IP News

At first glance, there appears to be some tension between the district court's decision in iLife and the holding of Berkheimer that "whether a claim element or combination of elements is well-understood, routine and conventional" under Step Two of Alice is a question of fact. See, 881 F.3d at 1368. After all, despite declining to grant summary judgment on the Section 101 issues, the court did not submit subsidiary fact issues related to Section 101 eligibility to the jury at trial. And, although the court noted in a footnote that inventor and expert testimony introduced at trial supported its findings under Step One (see, 2020 U.S. Dist. LEXIS 10018, at 7 n.3), the court relied exclusively on the claim language and specification in its analysis of whether the claim elements were merely routine and conventional under Step Two. See, id. at 10-12.

A more careful look, however, suggests that the iLife and Berkheimer decisions are in accord. In Berkheimer, the Federal Circuit confirmed that "[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, conventional to a skilled artisan in the relevant field, this issue can be decided … as a matter of law." See, 881 F.3d at 1368. And the Federal Circuit explained there are no disputed material facts relevant to Step Two when, although the "specification describes an inventive feature," the claim language "does not recite any of the purportedly unconventional activities disclosed in the specification." Id. at 1369-70.

In iLife, like in Berkheimer, the district court ruled that the claim elements were merely routine and conventional under Step Two as a matter of law, because even if the specification "discloses what could arguably be an inventive concept, claim 1 recites none of those details or limitations." See, 2020 U.S. Dist. LEXIS 10018, at 11-12. The iLife decision thus confirms that, even in the post-Berkheimer world, patent claims are ineligible under Step Two of Alice as a matter of law when they are drafted generically and not drawn to the particular technical solutions or advances described in the patent.

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Federal Circuit: The PTAB Cannot Institute Inter Partes Review on Obviousness Grounds Not Included in the IPR Petition, But Can Consider Evidence of "General Knowledge" in the Art

On Jan. 30, 2020, the Federal Circuit issued a decision addressing two novel issues of law related to the USPTO Patent Trial and Appeal Board's conduct of inter partes review proceedings: 1) whether the PTAB has discretion to sua sponte institute inter partes review on additional grounds not included in the IPR petition; and 2) whether the PTAB may consider the general knowledge of a person of skill in the art in the analysis of whether a claimed invention is obvious.

In Koninklijke Philips N.V. v. Google LLC, the patentee appealed the final written decision in an IPR finding that patent claims related to delivering digital content for playback on a client device are unpatentable as obvious. No. 2019-1177, 2020 U.S. App. LEXIS 2911, at 1 (Fed. Cir. Jan. 30, 2020). In the IPR, the PTAB found that the claims were obvious both over the "SMIL 1.0" prior-art reference in view of the general knowledge in the art, and over the "SMIL 1.0" reference combined with another reference, the "Hua" reference, which was cited in the IPR petition only as evidence of the general knowledge in the art. Id. at 5-8.

The Federal Circuit first considered whether the PTAB erred by exercising discretion to institute inter parties review on the ground that the claims were obvious over the combination of "SMIL 1.0" and "Hua," when that combination was not asserted by Google in its IPR petition. Relying on the language of the statute as construed by the Supreme Court in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355-56 (2018), the court noted that "it is the petition, not the Board's 'discretion,' that defines the metes and bounds of an inter partes review." Koninklijke Philips, 2020 U.S. App. LEXIS 2911, at 12. Accordingly, the court ruled that "the Board erred by instituting inter partes review based on a combination of prior art references not advanced in Google's petition." Id. at 9-12.

The Federal Circuit then considered whether "the Board erred in relying on 'general knowledge' to supply a missing claim limitation" when it found the claims to be obvious over the "SMIL 1.0" reference. Id. at 13. The court held that the statute limiting patentability challenges in an IPR to "prior art consisting of patents or printed publications." (see, 35 U.S.C. §311(b)) does not prevent the Board from considering the "general knowledge" in the art as evidence of obviousness. See, Koninklijke Philips, 2020 U.S. App. LEXIS 2911, at 13-15. The court also ruled that, in contrast to prior decisions finding that "conclusory statements and unspecific expert testimony" were not sufficient to show that it would have been obvious to modify the cited prior art to include a missing claim limitation, the PTAB properly relied on non-conclusory evidence — including expert testimony corroborated by the "Hua" reference — which confirmed that the missing limitation was "not only in the prior art, but also within the general knowledge of a skilled artisan." Id. at 15-17.

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Jeff Ginsberg is a Partner at Patterson Belknap Webb & Tyler LLP and Assistant Editor of this newsletter.