by Dennis Crouch
In re Google, 22-1611 (Fed. Cir. 2022) (non-precedential order)
In Arthrex, the Supreme Court rewrote the Patent Act, charging the USPTO Director with authority to review final written decisions stemming from inter partes and post grant review proceedings (IPR/PGR). One open question is the Director’s role in mill run patent applications that have been rejected by the Board. There are two particular actions that Directors have taken in recent decades:
- Create a stacked rehearing panel that overturns the prior PTAB panel decision. This approach is typically taken when the Director wants to make a precedential statement on some matter of law or procedure.
- If the party appeals, admit to the Federal Circuit that the PTAB erred and seek remand to reconsider the PTAB panel decision. This second path is the approach taken here for Google.
Google’s pending Application No 15/487,516 claims video processing method using adaptive composite intra-prediction. In its decision, the Board construed three key claim limitations as “conditional limitations.” The Board generally gives no patentable weight to conditional method steps in the anticipation/obviousness analysis. See Ex Parte Schulhauser, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential). Google filed its notice of appeal to the Federal Circuit and must have had some discussions with the Solicitors office because the agency filed its request for remand even before Google filed an opening brief.
I have included the claim below, but the basic setup is that the claim includes the following stylized step:
A method comprising …
in response to a determination that a first block is available, generate a pixel value …
The basic question here is whether this claim limitation requires any action. The PTAB read it as merely conditional — effectively replacing it with the following:
A method comprising …
if the system determines that a first block is available, then generate a pixel value …
The Board explained its position that the claims did not recite a step of “determining” that the first block exists and so it is not required by the claims.
[W]e understand the phrase “in response to a determination that” a condition exists to be equivalent to a recitation of “if” that condition exists because claim 1 does not affirmatively recite a step of determining that the first prediction pixel is available prior to reciting the step that is performed in response to—i.e., when or if—such a condition exists.
PTAB Appeal 2020-005221. The PTAB then applied Schulhauser to conclude that “the Examiner need not present evidence of the anticipation of any of the disputed conditional method steps, because they are not required to be performed under the broadest reasonable interpretation of the method steps recited in representative independent claim 1.” Google sought reconsideration, but the Board stuck to its original decision.
Now before the Federal Circuit, the Director has concluded that the Board erred. Through the SG, the Director submitted an interesting reason for its determination–that a close reading of the specification shows that the first determination step is present in “every embodiment.” Thus, according to the Director, the PTAB’s reading of the claims as conditional limitations “would be inconsistent with the specification.”
Upon review, and under the specific facts of this case, the Director acknowledges that the Board erred in designating L1 and L2 as conditional limitations governed by Schulhauser because such a reading would be inconsistent with the specification, which teaches that for every embodiment a first prediction pixel is available and a determination of whether a second prediction pixel is available is made.
Dir Motion to Dismiss. This statement from the Director appears somewhat contrary to the usual approach of Broadest Reasonable Interpretation (BRI) which avoids importing limitations into the claims simply because they are present in each disclosed embodiment.
Google did not object to the dismissal and the Federal Circuit has ordered a remand.
One important caveat to this case — the application itself appears to still be unpublished. Thus, the information that I’m reporting comes only from public documents filed with the Federal Circuit. I don’t have the application itself or any of the briefs filed with the PTAB. I do have the challenged claim:
A method comprising:
generating, by a processor in response to instructions stored on a non-transitory computer readable medium, a decoded current block by decoding an encoded current block, wherein decoding the encoded current block includes adaptive composite intra-prediction, and wherein adaptive composite intra prediction includes:
in response to a determination that a first prediction pixel from a first block immediately adjacent to a first edge of the encoded current block is available for predicting a current pixel of the encoded current block:
determining whether a second prediction pixel from a second block immediately adjacent to a second edge of the encoded current block is available for predicting the current pixel, wherein the second edge is opposite the first edge; and
in response to a determination that the second prediction pixel is available, generating a prediction value for the current pixel based on at least one of the first prediction pixel or the second prediction pixel;
generating a reconstructed pixel corresponding to the current pixel based on the prediction value; and
including the reconstructed pixel in the decoded current block; and
outputting or storing the decoded current block.
Schulhauser involved a heart-monitoring method claim with the following conditional step:
triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria;
Ex parte Schulhauser, APPEAL 2013-007847, 2016 WL 6277792 (Patent Tr. & App. Bd. Apr. 28, 2016) (precedential). The panel concluded that step in conditional form can be ignored for anticipation purposes. The Board relied particularly on the Federal Circuit’s non-precedential decision in Cyber settle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) where the court explained that: “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” Id. Schulhauser distinguished this method-claim from system claims that include the same conditional functionality since the system “still requires structure for performing the function should the condition occur.” Id. The MPEP now reflects this same approach:
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.
MPEP 2111.04 (II). The Board has relied upon Schulhauser in hundreds of decisions. However, there appears to be some ongoing debate within the PTAB about the scope of the case, with a number of cases having dissents on this point. See., e.g., Ex Parte Botman, APPEAL 2021-004052, 2022 WL 4093710 (Patent Tr. & App. Bd. Sept. 2, 2022); Ex Parte Gopalan, APPEAL 2017-007009, 2018 WL 2386111 (Patent Tr. & App. Bd. May 21, 2018); Ex Parte Erhart, APPEAL 2019-004505, 2021 WL 195811 (Patent Tr. & App. Bd. Jan. 8, 2021).
In the appeal, Google was represented by Jonathan Tietz and Andy Dufresne (Perkins). The per curiam order was issued by Judges Lourie, Chen, and Stark.