Monthly Archives: October 2023

The Board Should Not have to Decode a Petition to Locate Additional Arguments Beyond the One Clearly Made

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Netflix, Inc., v. Divx, LLC, [2022-1203, 2022-1204]( October 25, 2023) the Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (Board) determining Netflix did not meet its burden of proving claims 1– 5 and 12 of U.S. Patent No. 9,270,720 and claims 1–6, 8–10, 13–14, 16–17, and 19 of U.S. Patent No. 9,998,515 unpatentable under 35 U.S.C. § 103.  The ’720 and ’515 patents, assigned to DivX, relate to a method for adaptive bitrate streaming of content on a playback device, such as a mobile phone or personal computer. “Adaptive bit rate streaming involves detecting the present streaming conditions (e.g., the playback device’s network bandwidth and video decoding capacity) in real time and adjusting the quality of the streamed media accordingly.”

The Federal Circuit began by stating “While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made. A petitioner may not rely on a vague, generic, and/or meandering petition and later fault the Board for failing to understand what the petition really meant. Ultimately, it is the petitioner’s burden to present a clear argument.


The Federal Circuit rejected Netflix’s contention that the Board was “absurd” in how it understood Netflix’s argument.  The Federal Circuit said that it did not wish to discourage petitioners from making arguments in the alternative. Rather, it was emphasizing that it is the petitioner’s burden to make clear when alternative arguments are being presented and to sufficiently expound on each one. The Board should not have to work as hard as Netflix wants to identify all arguments fairly presented in a petition.

Concluding that the Board’s interpretation of Netflix’s arguments was not unreasonable, the Federal Circuit affirmed.

The Reference-Back “the” Language Takes its Meaning (Singular or Plural) from the Meaning of the Antecedent

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ABS Global, Inc., Genus Plc, v. Cytonome/ST, LLC, [2022-1761] (October 19, 2023), the Federal Circuit reversed the Board’s finding of no unpatentability of claims 1 and 8 of U.S. Patent No. 10,583,439, and vacated the decision of no unpatentability of claims 2, 6, and 9.  The ’439 patent, titled “Hydrodynamic Focusing Apparatus and Methods,” describes and claims a microfluidic device for “particle” processing.

The Board determined that, as a matter of claim construction, “the sample stream” language in claim 1 had a singular-only meaning, not allowing a plurality of streams or a split stream.  The Board also rejected ABS’s obviousness challenges, and their reasoning depended on their claim construction that claim 1 required that there be only a single stream, precluding a split one.

The Federal Circuit rejected the PTAB’s construction, explaining that the specific claim language at issue is “a fluid focusing region configured to focus the sample stream.” The use of the definite article, “the,” means that the phrase “the sample stream” refers back to earlier language as an antecedent. The antecedent language is “a sample stream” in the preceding limitation, and it is the singular-only or plural- allowing meaning of that limitation which is determinative.  The reference-back “the” language takes its meaning from the meaning of the antecedent, so if “a sample stream” has a plural-allowing meaning, so does the reference-back “the sample stream” phrase.

The Federal Circuit said two familiar aspects of claim-construction analysis strongly support the plural-allowing meaning here. First, “at least in an open-ended ‘comprising’ claim,” like claim 1 of the ’439 patent, “use of ‘a’ or ‘an’ before a noun naming an object” requires that the phrase be construed to mean “‘one or more’ unless the context sufficiently indicates otherwise.”  Second, the specification here states: “[F]or the purposes of the present disclosure, the term ‘a’ or ‘an’ entity refers to one or more of that entity. As such, the terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used interchangeably herein.”

The Federal Circuit found no sufficient basis for rejecting the plural-allowing meaning of “a sample stream” here. The prosecution history has not been shown, or even meaningfully argued, to do so. Nor does anything in the specification supply a clear and manifest disavowal of that meaning, or totally negate it.  In particular, the singular only meaning is not demanded by the specification’s embodiments, described as nothing more than examples.

Remand Because the Federal Circuit Could Not Determine whether Board’s Error was Merely Typographical and Harmless or an Error of Substance

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In Corephotonics, Ltd., v. Apple Inc., [2022-1340, 2022-1341, 2022-1455, 2022-1456] (October 16, 2023) the Federal Circuit affirmed the PTAB’s determination that two references were analogous prior art, while vacating and remanding the Board’s obviousness determination for the Board to explain why a third reference — Martin — is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.  The Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video.

Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Art that is “too remote” from the patents being attacked cannot be treated as prior art.  The Federal Circuit uses two separate tests to define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Apple’s petitions were ambiguous; they did not make clear whether Apple was stating that Golan and Martin are in the same field of endeavor as the Challenged Patents or, instead, merely that Golan and Martin are in the same field of endeavor as one another. The Board wrote, “Martin is reasonably pertinent to the problem faced by the inventor: reducing an image jump effect seen in video output images when switching between cameras that have different fields of view. Apple and Corephotonics agree that these two sentences are, as written, incorrect: Martin does not disclose switching between cameras with different fields of view; rather, it is addressed to cameras with different points of view.  The Federal Circuit was unable We are unable to discern if the Board’s error was, in fact, merely typographical and harmless or, instead, a potentially-impactful error of substance. This prevented the Federal Circuit from concluding either that there is, or is not, substantial evidence to support the Board’s conclusion that Martin is analogous art to the Challenged Patents.  Accordingly, the Federal Circuit remanded to the Board for further explanation and, if needed, further fact finding.

Collateral Estoppel Cannot be Based on a Decision that was Subsequently Reversed

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Finjan LLC, FKA Finjan, Inc., v. Sonicwall, Inc., [2022-1048] (October 13, 2023) the Federal Circuit vacated the district court’s judgment of invalidity because it was based on collateral estoppel of a decision that was subsequently reversed, and remanded for further proceedings. The Federal Circuit also affirmed the district court’s grant of summary judgment of noninfringement and the district court’s decision to exclude Finjan’s expert analysis.

Finjan asserted U.S. Patent Nos. 8,677,494, 6,154,844, 6,804,780, and 7,613,926, as well as U.S. Patent No. 8,225,408. SonicWall filed a motion seeking judgment of invalidity as to the asserted claims of the ’780, ’844, and ’494 patents due to collateral estoppel based on a decision in related proceedings finding the claims of the ’780 and ’844 patents invalid for indefiniteness.  The district court granted judgment of invalidity due to collateral estoppel and indefiniteness as to claims of the ’844, ’780, and ’494 patents. Subsequently, in the other case which provided the underlying support for the Collateral Estoppel Order, Finjan appealed the district court’s grant of summary judgment of invalidity, and on appeal the Federal Circuit vacated the district court’s grant of summary judgment of invalidity due to indefiniteness and remanded for further proceedings.

During claim construction, the parties agreed that “Downloadable” means “an executable application program, which is downloaded from a source computer and run on the destination computer.” Based on this construction, SonicWall moved for summary judgment of noninfringement of certain of the claims, arguing that its Gateway products could not infringe those claims because they never receive “Downloadables”—“executable application program[s],” which was granted.

The Federal Circuit noted that it cannot uphold applying collateral estoppel based on a vacated judgment. Accordinglv, it vacated the district court’s grant of judgment of invalidity

based on indefiniteness as to the claims of the ’844, ’780, and ’494 patents and remanded for further proceedings.

 Non-Infringement

Finjan argued that the district court erred in determining that SonicWall Gateway products do not infringe the asserted claims because they receive a sequence of packets

and not the downloadables themselves.  According to Finjan, the district court took the parties’ agreed-upon construction of “Downloadable”—“an executable application

program, which is downloaded from a source computer and run on the destination computer,” and added a requirement that the downloadable also be “re-assembled by and executable at the receiver.  SonicWall contended that the district court’s conclusion

is derived directly from the parties’ agreed-upon construction, which describes a downloadable as an “executable application program.

The Federal Circuit agreed with SonicWall that the district court’s judgment of noninfringement flows from the parties’ agreed upon construction. The Federal Circuit noted that the asserted claims use “Downloadable” in different ways.  The Federal Circuit noted that parties’ construction comes verbatim from the definition of “Downloadable” in the ’844 and ’780 patents’ specifications.

Columbus Day 2023

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While he may not live up to modern standards, Chrisopher Columbus’ voyages to the New World were, for the time, heroic and skillful, navigating the barely sixty foot Santa Maria wil a crew of 42 on a thirty-five day journey across the Atlantic Ocean. His achievements were celebrated and memorialized, including on Owen Gray’s Educational Globe. the subject of U.S. Patent No. 418455 issued December 31, 1889, which showed two of Columbus’ four voyages in dashed lines on the globe:

as the patent explained:

J.W. Meese patented (U.S. Patent No. D21533) this statue of Columbus in 1892:

There are numerous other Columbus statues, medals, plaques, spoons, and canes, celebrating his bravery.