The Board Should Not have to Decode a Petition to Locate Additional Arguments Beyond the One Clearly Made

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Netflix, Inc., v. Divx, LLC, [2022-1203, 2022-1204]( October 25, 2023) the Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (Board) determining Netflix did not meet its burden of proving claims 1– 5 and 12 of U.S. Patent No. 9,270,720 and claims 1–6, 8–10, 13–14, 16–17, and 19 of U.S. Patent No. 9,998,515 unpatentable under 35 U.S.C. § 103.  The ’720 and ’515 patents, assigned to DivX, relate to a method for adaptive bitrate streaming of content on a playback device, such as a mobile phone or personal computer. “Adaptive bit rate streaming involves detecting the present streaming conditions (e.g., the playback device’s network bandwidth and video decoding capacity) in real time and adjusting the quality of the streamed media accordingly.”

The Federal Circuit began by stating “While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made. A petitioner may not rely on a vague, generic, and/or meandering petition and later fault the Board for failing to understand what the petition really meant. Ultimately, it is the petitioner’s burden to present a clear argument.


The Federal Circuit rejected Netflix’s contention that the Board was “absurd” in how it understood Netflix’s argument.  The Federal Circuit said that it did not wish to discourage petitioners from making arguments in the alternative. Rather, it was emphasizing that it is the petitioner’s burden to make clear when alternative arguments are being presented and to sufficiently expound on each one. The Board should not have to work as hard as Netflix wants to identify all arguments fairly presented in a petition.

Concluding that the Board’s interpretation of Netflix’s arguments was not unreasonable, the Federal Circuit affirmed.

The Reference-Back “the” Language Takes its Meaning (Singular or Plural) from the Meaning of the Antecedent

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ABS Global, Inc., Genus Plc, v. Cytonome/ST, LLC, [2022-1761] (October 19, 2023), the Federal Circuit reversed the Board’s finding of no unpatentability of claims 1 and 8 of U.S. Patent No. 10,583,439, and vacated the decision of no unpatentability of claims 2, 6, and 9.  The ’439 patent, titled “Hydrodynamic Focusing Apparatus and Methods,” describes and claims a microfluidic device for “particle” processing.

The Board determined that, as a matter of claim construction, “the sample stream” language in claim 1 had a singular-only meaning, not allowing a plurality of streams or a split stream.  The Board also rejected ABS’s obviousness challenges, and their reasoning depended on their claim construction that claim 1 required that there be only a single stream, precluding a split one.

The Federal Circuit rejected the PTAB’s construction, explaining that the specific claim language at issue is “a fluid focusing region configured to focus the sample stream.” The use of the definite article, “the,” means that the phrase “the sample stream” refers back to earlier language as an antecedent. The antecedent language is “a sample stream” in the preceding limitation, and it is the singular-only or plural- allowing meaning of that limitation which is determinative.  The reference-back “the” language takes its meaning from the meaning of the antecedent, so if “a sample stream” has a plural-allowing meaning, so does the reference-back “the sample stream” phrase.

The Federal Circuit said two familiar aspects of claim-construction analysis strongly support the plural-allowing meaning here. First, “at least in an open-ended ‘comprising’ claim,” like claim 1 of the ’439 patent, “use of ‘a’ or ‘an’ before a noun naming an object” requires that the phrase be construed to mean “‘one or more’ unless the context sufficiently indicates otherwise.”  Second, the specification here states: “[F]or the purposes of the present disclosure, the term ‘a’ or ‘an’ entity refers to one or more of that entity. As such, the terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used interchangeably herein.”

The Federal Circuit found no sufficient basis for rejecting the plural-allowing meaning of “a sample stream” here. The prosecution history has not been shown, or even meaningfully argued, to do so. Nor does anything in the specification supply a clear and manifest disavowal of that meaning, or totally negate it.  In particular, the singular only meaning is not demanded by the specification’s embodiments, described as nothing more than examples.

Remand Because the Federal Circuit Could Not Determine whether Board’s Error was Merely Typographical and Harmless or an Error of Substance

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In Corephotonics, Ltd., v. Apple Inc., [2022-1340, 2022-1341, 2022-1455, 2022-1456] (October 16, 2023) the Federal Circuit affirmed the PTAB’s determination that two references were analogous prior art, while vacating and remanding the Board’s obviousness determination for the Board to explain why a third reference — Martin — is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.  The Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video.

Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Art that is “too remote” from the patents being attacked cannot be treated as prior art.  The Federal Circuit uses two separate tests to define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Apple’s petitions were ambiguous; they did not make clear whether Apple was stating that Golan and Martin are in the same field of endeavor as the Challenged Patents or, instead, merely that Golan and Martin are in the same field of endeavor as one another. The Board wrote, “Martin is reasonably pertinent to the problem faced by the inventor: reducing an image jump effect seen in video output images when switching between cameras that have different fields of view. Apple and Corephotonics agree that these two sentences are, as written, incorrect: Martin does not disclose switching between cameras with different fields of view; rather, it is addressed to cameras with different points of view.  The Federal Circuit was unable We are unable to discern if the Board’s error was, in fact, merely typographical and harmless or, instead, a potentially-impactful error of substance. This prevented the Federal Circuit from concluding either that there is, or is not, substantial evidence to support the Board’s conclusion that Martin is analogous art to the Challenged Patents.  Accordingly, the Federal Circuit remanded to the Board for further explanation and, if needed, further fact finding.

Collateral Estoppel Cannot be Based on a Decision that was Subsequently Reversed

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Finjan LLC, FKA Finjan, Inc., v. Sonicwall, Inc., [2022-1048] (October 13, 2023) the Federal Circuit vacated the district court’s judgment of invalidity because it was based on collateral estoppel of a decision that was subsequently reversed, and remanded for further proceedings. The Federal Circuit also affirmed the district court’s grant of summary judgment of noninfringement and the district court’s decision to exclude Finjan’s expert analysis.

Finjan asserted U.S. Patent Nos. 8,677,494, 6,154,844, 6,804,780, and 7,613,926, as well as U.S. Patent No. 8,225,408. SonicWall filed a motion seeking judgment of invalidity as to the asserted claims of the ’780, ’844, and ’494 patents due to collateral estoppel based on a decision in related proceedings finding the claims of the ’780 and ’844 patents invalid for indefiniteness.  The district court granted judgment of invalidity due to collateral estoppel and indefiniteness as to claims of the ’844, ’780, and ’494 patents. Subsequently, in the other case which provided the underlying support for the Collateral Estoppel Order, Finjan appealed the district court’s grant of summary judgment of invalidity, and on appeal the Federal Circuit vacated the district court’s grant of summary judgment of invalidity due to indefiniteness and remanded for further proceedings.

During claim construction, the parties agreed that “Downloadable” means “an executable application program, which is downloaded from a source computer and run on the destination computer.” Based on this construction, SonicWall moved for summary judgment of noninfringement of certain of the claims, arguing that its Gateway products could not infringe those claims because they never receive “Downloadables”—“executable application program[s],” which was granted.

The Federal Circuit noted that it cannot uphold applying collateral estoppel based on a vacated judgment. Accordinglv, it vacated the district court’s grant of judgment of invalidity

based on indefiniteness as to the claims of the ’844, ’780, and ’494 patents and remanded for further proceedings.

 Non-Infringement

Finjan argued that the district court erred in determining that SonicWall Gateway products do not infringe the asserted claims because they receive a sequence of packets

and not the downloadables themselves.  According to Finjan, the district court took the parties’ agreed-upon construction of “Downloadable”—“an executable application

program, which is downloaded from a source computer and run on the destination computer,” and added a requirement that the downloadable also be “re-assembled by and executable at the receiver.  SonicWall contended that the district court’s conclusion

is derived directly from the parties’ agreed-upon construction, which describes a downloadable as an “executable application program.

The Federal Circuit agreed with SonicWall that the district court’s judgment of noninfringement flows from the parties’ agreed upon construction. The Federal Circuit noted that the asserted claims use “Downloadable” in different ways.  The Federal Circuit noted that parties’ construction comes verbatim from the definition of “Downloadable” in the ’844 and ’780 patents’ specifications.

Columbus Day 2023

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While he may not live up to modern standards, Chrisopher Columbus’ voyages to the New World were, for the time, heroic and skillful, navigating the barely sixty foot Santa Maria wil a crew of 42 on a thirty-five day journey across the Atlantic Ocean. His achievements were celebrated and memorialized, including on Owen Gray’s Educational Globe. the subject of U.S. Patent No. 418455 issued December 31, 1889, which showed two of Columbus’ four voyages in dashed lines on the globe:

as the patent explained:

J.W. Meese patented (U.S. Patent No. D21533) this statue of Columbus in 1892:

There are numerous other Columbus statues, medals, plaques, spoons, and canes, celebrating his bravery.

Independence Day 2023

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July 4 is arguably the most important date in the history of the U.S. John Adams had some specific thoughts on how the day should be celebrated: “It ought to be solemnized with pomp and parade, with shows, games, sports, guns, bells, bonfires, and illuminations, from one end of this continent to the other, from this time forward forevermore.” And inventors have long obliged the Founding Father with tech for the celebration.

IN 1923 Arthur Dean received U.S. Patent No. 1,513,536 on a Toy Mortar suitable for Independence Day celebrations.

In 1902, Edward Howard received U.S. Patent No. 716,547 on a Toy Gun for celebrating Independence Day:

In 1931 Harold Barnes received U.S. Patent No, 1,809,825 on a safety cracker for celebrating Independence Day, and hopefully saving little patriots’ fingers.

In 1962 George Eddy received U.S. Patent No. 3,034,786 on an Action Toy for celebrating Independence Day:

In 2001, a group lead by Michael Sullivan, received U.S. Patent No. 3,034,786 on a Thermochromic Candle.

So go ahead and celebrate with pomp and parade, with shows, games, sports, guns, bells, bonfires, and illuminations, but be careful!

Flag Day 2023

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Inventors have devoted some attention to the celebration of Flag Day. U.S. Patent No. 4,972,794 on a Flagstaff with Protective Housing is the result. As the Abtract explains:

More recently, U.S. Patent No. 9,672,761 on a Flag and Banner Display System for Motor Vehicles and the Like, reviewed the law before disclosing a way of displaying a flag on a vehicle:

An New (Old) Perspective on Claim Construction

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In Century Electric Co. v. Westinghouse Electric & Mfg. Co., 191 F. 350 (8th Cir. 1911), the Eighth Circuit had in interesting perspective on claim construction. The Eighth Circuit said that a patent “is a contract made by the acceptance by the government of the offer which the patentee by his application makes to disclose his invention, in consideration that the United States will secure to him the exclusive use and sale of it for 17 years,”

The Court continued:

The offer embodied in the application becomes the specification of his patent, if his offer is accepted, and with his claims evidences the terms of the agreement. Such an agreement is interpreted by the same rules that determine other contracts. The court, should, as far as possible, place itself in the situation of the parties when they made their agreement and then seek to ascertain from the terms of their contract, in the light of the circumstances then surrounding them, what their intention was.

This intention should be deduced from the entire contract and not from any part of it or without any part of it, because they did not agree to it, or to any part of it, without every other part of it. The specification which forms a part of the same application as the claims must be read and interpreted with them, not for the purpose of limiting, or of contracting, or of expanding, the latter, but for the purpose of ascertaining from the entire agreement, of which each is a part, the actual intention of the parties and that intention when ascertained should prevail over the dry words and inapt expressions of the contract evidenced by the patent, its specification and claims.

Modern claim construction seem more rule-bound, and might be improved if animated by the purpose to determine what the inventor invented, not what the claims literally say.

Earth Day 2023

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Earth Day has been the inspiration for numerous environmental initiatives, including the EPA. and it has also been the motivation for many inventions:

U.S. Patent No. 5505114 protects a Simulated Musical Rainmaker, which the patent describes as the “perfect toy to celebrate Earth Day.

U.S. Patent No. D407127 protects the ornamental design for a baseball. which can include an Earth Day logo:

U.S. Patent No. 10,712,723 on a System and Method of Compiling and Organizing Power Consumption Data and Converting such Data into One or More User Actionable Formats, suggests that the invention “could include real-time feedback as events like Earth Day occur, to demonstrate the en-masse savings and conservation, the environmental impact, etc.”

U.S. Patent No. 9336540 on a Method and System for use of Game for Charity Donations suggests that it can be used to raise funds for Earth Day:

On this this 54th Earth Day, the world has accomplished a lot, but there is much more to be done; hopefully with creativity and inventiveness we can continue to make progress.numer

Computer-Readable Recording Medium Is Not a Transitory Medium

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In Sequoia Technology, LLC v. Dell, Inc., [2021-2263, 2021-2264, 2021-2265, 2021-2266] (April 12, 2022), the Federal Circuit disagreed with the district court’s claim construction for “computer-readable recording medium,” and thus reverses the district court’s ineligibility determination under 35 U.S.C. § 101. In addition, the Federal Circuit agreed with the district court’s claim construction for “disk partition” and “logical volume,” and thus affirmed the district court’s noninfringement determination.

The magistrate judge adopted and construed “computer-readable recording medium” to include transitory media (i.e., signals or waves),base upon the specification, which discusses “computer readable medium” as “including” a list of items—none of which are transitory— and interpreted that language as leaving the door open for media that could be transitory.

The Federal Circuit noted at the outset that the claim language does not actually recite a “computer-readable medium” or CRM. Instead, it more narrowly recites “computer-readable recording medium storing instructions. The Court said that a person of ordinary skill would not understand transitory signals, such as carrier waves, to record or store instructions in memory systems. This is because transitory signals, by their very nature, are fleeting and do not persist over time. Other elements in the claim confirm that the claim is directed to hardware as opposed to transitory waves or signals.  The Federal Circuit found that the claim language demonstrates that claim 8 is not directed to a transient signal, but rather to a non-transient storage medium.

The Federal Circuit then turned to the specification, which discloses only non-transitory media.  The Court said the use of a term denoting a nonexhaustive list does not eviscerate our obligation to construe terms in the context of the entire patent. The context

here makes clear that the term “computer-readable recording medium” cannot encompass transitory media.

The Federal Circuit declared that its decision rests solely on the intrinsic evidence, and that it was unpersuaded by arguments to the contrary, which rest on extrinsic evidence.  The Court further noted that not only was this extrinsic evidence was inconsistent with the intrinsic evidence and also based on different express definitions of CRM in patent specifications directed to different inventions.

The Federal Circuit disagreed with the district court’s claim construction and, consequently, reversed the district court’s holding that claims 8–10 are ineligible under § 101.