The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method (“CBM”) review of Promptu’s U.S. Patent No. RE44,326 E (“the RE ’326 patent”), finding multiple bases to invalidate claims related to using voice commands to order videos over a network. See Comcast Cable Communications, LLC v. Promptu Sys. Corp., Case No. CBM2018-00034 (Paper 31) (Oct. 7, 2019). The decision was handed down just months after the Board invalidated nearly all of the same claims for obviousness in a related inter partes review.
In CBM review, any statutory ground of invalidity may be considered, whereas inter partes review is limited to invalidity arguments based on grounds that could be raised under 35 U.S.C. § 102 or § 103, and only on the basis of prior art consisting of patents or printed publications.
Here the PTAB exercised its ability to consider expansive statutory grounds for invalidation, axing claims 1-21 of the RE ’326 patent on multiple grounds. The Board found that they were directed to patent ineligible subject matter under §101, improperly recaptured subject matter that had been surrendered during the prosecution of the original application in violation of § 251, and failed to meet the definiteness requirement of §112, ¶ 2. Each of the three bases for invalidation is briefly discussed below.
Evaluating the patent-eligibility question, the PTAB applied the two-step Alice framework and considered the USPTO’s Guidance related to same. The Board concluded that the claims were directed to the abstract idea of “transmitting a spoken order for information, processing the order using generic speech recognition software, and delivering the information using generic devices and network paths.” Paper 31, at 52. Turning to the second step in the analysis, the Board found that the claims did not include an “inventive step” sufficient to transform the abstract idea into patent eligible subject matter. Id. at 65.
The Board then considered Comcast’s argument that Promptu had broadened the claims during the reissue proceeding to improperly recapture subject matter that it had previously surrendered during prosecution of the original patent application. Comcast argued that Promptu had distinguished prior art during prosecution of the original patent application by including claim language to require a multiplicity of user devices, but then eliminated this language during the reissue proceeding, thus broadening the claims to improperly recapture single user devices. The Board analyzed the patent claims, prosecution history, and the parties’ arguments and was ultimately persuaded by Comcast—the claims were found to be invalid for violating the recapture rule. Id. at 67-87.
Finally, the Board found two dependent claims invalid for indefiniteness because the phrase “said user device” as used in those claims lacked antecedent basis. The phrase “said user device” could refer to a “first device” or “second device” or could introduce a separate user device altogether, thus the claims failed to inform, with “reasonable certainty,” a person of ordinary skill in the art about the scope of the invention. Id. at 87-89.
As we have previously reported, CBM review is a transitional program that currently has a “sunset” date of September 2020 and CBM filings have been decreasing as this date approaches. Nevertheless, this case stands as a reminder that “it ain’t over ‘til it’s over”—as long as CBM review remains available, patent claims under CBM review remain open to attack on multiple statutory grounds