The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending May 30, 2014. Rich Seeger and Wes Achey prepared this edition.
Patentable Invention: Obviousness: Scope and Content of Prior Art
Patent Office Procedures: Prosecution Before the Office: Examination of Applications
K/S HIMPP v. Hear-Wear Technologies, LLC, No. 13-1549 (Fed. Cir. (P.T.A.B.) May 27, 2014). Opinion by Lourie, joined by Wallach. Dissenting opinion by Dyk.
The Federal Circuit affirmed the Board’s decision not to adopt a third party’s conclusory assertion in an inter partes reexamination that a structural limitation was obvious based on general knowledge in the art without citing evidence on the record in support of its contention.
K/S HIMPP (“HIMPP”) filed for inter partes reexamination of U.S. Patent No. 7,016,512 owned by Hear-Wear Technologies, LLC. (“Hear-Wear”). During the reexamination proceeding, HIMPP asserted that dependent Claims 3 and 9 were obvious because the claimed subject matter was known at the time of the alleged invention as concluded by the examiner during the original prosecution. The examiner in the inter partes reexamination declined to adopt HIMPP’s proposed obviousness finding because HIMPP submitted no supporting evidence. On appeal, the Board affirmed and explained that although HIMPP asserted that the subject matter of Claims 3 and 9 was well known, HIMPP did not direct the Board to any portion of the record for underlying factual support. Specifically, nothing in the record before the Board showed that the “plurality of prongs” structure set forth in Claims 3 and 9 was disclosed, that the examiner in the original prosecution took official notice of the feature as being well known, or that Hear-Wear ever admitted that the feature was known in the prior art.
On appeal to the Federal Circuit, HIMPP argued that the Patent Office erred by requiring record evidence to support a finding that the “plurality of prongs” feature was known in the prior art because the Patent Office’s requirement contravened the Supreme Court’s admonishments in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (“KSR”) against the overemphasis on the importance of published articles and the content of issued patents. HIMPP argued that the Patent Office could utilize its expert knowledge to determine whether the “plurality of prongs” feature was known in the prior art.
Affirming the Board’s decision, the Federal Circuit held that a conclusory statement from either HIMPP or the Board assessing basic knowledge and common sense as a replacement for documentary evidence does not provide substantial evidentiary support to support an obviousness finding. The Federal Circuit cautioned that, although the Board has subject matter expertise, the Board cannot accept general conclusions about what is basic knowledge or common sense as a replacement for documentary evidence in a patentability determination because doing so would permit the examining process to deviate from the well-established requirement that rejections be supported by evidence and also render the process of appellate review for substantial evidence on the record a meaningless exercise. The Federal Circuit also ruled that the Board’s requirement was not inconsistent with KSR because the present case involved a lack of evidence of a specific claim limitation, whereas KSR dealt with the combinability of references when the claim limitations were in evidence.
In dissent, Judge Dyk stated that the majority’s holding was inconsistent with KSR’s flexible approach to obviousness and would preclude examiners from using their knowledge and common sense except in narrow circumstances involving peripheral issues. Judge Dyk also opined that the majority’s concerns about potential unfairness in relying on the examiner’s specialized knowledge were not well taken in view of recognized procedural safeguards, namely, that examiners must state on the record that they are relying on a fact well known in the art and provide their rationale for doing so, and that applicants have the opportunity to challenge the examiner’s determination that particular features were common knowledge in the art.
Patentable Invention: Anticipation: Prior Publication
Litigation Practice and Procedure: Summary Judgment: Sufficiency of Evidence
Suffolk Technologies, LLC v. AOL Inc., et al., No. 13-1392 (Fed. Cir. (E.D. Va.) May 27, 2014). Opinion by Prost, joined by Rader and Chen.
The Federal Circuit affirmed a district court’s claim construction and subsequent grant of summary judgment, holding that summary judgment was appropriate on the record because a UseNet newsgroup post was a printed publication and thus prior art, there were no triable issues concerning the prior art’s accuracy and reliability, and testimony from plaintiff’s validity expert was properly excluded.
Suffolk Technologies, LLC (“Suffolk”) sued Google Inc. (“Google”) for alleged infringement of U.S. Patent No. 6,081,835. After construing the claims and excluding testimony from Suffolk’s validity expert, the district court granted Google’s motion for summary judgment, holding that Claims 1, 7, and 9 were anticipated by a 1995 UseNet newsgroup post (the “Post”). Suffolk appealed following a grant of summary judgment in Google’s favor.
On appeal, Suffolk first argued that the district court erred in its construction of the term “generating said supplied file,” taking the position that the generated file could depend on the content of a requesting webpage, and not just a received identification signal as construed by the district court. Rejecting Suffolk’s argument, the Federal Circuit held that the only variable actually listed in the claims that the generated file could depend on was a received identification signal and not the content of a requesting web page. The Federal Circuit also ruled that the district court’s construction was supported by the specification and did not exclude the preferred embodiment when the entire specification was read in context.
Suffolk also alleged that the district court’s grant of summary judgment was improper and founded on several erroneous rulings, including the district court’s holding that the Post was a printed publication and thus prior art. Suffolk argued that the Post was not a printed publication because the Post was too difficult to locate since it was non-indexed and non-searchable and, although newsgroup posts had titles, they could only be sorted by date. Holding that the Post was sufficiently publically accessible to be considered a printed publication, the Federal Circuit explained that UseNet newsgroups were organized in a hierarchical manner such that a person could easily locate a list of posts in the newsgroup. Further, the Federal Circuit ruled that a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication. The Federal Circuit held that the Post was sufficiently disseminated to those of skill in the art because the Post elicited at least six responses over the week following its publication discussing the efficacy of its proposed solution and many more people may have viewed the Post without posting anything themselves. The Federal Circuit also considered and rejected Suffolk’s contention that the Post was not a printed publication because the newsgroup was directed at beginners rather than skilled artisans.
Finally, the Federal Circuit addressed a slew of other issues raised by Suffolk on appeal, including the district court’s finding that there were no triable issues concerning the Post’s accuracy and reliability and the district court’s exclusion of Suffolk’s validity expert’s testimony. Regarding triable issues, the Federal Circuit ruled that Suffolk presented no affirmative evidence challenging the Post’s material facts where Suffolk had only shown that minor and inconsequential alterations were made to the Post. As for excluding testimony from Suffolk’s expert, the Federal Circuit held that the district court did not abuse its discretion by excluding expert testimony when the validity expert introduced new opinions through a supplemental report after an intervening claim construction that did not vary greatly from the parties’ proposals.
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