This is the third recent precedential case issued by the Court of Appeals for the Federal Circuit in January that disposed of patent claims as obvious. This case is noteworthy because the losing party is an alleged patent troll, and the winning party is none other than Google. The case, Arendi S.a.r.l. v. Google, LLC,[1] was handed down on February 20, 2018. Arendi also had another patent which was the subject for another Fed Circuit case dealing with obviousness and striking down using only common sense to determine single-reference obviousness.[2]
In this case, the Fed Circuit panel, composed of Judges Newman, Bryson, and Moore, ruled unanimously, affirming the PTAB’s ruling that Arendi’s patent, 6,323,853 (‘853). The facts are as follows. Tech giants Google, Motorola Mobility, and Samsung filed a request for inter partes review before the PTAB, requesting review of all 79 claims of the ‘853 patent. The PTAB instituted the IPR based on obviousness under 35 U.S.C. §103, and after trial, found all claims unpatentable. Arendi appealed.
Claim 1 was deemed representative:
- A computerized method for information handling within a document created using an application program, the document including first information provided therein, the method comprising:
providing a record retrieval program;
providing an input device configured to enter an execute command which initiates a record retrieval from an information source using the record retrieval program;
upon a single entry of the execute command by means of the input device:
analyzing the document to determine if the first information is contained therein, and
if the first information is contained in the document, searching, using the record retrieval program, the information source for second information associated with the first information; and
when the information source includes second information associated with the first information, performing at least one of,
(a) displaying the second information;
(b) inserting the second information in the document, and
(c) completing the first information in the document based on the second information.
(Emphasis added.)
The specific reason for the PTAB’s IPR institution was based on the fact that the ‘853 subject matter was obvious over Patent No. 5,923,848 (“Goodhand”), or alternatively, obvious over Goodhand in combination with another reference, Padwick, entitled “Using Microsoft Outlook 97.”[3] Arendi had argued that Goodhand does not show the limitation “single entry of the execute command” because it was added during prosecution to distinguish another reference, Patent No. 6,085,201 (“Tso”), which was cited by the examiner.[4] Tso is similar to Goodhand and is directed to claims for a system of information identification, search, retrieval, and insertion into a document. After entry of the amendment, the examiner issued a Notice of Allowance, and in the “Reasons for Allowance,” noted:
[I]n Tso, the text string to be processed is determined by the current cursor position, as specified by the user [see col. 4, line 31 to col. 5, line 67], whereas the present invention “does not require the user to select the text string to be processed since it functions automatically upon a single click of an input device” to determine if the first information is contained within the document.[5]
This “Reason for Allowance” is not some opaque tactic on the part of the examiner; it is actually required under prosecution rules that the examiner prepare this statement for every application that is allowed, to encourage a USPTO policy of clarity, quality, and transparency in prosecution.[6]
Arendi argued the examiner’s statement amounted to “prosecution disclaimer.” In practice, disclaimers are only issued by the applicant, and not the examiner.[7] The PTAB disregarded the examiner’s statement and construed the claims based only on Goodhand. The Fed Circuit panel found this erroneous.
In construing patent claims, a court should consult the patent’s prosecution history so that the court can exclude any interpretation that was disclaimed during prosecution.[8]
Nevertheless, the panel found credence in the PTAB’s alternative ruling on obviousness. Goodhand’s processing involves the same textual analysis as disclosed in Arendi’s ‘853 patent. A person of ordinary skill in the art (POSITA) would have understood Goodhand’s system as retrieving and analyzing information for input into a document. Further, Goodhand and the ‘853 patent both do not require a user’s selection of the text to be searched. Third, both Goodhand and ‘853 both do not require user intervention in order to search and retrieve the information.[9] All of these arguments go directly to the ‘853 claim 1 being obvious over Goodhand.
Because Arendi did not argue separate patentability of any of the other claims in the ‘853 patent, the Fed Circuit panel affirmed unpatentability on these claims. If “claims are not separately argued, they all stand or fall together.”[10] So, Arendi’s ‘853 patent, in its entirety has been tossed as unpatentable.
[1] ___F.3d___ (Fed. Cir. 2018), aff’g Google Inc. v. Arendi S.a.r.l., Case No. IPR2014-00452, 2015 WL 4976582 (P.T.A.B. Aug. 18, 2015).
[2] See Arendi S.a.r.l. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (“[C]ommon sense can be invoked, even potentially to supply a limitation missing from the prior art, [but] it still must be supported by evidence and a reasoned explanation”). Id. at 1363.
[3] See Arendi v. Google, supra (slip op. at 4).
[4] Id.
[5] Id. (slip op at 5).
[6] See MPEP 1302.14 (“Reasons for Allowance: if the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning.”) See also 37 C.F.R. 1.104.
[8] Arendi v. Google, supra (slip op at 7) (citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378 (Fed. Cir. 2005)).
[9] Id. (slip op. at 8-9).
[10] Id. (slip op. at 10) (citing In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983)).