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May 12, 2017Newsletter

This Week at the Board - May 12, 2017

Board Denies Institution of CBM Where Claims Were Broad Enough to Cover a Banking Application, But Were Not Directed to a Financial Service or Product

In CBM2017-00009, the Board denied institution of a covered business method review because the claims were not directed to a financial service or product. The Board found that the claims were directed to a web browser process that is capable of accessing data. However, “[n]othing in the claims specified that the process is to be used for internet banking or the accessing of financial data.” The fact that the claims could cover a banking application did not satisfy the requirement that “the patent have a claim that contains, however phrased, a financial activity element.” (quoting Secure Axcess, LLC v. PNC Bank Nat’l Assoc., 848 F.3d 1370 (Fed. Cir. 2017)). The Board also found that certain claims in the patent directed to internet advertising were not directed to financial activity. The specification broadly defined advertising to encompass non-financial content such as community service messages or public service announcements. Based on this, the advertising within the scope of the claims did not need to be financial in nature.    

A link to the PTAB’s Decision is provided here.

Federal Circuit Upholds Board’s Claim Construction But Reverses Obviousness Rejection of One Claim for Failure to Show Motivation

In IR Licensing, Inc. v. ZTE Corporation, the Federal Circuit sided with the Patent Trial and Appeal Board in upholding the claim construction and obviousness rejection of all but one claim. In overturning the obviousness rejection of claim 8, the court found that the record did not provide a “reason or show why the references cited or the knowledge of one of skill in the art at the time of the invention would motivate a skilled artisan” to combine the teachings of the references. The evidence only showed what a skilled artisan could have done if motivated, not what they would have been motivated to do. 

A link to the Federal Circuit Decision is provided here.

Federal Circuit Affirms Unpatentability of Hybrid Vehicle Patents

In a recent decision (Fed. Cir. 2016-1411), the Federal Circuit rejected Patent Owner/Appellant Paice LLC’s arguments that the Board had misconstrued several claim terms and had failed to factually support its determination of obviousness in two separate IPR decisions related to the same patent. More specifically, Paice attempted to persuade the Federal Circuit that the Board had failed to properly interpret two steps in a method claim directed to controlling a hybrid vehicle because the Board believed these limitations represented a ‘coordinated control strategy’ rather than being unrelated requirements. The Federal Circuit disagreed, finding that the broadest reasonable interpretation was consistent with the Board’s construction. Finally, Paice unsuccessfully challenged numerous factual finds of the Board and the Board’s rationale for obviousness. The Federal Circuit was satisfied with the Board’s articulations of what it determined to be factually-supported rationales for obviousness to ultimately affirm the Board’s final written decisions.

A link to the Federal Circuit Decision is provided here.

Federal Circuit Overturns Parts of Board Decision on Air Bag Patent

In a recent decision (Fed. Cir. 2016-1895), the Federal Circuit affirmed the Board’s determination that some claims of U.S. Patent No. 7,614,653 are unpatentable, but also reversed portions of the Board’s decision because substantial evidence did not support the Board’s conclusion of obviousness. The ‘653 Patent is directed to an air bag that responds to an occupant’s position in a vehicle and vents accordingly to avoid impact-based injuries. In its appeal to the Federal Circuit, the Patent Owner Autoliv challenged the Board’s finding that a prior art reference taught a key claim limitations, asserting that the Board’s conclusions were in contrast to the reference’s express teachings and/or implicit disclosures. The Federal Circuit agreed. Autoliv, however, was unable to persuade the Federal Circuit that certain claims were interpreted in an overly-broad manner, and that the Board had properly interpreted the claims in view of the specification. In rejecting this argument, the Federal Circuit noted that Autoliv’s more narrow interpretation was not consistent with the scope of the claims as written. Under the broader construction, the Federal Circuit found the Board’s determination of obviousness was supported by substantial evidence.

A link to the Federal Circuit Decision is provided here.

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