Two cases decided recently by the Court of Appeals for the Federal Circuit discuss the oft-problematic area of 35 U.S.C. §103, or the nonobviousness requirement. This is the second case, Realtime Data, LLC v. Iancu,[1] decided January 10, 2019.
Realtime Data, LLC, owns U.S. Patent No. 6,597,812 (‘812), directed to system and method of providing lossless data compression and decompression by exploiting run-length encoding, dictionary encoding, and bit packing.
Claim 1 recites:
1. A method for compressing input data comprising a plurality of data blocks, the method comprising the steps of:
detecting if the input data comprises a run-length sequence of data blocks;
outputting an encoded run-length sequence, if a run-length sequence of data blocks is detected;
maintaining a dictionary comprising a plurality of code words, wherein each code word in the dictionary is associated with a unique data block string;
building a data block string from at least one data block in the input data that is not part of a run-length sequence;
searching for a code word in the dictionary having a unique data block string associated therewith that matches the built data block string; and
outputting the code word representing the built data block string.
Dictionary encoding is a type of lossless data compression which assigns code words to particular data strings in an index.[2] Hewlett Packard Enterprises Co. (HP) filed an inter partes review against Realtime Data for review of claims 1-4, 8, 14-17, 21, and 28 of the ‘812 patent. Specifically, HP alleged the ‘812 patent was obvious under §103(a) over U.S. Patent No. 4,929,946 (“O’Brien”) in view of a data compression textbook (“Nelson”). HP argued that O’Brien disclosed claim 1’s preamble, as well as all its elements: the first outputting step, the maintaining step, the building step, the searching step, and the second outputting step. Further, Nelson supported O’Brien in disclosing the maintaining, building, searching, and second outputting steps. HP argued that a POSITA would have recognized the term “dictionary” in O’Brien, as taught in Nelson, referred to a dictionary algorithm.
The PTAB instituted an IPR, and upon review, determined that “no construction was necessary for ‘maintaining a dictionary’ because O’Brien taught every step for that term as recited in the ‘812 patent. Realtime Data appealed.
The Fed Circuit panel was composed of Judges Dyk, Taranto, and Stoll, with Judge Stoll writing for the court.
Nonobviousness under §103(a) is a requirement for patentability, which prescribes that where an invention and the prior art, at the time of the invention, render it obvious to a person of ordinary skill in the art (i.e., POSITA), the claimed invention is obvious, and therefore, not patentable. Where a combination of references renders a reference obvious, it is necessary to determine whether a POSITA would be motivated to combine the references to arrive at the claimed invention.[3]
Judge Stoll noted:
As both the Board [PTAB] and Realtime recognized, HP also argued in the alternative that Nelson disclosed some of the elements in the claims at issue . . . . [] the Board was not required to make any finding regarding a motivation to combine given its reliance on O’Brien alone . . . . In its primary argument [] HP relied on Nelson merely to explain that O’Brien’s encoder is a type of dictionary encoder. In addition, Realtime conceded the point HP sought to use Nelson to prove: that O’Brien disclosed a dictionary encoder . . . Under these circumstances, the Board was free to come to the very conclusion it reached: that O’Brien alone disclosed every element of claims 1-4, 8, and 28.
She was more pointed in noting that:
While Realtime argues that the use of O’Brien as a single anticipatory reference would have been more properly raised under §102, it is well settled that “ disclosure that anticipates under §102 also renders the claim invalid under §103, for ‘anticipation is the epitome of obviousness.’”[4]
In other words, just because a §102 analysis requires all elements of a challenged claim to be disclosed in a single reference, and a §103 analysis normally requires the elements to be found in a combination of references, patentability does not preclude a single reference from finding a claimed invention obvious where all elements of the invention are disclosed in that single reference.
While many patent practitioners already understand this distinction, and interplay, between §102 and §103, this case underlies the difficulty of a §103 analysis – but also the simplicity of it, if the facts support an obviousness finding.
[1] ___F.3d___ (Fed. Cir. 2019) (slip op.), aff’g Hewlett-Packard Enter. Co. v. Realtime Data LLC, IPR2016-00783, 2017 WL 4349409 (P.T.A.B. Sept. 28, 2017).
[2] See, e.g., Weicheng Cai, et al., A Novel Learnable Dictionary Encoding Layer for End-to-End Language Identification, arXiv, (Apr. 2, 2018), arXiv:1804.00385.
[3] See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015).
[4] See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).