Obvious Claim Limitation Fails to Present Different Issues of Patentability Needed to Deny Collateral Estoppel
Fumika Ogawa | February 16, 2023
Google LLC V. Hammond Development International, Inc.
Decided: December 8, 2022
Moore, Chen, and Stoll. Opinion by Moore.
Summary
On appeal from an inter partes review (IPR) decision finding some claims of a first patent not unpatentable over prior art, where counterpart claims of a related, second patent had been invalidated in another IPR decision, the CAFC found that the second IPR decision has collateral estoppel effect on certain challenged claims of the first patent where slight difference in claim language immaterial to the question of validity in the underlying decision does not present different issues of patentability.
Details
Google filed IPR petitions against Hammond’s patents including U.S. Patent Nos. 10,270,816 (“’816 patent”) and No. 9,264,483 (“’483 patent”). Hammond’s challenged patents relate to a communication system that allows a communication device to remotely execute one or more applications. The specification shared by these patents discloses that the inventive system enables a user to check a bank account balance or airline flight status by using a cell phone or other communication devices to interact with application servers over a network, which in turn access database storing applications so as to perform the desired functionalities. As seen in Figs. 1A-1D, for example, the system may be implemented using a single application server or multiple application servers.
In the ‘816 IPR, Google challenged all the claims of the patent, asserting different prior art combinations against different subsets of claims. Relevant to this case are obviousness challenges of claims 1, 14 and 18 which recite, among other things, one or both of two particular limitations referred to as first[1] and second[2] “request for processing service” limitations, as summarized below:
| Claims | “request for processing service” limitations recited | References/Basis |
| Independent claim 1 | Both first and second limitations | Gilmore, Dhara, and Dodrill |
| Independent claim 14 | First limitation | Gilmore and Creamer |
| Claim 18 dependent from claim 14 | Second limitation | Gilmore, Creamer and Dodrill |
As to claim 1, Google asserted that Gilmore and Dodrill in combination would meet the first and second limitations. As to claim 14, however, Google did not rely on Dodrill for the first limitation in particular. Instead, Google included Dodrill solely to obviate the second limitation as recited in claim 18 dependent from claim 14.
The above choice of references caused trouble to Google. The Board, finding Gilmore and Dodrill in combination as teaching both the first and second limitations in claim 1, determined that the combination of Gilmore and Creamer would not do so with the first limitation as recited in claim 14. Further, Google’s assertion of invalidity as to dependent claim 18 also failed with the contrary finding of claim 14; even though Google did rely on Dodrill for the second limitation as recited in claim 18, that reliance did not extend to the first limitation in parent claim 14. On June 4, 2021, a final written decision was issued in the ‘816 IPR, determining that claims 1–13 and 20–30 would have been obvious, but not claim 14 and its dependent claims 15–19.
On April 12, 2021, prior to the ‘816 IPR decision, the ‘483 IPR had concluded in a final written decision invalidating all the challenged claims for obviousness over prior art including Gilmore and Dodrill. Among those invalidated claims was claim 18 of the ‘483 patent, which recites both the first and second “request for processing service” limitations as in claim 18 of the ‘816 patent.
Google appealed the IPR rulings on claims 14-19 of the ‘816 patent to the CAFC. Google asserted, among other things, that collateral estoppel effect of the invalidity determination of claim 18 of the ‘483 patent renders claim 18 of the ‘816 patent also unpatentable. Finding collateral estoppel as applicable to this case, the CAFC reversed as to claims 14 and 18, and affirmed as to claims 15-17 and 19.
No forfeiture of collateral estoppel
As a preliminary matter, the CAFC found that Google’s omission of its collateral estoppel argument in the IPR petition does not cause forfeiture. Since the issuance and the finality of the ‘483 final written decision took place only after Google’s filing of the ‘816 IPR petition, the argument based on non-existent preclusive judgement could not have been included in that petition. As such, the CAFC held that Google is allowed to raise its collateral estoppel argument for the first time on appeal.
Collateral estoppel – Identicality requirement
Noting that the collateral estoppel can apply in IPR proceedings, the CAFC recited the four requirements for the preclusive effect to exist under In re Freeman:
(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.
Only the first element was disputed in the present case. Citing its precedents, the CAFC emphasized that the identicality requirement concerns identicality of “the issues of patentability” (emphasis original), rather than the claim language per se. As such, applicability of collateral estoppel is not affected by mere existence of slightly different wording used to depict a substantially identical invention so long as the differences between the patent claims “do not materially alter the question of invalidity,” which is “a legal conclusion based on underlying facts.”
Claim 18 – Invalid for collateral estoppel
The CAFC held that collateral estoppel applies so as to render the claim 18 of the ‘816 patent unpatentable because it shares identical issues of patentability with the invalidated claim 18 of the ’483 patent. Specifically, the CAFC noted that “only difference between the claims is the language describing the number of application servers”: The claim 18 of the ‘816 patent recites “a plurality of application servers” including “first one” and “second one” configured to perform certain respective functions specifically associated therewith, whereas the claim 18 of the ‘483 patent requires “one or more application servers” or “the at least one application server” to perform the requisite functionality. The CAFC found that the difference is immaterial to the question of invalidity in the collateral estoppel analysis, relying on the Board’s factual findings that the above limitation of claim 18 of the ‘816 patent would have been obvious to a skilled artisan, as supported by Google’s expert evidence, which were not challenged by Hammond on appeal.
Claim 14 – Invalid for invalidation of dependent claim 18
Having found claim 18 unpatentable, the CAFC went on to hold that independent claim 14, from which claim 18 depends, is also unpatentable. In so doing, the CAFC noted that the parties had agreed on the invalidity consequence of the parent claim based on the invalidated dependent claim[3]. In a footnote, the Opinion states that since Hammond failed to assert that Google’s collateral estoppel arguments should be limited to the references asserted in the petition, the impact of Google’s original invalidity challenge against claim 14—which does not use the same combination of references as claim 18—was not explored.
Claims 15-17 and 19 – Not unpatentable due to lack of collateral estoppel arguments
The CAFC distinguished the remaining claims from claim 18 and claim 14. Unlike claim 18, Google made no collateral estoppel arguments against claims 15-17 and 19. Rather, Google’s arguments as to these claims relied on the Board’s obviousness findings as to parallel dependent claims. Moreover, unlike claim 14, Hammad did not admit that invalidity of claim 18 is consequential to unpatentability of claims 15-17 and 19. As such, Google failed to meet its burden to provide convincing arguments for reversal on appeal.
Takeaway
This case depicts an interplay between collateral estoppel analysis on appeal and obviousness findings in underlying litigation: The identicality of the issues of patentability exists where the adjudicated and the unadjudicated claims are substantially the same with their only difference being a limitation that has been found as obvious. Parties in parallel actions involving patent claims of the same family may want to be mindful of potential impact of obviousness determination as to a claim limitation unique to one patent but not in the other in the future inquiry of collateral estoppel.
[1] Recited as “the application server is configured to transmit … a request for processing service … to the at least one communication device” in claim 1 of the ‘816 patent.
[2] Recited as “wherein the request for processing service comprises an instruction to present a user of the at least one communication device the voice representation” in claim 1 of the ‘816 patent.
[3] “[T]he patentability of claim 14 rises and falls with claim 18.” During oral argument, this principle was noted referring to Callaway Golf Co. v. Acushnet Co. (Fed. Cir., August 14, 2009).
CAFC splits the difference between VLSI and Intel on Claim Construction
Michael Caridi | December 28, 2022
VLSI Technology LLC v. Intel Corp.
Decided: November 15, 2022
CHEN, BRYSON, and HUGHES. Opinion by Bryson
Summary:
The Court affirmed the PTAB’s claim construction which had narrowed an interpretation taken from the related District Court’s construction and remanded on a separate claim construction for reading a “used for” aspect out of the claim.
Background:
Intel filed three IPR’s against VLSI’s U.S. Patent No. 7,247,552 (“the ’552 patent”). The ’552 patent is directed to the structures of an integrated circuit that reduce the potential for damage to the interconnect layers and dielectric material when the chip is attached to another electronic component. The two representative claims were claim 1 directed to a device and claim 20 directed to a method. The terms subject to construction are emphasized below.
1. An integrated circuit, comprising:
a substrate having active circuitry;
a bond pad over the substrate;
a force region at least under the bond pad characterized by being susceptible to defects due to stress applied to the bond pad;
a stack of interconnect layers, wherein each interconnect layer has a portion in the force region; and
a plurality of interlayer dielectrics separating the interconnect layers of the stack of interconnect layers and having at least one via for interconnecting two of the interconnect layers of the stack of interconnect layers;
wherein at least one interconnect layer of the stack of interconnect layers comprises a functional metal line underlying the bond pad that is not electrically connected to the bond pad and is used for wiring or interconnect to the active circuitry, the at least one interconnect layer of the stack of interconnect layers further comprising dummy metal lines in the portion that is in the force region to obtain a predetermined metal density in the portion that is in the force region.
20. A method of making an integrated circuit having a plurality of bond pads, comprising:
developing a circuit design of the integrated circuit;
developing a layout of the integrated circuit according to the circuit design, wherein the layout comprises a plurality of metal-containing interconnect layers that extend under a first bond pad of the plurality of bond pads, at least a portion of the plurality of metal-containing interconnect layers underlying the first bond pad and not electrically connected to the bond pad as a result of being used for electrical interconnection not directly connected to the bond pad;
modifying the layout by adding dummy metal lines to the plurality of metal-containing interconnect layers to achieve a metal density of at least forty percent for each of the plurality of metal-containing interconnect layers; and
forming the integrated circuit comprising the dummy metal lines.
VLSI had brought suit in the District of Delaware, charging Intel with infringing the ’552 patent. The District court construed the term “force region,” referencing the specification of the ’552 patent to mean a “region within the integrated circuit in which forces are exerted on the interconnect structure when a die attach is performed.” In the IPRs Intel proposed a construction of “force region” that was consistent with that adopted by the district court and VLSI did not oppose Intel’s proposed construction before the Board.
However, in the course of the IPR proceedings it became apparent that they disagreed as to the meaning of the term “die attach” as set forth in the District court construction.
Intel argued that the term “die attach” refers to any method of attaching the chip to another electronic component, and that the term “die attach” therefore includes attachment by a method known as wire bonding. VLSI argued that the term “die attach” refers to a method of attachment known as “flip chip” bonding, and does not include wire bonding.
The construction was paramount to claim 1 as applying its proposed restrictive definition of “die attach,” VLSI distinguished Intel’s principal prior art reference for the “force region” limitation, U.S. Patent Publication No. 2004/0150112 (“Oda”). Oda discloses attaching a chip to another component using wire bonding but not the flip chip process.
The Board sided with Intel that wire bonding is a type of die attach, and that Oda therefore disclosed a “force region”. Specifically, the Board found that the ’552 patent specification made clear in several places that the term “force region” was not limited to flip chip bonding, but could include wire bonding as well. Based on that finding, the Board concluded that Oda disclosed the “force region” element of claim 1 and was unpatentable for obviousness.
Regarding claim 20 of the ’552 patent, the parties disagreed over the construction of the limitation providing that the “metal-containing interconnect layers” are “used for electrical interconnection not directly connected to the bond pad.” VLSI argued that the phrase requires a connection to active circuitry or the capability to carry electricity. Intel argued that the claim does not require that the interconnection actually carry electricity.
The Board again sided with Intel, asserting the principally relied upon U.S. Patent No. 7,102,223 (“Kanaoka”) teaches the “used for electrical interconnection” limitation. The Board cited to figure 45 of Kanaoka for its disclosure of a die that has a series of interconnect layers, some of which are connected to each other.
VLSI appealed.
CAFC Decision:
VLSI argued that the Board erred in its treatment of the “force region” limitation in claim 1 and in construing the phrase “used for electrical interconnection” in claim 20 to encompass a metallic structure that is not connected to active circuitry.
Claim 1
Regarding the “force region” limitation, VLSI argued that the Board failed to acknowledge and give appropriate weight to the district court’s claim construction. In particular, VLSI based its argument principally on the requirement that the Board “consider” prior claim construction determinations by a district court and give such prior constructions appropriate weight.
However, the CAFC found that the Board was clearly well aware of the district court’s construction, as it was the subject of repeated and extensive discussion in the briefing and in the oral hearing before the PTAB. Further, the Court found that the Board did not reject the district court’s construction, but rather the district court’s construction concealed a fundamental disagreement between the parties as to the proper construction of “force region.”
They held that although the district court defined the term “force region” with reference to “die attach” processes, the district court did not decide— and was not asked to decide—whether the term “die attach,” as used in the patent, included wire bonding or was limited to flip chip bonding. Thus, the CAFC found that the Board addressed an argument not made to the district court, and it reached a conclusion not at odds with the conclusion reached by the district court.
In reaching their decision, the Court noted that other language in the specification of the ‘552 patent indicates that the claimed “force region” is not limited to attachment processes that use flip chip bonding. Restating precedence that claims should not be limited “to preferred embodiments or specific examples in the specification,” they emphasized that even if the term “die attach,” was used in one section of the specification to refer to flip chip bonding in particular other portions of the specification did make clear that the invention was not intended to be limited to flip chip bonding.
VLSI further contended that defining “force region” to mean a region at least directly under the bond pad is legally flawed because the definition restates a requirement that is already in the claims. The Court noted that although caselaw has emphasized redundant construction should not be used, in this case intrinsic evidence makes it clear that the “redundant” construction is correct. Specifically, they stated that the “force region” limitation is best understood as containing a definition of the force region, (“… just as would be the case if the language of the limitation had read ‘a region, referred to as a force region, at least under the bond pad . . .’ or ‘a force region, i.e., a region at least under the bond pad . . . .’), and concluded that the language “is best viewed not as redundant, but merely as clumsily drafted.”
Additionally, VLSI argued the Board was bound by the district court’s and the parties’ agreed upon claim construction, regardless of whether the construction to which the parties agree is actually the proper construction of that term, citing the Supreme Court’s decision in SAS Institute v. Iancu, 138 S. Ct. 1348 (2018), and the CAFC’s decisions in Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020), and In re Magnum Oil Tools International, Ltd., 829 F.3d 1364 (Fed. Cir. 2016).
The Court rejected VLSI’s interpretation of the precedent set by the cases. Instead, they noted that each of these cases in fact stands for the proposition that the petition defines the scope of the IPR proceeding and that the Board must base its decision on arguments that were advanced by a party and to which the opposing party was given a chance to respond. They affirmatively stated that none of the relied upon cases prohibits the Board from construing claims in accordance with its own analysis and may adopt its own claim construction of a disputed claim term. Specifically, as to the case at hand, they noted the parties’ very different understandings of the meaning of the term “die attach,” and that it was clear in the Board proceedings that there was no real agreement on the proper claim construction. They conclude that in such a situation, it was proper for the Board to adopt its own construction of a disputed claim term.
Based thereon, the Court affirmed the claim construction of “force region” and the PTAB’s application of the Oda prior art reference.
Claim 20
Regarding claim 20, VLSI argued that the Board erred in construing the phrase “used for electrical interconnection not directly connected to the bond pad,”. As noted above, the Board had held that this phrase encompasses interconnect layers that are “electrically connected to each other but not electrically connected to the bond pad” or to any other active circuitry. VLSI asserted that under its proposed construction, the Kanaoka reference does not disclose the “used for electrical interconnection” limitation of claim 20, because the metallic layers are connected by the vias only to one another; they do not carry electricity and are not electrically connected to any other components.
The Court agreed with VLSI that the Board’s construction of the phrase “used for electrical interconnection not directly connected to the bond pad” was too broad, noting that two aspects of the claim make this point clear. First, the use of the words “being used for” in the claim imply that some sort of actual use of the metal interconnect layers to carry electricity is required. Second, the recitation of “dummy metal lines” elsewhere in claim 20 implies that the claimed “metal-containing interconnect layers” are capable of carrying electricity; otherwise, there would be no distinction between the dummy metal lines and the rest of the interconnect layer. The Court further noted that the file history of the ’552 patent and amendments made during prosecution provided additional support for this conclusion.
Furthermore, they noted that the phrase “as a result of being used for electrical interconnection not directly to the bond pad” was meant to serve some purpose and should be construed to have some independent meaning, citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”). Thus, they concluded that the words “being used for” imply that the interconnect layers are at least capable of carrying electricity.
The Court therefore remanded the patentability determination of claim 20 to the Board to assess Intel‘s obviousness arguments in light of their new construction of the “used for electrical interconnection” limitation.
Take away
The PTAB is not hamstrung by prior claim construction reached in a District Court action. The Board may construe claims in accordance with its own analysis and may adopt its own claim construction of a disputed claim term.
The recitation of an operational function (“being used for”) in a claim should not be ignored in claim construction. The claim language should be taken as a whole and other aspects of the claim (“dummy metal lines”) which infer an interpretation should be considered.
No Shapeshifting Claims Through Argument in an IPR
Adele Critchley | December 15, 2022
CUPP Computing AS v. Trend Micro Inc.
Decided: November 16, 2022
Circuit Judges Dyk, Taranto and Stark. Opinion by Dyk.
Summary:
CUPP appeals three inter partes review (“IPR”) decisions of the Patent Trial and Appeal Board (“Board”), largely due to an issue of claim construction. The three patents at issue are U.S. Patents Nos. 8,631,488 (“’488 patent”), 9,106,683 (“’683 patent”), and 9,843,595 (“’595 patent”). The contested claim construction involves the limitation concerning a “security system processor,” which appears in every independent claim in each of the three patents.
The limitation in question reads in part “the mobile device having a mobile device processor different than the mobile security system processor”.
Trend Micro petitioned the Board for inter partes review of several claims in the ’488, ’683, and ’595 patents, arguing that the claims were unpatentable as obvious over two individual prior art references. CUPP responded that the security system processor limitation required that the security system processor be “remote” from the mobile device processor, and that neither of the cited references disclosed this limitation because both taught a security processor bundled within a mobile device.
The Board instituted review and, in three final written decisions, found all the challenged claims obvious over the prior art. Specifically, the Board held that the challenged claims did not require that the security system processor be remote from the mobile device processor, but merely that the mobile device has a mobile device processor different than the mobile security system processor.
That is, the fact that the security system processor is “different” than the mobile device processor does not suggest that the two processors are remote from one another. Rather, citing Webster’s Third New International Dictionary, the Board and the CAFC noted that the ordinary meaning of “different” is simply “dissimilar.” The CAFC further noted that CUPP had given no reason to apply a more specialized meaning to the word.
Furthermore, the CAFC drew support from the specification of each of the three Patents. Briefly, that in one “preferred embodiment” each of the patents described that the mobile security system may be incorporated within the mobile device. Thus, the CAFC concluded that “highly persuasive” evidence would be required to read claims as excluding a preferred embodiment of the invention. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996). Indeed, “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” Accent Pack-aging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (citation omitted).
CUPP responds that, because at least one independent claim in each of the patents requires the security system to send a signal “to” the mobile device, and “communicate with” the mobile device, the system must be remote from the mobile device processor.
The CAFC were not persuaded holding that the Board properly construed the security system processor limitation in line with the specification. The CAFC analogized that “just as a person can send an email to him- or herself, a unit of a mobile device can send a signal “to,” or “communicate with,” the device of which it is a part.”
Next, CUPP argued that, because it disclaimed a non-remote security system processor during the initial examination of one of the patents at issue, the Board’s construction is erroneous. The CAFC held that the Board properly rejected that argument, because CUPP’s disclaimer did not unmistakably renounce security system processors embedded in a mobile device. Rather, the CAFC upheld the Board’s reading of CUPP’s remarks during prosecution as a “reasonable interpretation[]” that defeats CUPP’s assertion of prosecutorial disclaimer. Avid Tech., Inc., 812 F.3d at 1045 (citation omitted); see also J.A. 20–22.
Briefly, during prosecution of the ’683 patent, the Patent Office examiner found all claims in the application obvious in light of the prior art. CUPP’s responded that if the TPM “were implemented as a stand-alone chip attached to a PC mother-board,” it would be “part of the motherboard of the mobile devices” rather than being a separate processor. J.A. 3578. The TPM would therefore not constitute “a mobile security system processor different from a mobile system processor.”
The Board found, and the CAFC upheld, that under one plausible reading, CUPP’s point was that the prior art failed to teach different processors because the TPM lacks a distinct processor. Thus, under this interpretation, if the TPM were “a stand-alone chip attached to a . . . motherboard,” it would rely on the motherboard’s processor, and not have its own different processor. For this reason, the CAFC concluded that CUPP’s comment to the examiner is consistent with it retaining claims to security system processors embedded in a mobile device with a separate processor.
Lastly, CUPP contended that the Board erred by rejecting CUPP’s disclaimer in the IPRs themselves, disavowing a security system processor embedded in a mobile device.
Here, the CAFC unambiguously stated that it was making “precedential the straightforward conclusion [they] drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). That a rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” thus “protect[ing] the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.” If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured. See also Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018).
Thus, to conclude, a disclaimer in an IPR proceeding is only binding in later proceedings, whether before the PTO or in court. The CAFC emphasized that congress created a specialized process for patentees to amend their claims in an IPR, and CUPP’s proposed rule would render that process unnecessary because the same outcome could be achieved by disclaimer. See 35 U.S.C. § 316(d).
Take-away:
- A disclaimer in an IPR proceeding is only binding in later proceedings, whether before the PTO or in court.
- A claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.
- Disclaimers made during prosecution must be clear and unmistakable to be relied upon later. Specifically: “The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (ellipsis, alterations, and citation omitted). However, a patentee will only be bound to a “disavowal [that was] both clear and unmistakable.” Id. (citation omitted). Thus, where “the alleged disavowal is ambiguous, or even amenable to multiple reasonable interpretations, we have declined to find prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016).
- Claim terms are given their ordinary meaning unless persuasive reason is provided to apply a more specialized meaning to the word.
MERE AUTOMATION OF MANUAL PROCESSES USING GENERIC COMPUTERS DOES NOT CONSTITUTE A PATENTABLE IMPROVEMENT IN COMPUTER TECHNOLOGY
Sung-Hoon Kim | December 6, 2022
International Business Machines Corporation v. Zillow Group, Inc., Zillow, Inc.
Decided: October 17, 2022
Hughes (author), Reyna, and Stoll (dissenting in parts)
Summary:
In 2019, IBM sued Zillow for infringement of several patents related to graphical display technology in the U.S. District Court for the Western District of Washington. Zillow filed a motion for judgment on the pleadings, arguing that the claims of IBM’s asserted patents were patent ineligible under § 101. The district court granted Zillow’s motion as to two IBM patents because they were directed to abstract ideas with no inventive concept. The Federal Circuit agreed with the district court decision and therefore, affirmed.
Details:
Two asserted IBM patents are U.S. Patent Nos. 9,158,789 (“the ’789 patent”) and 7,187,389 (“the ’389 patent”).
The ’789 patent
This patent describes a method for “coordinated geospatial, list-based and filter-based selection.” Here, a user draws a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map.
Claim 8 is a representative claim:
A method for coordinated geospatial and list-based mapping, the operations comprising:
presenting a map display on a display device, wherein the map display comprises elements within a viewing area of the map display, wherein the elements comprise geospatial characteristics, wherein the elements comprise selected and unselected elements;
presenting a list display on the display device, wherein the list display comprises a customizable list comprising the elements from the map display;
receiving a user input drawing a selection area in the viewing area of the map display, wherein the selection area is a user determined shape, wherein the selection area is smaller than the viewing area of the map display, wherein the viewing area comprises elements that are visible within the map display and are outside the selection area;
selecting any unselected elements within the selection area in response to the user input drawing the selection area and deselecting any selected elements outside the selection area in response to the user input drawing the selection area; and
synchronizing the map display and the list display to concurrently update the selection and deselection of the elements according to the user input, the selection and deselection occurring on both the map display and the list display.
The ’389 patent
This patent describes methods of displaying layered data on a spatially oriented display based on nonspatial display attributes (i.e., displaying objects in visually distinct layers). Here, objects in layers of interest could be emphasized while other layers could be deemphasized.
Claim 1 is a representative claim:
A method of displaying layered data, said method comprising:
selecting one or more objects to be displayed in a plurality of layers;
identifying a plurality of non-spatially distinguishable display attributes, wherein one or more of the non-spatially distinguishable display attributes corresponds to each of the layers;
matching each of the objects to one of the layers;
applying the non-spatially distinguishable display attributes corresponding to the layer for each of the matched objects;
determining a layer order for the plurality of layers, wherein the layer order determines a display emphasis corresponding to the objects from the plurality of objects in the corresponding layers; and
displaying the objects with the applied non-spatially distinguishable display attributes based upon the determination, wherein the objects in a first layer from the plurality of layers are visually distinguished from the objects in the other plurality of layers based upon the non-spatially distinguishable display attributes of the first layer.
Federal Circuit
The Federal Circuit reviewed the grant of a Rule 12 motion under the law of the regional circuit (de novo for the Ninth Circuit).
As for Alice step one analysis of the ’789 patent, the Federal Circuit held that the claims fail to recite any inventive technology for improving computers as tools, and instead directed to “an abstract idea for which computers are invoked merely as a tool.”
The Federal Circuit further held that identifying, analyzing, and presenting any data to a user is not an improvement specific to computer technology, and that mere automation of manual processes using generic computers is not a patentable improvement in computer technology.
The Federal Circuit held that this patent describes functions (presenting, receiving, selecting, synchronizing) without explaining how to accomplish these functions.
As for Alice step two analysis of the ’789 patent, the Federal Circuit noted that IBM has not made any allegations that any features of the claims is inventive. Instead, the Federal Circuit held that the limitations in this patent simply describe the abstract method without providing more.
As for Alice step one analysis of the ’389 patent, the Federal Circuit agreed with the district court that this patent is directed to the abstract idea of organizing and displaying visual information (merely organize and arrange sets of visual information into layers and present the layers on a generic display device).
The Federal Circuit held that like the ’789 patent, this patent describes various functions without explaining how to accomplish any of them.
The Federal Circuit further held that the problem this patent tries to solve is not even specific to a computing environment, and the solution that this patent provides could be accomplished using colored pencils and translucent paper.
As for Alice step two analysis of the ’389 patent, the Federal Circuit noted that dynamic re-layering or rematching could also be done by hand (slowly), and that any of the patent’s improved efficiency does not come from an improvement in the computer but from applying the claimed abstract idea to a computer display.
Therefore, the Federal Circuit held that there is no inventive concept that transforms the abstract idea of organizing and displaying visual information into a patent-eligible application of that abstract idea.
Dissent by Stoll
Judge Stoll agreed with the majority opinion. However, she did not agree with the majority opinion that claims 9 and 13 of the ’389 patent are not patent eligible.
The information handling system as described in claim 8 further comprising:
a rearranging request received from a user;
rearranging logic to rearrange the displayed layers, the rearranging logic including:
re-matching logic to re-match one or more objects to a different layer from the plurality of layers;
application logic to apply the non-spatially distinguishable display attributes corresponding to the different layer to the one or more re-matched objects; and
display logic to display the one or more rematched objects.
She noted that in combination with factual allegations in the complaint (problems with the conventional technology with larger and complex data systems) and the expert declaration, the claimed relaying and rematching steps are directed to a technical improvement in how a user interacts with a computer with the GUI.
Takeaway:
- The argument that the claimed invention improves a user’s experience while using a generic computer is not sufficient to render the claims patent eligible at Alice step one analysis.
- Identifying, analyzing, and presenting certain data to a user is not an improvement specific to computing technology itself (mere automation of manual processes using generic computers not sufficient).
- The specification should be drafted to explain how to accomplish the required functions instead of merely describing them (avoid “result-based functional language”).
Tags: 35 U.S.C. §101 > Alice > patent eligible subject matter > patent ineligible subject matter
