Friday, January 27, 2017

CAFC vacates PTAB's decision in SCHWEICKERT; no motivation to combine

In the non-precedential case -- IN RE: JENNIFER SCHWEICKERT -- [2017 U.S. App. LEXIS 1374 ] involving
a PTAB ex parte re-examination decision unfavorable to the patentee, the CAFC stated:
"we vacate the Board’s decision."

Of the earlier review, the CAFC noted:

The Patent and Trademark Office instituted an ex parte reexamination
of all of the claims of the ?272 Patent. During the reexamination,
a PTO examiner concluded that the patent claims were obvious in light of several,
two-reference combinations. The Board affirmed the examiner's conclusion of obviousness,
relying on only one combination: Birrell and Cunniff. J.A. at 4-7. In doing so,
it explained that there was

no reason why Birrell would not have benefitted
from the advantages of including Cunniff's semaphore mechanism. Cunniff's
semaphore mechanism is readily applicable to Birrell because Birrell plays
data stored in [the] RAM and also copies data from the disk drive to the RAM.
As such, modifying Birrell to include Cunniff's semaphore mechanism would
have been a predictable use of prior art elements according to their
established functions—an obvious improvement.

Of the standard of review of PTAB:

We review the Board’s factual findings for substantial
evidence and its legal conclusions without deference. Flo
Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367,
1375–76 (Fed. Cir. 2012) (citing cases). Substantial
evidence “means such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337
(Fed. Cir. 2016) (quoting Consol. Edison Co. of N.Y. v.
NLRB, 305 U.S. 197, 217 (1938)).

As a problem for the PTAB decision:

Here, the Board never sufficiently justifies why Cunniff’s
semaphore would provide an “obvious improvement”
to Birrell. J.A. at 5. At oral argument, the PTO argued
that it would have been obvious to substitute Birrell’s
play control logic with Cunniff’s semaphore. See Oral
Argument at 16:00–17:00, http://oralarguments.cafc.

The CAFC cites to KSR on an issue of motivation to combine:

The Board’s decision is deficient in another respect.
Even if the semaphore in Cunniff were readily applicable
to the RAM in Birrell, the Board has not explained why or
how a skilled artisan would further configure or manipulate
Birrell’s RAM such that there would be multiple
lockable buffers as claimed in the ’272 Patent. See ’272
Patent col. 10 ll. 42–563; see also KSR, 550 U.S. at 418
(stressing that it is “important to identify a reason that
would have prompted [a skilled artisan] to combine the
elements in the way the claimed new invention does”
(emphasis added)).

Of a finding not made:

The PTO suggests that a skilled artisan would have
been motivated to combine Cunniff and Birrell despite the
difficulties of doing so because Birrell’s system would be
more cost-effective to manufacture with Cunniff’s semaphore.
See Appellee Br. at 24 (first citing J.A. at 536; and
then citing Cunniff col. 1 ll. 34–38). But the Board never
made this finding. And even if the Board did, the record
does not appear to substantiate it.

697 F.3d 1367; 2012 U.S. App. LEXIS 22081; 104 U.S.P.Q.2D (BNA) 1834,
one recalls this case observed:

It is not proper to import from the patent's written description limitations
that are not found in the claims themselves. Silicon Graphics, Inc. v. ATI Techs., Inc.,
607 F.3d 784, 792 (Fed. Cir. 2010) ("A construing court's reliance
on the specification must not go so far as to import limitations
into the claims from examples or embodiments appearing only in a
patent's written description unless the specification makes clear
that the patentee intends for the claims and the embodiments in the specification to be strictly coextensive.")

One also recalls Judge Plager's "additional views":

The opinion in this case intentionally elides the question
of the standard of review applied by this court to
claim construction decisions of the Board (the Patent Trial and Appeal Board,
formerly the Board of Patent Appeals and Interferences).
The reason is that various of our cases seem to apply
one or the other of two (possibly three—see infra) inconsistent standards,
mostly without acknowledging that the other standard exists.
It is difficult to know which of these standards is the operative one.
In this case, the outcome is the same under whatever standard,
but that may not always be the case, and it is not helpful to the bar
and the parties in appeals to this court to leave the issue unclear.

**Of standards of review, CA7 once wrote:

There is a division within this court over whether
we must or even can establish fine gradations of judicial review.
(See the opinions in United States v. McKinney, 919 F.2d 405 (7th Cir. 1991);
also Haugh v. Jones & Laughlin Steel Corp., 949 F.2d 914,
slip op. at 4 (7th Cir. 1991).)

One school of thought holds that the verbal differences
in standards of judicial review
(arbitrary and capricious, clearly erroneous, substantial evidence,
abuse of discretion, substantial basis, etc.)
mark real differences in the degree of deference that the reviewing court should give the findings and rulings of the tribunal being reviewed.
The other school holds that the verbal differences are for the most part merely semantic,
that there are really only two standards of review -- plenary and deferential --
and that differences in deference in a particular case depend
on factors specific to the case, such as the nature of the issue, and the evidence,
rather than on differences in the !
stated standard of review.

In a trademark case [971 F.2d 6 ], CA7 noted:

Since Abbott offered no credible evidence demonstrating that the name "Ricelyte" actually misleads consumers or pediatricians into believing Ricelyte contains rice and rice carbohydrates, Mead continues, Abbott cannot prevail.

We reject this argument. First, the district court's preliminary finding that "Ricelyte" imparts the express message that Ricelyte contains rice and rice carbohydrates is a finding of fact, entitled to deference unless clearly erroneous. While reasonable minds might differ as to the nature (express or implied) of this message, we hesitate to conclude that the count's reading was clearly erroneous. Accordingly, Abbott need not present evidence of actual confusion to prevail on the merits. PPX Enterprises, 818 F.2d at 272.

Where reasonable minds could not differ, from CA5 (228 F.2d 307; )

therefore these jury findings cannot be set aside unless they are so clearly erroneous that reasonable minds could not differ in reaching a different result. City of Amarillo v. Copeland, 5 Cir., 218 F.2d 49.

And from MD FL ( 2016 U.S. Dist. LEXIS 81193 )

The state court's findings were clearly erroneous, beyond any possibility for reasonable minds to disagree about the factfinding in question.18 See Brumfield, 135 S. Ct. at 2277; Daniel, 2016 U.S. App. LEXIS 8952, 2016 WL 2849481, at *6; Landers, 776 F.3d at 1294.

And from D. South Dakota (196 F. Supp. 2d 960 ):

The ALJ and Appeals Council's findings are clearly erroneous and not supported by evidence that a reasonable mind would accept as being adequate to support the conclusion they reached. See Richardson v. Perales, 402 U.S. 389, 401, 28 L. Ed. 2d 842, 91 S. Ct. 1420 (1971);


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