Patent Case Summaries August 18, 2021

Patent Case Summaries | Week Ending August 13, 2021

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

PersonalWeb Technologies LLC, et al. v. Google LLC, et al., Nos. 2020-1543, -1553, -1554 (Fed. Cir. (N.D. Cal.) Aug. 12, 2021). Opinion by Prost, joined by Lourie and Reyna.

The Federal Circuit affirmed the district court’s decision granting judgment on the pleadings that various claims in three PersonalWeb patents 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 identifiers are generated by a mathematical algorithm, and the identifier changes when the data item’s content changes. The patent claims are directed to “using such identifiers to perform various data-management functions.”

At step one of the two-step Mayo/Alice framework, both the district court and the Federal Circuit concluded that the claims are directed to an abstract idea. The patents are directed to a three-step process, with each step reflecting a concept the Federal Circuit has “already described as abstract.” And examining the steps together—to consider “the claims’ character as a whole”—fared no better because “stringing together the claimed steps by adding one abstract idea to another … amounts merely to the abstract idea of using a content-based identifier to perform an abstract data-management function.”

At step two, the district court and Federal Circuit both concluded that there was no inventive concept that “amounts to significantly more than a patent upon the ineligible concept itself.” The technical improvements argued by PersonalWeb “just restate the abstract ideas.”

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Seabed Geosolutions (US) Inc. v. Magseis FF LLC, No. 2020-1237 (Fed. Cir. (PTAB) Aug. 11, 2021). Opinion by Moore, joined by Linn and Chen.

In an IPR, the Patent Trial and Appeal Board issued a final written decision concluding that Seabed failed to prove that certain patent claims were anticipated or would have been obvious.

The challenged claims are directed to seismometers for use in seismic exploration, and they require “a geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. Relying on extrinsic evidence, the Board determined that “fixed” had a special meaning in the relevant art at the time of the invention: “not gimbaled.” Thus, the Board construed the claims to require a non-gimbaled geophone. Based on that construction, the Board determined that the cited prior art did not disclose the geophone limitations.

The Federal Circuit vacated the Board’s construction and remanded. The Federal Circuit concluded, based on the intrinsic evidence, “that the word fixed here carries its ordinary meaning, i.e., attached or fastened.” Considering the claim phrase as a whole, the court determined that the phrase indicates that the word fixed “specifies the geophone’s relationship with the housing, not the type of geophone.” Also, the specification never mentions gimbaled or non-gimbaled geophones, nor did it provide a reason to exclude gimbals.

Next, the Federal Circuit explained that the plain claim language is consistent with the specification, which “describes mounting the geophone inside the housing as a key feature of the invention.”

Lastly, the prosecution history also “suggests the construction of the word fixed as mounted or fastened.” “Each time the word fixed came up in prosecution, the applicant and examiner understood it in its ordinary sense, i.e., mounted or fastened.”

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