Docket No. 2018-1154 (IPR2016-00783)
DYK, TARANTO, STOLL
January 10, 2019
Brief summary: Board IPR decision finding RT’s patent invalid for obviousness affirmed.
Summary: RealTime’s (RT) appealed Board final written decision (FWD) finding the challenged claims of US 6,597,812 relating to “[a] method for compressing input data”, invalid for obviousness (petitioner Hewlett-Packard relied on a combination of O’Brien and Nelson, or further including Welch). The claimed method includes a “maintaining a dictionary” step. The Board determined that the O’Brien reference “taught every step for ‘maintaining a dictionary’ identified in dependent claim 4” and therefore did not construe that limitation. The Board also found a motivation to combine O’Brien with Nelson, even though it found O’Brien described all of the claimed steps. RT argued that the Board erred in finding a motivation to combine O’Brien and Nelson and by failing to construe “maintaining a dictionary”. The FC panel concluded that “the Board was not required to make any finding regarding a motivation to combine given its reliance on O’Brien alone”, in part because RT “conceded the point HP sought to use Nelson to prove” that O’Brien disclosed a dictionary encoder.” RT argued the O’Brien argument “would have been more properly raised under § 102” but the FC panel was not convinced (Connell, FC 1983 (if a reference “anticipates under § 102”, it “also renders the claims invalid under § 103’”)). The FC panel was also unpersuaded “that the Board violated 35 U.S.C. § 312(a)(3) or other notice requirements by relying on O’Brien alone” since, e.g., “HP’s petition identified O’Brien as disclosing every element of claim 1” (SAS, FC 2016). In addition, the FC panel wrote, “even if the Board were required to make a finding regarding a motivation to combine O’Brien with Nelson, its finding in this case is supported by substantial evidence” (ZUP, FC 2018 (“A motivation to combine may be found ‘explicitly or implicitly in market forces; design incentives’ the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’”))
The FC panel also reviewed the Board’s decision not to construe the “maintaining a dictionary” limitation de novo and “underlying fact findings…for substantial evidence” (Teva, US 2015) under the “broadest reasonable interpretation” (BRI) standard, noting the importance of the Philips principles (FC 2005; (“ordinary and customary meaning…in the context of the entire patent”); the Phillips standard applies to petitions filed after Nov. 13, 2018). The FC panel found no error with the Board’s reliance on claim 4 to define the term as it “is supported by both the claim language itself and the specification”. The FC panel disagreed with RT’s “comprising”-dependent argument, writing that “[t]he word ‘comprising’ does not mean that the claim can be read to require additional elements, only that adding other elements to the device or method is not incompatible with the claim” ((Genentech, FC 1997; Phillips, FC 2005 (re: claim 5, “[T[he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”) Thus, the Board decision was affirmed.
Federal Circuit summaries 