CRFD Research v. Matal (Fed. Cir. 2017) (Iron Dome)
CRFD Research v. DISH Network (Fed. Cir. 2017)
Hulu, Netflix, and Spotify v. CRFD Research (Fed. Cir. 2017)
CRFD’s U.S. Patent No. 7,191,233 has been challenged in four separate Inter Partes Review petitions – three of which were granted and reached final decision. Interestingly, the three decisions are somewhat different from one-another.
- Iron Dome – invalid: Claim 1 anticipated; Claims 4-6 and 8-11 obvious.
- DISH – invalid: Claims 1, 4, 23, and 25 anticipated; Claims claims 4 and 25 obvious.
- Hulu – valid: Claims 1–3, 23, and 24 not anticipated; Claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and 38–41 not obvious.
The PTAB decisions here may seem inconsistent, but the differences can be explained by the fact that each IPR focused on different prior art references (or combinations thereof). Note here that the patentee loses (claims are cancelled) if a claim is found invalid in any one of multiple IPR proceedings. On appeal, the Federal Circuit consolidated the cases and has ruled against the patentee — affirming the Iron Dome and Dish cancellations, but reversing the Board’s nonobviousness decision from Hulu.
The patented invention here is designed to allow someone to start a “session” on a first device but then transferring the session to a second device (along with a session history) so that the user does not need to fully re-initiating the session.”
Claim 1. A method for redirecting an on-going, software based session comprising:
conducting a session with a first device;
specifying a second device;
discontinuing said session on said first device;
transmitting a session history of said first device from said first device to a session transfer module after said session is discontinued on said first device; and
resuming said session on said second device with said session history.
Broad Claims = Invalid: In reviewing the rejections, the Federal Circuit first noted that the key prior art (Phan) taught a somewhat different approach to transferring sessions than the patent at issue. However, anticipation does not involve a disclosure-to-disclosure comparison, but rather asks whether the prior art discloses the invention as claimed.
A patent is invalid for anticipation under 35 U.S.C. § 102 if a single prior art reference discloses all limitations of the claimed invention.
Here, the Board found several of the actual claims of the ‘233 patent were broad enough to encompass Phan’s disclosure – and thus were anticipated. (Affirming Iron Dome). Because anticipation is a question of fact, the PTAB’s determinations regarding this issue are reviewed with deference — PTAB findings will be affirmed if supported by more than an iota of evidence, as was done here. On the other hand, obviousness has been deemed “a question of law based upon subsidiary findings of fact.” As such, the ultimate question of obviousness is reviewed de novo on appeal.
= = = =
The Hulu portion of the case is really about IPR procedure. Hulu had raised several grounds for challenging the patent in its IPR petition, but the PTO selected only a few of the grounds for trial — finding the others redundant. One of the denied grounds argued obviousness, based on Bates alone, while a granted grounds involved a combination of Bates and Chan. Both of these grounds agreed that Bates alone did not teach the timing of the “transmit session” limitation. Rather the arguments were respectively that (1) the limitation was obvious based upon Bates alone; and (2) the limitation was taught by Chan and the combination was obvious. IPR was not instituted on the first ground, only the second. At trial, the PTAB found (1) Chan did not actually teach the limitation; and (2) that Hulu was barred from presented the obvious-based-upon-Bates argument since it was denied institution.
On appeal the Federal Circuit has rejected the PTAB’s approach holding that:
The Board, in its discretion, elected to not institute review on Bates alone for redundancy reasons, but instituted review on obviousness grounds that include the only reference—Bates—cited in that ground. To bar Hulu from pressing an argument it raised in a ground the Board found “redundant” and that it expressly incorporated into other proposed grounds of unpatentability on which the Board instituted would not only unfairly prejudice Hulu, but would also raise questions about the propriety of the Board’s redundancy decision.
The Federal Circuit then went on to consider this (and a few other) issues – eventually concluding that the claims were obvious and thus reversing the PTAB decision.
I’ll note here that two major failings of this portion of the Federal Circuit’s decision are (1) that the court offered no standard for its review of the PTAB’s refusal to allow certain arguments; and (2) the court appears to basically be reviewing the partial institution decision — but those are not reviewable under Cuozzo.