Docket Nos. 2016-2509-12 (IPR2015-00343, -00345, -00347, -00348)
DYK, SCHALL, REYNA
March 26, 2018
Brief summary: PTAB’s finding that Google did not show anticipation or obviousness vacated and remanded for reconsideration based on the FC panel’s claim construction (agreeing with Google).
Summary: After Network-1 sued Google for infringement of US 8,640,179; 8,205,237; 8,010,988; and 8,656,441, Google’s successfully petitioned for IPR of certain claims of the patents. The PTAB decided in four FWDs that Google “failed to carry its burden of demonstrating that [the] claims were not patentable” for anticipation or obviousness. Google’s appeals of these decisions were consolidated into this appeal. The FC panel first considered construction of the term “non-exhaustive search” in representative ‘179 claim 1 that the PTAB construed, under the broadest reasonable construction (“BRC”; § 42.100(b); Cuozzo, US 2016) as “a search that locates a match without comparison of all possible matches” (and on which the PTAB relied in finding no anticipation or obviousness). The FC panel explained that it reviews the PTAB’s “ultimate construction of claim language de novo” and that findings with respect to extrinsic evidence is reviewed for substantial evidence (Teva, FC 2015; Perfect Surg., FC 2016; Prolitec, FC 2015). The FC panel considered whether Google’s proposed “broader construction” of the term “is reasonable” or not, noting that under the BRC, “where two claim constructions are reasonable, the broader construction governs” (“to be found reasonable, it is not necessary that a claim be given its correct construction under the framework laid out in Phillips” (FC 2005); PPC Broadband, FC 2016). “The claim construction inquiry”, the FC panel wrote, “begins and ends in all cases with the actual words of the claim” (Homeland Housewares, FC 2017), which “‘are generally given their ordinary and customary meaning’ as understood by a person of ordinary skill at the time of the invention”, and “often” considering “‘the remainder of the specification, [and] the prosecution history,’ as well as to extrinsic evidence when appropriate” (Phillips). The FC panel concluded that neither the ‘179 specification nor the prosecution history “suggest[s] the narrower construction…urged by Network-1”. On extrinsic evidence, the FC panel also concluded Network-1’s submitted “Wikipedia entry” of “brute force search” “does not speak to the issue”, and that Network-1’s expert testimony was not before the PTAB during “when it rendered its claim construction ruling in the Institution Decision” which was maintained in its final decisions “without alteration” or elaboration. The FC panel therefor viewed “the Board as having rested its claim construction ruling on intrinsic evidence” (“with the exception of the Wikipedia entry”). FN6 notes that the FC panel was not “in any event…convinced that” the expert testimony “considered together with the Wikipedia entry…would establish what degree of exhaustion qualifies a search as ‘exhaustive’”. The FC panel therefore concluded that “Google’s claim construction is both broader than the Board’s and is reasonable”, and vacated and remanded the decision “for consideration of patentability based upon” the claim construction determined in this opinion. It is also noted that FN3 indicates Google argued in front of the DC that the term is indefinite but, the FC panel explained, “[i]n an IPR, the Board cannot declare claims indefinite.”