{"id":2356,"date":"2019-01-10T23:13:18","date_gmt":"2019-01-11T04:13:18","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2356"},"modified":"2019-01-26T23:14:24","modified_gmt":"2019-01-27T04:14:24","slug":"anticipation-is-the-epitome-of-obviousness","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2356","title":{"rendered":"Anticipation is the Epitome of Obviousness"},"content":{"rendered":"\n

In Realtime Data, LLC, v. Iancu<\/a>, [2018-1154] (January 10, 2019), the Federal Circuit affirmed the PTAB\u2019s determination that claims 1\u20134, 8, 14\u201317, 21, and 28 of U.S. Patent No. 6,597,812 on systems and methods for providing lossless data compression and decompression would have been obvious over the prior art.<\/p>\n\n\n\n

Realtime made two primary arguments on appeal: (1) that the Board erred in its determination that a person of ordinary skill in the art would have been motivated to combine the teachings of O\u2019Brien and Nelson; and (2) that the Board erred by failing to construe the \u201cmaintaining a dictionary\u201d limitation and in finding that O\u2019Brien disclosed\nthe \u201cmaintaining a dictionary\u201d limitation.<\/p>\n\n\n\n

HP\u2019s primary argument to the Board was that all of the elements of claims 1\u20134, 8, and 28 were disclosed in O\u2019Brien, a single reference, and it relied on Nelson simply to demonstrate that a person of ordinary skill in the art would have understood that the string compression disclosed in O\u2019Brien was, in fact, a type of dictionary encoder, the terminology used in the \u2019812 patent.  HP alternatively argued that that Nelson disclosed at least some of the elements in the claims at issue.  Because the Board agreed that all of the claim elements could be found in O\u2019Brient alone, the the Board was not required to make any finding regarding a motivation to combine.  Had the\nBoard relied upon HP\u2019s alternative argument, it would have been required to\ndemonstrate a sufficient motivation to combine the two references.<\/p>\n\n\n\n

While Realtime argues that the use of O\u2019Brien as a single\nanticipatory reference would have been more properly raised under \u00a7102, the\nFederal Circuit said that it is well settled that \u201ca disclosure that\nanticipates under \u00a7 102 also renders the claim invalid under \u00a7103, for\n\u2018anticipation is the epitome of obviousness.\u2019\u201d <\/p>\n\n\n\n

The Federal Circuit said that in any event, even if the Board were required to make a finding regarding a motivation to combine O\u2019Brien with Nelson, its finding in this case is supported by substantial evidence.  The Federal Circuit noted that a motivation to combine may be found \u201cexplicitly or implicitly in market forces; design incentives; the \u2018interrelated teachings of multiple patents\u2019; \u2018any need or problem known in the field of endeavor at the time of invention and addressed by the patent\u2019; and the background knowledge, creativity, and common sense of the person of ordinary skill.\u201d<\/p>\n\n\n\n

On the issue of whether the Board erred in finding that O\u2019Brien disclosed the \u201cmaintaining a dictionary\u201d limitation in independent claim 1, Realtime argued that the Board erroneously failed to construe the term \u201cmaintaining a dictionary\u201d to include the requirement that the dictionary be retained during the entirety of the data compression unless and until the number of entries in the dictionary exceeds a predetermined threshold, in which case the dictionary is reset.  While the words of a claim are generally given their ordinary and customary meaning, a claim term is read not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.  These claim construction principles are important even in an inter partes<\/em> review proceeding like this one, in which the claims were properly given the \u201cbroadest reasonable interpretation\u201d consistent with the specification.<\/p>\n\n\n\n

The Federal Circuit said that the Board\u2019s interpretation was\nsupported by both the claim language itself and the specification. While the\nterm \u201cmaintaining a dictionary\u201d is not defined, claim 4 lends meaning to the\nphrase, and directly mimics the specification. \nRealtime argued that because the claim recited \u201ccomprising\u201d the Board\nerred by limiting the definition of \u201cmaintaining a dictionary.\u201d  The Federal Circuit rejected, this argument\npointing out that the word \u201ccomprising\u201d does not mean that the claim can be\nread to require additional unstated elements, only that adding other elements\nto the device or method is not incompatible with the claim.<\/p>\n\n\n\n

The Federal Circuit concluded that the Board did not err in\nconcluding that the claims would have been obvious in view of a single\nreference, and that the Board did not err in finding that O\u2019Brien disclosed the\n\u201cmaintaining a dictionary\u201d limitation in independent claim 1, and therefore\naffirmed the Board.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Realtime Data, LLC, v. Iancu, [2018-1154] (January 10, 2019), the Federal Circuit affirmed the PTAB\u2019s determination that claims 1\u20134, 8, 14\u201317, 21, and 28 of U.S. Patent No. 6,597,812 on systems and methods for providing lossless data compression and … 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":[12],"tags":[],"class_list":["post-2356","post","type-post","status-publish","format-standard","hentry","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2356","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=2356"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2356\/revisions"}],"predecessor-version":[{"id":2358,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2356\/revisions\/2358"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2356"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2356"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2356"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}