Digest of Oracle Am. Inc. v. Google, Inc., No. 2014-1351 (Fed. Cir. Mar. 20, 2015) (nonprecedential). On appeal from the USPTO, Patent Trial and Appeal Board (“Board”). Before Dyk, O’Malley, and Taranto.
Procedural Posture: Oracle appealed from the Board’s rejection of U.S. Patent No. 6,910,205 (“the ’205 patent”) as anticipated by a prior art reference, Magnusson. CAFC affirmed in part, reversed in part, vacated in part, and remanded.
- Claim Construction: CAFC held that the district court’s construction of the term “overwriting” was erroneous. Based on the language in the claims and the specification, CAFC construed “overwriting” to mean “replacing information in a particular memory location with new information in that location.”
- Anticipation: Because the Board’s finding of anticipation was based on an erroneous claim construction, CAFC vacated the Board’s finding that Magnusson anticipated the overwriting claims of the ’205 patent and remanded with respect to those claims.
- Enablement: Because the Board considered enablement based on an erroneous construction of overwriting, CAFC vacated the Board’s enablement determination with respect to the overwriting claims and remanded with respect to those claims.
- Enablement and Anticipation: CAFC concluded that Magnusson was an enabling reference with respect to the claims that did not include the overwriting limitation and affirmed the Board’s holding that these claims were anticipated. Oracle failed to establish that the Examiner’s finding that a person of one of ordinary skill would have known how to introduce the “TRANSLATED” instruction to meet the generating and representing steps was not supported by substantial evidence.