Arendi S.A.R.L. v. Google LLC ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
ARENDI S.A.R.L.,
Appellant
v.
GOOGLE LLC, MOTOROLA MOBILITY LLC,
Appellees
______________________
2016-1249
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00452.
______________________
Decided: February 20, 2018
______________________
BRUCE D. SUNSTEIN, Sunstein Kann Murphy & Tim-
bers LLP, Boston, MA, argued for appellant. Also repre-
sented by ROBERT M. ASHER.
MATTHEW A. SMITH, Smith Baluch LLP, Washington,
DC, argued for appellees. Also represented by ROBERT J.
KENT, Turner Boyd LLP, Redwood City, CA.
______________________
Before NEWMAN, BRYSON, and MOORE, Circuit Judges.
NEWMAN, Circuit Judge.
2 ARENDI S.A.R.L. v. GOOGLE LLC
The Petitioners Google LLC, Motorola Mobility LLC,
and Samsung Electronics Co., Ltd. requested inter partes
review of Claims 1-79 (all the claims) of U.S. Patent No.
6,323,853 (“the ’853 patent”) owned by Arendi S.A.R.L.
(“Arendi”). 1 The Patent Trial and Appeal Board (“PTAB”)
instituted review on the ground of obviousness, and after
trial the PTAB held all of the claims unpatentable. 2 On
Arendi’s appeal, we affirm the PTAB’s decision, based on
the PTAB’s alternative claim construction.
Standards of Review
Claim construction and the determination of obvious-
ness are questions of law, and review of the PTAB’s
rulings thereon is de novo. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015); Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir.
2015). Any underlying factual findings that draw on
extrinsic evidence, such as dictionaries or treatises or
expert testimony, are reviewed for support by substantial
evidence in the record. Teva, 135 S. Ct. at 840–42; Mi-
crosoft, 789 F.3d at 1297; see generally In re Gartside, 203
F.3d 1305, 1315 (Fed. Cir. 2000) (following Dickinson v.
Zurko, 527 U.S. 150, 152 (1999), and holding that the
substantial evidence standard of the Administrative
Procedure Act governs judicial review of PTO factual
findings). Substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” Consol. Edison Co. of N.Y. v. NLRB, 305
U.S. 197, 229 (1938).
1 Samsung Electronics Co., Ltd. is not a party to
this appeal.
2 Google Inc. v. Arendi S.A.R.L., No. IPR2014-
00452, 2015 WL 4976582 (P.T.A.B. Aug. 18, 2015) (“PTAB
Op.”).
ARENDI S.A.R.L. v. GOOGLE LLC 3
The PTAB Erred in Its View of the Prosecution
History
The ’853 patent relates to a computerized method for
identifying and substituting information in an electronic
document. ’853 patent at col. 2, ll. 5–25. The claims
recite a method of information handling whereby infor-
mation such as a name or address is identified in a docu-
ment, a database is searched for related information, and
the retrieved information is displayed and entered into
the document, all on a single command from the user.
Claim 1 is representative:
1. A computerized method for information
handling within a document created using an ap-
plication program, the document including first
information provided therein, the method com-
prising:
providing a record retrieval program;
providing an input device configured to enter
an execute command which initiates a record re-
trieval from an information source using the rec-
ord retrieval program;
upon a single entry of the execute command
by means of the input device:
analyzing the document to determine if the
first information is contained therein, and
if the first information is contained in the
document, searching, using the record retrieval
program, the information source for second infor-
mation associated with the first information; and
when the information source includes second
information associated with the first information,
performing at least one of,
(a) displaying the second information,
4 ARENDI S.A.R.L. v. GOOGLE LLC
(b) inserting the second information in the
document, and
(c) completing the first information in the
document based on the second information.
The PTAB instituted inter partes review on the ground
that the subject matter would have been obvious in view
of U.S. Patent No. 5,923,848 (“Goodhand”), or in view of
Goodhand in combination with Padwick et al., “Using
Microsoft Outlook 97” (Microsoft Press 1996) (“Padwick”).
Arendi argued to the PTAB that Goodhand does not
show the claim limitation of the “single entry of the
execute command,” and that this limitation was added to
the claims during prosecution, in consultation with the
examiner, in order to distinguish a cited reference, U.S.
Patent No. 6,085,201 (“Tso”). While Goodhand was not
cited during prosecution of the ’853 patent, Tso is similar
to Goodhand and describes a system of information identi-
fication, search, retrieval, and insertion of found infor-
mation into the document. See Tso at col. 2, ll. 7–30.
On October 17, 2000, the Arendi applicant held an in-
terview with the examiner, during which
Applicant’s representative discussed the differ-
ences between the Tso and Borovoy references and
the present invention. For instance, it was point-
ed out that in the Tso reference, the user must se-
lect the text string to be processed, whereas in the
present invention, the user does not have to select
the text string to be analyzed. Applicant’s repre-
sentative may submit an After-Final Amendment
that amends the independent claim to include this
difference.
Interview Summary (Oct. 17, 2000) (J.A. 342).
On December 18, 2000, the applicant amended the
claim that issued as claim 1 of the ’853 patent to require a
ARENDI S.A.R.L. v. GOOGLE LLC 5
single entry execute command and analysis, as shown
below with underlined text added by amendment:
upon a single entry of the execute command by
means of the input device:
analyzing the document to determine if the first
information is contained therein, and
if the first information is contained in the docu-
ment, searching, using the record retrieval pro-
gram, the information source for second
information associated with the first infor-
mation. . . .
Amendment Under 37 C.F.R. § 1.116 at 1–2 (Dec. 18,
2000) (J.A. 343–44). The Remarks accompanying the
amendment included the following:
During the discussion [with the examiner on Oc-
tober 17, 2000], it was noted that columns 4–5 of
Tso teach a user selecting a text string to be pro-
cessed by clicking on the text string using various
selection means. In this respect, the present in-
vention does not require the user to select a text
string to be processed since it functions automati-
cally upon a single click of an input device, such
as a button, menu item, etc.
Id. at 2–3 (J.A. 344–45) (underlining in original).
On January 2, 2001 the examiner wrote “Reasons for
Allowance” that included the following statement:
[I]n Tso, the text string to be processed is deter-
mined by the current cursor position, as specified
by the user [see col. 4, line 31 to col. 5, line 67],
whereas the present invention “does not require
the user to select the text string to be processed
since it functions automatically upon a single click
of an input device” to determine if the first infor-
mation is contained within the document.
6 ARENDI S.A.R.L. v. GOOGLE LLC
Notice of Allowability at 2 (Jan. 2, 2001) (J.A. 349) (cita-
tion in original).
In the PTAB proceeding here on appeal, Arendi ar-
gued that this amendment was a “prosecution disclaimer.”
Arendi argued that the Goodhand reference, like Tso,
requires that the user select the information to be
searched; and that Goodhand does not show the “single
entry” command for the entire sequence of steps. Thus
Arendi argued that a “prosecution disclaimer” distin-
guishes Goodhand, as it did for Tso.
The PTAB presented alternative rulings. In its pri-
mary ruling, the PTAB held that no prosecution disclaim-
er had occurred, and construed the “single entry”
limitation of the claims to include text selection by a user.
PTAB Op. at *8–9. The PTAB stated: “we find unpersua-
sive Patent Owner’s citation of the examiner’s statements
in the Notice of Allowance. . . . ‘[I]t is the applicant, not
the examiner, who must give up or disclaim subject
matter that would otherwise fall within the scope of the
claims.’” PTAB Op. at *10 (quoting Sorensen v. Int’l
Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005)). On
this reasoning, the PTAB held that the claims were not
limited by the prosecution record. PTAB Op. at *9–11; see
also PTAB Op. at *20.
The PTAB misapplied Sorensen. In Sorensen, the
court explained that “in order to disavow claim scope, a
patent applicant must clearly and unambiguously express
surrender of subject matter during prosecution.” 427 F.3d
at 1378 (citing Middleton, Inc. v. Minn. Mining & Mfg.
Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002)). The court
stressed that a disclaimer must be clear and unmistaka-
ble (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
1314, 1325–26 (Fed. Cir. 2003)), and cited Innova/Pure
Water, Inc. v. Safari Water Filtration System, Inc., 381
F.3d 1111 (Fed. Cir. 2004), for the ruling that “it is the
applicant, not the examiner, who must give up or disclaim
ARENDI S.A.R.L. v. GOOGLE LLC 7
subject matter that would otherwise fall within the scope
of the claims.” Sorensen, 427 F.3d at 1379 (quoting Inno-
va, 381 F.3d at 1124).
In making its primary ruling, the PTAB declined to
credit the prosecution statements, and instead construed
the claims as unlimited by the prosecution history. PTAB
Op. at *11, *20. On this construction, the PTAB held the
claims invalid in view of Goodhand. That was error. “In
construing patent claims, a court should consult the
patent’s prosecution history so that the court can exclude
any interpretation that was disclaimed during prosecu-
tion.” Sorensen, 427 F.3d at 1378 (citing Phillips v. AWH
Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)).
Here the applicant amended the claims and explained
what was changed and why, and the examiner confirmed
the reasons why the amended claims were deemed allow-
able. See ACCO Brands, Inc. v. Micro Sec. Devices, Inc.,
346 F.3d 1075, 1078–79 (Fed. Cir. 2003) (stating that the
examiner’s Reasons for Allowance made “clear that the
examiner and the applicant understood” what was
changed and what the invention required). Here too, the
examiner’s “Reasons for Allowance” made clear that the
examiner and the applicant understood what the appli-
cant had changed, and what the claim amendment re-
quired.
Based on the PTAB’s error in declining to apply the
prosecution disclaimer, the ruling of unpatentability on
this ground cannot stand. The PTAB then, in an alterna-
tive ruling, construed the claims on acceptance of the
asserted prosecution disclaimer, as we next discuss:
The PTAB’s Alternative Holding is Correct
The PTAB alternatively held that even if the prosecu-
tion disclaimer were accepted, the claims are unpatenta-
ble for obviousness in view of Goodhand. PTAB Op. at
*21. The PTAB compared Goodhand with the ’853 pa-
8 ARENDI S.A.R.L. v. GOOGLE LLC
tent’s specification and construed the claims in accord-
ance with the disclaimer, and found that “Goodhand’s
processing involves essentially the same textual analysis
as disclosed in the ’853 patent, and not user text selection,
as argued by Patent Owner.” PTAB Op. at *21.
Arendi argues that Goodhand differs because
“Goodhand requires the user to identify text by placing it
in the address field . . . .” Arendi Reply Br. 1. The PTAB
found that there was not such a difference, see PTAB Op.
at *22, citing the ’853 patent’s statement that “the user
may select the information in the document to be
searched by the program in the database (e.g., by high-
lighting, selecting, italicizing, underlining, etc.), as will be
readily apparent to those skilled in the art.” ’853 patent
at col. 10, ll. 7–10.
The PTAB also found that the Goodhand system, like
that of the ’853 patent, performs an analysis of “first
information” on an “execute command” such as the
movement of a cursor, entry of a “check names” command,
or entry of a “send” command. PTAB Op. at *23. The
PTAB cited Goodhand’s Figures 6a and 6b that show
names in the address field, whereby on the “check names”
command the Goodhand system searches the database
and retrieves and displays or enters the correct infor-
mation. Id. The PTAB also found that Goodhand’s “check
names” command is the same as the “execute” command
of the ’853 patent, and produces a search of the database
and retrieval of relevant information. Id.
The PTAB concluded that “a person of ordinary skill
in the art would have understood from Goodhand that its
system performs analysis to determine if address field 600
[citing Figure 6] contains any information, and its system
is capable of breaking down the information contained in
address field 600 to isolate display names, which consti-
tute first information.” PTAB Op. at *14. The PTAB
found that Goodhand describes three forms of analysis of
ARENDI S.A.R.L. v. GOOGLE LLC 9
the text: (1) identifying and separating display names
from semicolons and spaces, which the PTAB found
analogous to the ’853 patent’s use of “paragraph/line
separations/formatting, etc.” when analyzing text;
(2) identifying fully-formatted email addresses from non-
formatted addresses, which the PTAB found analogous to
the ’853 patent’s distinguishing an email address from a
name; and (3) determining whether any text has been
placed into an address field, which the PTAB found
analogous to the ’853 patent’s taking “appropriate” ac-
tions when “the program found nothing in the document
or what is found was un-interpretable.” PTAB Op. at *15
(emphasis in original), *17–20. Substantial evidence
supports the PTAB’s findings as to the similarities be-
tween Goodhand and the ’853 patent regarding identifica-
tion and analysis of information.
The PTAB further found that Goodhand, like the ’853
patent, does not require user selection of text to be
searched. For example, Goodhand states:
When a user enters an Internet e-mail address in
the form of xxxxx@yyyyy.zzz, the user need not
create a new name in his or her directory before
the name can be resolved. The preferred e-mail
system simply identifies such an address as an In-
ternet address and resolves it without further us-
er intervention.
Goodhand at col. 20, ll. 12–17. The PTAB reasoned that
“if a system analyzes a document to determine if it con-
tains information, then the user must not have selected
information.” PTAB Op. at *23.
The PTAB also found that Goodhand, like the ’853 pa-
tent, conducts the ensuing search and retrieval of infor-
mation without intervention by the user. PTAB Op. at
*21. Indeed, Goodhand explains that the resolution
process is “automatic” and occurs “in the background,
which means that the user may continue to use the com-
10 ARENDI S.A.R.L. v. GOOGLE LLC
puter to perform other tasks while the display names are
being resolved.” See Goodhand at col. 16, l. 37 to col. 17, l.
5. Goodhand further describes the resolution of display
names “without requiring any additional input from the
user.” Id. at col. 16, ll. 54–61; col. 17, ll. 2–5; col. 20, ll.
14–17. Thus the PTAB correctly concluded that
Goodhand’s teaching of “resolution” of information “with-
out further user intervention” shows these operations
“upon a single entry of the execute command.” PTAB Op.
at *21.
In sum, the PTAB found that Goodhand shows all of
claim 1’s limitations, when giving effect to the prosecution
disclaimer and limiting the scope of the “single entry”
command. This finding is supported by substantial
evidence. On the PTAB’s findings, the alternative conclu-
sion of unpatentability on the ground of obviousness in
view of Goodhand is sustained.
Arendi does not argue the patentability of any other
claim. Thus we affirm the PTAB’s decision of unpatenta-
bility of the additional claims. See In re Kaslow, 707 F.2d
1366, 1376 (Fed. Cir. 1983) (“Since the claims are not
separately argued, they all stand or fall together.”).
Conclusion
In view of our affirmance of the alternative claim con-
struction based on the prosecution disclaimer, we con-
clude that the decision of unpatentability based on
obviousness is correct, and is affirmed.
AFFIRMED