Docket No. 2016-2684, 2017-1922
MOORE, O’MALLEY, WALLACH (C/D)
January 25, 2018
Brief summary: DC finding of eligibility under § 101 and it denial of JMOL for anticipation and infringement (based on alleged incorrect claim construction) affirmed.
Summary: LG appealed ED TX DC denial of SJ that certain claims of Core Wireless’ US 8,713,476 and 8,434,0202 (“specifications are effectively identical”) relating to improved display interfaces (e.g., for mobile phones) are ineligible under § 101, as well as the DC’s denial of JMOL that US 6,415,164 anticipates the asserted claims and that those are not infringed. The FC panel explained that the § 101 issue was an issue of law reviewed de novo (Intell Ventures I, FC 2017), while “[a]nticipation and infringement are both questions of fact reviewed fro substantial evidence when tried to a jury” (as here; Wi-Lan, FC 2016). Regarding § 101, the FC panel reviewed the Alice test (step one: “patent eligible concept”? step two: “inventive concept’ sufficient to ‘transform the claimed abstract idea into a patent-eligible application”? (Mayo, US 2012; Visual Memory, FC 2017; Thales, FC 2017)), and explained that it has previously held claims providing a “specific improvement in the capabilities of computing devices” are eligible while claims in which “computers are invoked merely as a tool” are not (Enfish, FC 2016; Finjan, FC 2018 (“new kind of file that enables a computer system to do things it could not do before” eligible)). The FC panel concluded “[t]he asserted claims in this case are directed to an improved user interface for computing ideas, not to the abstract idea of an index” (“a specific improvement over prior systes, resulting in an improved user interface”) (and therefore did not proceed to the second Alice step). The FC panel also explained that granting JMOL “for the party carrying the burden of proof” (the alleged infringer as a patent is presumed valid (§ 282; Microsoft, US 2011; Titan Tire, FC 2009)) of anticipation (as in this case) is “generally reserved for extreme cases” (“so one-sided as to be of over-whelming effect”). The FC panel therefore agreed with the DC’s decision to deny JMOL on anticipation. Regarding infringement, LG argued “the correct construction of ‘unlaunched state’ is ‘not running,’ rather than ‘not displayed’ as the [DC] held, and the accused devices do not infringe under its proposed construction”. The FC panel acknowledged this to be “a close case for which the intrinsic evidence could plausibly be read to support either party” but found no error with the DC’s construction since, e.g., the passage of the specification LG cited “does not contradict the [DC’s] construction” and ‘[t]he patentee did not clearly and unmistakably disclaim or limit the construction of the ‘un-launched state’ during prosecution” (e.g., “If the patentee intended unlaunched to mean ‘not running,’ it new how to express as much…The patentee did not clearly and unmistakably disclaim or limit the construction of ‘un-launched state’ during prosecution….When the alleged disclaimer is ambiguous or amenable to multiple reasonable interpretations, we decline to find prosecution disclaimer.” (Mass. Inst., FC 2016)) The FC panel also concluded “substantial evidence supports the jury’s verdict of infringement” (including expert testimony) since the “dispute boils down to whether the status bar is part of the accused ‘home screen’”, “a fact question that we presume the jury resolved in favor of Core Wireless”. Thus, the DC decision was affirmed. Judge Wallach dissented regarding claim construction.