Tuesday, November 15, 2016

CAFC addresses nonanalogous art and "motivation to combine" in Unwired Planet; Google wins

Unwired Planet lost its appeal against Google:

Unwired Planet, LLC (“Unwired”) appeals from the
final written decisions of the Patent Trial and Appeal
Board (“Board”) in Inter Partes Review (“IPR”) No. 2014-
00036 and Covered Business Method (“CBM”) Patent
Review No. 2014-00005. Google Inc. v. Unwired Planet,
LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar.
30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired
Planet, LLC, CBM2014-00005, 2015 WL 1519056
(P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the
reasons stated below, we affirm the Board’s decision that
the challenged claims of U.S. Patent No. 7,024,205 (the
“’205 patent”) are invalid as obvious in the IPR appeal
and dismiss the CBM appeal as moot

This was an obviousness case, and, yes, KSR is cited:

A claim would have been obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
In order to determine if a claim would have been obvious,
“the scope and content of the prior art are to be determined;
differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill
in the pertinent art resolved.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
Deere Co., 383 U.S. 1, 17 (1966)). Given the differences
between the prior art and the claimed invention, the
claimed combination would have been obvious only if
there was an apparent reason for a skilled artisan “to
combine the known elements in the fashion claimed by
the patent at issue.” KSR, 550 U.S. at 418.

Unwired makes three challenges to the Board’s basis
for the first ground of obviousness in the IPR. Unwired
argues (1) that Galitz is not analogous prior art, (2) that
the prior art does not teach farther-over-nearer ordering,
and (3) that a person of skill in the art would not have
been motivated to combine Brohoff with Galitz.

[As background to Galitz: Wilbert O. Galitz’s book
The Essential Guide to User Interface Design: An Introduction
to GUI Design Principles and Techniques (John
Wiley & Sons, Inc. (1997)) (“Galitz”). It discusses principles
for interface design, including discussing the advantages
of various techniques for ordering text
information and menus. Id. at 120–21, 255–56. It also
discusses the benefits and applications of several ordering
techniques, including alphabetic order. Id. at 256. Galitz
further suggests how the design principles it discusses
may be applied in designing interfaces for future, specialized
devices. Id. at 32. ]

As to the argument suggesting nonanalogous art, the CAFC stated:

Prior art is analogous and can be applied in an obviousness
combination if it either (1) “is from the same field
of endeavor, regardless of the problem addressed” or
(2) “is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992). To determine if art is analogous,
we look to “the purposes of both the invention and the
prior art.” Id. at 659. If a reference disclosure and the
claimed invention have a same purpose, the reference
relates to the same problem, which supports an obviousness
rejection. Id.

Of note:

Taken together, this evidence establishes that Galitz
is analogous prior art to the ’205 patent. The field of
endeavor of a patent is not limited to the specific point of
novelty, the narrowest possible conception of the field, or
the particular focus within a given field.
Here, both
Galitz and the ’205 patent are in the field of interface
design, with Galitz focusing on graphical user interfaces
and the ’205 patent focusing on interfaces for location-based
services. These two areas of focus overlap within
the broader field of interface design because the teachings
in graphical user interface design, including design principles
for displaying text and ordering menus, have relevance
in interfaces for location-based applications.
Likewise, a skilled artisan seeking to apply interface
design principles to display addresses—one of the particular
problems dealt with by the inventor of the ’205 patent—would
reasonably look to Galitz, which teaches
solutions to this same problem. As the Board found, Dr.
Cox’s testimony shows a skilled artisan would have
understood the applicability of Galitz’s teachings to this
problem by providing an example of conventional address
text and ordering in the location-based context.

Of "farther over nearer"

The claims only require using prioritization
information that results in a farther-over-nearer
order. ’205 patent, cl. 1, col. 10 ll. 53–55 (“wherein said
first location information is assigned a higher priority
than said second location information”). 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.
It 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 the method steps, including farther-over-nearer
ordering. See Hewlett-Packard, 340 F.3d
at 1326. 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.

Of motivation:

The Court in KSR described many potential rationales
that could make a modification or combination of
prior art references obvious to a skilled artisan. 550 U.S.
at 417–22; see also MPEP § 2143. KSR overturned the
approach previously used by this court requiring that
some teaching, suggestion, or motivation be found in the
prior art. 550 U.S. at 415.
Instead, the Court explained
that a rationale to combine could arise from “interrelated
teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace;
and the background knowledge possessed by a
person having ordinary skill in the art.” Id. at 418. For
example, the Court stated that “if a technique has been
used to improve one device, and a person of ordinary skill
in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”
Id. at 417. For the technique’s use to be obvious, the
skilled artisan need only be able to recognize, based on
her background knowledge, its potential to improve the
device and be able to apply the technique.


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