Docket Nos. 2016-2266 (IPR2015-00109)
LOURIE, TARANTO, CHEN
December 27, 2017
Brief summary: The FC panel affirmed the PTAB’s decision of reduction to practice before the prior art date for certain claims but reversed as to others (e.g., “prototype has not been shown to meet” the “state indicia” and “output signal” limitations).
Summary: Nintendo appealed PTAB final decision that a reference (the 1998 “Yasushi” JP patent publication) was not prior art to iLife’s US 6,864,796 claiming “[a] system within a communication device capable of evaluating movement of a body relative to an environment” because “the challenged claims…were adequately supported by the written description [WD] of its grandparent application” and “the inventors…produced a working prototype by August 1998 that fell within the scope of the challenged claims.” The ‘796 patent ultimately claims priority as a continuation-in-part (CIP) of the ‘991 application filed on September 15, 1999. The PTAB found that “the range of communications devices described in the original application provided [WD] support for the” claimed “communication device” (e.g., “any suitable cellular devices including cellular telephones, PCS handset devices”, etc.). The PTAB also relied on inventor and corroborating witness declarations” and “contemporaneous notes and records provided by the inventors” “to find that iLife established an actual reduction to practice…prior to November 1998, the Yasushi prior art date” (e.g., constructed and tested a working prototype, “prepared formal engineering drawings for further prototypes” and tested the same) (In re Steed, FC 2015 (“(1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose”)). The FC panel explained that it would set aside the PTAB’s decision if its actions were “not in accordance with the law” or “unsupported by substantial evidence” (Novartis AG, FC 2017; 5 USC § 706). And the FC reviews the PTAB’s “legal conclusions…de novo and…any underlying factual determinations for substantial evidence” (“as a reasonable mind might accept as adequate”) (Nike FC 2016; Consol. Ed., US 1938). And “[t]o satisfy the [WD] requirement the disclosure of the prior application must ‘convey with reasonable clarity…that, as of the filing date sought, [the inventor] was in possession of the invention”, “the key question” being “whether the descriptive matter is present in the original application, not whether it is also present in any added disclosure” (e.g., of the CIP) (PowerOasis, FC 2008; Vas-Cath, FC 1991). The FC panel found the Board’s WD decision to be supported by substantial evidence. Regarding the reduction to practice issue, the FC panel reviewed each of PTAB’s conclusions regarding each limitation, and agreed with its conclusion as to claim 1, 2, 10, 11 and 18 but not claims 3 and 12 (“no evidence sufficient to support” “a hand held computer, a laptop computer, [or] a wireless Internet access device”) or claims 19 and 20 (“prototype has not been shown to meet” the “state indicia” and “output signal” limitations). Accordingly, the FC panel affirmed the PTAB’s decision of reduction to practice before the prior art date for certain claims but reversed as to others.