Google loses appeal at CAFC

The outcome:


Google appeals from the final written decision of the
United States Patent and Trademark Office Patent Trial
and Appeal Board (Board) in the above-captioned inter
partes review proceeding. The Board found that petitionerappellant
Google failed to meet its burden of establishing
that challenged claims 10–16, 20, and 21 of U.S. Patent No.
6,772,114 (the ’114 patent) are unpatentable on either of
two grounds: (1) anticipation by Patent Cooperation Treaty
(PCT) International Application Publication No. 98/52187
(Tucker), or (2) obviousness over Tucker in view of wellknown art.
We agree with the Board as to both grounds
and therefore affirm.



As to anticipation:


Anticipation is a question of fact reviewed for substantial evidence.
Synopsys, Inc. v. Mentor Graphics Corp., 814
F.3d 1309, 1317 (Fed. Cir. 2016). The central dispute on
appeal is whether Tucker’s disclosure of a low-pass filter
and reflection step is the claimed high-pass filter.

(...)

In sum, we agree with the Board that Tucker’s low-pass
and reflection process cannot be the claimed “high-pass filter” because this process does not transmit frequencies
above a given cutoff frequency and does not substantially
attenuate all others. The Board’s conclusion that Google
failed to meet its burden to establish that the challenged
claims are anticipated by Tucker is supported by substantial evidence.



As to the obviousness argument:



The Board explained that
this argument was raised for the first time in Google’s Reply briefing, and thus patent owner Koninklijke did not
have a fair and meaningful opportunity to respond. Id.
We review the Board’s decision not to consider an untimely argument for abuse of discretion.
Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367 (Fed. Cir. 2016). Although Google argues that the
obviousness of filters was raised at the depositions of the
parties’ experts, Google concedes that it never raised this
theory of including a high-pass filter in Tucker’s receiver in
its petition for inter partes review. See Oral Arg. at 11:44–
12:11, http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2018-2213.mp3; J.A. 5461. We find that the
Board was within its discretion in declining to consider this
obviousness theory that was outside the scope of the petition for inter partes review.1




Footnote 1:


The Board also rejected Google’s untimely arguments as unpersuasive. J.A. 20 n.8. Because we agree with
the Board that Google’s arguments were untimely, we do
not reach the issue of whether it would have been obvious
to include a high-pass filter in Tucker’s decoder.