Board decision finding Google did not show anticipation or obviousness affirmed

Google LLC v. Kininklijke Philips, N.V.
Docket Nos. 2018-2213 (IPR2017-00437)
Moore, Bryson, Chen
October 23, 2019
Non-precedential

Brief Summary: Board IPR decision that Google did not show the challenged claims to be anticipated or obvious affirmed.

Summary: Google appealed Board IPR final written decision (FWD) finding that Google failed to show the challenged claims of US 6,772,114 relating to a transmission system including a “high-pass filter” for transmitting audio signals was not anticipated by “Tucker” (WO 98/52187) or obvious “over Tucker in view of well-known art”. The Board construed the “high-pass filter” to be a filter that “transmits frequencies above a given cutoff frequency and substantially attenuates all others”, which Google argued was disclosed by “Tucker’s low-pass filter and reflection steps together”. The Board and the FC panel disagreed with Google, finding instead “that Tucker’s low-pass filter transmits frequencies below a given cutoff frequency” and its “reflection step merely takes the low-frequency band output of its low-pass filter and moves that content to the high-frequency band” without “transmit[ting] the input signal’s high-frequency content” (e.g., “Google’s expert admitted as much.”) The FC panel was also unpersuaded by Google’s arguments that Tucker’s steps are anticipatory “because they achieve the same result as a high-pass filter” because “[t]he similarity of the resulting information…does not covert Tucker’s” disclosure “into a high-pass filter” (e.g., “the inclusion of a low-pass filter does not alter the functionality of the high-pass filter”). The Board’s conclusion of no anticipation was therefore found to be supported by substantial evidence (Synopsys, FC 2016). Google also argued the Board “abused its discretion in failing to consider Google’s” obviousness argument. The FC panel disagreed since “this argument was raised for the first time in Google’s Reply briefing, and thus patent owner Koninklijke did not have a fair and meaningful opportunity to respond”, and found the Board did not abuse its discretion (Synopsys, FC 2016; Int. Biosys., FC 2016; “Google concedes it never raised this theory…in its petition for” IPR.) Thus, the Board’s decision was affirmed.