Federal Circuit Summaries
Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board.
Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a skilled artisan might somehow combine to achieve the claimed invention.
Microsoft requested three Inter Partes Reviews of a patent owned by Biscotti and argued a prior-art patent anticipated the challenged independent claims and rendered the challenged dependent claims unpatentable for anticipation or obviousness. The Board’s Final Written Decision found Microsoft did not prove the challenged claims unpatentable. With respect to the anticipation grounds, the Board concluded that Microsoft improperly mixed embodiments in the prior-art patent to account for the independent claim limitations. With respect to the obviousness grounds, the Board noted that Microsoft did not argue the prior-art patent rendered the independent claim limitations obvious based on the teachings located in different parts of the specification. Accordingly, the Board concluded that Microsoft did not prove the dependent claims would have been obvious because of the deficiencies in the underlying independent claim analysis.
On appeal, the Federal Circuit confirmed that the Board applied the correct legal standard: 1) a prior-art reference must, within its four corners, disclose all claim elements arranged as in the claim; or 2) when the reference does not expressly spell out all the limitations arranged as in the claim, a person of skill in the art reading the reference nevertheless would “at once envisage” the claimed arrangement. As to whether the Board’s anticipation analysis was factually correct, the Federal Circuit recognized that the disclosure in the asserted reference lended itself to more than one reasonable interpretation. But the Federal Circuit stated that, as an appellate court, the Federal Circuit defers to the Board’s factual findings on technical issues and held that substantial evidence supported the Board’s interpretation of the reference’s disclosure. Thus, because the Federal Circuit found substantial evidence to support the Board’s finding that the various portions of the reference were “unrelated to each other,” the Federal Circuit affirmed the Board’s decision that the reference did not anticipate the claims and that the claims are patentable.
Judge Newman dissented, arguing that, because the asserted reference “shows the same components, having the same function, combined in the same way for the same purpose,” the Board erred in its decision and that the asserted reference anticipated the claims of the patent.