by Dennis Crouch
Roku’s recently filed en banc petition begins with an intriguing statement: “What should have been a garden-variety substantial-evidence appeal has produced a dangerous obviousness precedent—one as far-reaching as it is misguided.” [Roku, Inc. v. Universal Electronics, Inc., Docket No. 22-01058 (Fed. Cir.) (en banc petition)]
An every day part of patent practice is arguing about whether a cited prior art reference teaches a particular claim limitation. That analysis is not always an easy task because prior art is often quite cryptic as are the patent claims being evaluated. One way to look at the process is an interpreting of the prior art to see if it teaches the claim. In that form, the process is seen a question of fact that must be based upon substantial evidence and reviewed with deference on appeal. Tribunals also often use an alternative approach that involves a question of law reviewed de novo on appeal. In the alternative approach, the patent claim is interpreted to see whether it covers the the prior art in the process known as claim construction. The difference between these two approaches is subtle, but often with huge results.
In its recent Roku decision, the Federal Circuit provides an example of these two approaches. Roku, Inc. v. Universal Electronics, 63 F.4th 1319 (Fed. Cir. 2023). The 2-1 majority decided to interpret the prior art to see whether it taught the claimed multiple “communication methods.” The court found value in “both sides of this factual question,” but ultimately gave deference to the Board’s conclusions. In her dissenting opinion, Judge Newman contended that the majority overlooked the established principle that the obviousness is a question of law that should be reviewed afresh, or ‘de novo’.
Universal Remote: In its IPR petition, Roku presented the prior art (“Chardon”) that described a universal remote control that uses two different types of communications codes (CEC and IR) in order to control various devices. Chardon includes a table with CEC and IR codes for each different type of action that might be needed. The patent at issue claims the use of “two different communication methods.” The panel majority endorsed the Board’s factual finding that a “listing of command codes does not teach or suggest a listing of communication methods.”
In its rehearing petition, Roku argues that the panel majority’s analysis conflicts the Supreme Court’s repeated statement that obviousness is a question of law. Rather, according to Roku, the majority’s treatment of obviousness as effectively a question of fact contravenes 150 years of precedent holding that obviousness is a question of law. This shift could have far-reaching “pernicious consequences.”
Roku’s bad-consequences argument centers on two main points. First, they assert that the majority’s approach could undermine the uniformity of obviousness jurisprudence. I.e., the Court is effectively deferring to lower tribunals on the question of obviousness. This, they contend, contradicts a key purpose of the Court’s exclusive patent jurisdiction, which is to ensure nationwide uniformity in patent law. It also undermines the requirement set out in KSR that the obviousness analysis must be made explicit.
Second, Roku suggests that the majority’s methodology could lead to undesirable substantive outcomes — allowing for patents on trivial distinctions from the prior art. Roku argues that such trivial advances should not warrant patent protection as they do not represent real innovation and can hinder progress. They also caution that the majority’s approach could lead to genuine inventions being deemed unpatentable if the Court simply affirms factual findings without conducting a de novo analysis of obviousness. The argument here is that the appellate court is in a better position to judge obviousness than the PTAB or a Jury.
In my experience, a determination of obviousness seems to be based more upon inebriation than facts/logic, but I would never explicitly state such in an Office Action response. FAFO if OED won’t come after you.
Roku presented the prior art (“Chardon”) that described a universal remote control that uses two different types of communications codes (CEC and IR) in order to control various devices. Chardon includes a table with CEC and IR codes for each different type of action that might be needed. The patent at issue claims the use of “two different communication methods.” The panel majority endorsed the Board’s factual finding that a “listing of command codes does not teach or suggest a listing of communication methods.”
The last line here does a disservice to the CAFC and the Board. The Board said that there was no argument whatsoever to bridge the anticipation->obviousness gap, and that there clearly is not anticipation. It is true that there is not anticipation. It is false that argument is needed to bridge the gap. The existence of two codes may not inherently require two communication methods, but it does inherently suggest two different methods of achieving the result, which is two different communication methods. That’s like saying that because “Hello” and “Bonjour” don’t require communicating in two different languages, they don’t suggest it either, despite everyone agreeing that (1) they are words in different languages and (2) languages are used to communicate. What do you think they’re going to be used for, if not communicating?
I suppose there may be a statement somewhere (not referenced in the CAFC opinion?) where Counsel was explicitly asked if they were limiting their argument to whther two codes anticipates rather than suggests two methods. If so, it is the Roku attorneys who are stu/pid. But I doubt that statement exists, and the Board and CAFC holdings either represent actual stu/pidity or an unfair result-based hyper-formality allow patentee to win by kicking up dust on an irrelevant issue.
Imagine admitting that *universal* remotes preexist in your specification and still winning an obviousness challenge on the issue of whether communication with at least two communication methods was nonobvious. As if the word “universal” didn’t suggest that (1) other remotes only work with some devices and (2) the art already solved the inability to remotely control multiple devices by putting disparate communication methods into a single device. UE’s position was disprovable by what was suggested to one of skill by their admission. Incredible work all around, people.
One explanation for this bizarre result is that the patent owner may have made some false (and absurd) statement about “teaching away” in the “remote control arts” from using a plurality of communication methods in a single remote. I haven’t read all the briefing and I don’t want to because my stomach couldn’t handle it.
The Federal Circuit also fails to take into account that the PTAB is not a neutral appellate body. The PTAB is biased in favor of the USPTO. No deference is necessary.
let’s just appreciate the great inventiveness of combining two communication protocols into a single remote. if these activist judges kill the patent system, how would anyone have ever been incentivized to make a single device that uses two different protocols.
These guys are poised to do some INCREDIBLE things by combining AI with garage door openers. I can’t divulge more than that except for three words: custom indicator lights.
Don’t invest now. Invest yesterday.
It seems to me that this case is further evidence that Judge Newman should be restored to active duty without delay. And her (correct) analysis in this case could hardly be accused of being pro-patentee, either.
“her (correct) analysis in this case could hardly be accused of being pro-patentee, either.”
Omg, you went there. My Friday is already complete!
Look, literally ANY judge could have dissented from the majority’s decision (and we will see those differing opinions if this is taken up en banc, which it certainly should be). None of the people who think Newman should step down believes that “Newman is always wrong” or that “Newman always sides with the patentee.”
But here’s one thing we do know: if all the facts were unchanged and the majority had decided to tank these claims and Newman dissented (agreeing to uphold the Board) those pom poms would be waving like Florida palms in a hurricane and anyone who disagreed would be smeared as an anti-patent communist.
The lady doth protest too much methinks.
(and to remove any doubt, the “lady” in this instance is Malcolm)
I concur that Judge Newman should be reinstated. The majority has lost its mooring in precedent and Judge Newman is the pesky reminder. Newman remembers why the precedent existed in the first place and the majority is thinking that simple solutions will fix complex problems in patent law. The simple solutions do not fix complex problems to much the chagrin of the fascist minded.
Not sure that “fascist” is the correct term….
Certainly, “authoritarian narrative” fits.
Longer comment in moderation but hopefully the en banc CAFC will step in and tank these silly and incredibly obvious claims.
A reference’s teaching is a question of fact.
Claim construction is a question of law.
Obviousness is a question of feeling.
Yes, and once a tribunal or examiner “feels” the invention is obvious . . . a path to invalidation (issued patents) / denial (patent apps) magically appears.
And hey — everyone love magic, right?!
At 1:25….
link to youtu.be
Well said!
+1
I will offer that many examiners have a difficult time understanding what “the obviousness analysis must be made explicit.” means.
Hints:
“I said so” does not cut it.
Any mere cut-n-paste boiler-plate paragraphs do not cut it.
And for Malcolm,
Mere assertion of the single aspect of “motivation to combine” certainly does not cut it.
However, I said so + boilerplate para usually gets the job done ez.
And that would be a big
f
a
t
NO there, 6.
Mindlessness does not cut it.
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