionality itself.  Analyzing the claims of the four patents separately, the Federal Circuit determined that they were directed to abstract ideas, and did not include anything more to remove the claims from the realm of abstract ideas.

Posted in 101

Inadequate Written Description of Genus without Representative Species or Common Structural Features

In Juno Therapeutics, Inc. v. Kite Pharma, Inc., [2020-1758] (August 26, 2021), the Federal Circuit reversed the jury verdict that claims of U.S. Patent No. 7,446,290, were not invalid for lack of written description, because it was not supported by substantial evidence.

A specification adequately describes an invention when it “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”  What is required to meet the written description requirement “varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.” A mere wish or plan for obtaining the claimed invention is not adequate written description.  The Federal Circuit said that for genus claims using functional language, like the ones at issue in the case, the written description “must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.”

On appeal Kite argued that the claims cover an enormous number (millions of billions) of candidates, only a fraction of which satisfy the functional binding limitation for any given target, and that the written description does not meet the written description requirement for this functional binding limitation.  Kite argues that the asserted claims are invalid for failing to satisfy the written description requirement because the patent discloses neither representative species nor common structural features of the claimed genus to identify which combinations would function as claimed.

The Federal Circuit agreed that no reasonable jury could find the ’190 patent’s written description sufficiently demonstrates that the inventors possessed the full scope of the claimed invention. The Federal Circuit said that the ’190 patent’s written description fails to provide a representative sample of species within, or defining characteristics for, the expansive genus claimed.  The Federal Circuit explained that this did not mean that a patentee must in all circumstances disclose the nucleotide or amino acid sequence of the claimed sequences to satisfy the written description requirement when such sequences are already known in the prior art.  But the written description must lead a person of ordinary skill in the art to understand that the inventors possessed the entire scope of the claimed invention.

The Federal Circuit concluded that substantial evidence does not support the jury’s verdict in Juno’s favor on the issue of written description, and reversed.

Damage Expert Testimony Limited by Unreliability, Failure of Disclosure, and Failure to Apportion

In MLC Intellectual Property, LLC v. Micron Technology, Inc., [2020-1413] (August 26, 2021), the Federal Circuit affirmed the district court’s orders precluding MLC’s damages expert from characterizing certain license agreements as reflecting a 0.25% royalty, opining on a reasonable royalty rate when MLC failed to produce key documents and information directed to its damages theory when requested prior to expert discovery, and opining on the royalty base and royalty rate where the expert failed to apportion for non-patented features.

MLC sued Micron for infringing certain claims of U.S. Patent No. 5,764,571, entitled “Electrically Alterable Non-Volatile Memory with N-bits Per Cell,” which describes methods of programming multi-level cells.

Micron filed a motion in limine to preclude Mr. Milani from mischaracterizing the Hynix and Toshiba agreements as reflecting a 0.25% royalty rate. In addition, Micron moved to strike portions of Mr. Milani’s expert report under Rule 37 of the Federal Rules of Civil Procedure as being based on facts, evidence, and theories that MLC disclosed for the first time in Mr. Milani’s expert report. Micron had asked for MLC’s damages theories—as well as any facts, evidence, and testimony regarding any applicable royalty rate—during fact discovery in its Interrogatory Nos. 6 and 22 and during a Rule 30(b)(6) deposition of a corporate designee. Finally, Micron filed a Daubert motion, seeking to exclude Mr. Milani’s reasonable royalty opinion for failure to apportion out the value of non-patented features. The district court granted all three motions.

As to the first motion, the district court reasoned that Mr. Milani’s “testimony about the Hynix and Toshiba licenses containing a 0.25% royalty rate is not ‘based on sufficient facts or data’ and is not ‘the product of reliable principles and methods.’”  On appeal, the Federal Circuit noted that as a gatekeeper, the district judge was required to “ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.”  The Federal Circuit found no abuse of discretion on the exclusion of evidence, noting that instead of resting on an accepted scientific theory or technique, Mr. Milani’s testimony was is not sufficiently tethered to the evidence presented.

As to the second motion, the court concluded that “MLC never disclosed the factual underpinnings of its claim that the Hynix and Toshiba licenses ‘reflect’ a 0.25% royalty rate, and that pursuant to Rule 37(c)(1), this failure is a separate and independent basis for excluding evidence and argument that those licenses contain such a rate.”  The court said that because the information relied upon was never disclosed by MLC, MLC may not rely on this evidence to assert that the Hynix and Toshiba licenses ‘reflect’ a 0.25% rate.”  On appeal the Federal Circuit noted that under Rule 37(c)(1), when “a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.”  After examining the discovery responses, the Federal Circuit found that the district court did not abuse its discretion in finding that MLC did not properly disclose its claim that the Hynix and Toshiba licenses reflect a 0.25% rate, as well as the extrinsic documents relied on by Mr. Milani to show that the Hynix agreement reflects a 0.25% royalty rate.

As to the third motion, the district court held that Mr. Milani’s failure to apportion for non-patented technologies rendered his analysis unreliable and excludable.  On appeal, the Federal Circuit agreed that Mr. Milani did not properly apportion either the royalty base or the royalty rate to account for the patented technology, noting that it has repeatedly held that when the accused technology does not make up the whole of the accused product, apportionment is required.

Footnote in Brief Doesn’t Count; Anyway Construction for Infringement Construction can’t be From Validity

In Commscope Technologies LLC v. Dali Wireless Inc., [2020-1817, 2020-1818] (August 24, 2021) the Federal Circuit reversed the district court’s denial of JMOL of no infringement of U.S. Patent No. 9,031,521, and affirmed denial of JMOL of invalidity.

U.S. Patent No. 9,031,521, relates to wireless communications with portable equipment and handsets, such as mobile phones.  The claim limitation at the center of the parties’ infringement dispute is the first step in the claimed operating phase: “switching a controller off to disconnect signal representative of the output of the power amplifier.”  On appeal CommScope argued that Dali failed to present evidence proving that the FlexWave meets the district court’s construction of the claim term “switching a controller off.” The Federal Circuit agreed.

Dali argued that the claim term “switching a controller off” meant “switching a controller to an off status,” and no further definition was needed.  CommScope, on the other hand, proposed that the claim term meant “[s]witching a controller to a nonoperating state.”  The district court agreed with CommScope, drawing a distinction between: (1) when the controller is turned off and (2) the effect on the system of turning the controller off.

Dali argued (in a footnote) that CommScope’s position was nonsense.  The Federal Circuit said that “an argument that is only made in a footnote of an appellant’s brief is forfeited.”  Further, even if the argument were in the body of the brief, it was insufficiently developed. Finally, and most importantly, the s irreconcilable with Dali’s statements in other portions of its brief.  Thus the Federal Circuit turned to the issue of infringement.  The Federal Circuit pointed out that Dali’s expert’s testimony never states that either the switch or the controller is rendered “nonoperating,” thus does not provide substantial evidence to support the jury’s finding that the accused product meets the district court’s claim construction.  Not only was there a lack of evidence to show that the accused product met the proper construction of the claims, there is unrebutted evidence showing the opposite.  CommScope points to the testimony of its expert, who testified that both the switch and the controller are continuously operating.

The Federal Circuit said that the burden is on a patent owner to show that “the properly construed claim reads on the accused device exactly.”  CommScope’s reliance on the claim terms as construed by the district court is not “hairsplitting,” as Dali argues, but instead properly shows that Dali failed to meet its burden at the district court and that no reasonable jury could have found otherwise.  Dali presented only a literal infringement case, and not a doctrine-of-equivalents alternative. Thus, Dali’s argument that the accused switch/controller is effectively “nonoperating” because it is not passing a feedback signal of the power amplifier of interest is irrelevant because Dali failed to produce evidence below to show that the accused controller is literally nonoperating, as the district court determined was required by the claim.

Finally, Dali’s arguments on infringement cannot stand in view of its arguments of no anticipation.  For these reasons, the Federal Circuit reversed the district court’s denial of CommScope’s motion for JMOL of no infringement of the ’521 patent and affirmed the judgment of the district court in all other respects.

Mmm, Mmm, Obvious

In Campbell Soup Company v. Gamon Plus, Inc., [2020-2344, 2021-1019](August 19, 2021), the Federal Circuit reversed the PTAB determination that U.S. Design Patent Nos. D612,646 and D621,645 would not have been obvious.

The ’646 and ’645 patents, which each claim “[t]he ornamental design for a gravity
feed dispenser display, as shown and described. The ‘646 patent has one figure:

U.S. Patent No. D612646, Fig. 1

Most of the features in the drawings are shown in dashed lines meaning that they are not part of the claimed design. In the ‘646 patent, the only parts claimed, were athe label area, the can stops, and one of the cans:

The ‘645 patent similarly excludes most of the drawing, except the label area and the cylindrical object in the display.

Linz, discloses a similar dislay rack. that has a similar display area and stops:

Linz, U.S. Patent No. D405,622

After buying $31 million of display racks from Gamon, Campbell’s began buying similar displays from Trinity, which caused Gamon to sue Campbells. Campbells petitioned for inter partes review of Gamon’s patents. The Board held that Appellants had failed to prove unpatentability, finding that Linz is not similar
enough to the claimed designs to constitute a proper primary reference.
The Federal Circuit vacated and remanded, reasoning that the “ever-so-slight differences” the Board identified between Linz and the claimed designs did not
support its finding that Linz is not a proper primary reference. On remand, the Board again help that the patents had not been shown to be obvious. The Board reasoned Abbate was not a proper primary reference, and while Linz was a proper primary references, the claimed designs would not have been obvious over Linz alone or in combination with other references. The Board acknowledged that Linz had the same overall visual appearance as the claimed designs, but objective indicia nonobviousness, namely: commercial success, Campbell praise for the design, and the copying of the design.

On this second trip to the Federal Circuit the Federal Circuit agreed that Linz creatd the same overall visual appearance as the claimed designs. However, as to objective indicia, the Federal Circuit found that the Board erred in presuming a nexus between any commercial success and the claimed designs. The Board found that the unclaimed portions of the desings were insignificant to the ornamental design, but the Federal Circuit held that: “[i]n determining coextensiveness, the question is not whether unclaimed features are insignificant to a product’s ornamental design. The question is instead whether unclaimed features are
“insignificant,” period. The Federal Circuit explained that the purpose of the coextensiveness requirement is to ensure that nexus is presumed only when the
product “is the invention disclosed and claimed. The Federal Circuit said by limiting its analysis to ornamental significance, the Board simply did not answer the relevant
question: whether the commercial produtc “is the invention.”

Under the correct legal standard, substantial evidence does not support the Board’s finding of coextensiveness, the Federal Circuit finding that at most, the claims cover only a small portion of the commercial product: its label area, cylindrical object, and stops. Thus it was improper to presume a nexus between the claimed invention and the commercial success, and it was up to Gamon to establish a nexus, which it failed to do.

The Board found nexus from the success and praise for the label area, but the Federal Circuit pointed out, this was not new. To establish nexus, Gamon needed to present evidence that the commercial success and praise of the commercial product derived from those “unique characteristics.” The evidence of commerical success presented was tied only to the label area, which was old. The Federal Circuit rejected testimony of the inventor tying the commercial success to the label area, noting that it was both self-serving and unssupported by any other evidence. Furthermore the Federal Circuit rejected the Boards view that in design patent cases, objective indicia need not be linked to the claimed design’s unique characteristics.

The Federal Circuit also relied upon evidence of copying as establishing non-obviousness, saying that even if there were copying, that alone did not overcome the strong evidence if obviousness.

Weighing all of the Graham factors, including (1) the Board’s finding that, from the perspective of a designer of ordinary skill, Linz creates the same overall visual impression as the claimed designs and (2) copying by Trinity of the claimed designs’ unique characteristics, the Federal Circuit concluded that the claimed designs would have been obvious over Linz.

Federal Circuit Holds PTO Can’t Recover Expert Witness Fees under 35 USC § 145

In Hyatt v. Hirshfeld, [2020-2321, 2020-2323, 2020-2324, 2020-2325] (August 18, 2021), the Federal Circuit affirmed the district court’s denial of an award of the USPTO’s expert witness fees in defending a civil action under 35 USC § 145 brought by patent applicant Hyatt.

In a prior appeal the Federal Circuit held that 35 USC § 145 does not entitle the USPTO to recover its attorneys fees. The Patent Office also sought reimbursement of its expert witness fees under 35 U.S.C. § 145, which provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.” The Patent Office cited a string of district court decisions awarding expert witness fees under the statute, but the district court found that these cases lacked any reasoning regarding the American Rule presumption against fee shifting, and noting recent Supreme Court emphasis of that presumption, the district court denied an award of expert fees.

The Federal Circuit agreed with the district court that 35 USC § 145 was not sufficiently specific to overcome the presumption against fee-shifting. The Federal Circuit said that No magic words are needed to override the American Rule, but the requirement that Congressional intent be specific and explicit is a high bar. The Federal Circuit said that vague terms like “costs” are also not enough.

The Federal Circuit looked to the Supreme Court’s decsion in NantKwest, noting that although the Court’s holding that attorney’s fees are not shifted does not inherently dictate that expert fees cannot be shifted, much of the Court’s reasoning in NantKwest applies equally with respect to expert fees. Tracking that decision, the Federal Circuit found the dictionary definitions of the words in the statute, the language of the statute, and the fact that in other stautes Congress specifically included expert fees, suggested that the central logic of NantKwest is applicable to its decision here, indicating that § 145 does not shift expert witness fees.

The Patent Office emphasized the long string of cases awarding expert witness fees, but the Federal Circuit said that longstanding practice is not enough to overcome the American Rule presumption.

Wayback Machine Helps Prove Exhibit was Prior Art

In Valve Corporation v. Ironburg Inventions Ltd., [2020-1315, 2020-1316, 2020-1379] (August 17, 2021), the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded two PTAB decisions determining that some claims of U.S. Patent No. 9,289,688 were shown to be unpatentable, while other claims of the ‘688 patent and the claims of U.S. Patent No. 9,352,229 were not shown to be unpatentable.

The ’688 patent is directed to an improved controller for a games console that is intended to be held by a user in both hands in the same manner as a conventional controller that comprises additional controls located on the rear of the controller. The ’229 patent is directed to a handheld controller for a games console, wherein the controller further includes at least one additional control located on a back of the controller.

An issue in both of the appeals is whether an Exhibit to the petition relied on by Valve was shown to be a printed publication and thus prior art under 35 U.S.C. § 102(a)(1). Valve asserted that the Exhibit was a printed copy of an online review of an Xbox 360 controller published on October 20, 2010. Valve argued that the Exhibit was prior art because it was a printout of the same online article by Dave Burn that was cited and enclosed in the prosecution histories of the ’688 patent and ’229 patent.

The Board rejected Valve’s showing on the ground that the Exhibit had not been shown to be the same as the asserted prior art documents in the prosecution histories. This is essentially a determination that Valve failed to prove that the Exhibit was what Valve what claimed it to be, which is an issue of authentication. See Fed. R. Evid. 901(a) (“To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must pro-duce evidence sufficient to support a finding that the item is what the proponent claims it is.”). The Federal Circuit noted that the Exhibit could be authenticated by a comparison with an authenticated specimen by an expert witness or the trier of fact, and that such authentication by comparison is rountine, and that the Board had an obligation to make such a comparison. The Federal Circuit concluded that the Exhibit is substantively the same as articles in the prosecution histories.

The Federal Circuit further rejected the argument that the Exhibit has been shown to be publically accessible before the priority date. The Federal Circuit said that there was overwhelming evidence that the article in another of Ironburg’s patents was prior art, and thus the Exhibit, which is substantively the same, is also prior art. There was testimony from one of the co-inventors, that he provided information to the author of the article for promotional purposes. The timing of the publication of the article was confirmed by the patent examiner via the Wayback Machine, which the Federal Circuit found was highly persuasive evidence of public accessibility. The Federal Circuit also noted that the inventors did not dispute the publication date of the article when it was cited against them during prosecution. Finally, the Federal Circuit found that the fact that Examiner found the reference after a “brief” search was highly probative evidence of public accessibility.

The Federal Circuit reversed and remanded for consideration tha tthe Exhibit was in fact prior art.

Valve also appealed the Board’s determination that Valve failed to prove that claim 29 of the ‘688 patent and claims 1-15 and 18-24 of the ‘229 patent were unpatentable. The claims required an elongate member that “is inherently resilient and flexible.” The reference showed a member that was resiliently biased with a spring. The Board found that the spring was not part of the elongate member, and the Federal Circuit found no error in this determination.

Ironburg appealed the determination that claims of the ‘688 patent were anticipated, arguing two limitations: (1) “a first surface disposed proximate an outer surface of the case,” and (2) “a second surface opposing the first surface.”

Under the ordinary meaning of these terms, the Federal Circuit found a “first surface disposed proximate an outer surface of the case” requires that the first surface of the additional control and the outer surface of the case be arranged close or near to each other, but does not re-quire them to be facing each other, rejecting Ironburg’s construction. As to the “opposing” limitation, the Federal Circuit agreed with the Board’s construction that the “opposing” limitation is met by two surfaces that face each other or are opposite each other, and that this did not require that the surface be flat as contended by Ironburg.

Posted in IPR

Broad, Functional Claims Made it Hard to Presume Nexus for Commerical Succes

In Teva Pharmaceuticals International GmbH v. Eli Lilly and Company, [2020-1747, 2020-1748, 2020-1750] (August 16, 2021), the Federal Circuit affirmed that Board’s determination that the claims of U.S. Patent Nos. 9,340,614, 9,266,951, and 9,890,210 are unpatentable because they would have been obvious over the cited prior art. The patents are directed to humanized antagonist antibodies that target calcitonin gene-related peptide (“CGRP”), that has been shown to be a potent vasodilator in the periphery.

Teva raised three challenges to the Board’s decision. First, Teva contended that the Board erred as a matter of law in its motivation to combine analysis by deviating from the motivation asserted by Lilly in its petitions for inter partes review. Second, Teva contended that even under the motivation to combine that the Board did analyze, substantial evidence does not support the Board’s factual findings. And third, Teva contended that the Board erred in its analysis of secondary considerations of nonobviousness.

Lilly asserted that a skilled artisan would have been motivated to combine the teachings of the references to make a humanized anti-CGRP monoclonal antibody for therapeutic use in humans, but the Board instead considered whether a skilled artisan would have been motivated to make the antibody merely to study or use it. Teva insists that by not requiring Lilly to support its therapeutic motivation, the Board incorrectly discounted important safety and efficacy concerns that would have been demotivating factors—i.e., reasons why a skilled artisan would have been motivated not to make a humanized anti-CGRP monoclonal antibody. The Federal Circuit held that the Board did apply the motiviation that Lilly asserted. The Federal Circuit said that “common sense and scientific reality dictate that scientists do not “study or use” humanized anti-bodies with an end goal of treating diseases in test tubes or in rats. At bottom, the prior art supports a motivation to humanize antibodies with the goal of treating human disease.”

Teva also argued that the substantial evidence did not support the Board’s factual findings. The Federal Circuit agreed with Lilly that substantial evidence supports a motivation to make a humanized anti-CGRP antibody to study its therapeutic potential for use in treatment of human disease, noting that Lilly identified evidence that supports the Board’s reasonable readings of each reference. Under the deferential standard of review, the Federal Circuit could not replace the Board’s reasonable interpretation of references with Teva’s interpretation.

Finally, with respect to secondary considerations, the Board found that the commercial products and the license lacked sufficient nexus to the challenged claims. Teva argued that the Board made two legal errors: first, in finding no presumption of nexus between the claims and the secondary considerations based on the commercial products; and second, with regard to the asserted licenses, Teva argued that the Board erred by focusing on the licensee’s products rather than the scope of the license.

The Federal Circuit found that the Board erred in its articulation of the standard for presuming nexus, but nonetheless conducting the necessary factual analysis of the unclaimed features of the commercial products, and reached the correct conclusion that no presumption of nexus applied. The Federal Circuit noted that the claims at issue used functional language, and that a claim to “anything that works” hardly has a nexus to any particular product. Because the claims in this case have a broad scope due to their lack of structural limitations, the unclaimed features in the commercial products cited here are of particular importance to the coextensiveness analysis. The Federal Circuit thus found that the Board’s factual findings regarding unclaimed features are thus supported by substantial evidence, and Teva has not shown otherwise.

Teva also argued that the Board erred by requiring a direct nexus between the challenged claims and the licensee’s products. The Federal Circuit found that the Board’s conclusion that the license lacked nexus to the challenged claims was supported by substantial evidence. The significance of licensing a patent as a secondary consideration in enhancing the nonobviousness of an invention is that an independent party with an interest in being free of the patent has chosen to respect it and pay a royalty under it rather than litigate and invalidate it. Such action tends to support its validity. The Federal Circuit said that given that 188 patents were licensed, the nexus between the license and the validity of any particular claim is rather tenuous to say the least. The Federal Circuit noted that Teva failed to show anything more than the existence of the license. Teva did not present direct evidence that the licensee’s motivation for entering into the license was related to the validity or enforceability of the patents at issue.

The the Step that Can Be Performed in The Human Mind is a Telltale Sign of Abstraction

In Personaweb Technologies LLC v. Google LLC, [2020-1543, 2020-1553, 2020-1554] (August 12, 2021), the Federal Circuit affirmed the district court’s judgment on the pleadings that various
claims of U.S. Patent Nos. 7,802,310, 6,415,280, and 7,949,662 were ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101. The patents relate to data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.

The Federal Circuit began its review at Step 1 of the Alice inquiry, deciding whether the claim is directed to a patent-ineligible concept. The Court evaluated the focus of the claimed advance over the prior art’ to determine if the claim’s “character as a whole” is directed to excluded
subject matter. The Federal Circuit agreed with the district court that the patents are directed to a three-step process: (1) using a content-based identifier generated from a hash or message digest function, (2) comparing that content-based identifier against another content-based identifier or a request for data; and (3) providing access to, denying access to, or deleting data. The Federal Circuit concluded that the claims are directed to the use of an algorithm-generated contentbased identifier to perform the claimed data-management functions (including controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent).

The Federal Circuit said that these functions are mental processes that “can be performed
in the human mind” or “using a pencil and paper” — a telltale sign of abstraction. The fact that the process are performed in a computer environment didn’t transfigure the idea out of the
realm of abstraction.

The Federal Circuit recognized that the step-one inquiry looks to the claims character
as a whole rather than evaluating each claim limitation in a vacuum, but said the claims are clearly focused on the combination of those abstract-idea processes, and stringing together the claimed steps by adding one abstract idea to another amounts merely to an abstract
idea. The Federal Circuit concluded that “[t]he claims as a whole, then, are directed to a medley of mental processes that, taken together, amount only to a multistep mental process.” Ultimately, the focus of the claims is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” In other words, the claims focus on mere automation of manual processes using generic computers.

At Step Two the Federal Circuit undertook a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Personalweb argued that the claims contain an inventive concept because they “recite an application that makes inventive use of cryptographic hashes—a use that was neither conventional nor routine prior to the patents.” However, the Federal Circuit said this was not something “more,” let alone anything “significantly more,” than the abstract idea itself. Ultimately, the Federal Circuit said “The district court had it right: there is ‘nothing “inventive” about any claim details, individually or in combination, that are not themselves abstract ideas.’”

The Federal Circuit affirmed the judgment of invalidity

Posted in 101

Silence does not Support Claim Construction Excluding Prior Art

In Seabed Geosolutions (US) Inc., v. Magseis FF LLC, [2020-1237] (August 11, 2021), the Federal Circuit vacated and remanded the PTAB’s determination that U.S. Reissue Patent No. RE45,268 was not anticipated or obvious, becase if a error in the PTAB’s claim construction.

The ’268 patent is directed to seismometers for use in seismic exploration, and all of its claims required a “geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. The Board concluded that the prior art did not disclose this geophone requirement, and thus the claims had not been shown to be anticipated or obvious.

The Board construed “geophone internally fixed within [the] housing” to require a non-gimbaled geophone. It found, based entirely on extrinsic evidence, that “fixed” had
a special meaning in the relevant art at the time of the invention: “not gimbaled.” The Federal Circuit noted that

If the meaning of a claim term is clear from the intrinsic evidence, there is no reason
to resort to extrinsic evidence. The Federal Circuit concluded, based upon the intrinsic evidence, that the word fixed here carries its ordinary meaning, i.e., attached or fastened:

The adverb internally and the preposition within straddling the word fixed indicate that it specifies the geophone’s relationship with the housing, not the type of geophone. The plain
language therefore supports interpreting “internally fixed within” to mean mounted or fastened inside.

The Federal Circuit found the specification was consistent with its construction:

The specification describes mounting the geophone inside the housing as a key feature of the invention. By contrast, it says nothing about the geophone being gimbaled or non-gimbaled. Given that context, a skilled artisan would understand the claim term “geophone internally
fixed within [the] housing” merely specifies where the geophone is mounted and has nothing to do with gimbaling.

The Federal Circuit noted that “[t]he specification never mentions gimbaled or non-gimbaled
geophones, nor does it provide a reason to exclude gimbals.” The Court concluded “[t]hat silence does not support reading the claims to exclude gimbaled geophones.” The patentee conceded that gimballed geophones were known, and that the specification mentioned gimballed claims. The Federal Circuit reasoned that “[i]If the patentee had wanted to distinguish between gimbaled and non-gimbaled geophones, it knew how to do so and could have indicated as much in the specification. But it did not.”

The Federal Circuit said that the intrinsic evidence as a whole supports an interpretation of “geophone internally fixed within [the] housing” that does not exclude gimbaled geophones. The Court concluded that the Board erred in reaching a narrower interpretation, and vacated and remanded for further proceedings consistent with this opinion.