Docket No. 2016-1858
DYK, REYNA, TARANTO
July 17, 2017
Non-precedential
Brief summary: PTAB rejection of IPR challenge affirmed based on claim construction (e.g., “[t]he separate naming of two structures in [a] claim strongly implies that the named entities are not one and the same structure”).
Summary: At the request of several parties including HTC, the PTAB instituted IPR of certain claims of CCE’s US 7,218,923 realting to preventing third-part software from sending fraudulent and other problematic messages on smartphones. Review was instituted on anticipation (UK 2,376,766 (“D’Aviera”)) and obviousness (US 2002/0065869 (“Calder”) and US 7,836,494 (“Richardson”)) grounds. The challenges were rejected and HTC appealed. The FC panel opinion explained that “[w]ith one small exception”, “HTC’s entire argument…rests on its contention that the Board erred, as a matter of claim construction, in ruling that the ‘diverting’ and ‘controlling’ steps must be performed by separate components.” It first agreed with HTC that while “the Board stated that ‘no claim terms require express construction’” the Board nonetheless construed the claims on this point (“it ‘establish[ed] the scope and boundaries of the subject matter that is patented’” (Netword, FC 2001)). And in an IPR the Board “must adopt the broadest reasonable interpretation [BRI] in light of the specification” (37 CFR § 42.100(b); Cuozzo, US 2016)). The Board’s conclusions relied on intrinsic evidence only and were therefore reviewed by the FC panel de novo (Microsoft, FC 2015). The FC panel agreed with the Board’s conclusions regarding “diverting” and “controlling” steps in claim 24 (determined not to have a different scope than claim 1) since “[t]he separate naming of two structures in [a] claim strongly implies that the named entities are not one and the same structure” (Becton Dicksinson, FC 2010, quoting Gaus, FC 2004), which is “reinforce[d] by the specification (acknowledging that “in some patents, ‘a single prior art structure that performs two functions can satisfy two functional Claim elements’” (the FC panel noting here that “ ‘can satisfy’ does not mean ‘always satisfies’” (In re Kellly, CCPA 1962 (“the claims of any given patent must be evaluated in light of the specification to determine whether their scope requires more than one structure”)). The FC panel also found that HTC waived “the issue of differentiating claim 1’s scope from claim 24’s” (Interactive Gift Express, FC 2001) and its argument that “the ‘structure’ may be a single instruction”. Regarding obviousness, the FC panel concluded HTC did “not point to any argument in its petition that certain claim requirements, including the separate-component one, would be obvious in light of prior art even if no prior art disclosed that element.” The PTAB rejection of the IPR challenge was affirmed.
Federal Circuit summaries 