Docket No. 2015-1853
TARANTO, BRYSON, STOLL
September 22, 2016
Brief Summary: PTAB decision affirming examiner’s obviousness decision after inter partes reexamination of ClassCo’s US 6,970,695 affirmed.
Summary: ClassCo appealed PTAB inter partes reexamination decision affirming the examiner’s rejection of certain claims of US 6,970,695 relating to “technology that identifies incoming telephone calls and alerts the called party to the caller’s identity” (e.g., “works alongside a user’s preexisting ‘Call Waiting’ service”) as unpatentable under 35 USC § 103. Representative ‘695 claim 2 is directed to a “caller announcement apparatus” including a “signal receiver”, “processing unit” and “an audio announcing circuit…being operative to use the identity information to produce audio using the audio transducer at the called station”. Dependent claim 2 requires the processing unit to “comprise memory storage for storing identify information associated with the caller identification data” and dependent claim 14 requires “identity information” to be “associated with plural items of caller identification data.” The Board concluded that the prior art (Fujioka, US 4,894,861) did not disclose “announcing a caller’s identity” or “the same ‘audio transducer’” which it found to be disclosed by Gulick (US 5,199,064), and that the required motivation to combine the art was present. It also concluded “ClassCo’s evidence of objective indicia of nonobviousness…merited to now weight whatsoever” (no nexus because it “related to features disclosed in the prior art” or unclaimed features). The FC opinion explains that the Board’s obviousness determination is reviewed for substantial evidence (In re Varma, FC 2016); Consol. Edison, US 1938 (“relevant evidence as a reasonable mind might accept as adequate to support a conclusion”)). ClassCo argued that under KSR a “‘combination’…’only unites old elements with no change in their respective functions’”. The FC panel disagreed, explaining “KSR teaches that ‘[a] person of ordinary skill in also a person of ordinary creativity, not an automaton” and “familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” (“puzzle element B” does not need to “perfectly fit” with “puzzle element A”; “the Board faithfully applied [KSR’s] flexible approach”). It agreed with ClassCo that the Board erred in dismissing evidenc of praise and commercial success (“when…present, though they are not always dispositive, it is error not to consider them” In re Huai-Hung, FC 2011; it is error not to consider all four Graham factors (WBIP, FC 2016)). While it agreed most of the evidence was in the prior art, “some evidence of praise related to features…were not” and disagreed with the Board that “the claims were not commensurate in scope” with the same (looking to dependent claim 5 (Intamin, FC 2007)). It also disagreed with the Board’s reasoning supporting its decision because claims 2 and 14 “are too broad, encompassing other embodiments” because “we do not require a patentee to produce objective evidence…for every potential embodiment” (Rambus, FC 2013; In re Glatt, FC 2011). Thus, “the Board should have afforded ClassCo’s evidence some weight, taking into account the degree of the connection” between the evidence and the claims (and reached similar conclusions regarding evidence of commercial success (Brown & Williams, FC 2000) and licensing (In re Cree, FC 2016)). However, it agreed with the ultimate conclusion of obviousness. ClassCo also argued the Board erroneously construed “identity information” (under the Phillips ordinary meaning standard since the patent had expired) but the FC panel disagreed. Thus, the Board decision was affirmed.