GENERAL KNOWLEDGE OF A SKILLED ARTISAN COULD BE USED TO SUPPLY A MISSING CLAIM LIMITATION FROM THE PRIOR ART WITH EXPERT EVIDENCE IN THE OBVIOUSNESS ANALYSIS
| February 5, 2020
Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.
January 30, 2020
Summary:
The Federal Circuit affirmed the PTAB’s final decision that claims of Philips’ ‘806 patent are unpatentable as obvious. The Federal Circuit held that the PTAB did not err in relying on general knowledge to supply a missing claim limitation in the IPR if the PTAB relied on expert evidence corroborated by a cited reference. The Federal Circuit also held that the PTAB did not have discretion to institute the IPR on the grounds not advanced in the petition.
Details:
The ‘806 Patent
Philips’ ‘806 patent is directed to solving a conventional problem where the user cannot play back the digital content until after the entire file has finished downloading. Also, the ‘806 patent states that streaming requires “two-way intelligence” and “a high level of integration between client and server software,” thereby excluding third parties from developing software and applications.
The ‘806 patent offers a solution that reduces delay by allowing the media player download the next portion of a media presentation concurrently with playback of the previous portion.
Representative claim 1 of the ‘806 patent:
1. A method of, at a client device, forming a media presentation from multiple related files, including a control information file, stored on one or more server computers within a computer network, the method comprising acts of:
downloading the control information file to the client device;
the client device parsing the control information file; and based on parsing of the control information file, the client device:
identifying multiple alternative flies corresponding to a given segment of the media presentation,
determining which files of the multiple alternative files to retrieve based on system restraints;
retrieving the determined file of the multiple alternative files to begin a media presentation,
wherein if the determined file is one of a plurality of files required for the media presentation, the method further comprises acts of:
concurrent with the media presentation, retrieving a next file; and
using content of the next file to continue the media presentation.
PTAB
Google filed a petition for IPR with two grounds of unpatentability. First, claims of the ‘806 patent are anticipated by SMIL 1.0 (Synchronized Multimedia Integration Language Specification 1.0). Second, claims of the ‘806 patent would have been obvious in view of SMIL 1.0 in view of the general knowledge of the skilled artisan regarding distributed multimedia presentation systems as of the priority date. Google cited Hua (2PSM: An Efficient Framework for Searching Video Information in a Limited-Bandwidth Environment, 7 Multimedia Systems 396 (1999)) and an expert declaration to argue that pipelining was a well-known design technique, and that a skilled artisan would have been motivated to use pipelining with SMIL.
The PTAB instituted review on three grounds (including two grounds raised by Google and additional ground). In other words, the PTAB exercised its discretion and instituted an IPR on the additional ground that claims would have been obvious over SMIL 1.0 and Hua based on the arguments and evidence presented in the petition.
In the final decision, the PTAB concluded that while Google had not demonstrated that claims were anticipated, Google had demonstrated that claims would have been obvious in view of SMIL 1.0 and that they would have been obvious in view of SMIL 1.0 in view of Hua as well.
CAFC
First, the CAFC held that the PTAB erred by instituting IPR reviews based on a combination of prior art references not presented in Google’s petition. Citing 35 U.S.C. § 314(b) (“[t]he Director shall determine whether to institute an inter partes review . . . pursuant to a petition”), the CAFC held that it is the petition, not the Board’s discretion, that defines the metes and bounds of an IPR.
Second, the CAFC held that while the prior references that can be considered in IPR are limited patents and printed publications only, it does not mean that the skilled artisan’s knowledge should be ignored in the obviousness inquiry. Distinguishing this case from Arendi (where the CAFC held that the PTAB erred in relying on common sense because such reliance was based merely upon conclusory statements and unspecific expert testimony), the CAFC held that the PTAB correctly relied on expert evidence corroborated by Hua in concluding that pipelining is within the general knowledge of a skilled artisan.
Third, with regard to Philips’ arguments that the PTAB’s combination fails because the basis for the combination rests on the patentee’s own disclosure, the CAFC held that the PTAB’s reliance on the specification was proper and that it is appropriate to rely on admissions in the specification for the obviousness inquiry. The CAFC held that the PTAB supported its findings with citations to an expert declaration and the Hua reference. Therefore, the CAFC found that the PTAB’s factual findings underlying its obviousness determination are supported by substantial evidence.
Accordingly, the CAFC affirmed the PTAB’s final decision that claims of the ‘806 patent are unpatentable as obvious.
Takeaway:
- In the obviousness analysis, the general knowledge of a skilled artisan could be used to supply a missing claim limitation from the prior art with expert evidence.
- Patentee’s own disclosure and admission in the specification could be used in the obviousness inquiry. Patent drafters should be careful about what to write in the specification including background session.
- Patent owners should check whether the PTAB instituted IPR on the grounds not advanced in the IPR petition because the PTAB does not discretion to institute IPR based on grounds not advanced in the petition.
Tags: anticipation > General Knowledge > inter partes review > obviousness > Petition > Skilled Artisan
KSR does not do away with the requirement that the Patent Office provide documentary evidence to show that structural elements of a claim were known in the art
| July 22, 2014
K/S HIMPP v. Hear-Wear Technologies, LLC
May 27, 2014
Panel: Lourie, Dyk and Wallach. Opinion by Lourie. Dissent by Dyk.
Summary
The Federal Circuit found that the Board of Patent Appeals and Interferences (“Board”) and the Examiner did not err during an inter partes reexamination of U.S. Patent No. 7,016,512 in refusing to accept a conclusory assertion from the third party requester that particular structural elements of claims 3 and 9 were known prior art elements in the absence of documentary evidence on the record because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support. The Federal Circuit also found that the decision of the Board was not contrary to the holding in KSR.
Details
This is an appeal from a decision of the Board in an inter partes reexamination affirming the reexamination Examiner’s decision not to reject claims 3 and 9 of U.S. Patent No. 7,016,512 (“’512 patent”) as obvious.
Claims 3 and 9 recite:
3. The at least partially in-the-canal module for a hearing aid of claim 2 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to an audio processing module.
9. The hearing aid of claim 8 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to said behind-the-ear module.
Hear-Wear is owner of the ‘512 patent. During prosecution of the application, the Examiner rejected claims 3 and 9 as obvious by concluding that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art.” The Examiner did not take an Official Notice. Hear-Wear did not dispute the Examiner’s assertion of “known in the art”; instead, Hear-Wear amended independent claims and all claims were allowed.
The PTO granted a third party request by HIMPP for inter partes reexamination of the ‘512 patent. In its request for the inter partes reexamination, HIMPP did not submit documentary evidence to show that the features of claims 3 and 9 were “known in the art.” Relying on the statement by the Examiner during the prosecution of the application, HIMPP argued that claims 3 and 9 would have been obvious because “such detachable connections were known at the time of the alleged invention as concluded by the Examiner during prosecution” and the modification of the primary reference to include detachable connections for a signal cable “would have been no more than the predictable use of prior art elements according to their established functions.”
The reexamination Examiner did not agree with HIMPP’s position because HIMPP failed to provide documentary evidence in support of their position. The Examiner maintained the patentability of claims 3 and 9. Hear-Wear appealed to the Board. The Board also disagreed with the HIMPP position that the limitations of claims 3 and 9 were “well known” as HIMPP failed to point “to any portion of the record for underlying factual support for the assertion. The Board stated that it was ‘not persuaded that the record before [it] adequately conveys that the particular distinct connection structures set forth in those claims are disclosed.’”
“The Board also found that during the original prosecution the Examiner never took official notice with respect to the ‘plurality of prongs’ feature of claims 3 and 9, and that there was no further indication that Hear-Wear acquiesced to the alleged position of official notice so as to qualify the limitations of the claims as admitted prior art.” Accordingly, the Board affirmed the Examiner. HIMPP timely appealed to the Federal Circuit.
The issue on appeal was whether the Board’s refusal to accept a conclusory assertion from HIMPP that particular structural elements of claims 3 and 9 were known prior art elements in the absence of documentary evidence on the record was contrary to the holding in KSR.
In KSR International Co. v. Teleflex Inc., “the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.”
The majority found that KSR was distinguishable from the instant case because the instant “case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combinability of references where the claim limitations were in evidence.”
In view of the majority’s interpretation of the KSR, the majority found that “[t]he Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support.” Also, the majority found that “the Board’s holding is not inconsistent with KSR’s caution against the overemphasis on publications and patents for combining or modifying prior art that are already on the record.”
Also, the majority stated that the Board’s position is supported by the USPTO examination procedure as neither the Board nor the Examiner determined that the facts at issue met the standard justifying official notice.
“Although a patent examiner may rely on common knowledge to support a rejection, that is appropriate only in narrow circumstances. See M.P.E.P. § 2144.03 (“It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”)”
“If an examiner chooses to rely on personal knowledge to support the finding of what is known in the art, and the applicant adequately traverses that assertion, then the examiner must provide an affidavit or declaration setting forth specific factual statements and explanations to support that finding. 37 C.F.R. § 1.104(d)(2); M.P.E.P. § 2144.03(c).”
In the absence of any evidence on the record to support the HIMPP’s position that claims 3 and 9 were known prior art elements, the Federal Circuit affirmed the Board’s decision to refuse to adopt HIMPP’s obviousness contention.
In the dissent’s view the majority’s holding is inconsistent with the Supreme Court’s decision in KSR. In the dissent’s view precluding the Patent Office from relying on their own common knowledge and common sense would significantly impair the agency’s ability to review applications adequately and undermines the purpose of the post-grant agency review.
Takeaway
As a general rule, the use of an Official Notice regarding structural elements to reject claims is improper. This is because the substantial evidence requires the Patent Office to provide a record that includes sufficient documentary evidence to enable judicial review; otherwise, as noted in this case by Judge Lourie, “‘basic knowledge” or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability” would “render the process of appellate review for substantial evidence on the record a meaningless exercise.” Notwithstanding, an Official Notice based on personal knowledge regarding structural features of a claim if not adequately traversed may render the noticed facts as admitted prior art. Therefore, always adequately traverse the Official Notice and ask the Examiner to produce documentary evidence or an affidavit. Also, in the absence of an Official Notice, the rejection based on the Examiner’s assertion that certain structural features are “know in the art” should also be traversed on the premise that a prima facie case is absent as necessary structural element is not shown.
Tags: basic knowledge > common knowledge > common sense > General Knowledge > known in the art > Official Notice
