Federal Circuit Filters Out Late Argument

Google LLC v. Koninklijke Philips N.V. (Fed. Cir. 2019)

Although the PTAB granted Google’s IPR petition, it ultimately concluded that Google had failed to prove the challenged claims unpatentable. On appeal, the Federal Circuit has affirmed. U.S. Patent No. 6,772,114; IPR2017-00437.

The non-precedential decision includes an interesting bit on PTAB procedure.  The IPR was instituted on both obviousness and anticipation grounds.  During the trial briefing Google shifted obviousness theory. In particular, Google began to argue that the claimed high-pass-filter element would have been obvious. This was a change because Google had previously argued that the filter was disclosed in the cited art.  Note here that Google did not present this argument until the reply-brief stage. At that point, the Board refused to consider the argument because it was raised at such a late stage and that Philips “did not have a fair and meaningful opportunity to respond.”

On appeal, the Federal Circuit has affirmed — holding that the “Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review.”

Claim at issues relate to splitting an audio transmission into high and low frequency portions and then separately filtering them for noise. Because the human ear does not distinguish high-frequency sounds as well, a computationally cheaper filter works well.

10. A transmission system, comprising:

a transmitter including

  • a splitter for splitting up a transmission signal into a low frequency signal within a low frequency range and a high frequency signal within a high frequency range, the low frequency range being lower than the high frequency range,
  • a first coder for deriving a first coded signal within the first frequency range from the low frequency signal, and
  • a second coder for deriving a second coded signal within the high frequency range from the high frequency signal;

a receiver in electrical communication with said transmitter to receive the first coded signal and the second coded signal, said receiver including

  • a first decoder for sequentially applying a narrow-band decoder,
  • an up-sampler and
  • a low-pass filter to the first coded signal to generate a first reconstructed signal within the first frequency range, and
  • a second decoder,

wherein, based on the second coded signal, said second decoder sequentially applies

  • a high-pass filter,
  • a LPC synthesis filter and
  • an amplifier to a noise signal to generate the second reconstructed signal.

31 thoughts on “Federal Circuit Filters Out Late Argument

  1. 3

    OT, but notice that WIPO came out that the patent filings in the US are declining despite the rise in importance of technology, the growth of the economy, and the rise in foreign filings.

    This is what I have been saying for some time.

    1. 3.1

      Where are you seeing this in the data? I see that the total number of U.S. apps filed was down last year, year-over-year, but I do not see anything about breaking the total U.S. filings out by country of origin.

      1. 3.1.1

        Alright, now I see it. If one looks in Table A19 (pg. 46) of the 2018 WIPO statistics, one sees that 293,904 U.S. origin applications were filed in the USPTO in 2017, while Table A19 (pg. 33) of the 2019 statistics shows that 285,095 U.S. origin apps were filed in the USPTO in 2018. A decline of ~3% year-over-year.

        Just for $#!+s and giggles I decided to check the 2017 stats as well. There, table A19 shows that 295,327 apps were filed in 2016. Therefore, the 2018 statistics represent a ~0.5% decline year-over-year.

        In other words, that is at least two years of U.S. origin filings declining at the USPTO. I do not care enough to keep researching to see how far back this trend goes. In any event, Night Writer is definitely correct. According to the WIPO data, U.S. origin filings at the USPTO have been declining over the last few years, even as total filings keep growing.


          As I have said before, I believe the decline is much steeper as there are many patent applications that have US origin (first filings) where the invention was not made in the USA.


            The data should be studied a bit more diligently.

            Not only the point that you add here, Night Writer, but the data should be understood in light of Transnationals (merely nominally) labeled as “US” that have NO actual US constraint or alignment with US Sovereign interests.

            Patent law was, is, and ever shall be first and foremost a Sovereign-Centric law. Sure, we have treaties — for comity reasons; but it is entirely correct that an “America First” paradigm is at the foundation of our Sovereign’s patent system.

    2. 3.2


      My data shows that Night Wiper lost more br ain cells last year than any other patent maximalist except Bildo.

      Won’t somebody do something?!?!


      Meanwhile, a bunch of Re pyuk-k-k-e s k u m broke into some meeting rooms. When are they going to jail?


            Our draconian security apparatus laws only apply to little people and the other side when convenient. That’s a principle of both parties.


              That’s a principle of both parties.

              Careful there Ben – you are sounding like me, and you might end up in the same “one bucket.”


            “Yes, but Hillery didn’t use gooder email managemant practice so both sides are to blame! That’s right, commie, go back to China!” <— Bildo and his Buddies' Deep Thoughts

    3. 3.3

      The important thing to remember is America can’t afford to invest in research, being a banana republic and all. I mean how would we ever pay for that????

      Somebody should ask a super rich white dude what to do. They are always very smart and thoughtful. You know, kind of like how MIT consulted Mango Spraytan’s party buddy, Mr. Epstein.

  2. 2

    holding that the “Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review.”

    To feed on an ongoing (cross-thread) topic, the CAFC here basically states that the PTAB are not examiners.

    If the post-grant mechanism of IPR actually included examination (and if the PTAB were examiners), then the “switch” — even a late stage one — could NOT be ign0red.

    1. 2.1

      Nobody cares about this incredibly s t 00 pit fake “argument”, Bildo.

      Give it up. IPRs are here to stay and you, my friend, are a whiny baby l o s e r.

  3. 1

    That claim does seem incredibly obvious in the 21st century. Also I’m surprised that Google is the defendant.

    Looks like someone on the Google team dropped the ball, or hiccuped.

    1. 1.1

      … not even Google are “examiners” as that term must be understood in the mechanism of granting patents by the Executive Branch duty under the statutory law.

      There really is a serious foundational problem with the IPR system as provided in the AIA.

    2. 1.2

      I’m trying to remember a single instance of a claim that you didn’t think was “incredibly obvious.”

      I’m drawing a blank.

      1. 1.2.1

        Assessing obviousness becomes much simpler when you make your assessment with the benefit of hindsight. :)


          Yes, it’s very important to defend obvious claims against criticism on the web!

          You’re a very serious person, Greg. Tell the story about how the so-called PMD isn’t grounded in eligibility and First Amendment issues again. That’s always good for a laugh.


            Talking about stories of the PMD, did you hear about the plain and direct English Simple Set Theory explication that puts ALL of the PMD (including the exceptions) into patent law context?

            (Yes, that’s a rhetorical question)

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