by Dennis Crouch

KEYnetik, Inc. v. Samsung Electronics Co. (Fed. Cir. 2023)

This short non-precedential opinion authored by Chief Judge Moore affirms a PTAB IPR obviousness finding.  The case has one key sentence:

Normally, once the function to be performed by software has been identified, writing code to achieve that function is within the skill of the art.

Slip Op.  This statement sits well with modernist design principles aptly stated by architect Louis Sullivan: “Form ever follows function.”

The patent challenger had provided expert testimony that software modifications needed to transform the prior art into the claimed invention would be “straightforward” and “simple.”  Those statements were not backed-up with specific analysis showing exactly how the modifications would be done.  However, the Federal Circuit concluded that these general conclusions combined with the implied judicial notice from above were sufficient to support the PTAB’s factual finding that PHOSITA would have “a reasonable expectation of success” in making the transformation.

Going back to the function-equals-structure statement from above: The court does not explain or particularly justify its factual conclusion other than to cite  its own 1997 decision of Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997).  Fonar Corp. did not deal with obviousness, but instead was an appeal on the issue of best-mode disclosure under Section 112.   The patentee had provided functions of the software in its disclosure but had not provided the computer code itself.  On appeal, the Federal Circuit found that disclosure of the functionality was sufficient to satisfy best mode:

As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed. It is well established that what is within the skill of the art need not be disclosed to satisfy the best mode requirement as long as that mode is described. Stating the functions of the best mode software satisfies that description test. We have so held previously and we so hold today.

Id.  The Federal Circuit did not endeavor to work through its Section 112(f) jurisprudence where it has repeatedly held that disclosure of function is insufficient to satisfy the ‘structure’ requirements of that provision.