By Dennis Crouch
Arendi v. Google (Fed. Cir. 2018)
In its petition for inter partes review (IPR), Google argued the obviousness of all 79 claims of Arendi’s of U.S. Patent No. 6,323,853. The PTAB granted the petition (acting on behalf of the PTO Director) and issued a final decision cancelling the claims. In its decision, the PTAB followed a common district court practice of issuing alternative reasons for its judgment – holding that (1) its preferred broad claim construction rendered the claims invalid; but (2) the claims would still be invalid under a more narrow construction. On appeal, the Federal Circuit disagreed with the broad construction, but agreed with the alternative reasoning – thus affirming the obviousness holding.
One Click Substitutes: Arendi’s patent claims a process for substituting information (such as a name or address) in a document based upon a single user command. Basically, following user activation, the program will look for a first bit of information within the document – such as a name in a <NAME> field. A database is then used to lookup related information to fill other fields in the document, such as an <ADDRESS> field. The program might also update the original <NAME> field fit the formal version found in the db.
Prosecution Disclaimer: During prosecution, the claims were particularly amended to require operation “upon a single entry of the execute command by means of the input device.” In order to over come prior art, the patentee distinguished the TSO prior art reference based upon the fact that TSO required a user to select a text string while Arendi’s amended claims did “not require the user to select a text string [but] functions automatically upon a single click.” The examiner included that distinguishing point in the reasons for allowance.
During the IPR, however, the PTAB found that (1) the claims to not expressly exclude typing-in a text string; and (2) the statements by the patentee during prosecution were not sufficient to rise to a prosecution disclaimer that would narrow the claim scope; and (3) the examiner’s reasons for allowance are essentially immaterial because prosecution disclaimer is based upon applicant statements, not examiner statements.
On appeal, the Federal Circuit found “clear and unmistakable” surrender of subject matter – the requirement for prosecution disclaimer under cases such as Middleton, Inc. v. 3M, 311 F.3d 1384 (Fed. Cir. 2002); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003), Innova/Pure Water, Inc. v. Safari Water Filtration System, Inc., 381 F.3d 1111 (Fed. Cir. 2004); and Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005).
Not so easy in My View: I do not see this case as quite so easy as the Federal Circuit made-out. In particular, the patent applicant never stated or argued (on record) that its invention excluded the manual selection of text, but rather stated that “the present invention does not require the user to select a text.” Ordinarily, an argument that a claim does not “require” a particular action is seen as a far-cry and treated quite differently from a statement that a claim “does not cover” or “disclaims coverage over” that action. The “comprising” transition language used by the claim further builds upon this argument that no disclaimer took place.
In any event, the holding is that the scope was disclaimed and thus the first portion of the PTAB decision was rejected.
As mentioned above, the PTAB offered its decision in the alternative – and the Federal Circuit agreed with the second reason. The claims are obvious under the second analysis since a prior art reference (Goodhand) performs “essentially the same textual analysis” and does not require the user text selection.
In sum, the PTAB found that Goodhand shows all of claim 1’s limitations, when giving effect to the prosecution disclaimer and limiting the scope of the “single entry” command. This finding is supported by substantial evidence. On the PTAB’s findings, the alternative conclusion of unpatentability on the ground of obviousness in view of Goodhand is sustained.
Claim Cancellation Affirmed