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.
In re: Google LLC, No. 2022-1012 (Fed. Cir. (PTAB) Jan. 9, 2023). Opinion by Moore, joined by Lourie and Prost.
Google owns a patent application that discloses methods for filtering the results of an internet search query such that only results appropriate for the user (e.g., age appropriate) are displayed. A content rating score is generated and compared to a predetermined threshold value to determine whether and which results will be presented.
The examiner rejected the pending claims as obvious based on a published patent application (Parthasarathy). Google then amended the claims to require that the predetermined threshold value is “determined based on a number of words included in the search query.” In response, the examiner rejected the claims as obvious over the combination of Parthasarathy and an issued patent (Rose). The Patent Trial and Appeal Board affirmed the examiner’s rejection, and Google appealed.
The Federal Circuit vacated and remanded. In the appeal, the PTO argued that the Board’s decision should be affirmed “because there are only two ways to predictably modify Parthasarathy’s threshold to incorporate query length as taught by Rose, and both would have been obvious to try.” But the Federal Circuit ruled that, “meritorious or not, the PTO’s arguments cannot sustain the Board’s decision below because they do not reflect the reasoning or findings the Board actually invoked.” The court continued: “In the absence of any specific findings by the Board on these matters, we may not adopt the PTO’s fact-based arguments in the first instance on appeal.” In particular, “the examiner and Board did not rely on Rose to modify Parthasarathy’s threshold at all, but instead understood Rose’s score to disclose a query-length-dependent value that could be directly substituted for Parthasarathy’s user-selected threshold.”
Because “the Board’s expressed reasoning cannot sustain its rejection,” the Federal Circuit vacated the Board’s decision and remanded.
Grace Instrument Industries, LLC v. Chandler Instruments Co., LLC, et al., No. 2021-2370 (Fed. Cir. (S.D. Tex.) Jan. 12, 2023). Opinion by Chen, joined by Cunningham and Stark.
Grace sued Chandler alleging infringement of a patent related to an improved viscometer for measuring the viscosity of drilling fluid in oil wells. During claim construction, the district court held that the term “enlarged chamber” is indefinite because “enlarged” is a term of degree that “necessarily calls for some comparison against a baseline,” but the patent did not provide “the requisite objective boundaries” for a skilled artisan.
The district court also construed “means for driving said rotor to rotate located in at least one bottom section.” The parties agreed that the term is in means-plus-function format, and the court construed the term consistent with Chandler’s proposal. In particular, the court agreed with Chandler that “located in at least one bottom section” modifies “means for driving,” not “rotor.” Based on these claim constructions, the parties stipulated that the asserted claims were invalid and/or not infringed, and the district court entered final judgment in favor of Chandler. Grace appealed.
The Federal Circuit vacated the district court’s determination that the term “enlarged chamber” is indefinite. The Federal Circuit explained that the intrinsic record informs a skilled artisan that the “patent and its claims are directed to a viscometer with an ‘enlarged chamber’ that is large enough to prevent pressurization fluid from entering the lower section of the pressure vessel.” The court thus ruled that, “in the context of this patent, ‘enlarged chamber’ does not require that chamber to be larger than some baseline object; rather it must be large enough to accomplish a particular function.” The court explained that the prosecution history supported that understanding. Also, the Federal Circuit ruled that the district court erred by relying on extrinsic evidence (dictionary definitions) that “contradict the scope and meaning of ‘enlarged chamber’ that a skilled artisan would ascertain by reading the intrinsic record.”
Turning to the means-plus-function claim phrase, the Federal Circuit determined that “means for driving said rotor to rotate” should be “read as a unit, composed of a noun modified by a prepositional phrase.” The court explained that this interpretation is supported by the claim language, other claims, and the specification. The Federal Circuit thus ruled that “‘located in at least one bottom section’ modifies the entire ‘means’ unit and not the ‘rotor.’” Based on that view, the Federal Circuit affirmed the district court’s construction.