IP Law Daily, PATENT—Fed. Cir.: PTAB failed to provide adequate reasoning in ruling on Google, Intellectual Ventures patent dispute, (Jul 10, 2017)

By Peter Reap, J.D., LL.M.

The Patent Trial and Appeal Board failed to provide adequate reasoning to support its determinations that claims 1–3, 5, 7–10, and 12–14 of Intellectual Ventures II’s (IV’s) U.S. Patent No. 6,121,960 for "a screen peripheral system" were anticipated by the prior art and that claims 1–3, 5, 7–10, and 12–14 were obvious, the U.S. Court of Appeals for the Federal Circuit has decided. Because Federal Circuit precedent demanded more of a rational explanation than that provided by the Board, the dispute was remanded for additional findings and explanations. However, the Board’s obviousness and anticipation findings with respect to claims 19-22 and 24-30 of the patent were affirmed (Google, Inc. v. Intellectual Ventures II LLC, July 10, 2017, Stoll, K.).

Google sought inter partes review of claims 1–3, 5, 7–10, 12–14, 19–22, and 24–30 of U.S. Patent No. 6,121,960 (the ’960 patent) before the PTAB. The Board instituted review and, in its final written decision, found claims 1–3, 5, 7–10, and 12–14 neither anticipated nor obvious over the prior art. It also determined that claims 19–22 and 24–30 were anticipated and obvious over the considered prior art.

The ’960 patent discloses "a screen peripheral system" that includes "a touch-activated input device for generating and displaying a composite image," which "simultaneously includes a representation of at least one key, for example a ... keyboard" and a "main image provided by the computing device." The keyboard representation is preferably laid over the main image.

According to the patent, while "[i]t is known in the art to superimpose a keyboard over an image that is output by an application being executed on a computer, i.e. to form a ‘phantom’ keyboard," prior art systems "suffer a number of disadvantages." The patented invention produces a "blended" effect by allowing individual pixels to be dedicated to both the keyboard and the main image, and purports to overcome these disadvantages.

Google asserted that all claims of the ’960 patent are anticipated by U.S. Patent No. 5,638,501 (Gough) under 35 U.S.C. § 102 and obvious in view of U.S. Patent No. 6,118,427 (Buxton) under 35 U.S.C. § 103. Gough teaches a method and apparatus for "providing a translucent overlay image over a base image on the screen of a computer system," and Buxton teaches "graphical user interfaces [(GUIs)] providing variably-transparent (transparent/semitransparent) layered objects."

Google appealed the Board’s determinations that claims 1–3, 5, 7–10, and 12–14 of the ’960 patent are neither anticipated nor obvious over the prior art. IV cross-appealed the Board’s determinations that the prior art anticipates and renders obvious claims 19–22 and 24–30.

Google’s appeal. Google’s main argument on appeal centered on a particular limitation in independent claim 1 and claims 2–3, 5, 7–10, and 12–14, which depend from claim 1. In relevant part, the claims recite "variable-pixel control[s]" that use "logical operators to provide different blending/merging effects such that individual pixels of the touch-activated input device can be dedicated simultaneously to both the main image and the representation of at least one key."

Google alleged that the Board committed two principal errors when it found that the prior art does not disclose or teach "logical operators" and, therefore, does not anticipate or render obvious claims 1–3, 5, 7–10, and 12–14 of the ’960 patent. First, Google argued that substantial evidence did not support the Board’s anticipation findings because Gough discloses logical operators, and the Board failed to adequately explain its contrary finding. Second, Google argued that substantial evidence did not support the Board’s obviousness determination because Buxton teaches logical operators and the Board failed to adequately explain its contrary finding. The Federal Circuit agreed with Google that the Board failed to adequately explain its findings on both points.

The Board (1) "must make the necessary findings and have an adequate evidentiary basis for its findings" and (2) "must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made." Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). In the anticipation findings and obviousness determinations relevant here, the Board failed to comport with these principles, the appellate court ruled.

With respect to its anticipation findings, the Board stated that it did "not agree" with Google "that either Gough’s description of the blending process depicted in Figures 10a–10f ... or Gough’s description of using the color look-up table ... expressly discloses using logical operators." Stating a disagreement with Google, however, did not amount to a satisfactory explanation for its findings, the court reasoned. The Board failed to provide any meaningful rationale for its finding.

The Board’s obviousness determination suffered from similar defects. Although the Board made several fact findings as to the scope and content of Buxton, it did not provide any rationale for those findings, including its findings that (1) Buxton’s alpha blending equation does not use operators that manipulate binary values at the bit level; and (2) arithmetic operations "differ from logical operations." In view of the opposing evidence provided by Google and the complexity and closeness of the factual issues before it, the Board’s mere "agree[ment] with IV" did not constitute a satisfactory explanation of a rational connection between the facts found and the choice made, the court held.

On remand, the Board must provide additional fact findings and explanations for its findings relating to the anticipation and obviousness determinations as to claims 1–3, 5, 7–10, and 12–14 of the ’960 patent.

IV’s cross-appeal. IV challenged the Board’s anticipation and obviousness determinations as to claims 19–22 and 24–30 of the ’960 patent based its construction of limitations in independent claims 19 and 26. The Board did not construe part (a) or part (b) of claim 19. It explained that it construes "claim terms in controversy ... only to the extent necessary to resolve the controversy." The Federal Circuit agreed with the Board that parts (a) and (b) of claim 19 did not require construction other than ordinary meaning to resolve the parties’ patentability arguments. Furthermore, the court rejected IV’s proposed claim construction, which found no support in the intrinsic evidence.

A reasonable reading of the claim would not result in interpreting step (a) as a "pixel selection limitation" that requires pixels to be selected but not blended, and step (b) as a "pixel blending limitation" that requires pixels to be blended but not selected. Thus, IV’s proposed interpretation was not a reasonable interpretation of the claim. Because IV did not contend that claims 19–22 and 24–30 were otherwise valid, the Board’s findings with respect to their invalidity were affirmed.

The case is Nos. 2016-1543 and -1545.

Attorneys: Daryl Joseffer (King & Spalding LLP) for Google Inc. Brenton R. Babcock (Knobbe, Martens, Olson & Bear, LLP) for Intellectual Ventures II LLC.

Companies: Google Inc.; Intellectual Ventures II LLC

Cases: Patent FedCirNews