IP Law Daily, PATENT—Fed. Cir.: Non-obviousness of certain claims of wireless device communication patent reversed, (Sep 20, 2023)

By Kevin M. Finson, J.D.

The PTAB’s holding was based on improper addition of unwritten claim limitations.

A Patent Trial and Appeal Board decision finding patentable certain claims about communications between nearby devices using both short and long-range networks has been reversed by the U.S. Court of Appeals for the Federal Circuit because the Board had impermissibly read extra requirements into the patent language. The court affirmed the Board’s obviousness finding as to most claims, rejecting the patent owner’s cross-appeal based on erroneous claim construction (Target Corporation v. Proxicom Wireless, LLC, September 20, 2023, Hughes, T.).

Proxicom Wireless, LLC (Proxicom) was the owner of U.S. Patents Nos. 8,090,359 (the ’359 patent) and 8,374,592 (the ’592 patent), which shared substantially similar specifications and were directed to the exchange of information and transactions between two wireless devices in close proximity by means of verifying the devices were close to each other using a short range network such as Bluetooth and then processing a transaction or exchange of information using a long range network such as a cellular network.

Target Corporation (Target) petitioned for inter partes review of several claims of each patent on the ground of obviousness in light of two prior art references. The Patent Trial and Appeal Board (PTAB) held most of the claims were obvious but that a handful were not shown unpatentable. Target appealed the findings that certain claims were not unpatentable and Proxicom cross-appealed the findings that the remaining claims were unpatentable.

Claim construction. Target argued that the Board erred by concluding that a “list of goods” required by the patent language must be interacted with as part of the e-commerce transaction. The prior art reference at issue had specifically described sending a restaurant menu using a similar system, and the parties disputed whether the sending of a menu was the same as the list of goods in the patent language.

The court held that there was nothing in the claim terms to support the Board’s holding that the patent required a user to interact with the list of goods in any way, only that the list of goods must be sent. Since the restaurant menu was a list of goods, the prior art reference rendered this claim obvious.

Timing. Target argued that the Board legally erred by finding that a prior art reference that met all of the claim limitations some of the time, but not all of the time, did not render the claims obvious. The court agreed that the prior art reference, which had as one embodiment a system that was intended to send a coupon for an item located near the user but which could also be used to send coupons related to other, non-nearby goods, met the limitation when it was used with nearby goods and could therefore be said to teach the same idea claimed in the challenged claims.

Tangibility. In its cross-appeal, Proxicom argued that the Board erred by adopting a claim construction that allowed a specified “entity” or “object” to be intangible, such as content promoted by a billboard. The court indicated that it saw no legally relevant difference between the intangible content and the tangible, physical body of the billboard because user would necessarily be within some degree of physical proximity of the latter to perceive the former, and furthermore quoted language from the patent claims themselves indicating that an intangible object such as an electronic music or video file would be within the definition set out by the writers of the patent themselves.

The Federal Circuit reversed and remanded the case for further proceedings on Target’s appeal, and affirmed the decision in Proxicom’s cross-appeal.

The case is Nos. 2022-1282, 2022-1283, 2022-1338, 2022-1339.

Attorneys: James Lawrence Davis, Jr. (Ropes & Gray LLP) for Target Corporation. Aaron Hand (Bunsow De Mory LLP) for Proxicom Wireless, LLC.

Companies: Target Corporation; Proxicom Wireless, LLC

Cases: Patent FedCirNews