Prior Art Combination that Sometimes Provides Results of Broadly Claimed Method Can Make that Method Obvious

Federal CircuitUnwired Planet, LLC v. Google, Inc., (Fed. Cir. Nov. 15, 2016) (Before Reyna, Plager, and Hughes, J.) (Opinion for the court, Reyna, J.).

In 2013, Google, Inc. (“Google”) filed inter partes review and covered business method petitions challenging the validity of Unwired Planet, LLC’s (“Unwired”) patent, at issue on appeal. The patent describes a prioritization of search results based upon the location of a mobile device and including prioritization of “preferred providers” within those search results, in turn providing a “farther-over-nearer” ordering of the results. The Board invalidated all of the challenged claims as obvious.

Unwired appealed, and the Court considered three arguments: (1) non analogous prior art; (2) the prior art did not teach “farther-over-nearer” ordering of prioritizing providers over location-based results; and (3) lack of motivation to combine.

First, the Court held that the two prior art references overlapped and were relevant to location-based applications within the broader field of interface design.

Next, the Court held that combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness. See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326, 2003 U.S. App. LEXIS 16168 (Fed. Cir. 2003). The Court stated that “[t]he claims only require using prioritization information that results in a farther-over-nearer order” — not a prioritization of locations because they are farther away. The claimed result, where a farther first location is given priority over a nearer second location, could result from many prioritization schemes that do not depend on location. Thus, the Court noted that the cited alphabetical prioritization in the prior art will often result in locations that are farther away being given a higher priority than locations nearer. Further, “[i]t does not matter that the use of alphabetical order for locations would not always result in farther-over-nearer ordering. It is enough that the combination would sometimes perform all of the method steps, including farther-over-nearer ordering.” See Id. The Court concluded, “[b]ecause the use of alphabetical order as prioritization information would sometimes meet the farther-over-nearer claim elements, the Board was correct to conclude that the proposed combination” rendered claim 1 obvious.

Finally, the Court held that a person of skill in the art would have recognized the potential for improvement. It was not required for there to be a known problem with the prior art in order to combine the cited references.

The Court affirmed the Board’s determination that all challenged claims were obvious and dismissed the appeal of the covered business method petition as moot.

In an obviousness determination, a combination of prior art references need not always perform all steps of a broadly claimed method. It is enough to sometimes perform all of the steps and obtain the claimed results, when the claim is broad enough to encompass definite, albeit occasional, results in the prior art.

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8 comments so far.

  • [Avatar for Curious]
    Curious
    December 6, 2016 09:48 pm

    If reference A shows it sometimes, then if you allow a patent on ALL the TIME you can sue the person using the method of reference A
    This wasn’t a 102 reference — if it was, there wouldn’t be any question. However, this is a 103 reference, and the question becomes: “what does the reference teach?”

    Let’s say the reference teaches “perform A” and you claim “perform B.” Even if A occasionally produces the same result as B, then you certain cannot say that “perform A” teaches or suggests “perform B.” However, as I noted before, the claims didn’t recite the “technique” but more of the “result.” In this instance, the question is: Does the applied prior art, as a whole, render the claimed invention as obvious? In my mind, maybe … it really is a close call.

  • [Avatar for Very Confused]
    Very Confused
    December 6, 2016 05:44 pm

    I hate be the bearer of common knowledge, but this is the way rejections have always been done.
    Are you guys seriously trying to say that since the alphabetical art would only sometimes show the same result that a patent should be allowed to be enforced that would allow the patenting entity the ability to sue the maker of the alphabetic reference? Is this considered logic? If reference A shows it sometimes, then if you allow a patent on ALL the TIME you can sue the person using the method of reference A. Please, seriously, explain to be how that would be proper or logical? The best part is, the whole thing could have been avoided if the claim was PROPERLY claimed. But nope, someone who thought they were too smart for themselves said, instead of prioritizing based on the distance, let’s just say prioritzing based on something, but A is father than B btw. ANYTHING would have taught this as long as they prioritized, one of the stations was farther away from the other, and the farthest one was at some point considered higher priority when farther away.

  • [Avatar for Curious]
    Curious
    December 4, 2016 11:50 am

    IMHO, the main error was the butchering of the nonanalogous prior art argument. In fact, it creates a loophole that threatens the extinction of the entire concept of nonanalogous prior art. The insidious part of the decision was the Court identifying the field of endeavor by just looking at the limitation itself — instead of the claimed invention, as a whole. Anytime you have a missing limitation and you redefine the “field of endeavor” as being directed to the problem allegedly addressed by the missing limitation, any reference that discloses the missing limitation is going to fall within the field of endeavor. Using that approach, everything is analogous prior art.

    If I was advising Unwired, and they wanted to appeal (either en banc or to the Supreme Court), this is the issue I would work with. The biggest hurdle would be to characterize the issue so as to avoid an unfavorable standard of review.

    The second issue regards “combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness.” The Court cannot be faulted for relying upon its own prior statements, but I dug into the case they cited: HP v. Mustek, 340 F3d 1314 (Fed. Cir. 2003). To little surprise, I discovered it was authored by Dyk — about a rabid anti-patent judge as one could find. In short, Dyk concocted the principle while relying upon the real notion that “an accused product that sometimes, but not always embodies a claimed method nonetheless infringes.” The issue as to infringement involves a determination as to whether all elements are met by the prior art. The problem with Dyk’s concoction is that something that stumbles upon a combination by one set of circumstances, does not teach that combination arrived at by another (claimed) set of circumstances.

    The Federal Circuit’s decision is littered with discussion of farther-over-nearer ordering. However, the problem with claim 1 of the ‘205 patent is that I could find no mention of “order” or “ordering” anywhere. The apparent limitations are “identifying, on said network platform, first and second service providers and associated first and second service provider information based upon said service type information and said determined location of said mobile unit wherein said first service provider is farther from said mobile unit than said second service provider.” I think the Patentee would have had a better argument had the ordering actually been claimed as part of the method — not just a result of the “identifying” step. If all you are claiming is the result — not how you got there — then something else that arrives at the same result, albeit in a different manner, is going to sink you.

    In short, if you claim the results of a technique and the prior art stumbles upon the same results, then you’ve lost. However, if you claim a technique and the prior art claims a different technique that occasionally produces the same results, then you have an argument. In the first instance, the “invention” involves the results. In the second instance, the “invention” involves the technique.

  • [Avatar for Eric Berend]
    Eric Berend
    December 3, 2016 10:57 pm

    The natural scientist in me is quite disturbed by this decision. It espouses such torturous self-referential logic that it makes the head hurt to try to make sense – of its nonsense. What if, for instance, the benefit claimed of a particular invention in a patent application, is to provide consistency of the result of which a previously known method or product of manufacture, is merely sporadic?

    This sort of toxic spew is part of the overall ‘minefield’ that has been laid for genuine inventors in this recently poisoned environment.

  • [Avatar for Ternary]
    Ternary
    December 3, 2016 10:21 am

    “Because the use of alphabetical order as prioritization information would sometimes meet the farther over-nearer claims elements, the Board was correct to conclude that the proposed combination taught all of the elements of claim 1.”

    I had to read this several times and check it in the opinion, but that is what the court actually maintains as the standard for obviousness. That is: the random, unintended chance (which is not “definite” in my book) of something to take place anticipates a planned and designed physical aspect of an invention.

    This reminds me of a story on the history of the periodic table of elements. In 1864 John Newland suggested that elements arranged in an order of atomic weight display similar properties. George Carey Foster famously asked in 1866 if Newland had considered ordering the elements alphabetically. For those wondering about this: a name is not a physical property, but atomic weight is and so is geographic location.

    And thus patent law is practiced in America in AD 2016.

  • [Avatar for Eric Berend]
    Eric Berend
    December 2, 2016 06:49 pm

    Well, it was Google itself filing the IPR; so what did anyone expect upon Fed. Circ. judicial review – but torturous, convoluted BS spin posing as logic, in order to arrive at the preordained result their masters decreed?

  • [Avatar for Valuationguy]
    Valuationguy
    December 2, 2016 11:15 am

    Another ‘wonderfully revealing’ everything is perfectly obvious in hindsight conclusion…imo.

  • [Avatar for Charles Ankner]
    Charles Ankner
    December 2, 2016 09:57 am

    Seems that’s what the Office does best…improperly combine… Its their bread and butter…