CAFC partially reverses PTAB in Oracle v. Google
The summary of the case:
Google, Inc. (“Google”) filed a request for an inter
partes reexamination of U.S. Patent No. 6,910,205 (“the
’205 patent”), arguing, inter alia, that the ’205 patent is
invalid under § 102 as anticipated by Partial Translation,
Swedish Institute of Computer Science Technical Report
(T93.5), October 1993 (“Magnusson”). The Patent Trial
and Appeal Board (“the Board”) affirmed the examiner’s
rejection of the ’205 patent as anticipated by Magnusson.
Oracle America, Inc. (“Oracle”), the owner of the ’205
patent, appeals the Board’s rejection. For the reasons
explained below, we affirm-in-part, reverse-in-part, vacate-
in-part, and remand.
As to the standard of review by the CAFC:
We review the Board’s factual
findings for “substantial evidence.” In re Morsa, 713 F.3d
104, 109 (Fed. Cir. 2013). Substantial evidence is “less
than the weight of the evidence but more than a mere
scintilla of evidence.” Id. “‘[W]here two different, inconsistent
conclusions may reasonably be drawn from the
evidence in [the] record, an agency’s decision to favor one
conclusion over the other is the epitome of a decision that
must be sustained upon review for substantial evidence.’”
Id. (quoting In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir.
Whether or not a piece of prior art is enabled is a
question of law based on underlying factual findings. Id.
(citing In re Antor Media Corp., 689 F.3d 1282, 1287, 1292
(Fed. Cir. 2012)).
The meaning of "overwrite" was at issue.
Although the examiner did not construe any terms,
the Board construed “overwriting” to mean “the act of
replacing some information in a computer file with new
information, rather than literally writing over an existing
information.” Board Decision, 2013 WL 6217845, at *3.
The Board explained that its construction is warranted
because “only bytecode 2 has been ‘overwritten’ within the
modified [JVM] instructions 303, despite the fact that
bytecodes 3–5 are also being replaced by one or more
native machine instructions.” Id.
We conclude that the Board’s construction is erroneous.
Although claims are given their “broadest reasonable
construction” on reexamination, that construction must be
“consistent with the specification.” Yamamoto, 740 F.2d
at 1571. Based on the clear language in the claims and
the specification, “overwriting” means “replacing information
in a particular memory location with new information
in that location.”
Yes, Teva v. Sandoz is mentioned.
After oral argument in this case, the Supreme
Court decided Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S.Ct. 831 (Jan. 20, 2015), which changed our standard
of review of a district court’s factual determinations in
construing a claim. Because the Board did not base its
construction in this case on any findings of fact, and
instead only considered intrinsic evidence, we need not
consider whether Teva also changes our standard of
review on appeals from the Board.