{"id":1842,"date":"2017-12-05T20:11:14","date_gmt":"2017-12-06T01:11:14","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1842"},"modified":"2017-12-08T22:49:05","modified_gmt":"2017-12-09T03:49:05","slug":"obviousness-v-anticipation-that-which-doesnt-disclose-still-could-teach","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1842","title":{"rendered":"Obviousness v. Anticipation: That Which Doesn’t Disclose Still Could Teach"},"content":{"rendered":"

In CRFD Research, Inc., v. Matal<\/em><\/a>, [2016-2198] (December 5, 2017), the Federal Circuit affirmed two Final Written Decisions invaliding claims of U.S.\u00a0Patent No. 7,191,233 on user-directed transfer of an on-going software-based\u00a0session from one device to another device, and reversed one Final Written Decision that the claims were not obvious.<\/p>\n

What is interesting about this case beyond the fact that a patent owner should have to simultaneously defend three IPR attacks on its patent, the loss of any one of which would be fatal, is the Federal Circuit’s reversal of the Board’s determination that Hulu had not shown the challenged claims to have been obvious.\u00a0 The Federal Circuit said “the Board erred, both in how it performed its\u00a0obviousness analysis and in the merits of its determination\u00a0of nonobviousness.”<\/p>\n

The Board concluded that the Bates reference did not anticipate certain challenged claims because it did not meet the claim requirement of “transmission of session history after\u00a0discontinuation.”\u00a0 Hulu complained, and the Federal Circuit agreed that the Board improperly
\nrelied on its finding that Bates did not anticipate\u00a0various asserted claims to support its\u00a0finding of nonobviousness without considering whether\u00a0Bates suggests<\/strong><\/em> transmission of session history after
\ndiscontinuation.\u00a0 The Federal Circuit said that “Even if a reference\u2019s
\nteachings are insufficient to find anticipation, that\u00a0same reference\u2019s teachings may be used to find obviousness.”<\/p>\n

Hulu further argued that it would have been obvious, based on Bates, to
\ntransmit session history after session discontinuation.\u00a0 Hulu argued the obviousness of the claims based upon Bates, but the Board declined to institute on grounds of redundancy.\u00a0 The Federal Circuit noted that\u00a0Hulu expressly incorporated this argument as\u00a0part of other grounds of unpatentability on which the\u00a0Board instituted trial.\u00a0 The Federal Circuit found that:<\/p>\n

To bar Hulu from pressing an argument it raised\u00a0in a ground the Board found \u201credundant\u201d and that it\u00a0expressly incorporated into other proposed grounds of\u00a0unpatentability on which the Board instituted would not\u00a0only unfairly prejudice Hulu, but would also raise questions\u00a0about the propriety of the Board\u2019s redundancy\u00a0 decision.<\/p><\/blockquote>\n

Of course, even if it does “raise\u00a0questions\u00a0about the propriety of the Board\u2019s redundancy decision,” that should not be a concern of the Federal Circuit because according to Cuozzo<\/em> institution decisions are not reviewable.\u00a0 The Federal Circuit went on to find that Bates did in fact sufficiently teach what it did not exprsessly disclose, and reversed the Board’s determination that the claims were not shown to be obvious.<\/p>\n

This case illustrates that some of the mischief that arises from a Board’s finding of redundancy.\u00a0 The petitioner is allowed to use the arguments in the non-instituted redundant ground to support its position in the instituted grounds — at least if they are sufficiently “incorporated.”\u00a0 Another problem with redundancy is that the estoppel effect is unclear.\u00a0 The Federal Circuit has indicated that estoppel does not apply to grounds that are not instituted.\u00a0 HP Inc. v. MPHJ Tech. Inv., LLC<\/em>, 817 F.3d 1339, 1347-48 (Fed. Cir. 2016).\u00a0 If this interpretation applies to grounds denied for redundancy, it means that a patent owner could prevail in the IPR, and later face a challenge based upon the redundant ground — one found by the Board to indistinguishable from the ground on which the patent owner prevailed.<\/p>\n","protected":false},"excerpt":{"rendered":"

In CRFD Research, Inc., v. Matal, [2016-2198] (December 5, 2017), the Federal Circuit affirmed two Final Written Decisions invaliding claims of U.S.\u00a0Patent No. 7,191,233 on user-directed transfer of an on-going software-based\u00a0session from one device to another device, and reversed one … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[42,21,12],"tags":[],"class_list":["post-1842","post","type-post","status-publish","format-standard","hentry","category-anticipation","category-ipr","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1842","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1842"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1842\/revisions"}],"predecessor-version":[{"id":1843,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1842\/revisions\/1843"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1842"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1842"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1842"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}