Federal Circuit Affirms PTAB’s Finding of Implicit Disclosure

Judge Jimmie Reyna

Judge Jimmie Reyna

The Federal Circuit recently issued an opinion affirming the Patent Trial and Appeal Board’s (“PTAB”) finding of obviousness of a hot-spot technology patent based on implicit disclosures in a prior art reference. Even though the reference did not expressly disclose the limitation at issue, the Board’s holding that a POSITA would, nonetheless, read the reference as implicitly describing the claimed configuration was supported by substantial evidence. See IXI IP, LLC v. Samsung Elecs. Co., No. 17-1665, 2018 U.S. App. LEXIS 25533 (Fed Cir. Sept. 10, 2018) (Before O’Malley, Mayer, and Reyna, Circuit Judges) (Opinion for the court, Reyna, Circuit Judge).

Samsung Co., Ltd., Samsung Electronics America, Inc. (together, “Samsung”) and Apple Inc. (“Apple”) filed an IPR petition challenging several claims of the ‘033 patent, owned by IXI IP, LLC (“IXI”). The PTAB instituted review and concluded that the challenged claims were invalid as obvious, in part because the primary prior art reference—Marchand—implicitly described the claimed configuration. IXI appealed, and the Federal Circuit affirmed.

Marchand disclosed “an ad-hoc network and a gateway that provides an interface between external wireless IP networks and devices in the ad-hoc network.” The ad-hoc network includes a gateway device, such as a cellphone, and other terminal devices and uses JINI technology to publish and share services between the devices.  LUS, a “Lookup Service,” identifies a list of available services provided by the devices on the network.  JINI technology allows an application to discover, join, and download services from a JINI LUS.

The Board held that Marchand’s disclosure of JINI LUS met ‘033 patent’s claim 1 limitation of a “service repository software component [that] identif[ies] a service provided by the second wireless device,” thereby rendering the claim obvious.  The sole issue on appeal was whether a POSITA would read Marchand as implicitly describing an implementation in which the JINI LUS is located on the gateway device, in this case the cellphone.

The Court found that substantial evidence supported the Board’s conclusion that a POSA would read the Marchand to understand that JINI LUS may be located on the cellphone.  First, Marchand disclosed that the cellphone includes an Application Programming Interface (API), a software that is downloaded to the other devices in order to enable them to use the phone’s services. The cellphone acts as a call-control server—it serves as the “master” and provides other “slave” devices on the network with software which enables them to use the master’s call control services. A POSITA thus “would have considered Marchand’s call control API to be a JINI proxy object.”

Second, “it is reasonable for a POSITA to interpret Marchand to disclose an implementation where the LUS is included on the cellphone because Marchand discloses that the API—which corresponds to a JINI proxy object—is downloaded from the cellphone, and, according to the JINI Spec., JINI proxy objects are downloaded from a LUS.” A client who wants to use a service downloads the software—the JINI proxy object—from the cellphone—the LUS.

Third, Marchand implicitly disclosed that the JINI LUS is located on the cellphone because all other devices publish their services when the cellphone connects to the network: “If the cellphone does not contain a LUS, there would be no need for other network devices to publish (or republish) their services to the LUS when the cellphone connects.”

Finally, the Court rejected IXI’s argument that Marchand expressly disclosed that the LUS is located on the laptop computer as described in Figure 4 of the patent. Marchand’s Figure 4 was merely exemplary—nothing in Marchand limited or precluded the inclusion of LUS in the gateway mobile phone instead.

The Federal Circuit will not overturn the PTAB’s finding of implicit disclosure when that finding is reasonable and supported by substantial evidence, even if another opposite finding is plausible.

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The Author

Dustin Weeks

Dustin Weeks is an associate in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

Dustin Weeks

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Dustin Weeks

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 4 Comments comments. Join the discussion.

  1. B September 22, 2018 8:49 am

    “Finally, the Court rejected IXI’s argument that Marchand expressly disclosed that the LUS is located on the laptop computer as described in Figure 4 of the patent. Marchand’s Figure 4 was merely exemplary—nothing in Marchand limited or precluded the inclusion of LUS in the gateway mobile phone instead”

    Yes, but you still must have a motivation, even if from “common sense,” to move the LUS.

    I don’t see the “implicit disclosure.” I’m not saying a good obviousness rejection can’t be had, but to say the limitation is implied? It’s one thing to say (from the opinion) “Marchand does not prohibit a configuration where a LUS is located on both the laptop and the cellphone” to a LUS is implied.

    meh! It’s Jimmie Reyna.

  2. Night Writer September 22, 2018 2:28 pm

    I used to get rejections and still sometimes do that basically say that the computer could do that. Basically, they recite a processor and some software that is missing all sorts of elements of the claims. The examiner fills in the wholes with implicit disclosure that it could work like that. It is really hard to get some to understand why this isn’t an OK rejection.

    Now we have Reyna the king of Google judges–anti-patent, completely ignorant of patent, and completely ignorant of science and technology. Please resign Reyna. You are a disgrace. I agree with @1 B. An obviousness argument could be made here, but to say that:

    “Marchand would have informed an ordinarily skilled artisan that the `service repository software component’ may be disposed in the `first wireless device [i.e., the cellphone].'” Id. at 20.”

    Disgraceful. This will cause massive problems. And doesn’t make any sense in terms of inventions and disclosures. Something could have been there but wasn’t disclosed is a horrible holding. Saying it was obvious is different. Saying it is OK to use it as part of a rejection because it MAY have been there is horrible particuarly when it would make a difference in the operation as here.

    Another example of the foul Google Judges burning the patent system.

    You need an actual disclosure of an element or an obvious rejection. Well not anymore. The new standard is if it MAY have been there according to an expert than you can use it.

  3. B September 22, 2018 5:24 pm

    @ Night Writer “Please resign Reyna. You are a disgrace.”

    See, we do agree on some things.

  4. Tim September 23, 2018 9:00 am

    Reyna, please take the other GOOGLE judges, Mayer & Wallach with you. “Vringo vs IP Internet”. I only wish that Tucker Carlson would do an expose on that piece of Obama corruption.

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