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.