Newman, Circuit Judge.
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").
Standards of Review
Claim construction and the determination of obviousness are questions of law, and review of the PTAB's rulings thereon is de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., ___ U.S. ___, 135 S.Ct. 831, 841-42, ___ L.Ed.2d ___ (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; Microsoft, 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, 119 S.Ct. 1816, 144 L.Ed.2d 143 (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, 59 S.Ct. 206, 83 S.Ct. 126 (1938).
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 information such as a name or address is identified in a document, 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:
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 identification, search, retrieval, and insertion of found information into the document. See Tso at col. 2, ll. 7-30.
On October 17, 2000, the Arendi applicant held an interview with the examiner, during which
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 single entry execute command and analysis, as shown below with underlined text added by amendment:
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:
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:
Notice of Allowability at 2 (Jan. 2, 2001) (J.A. 349) (citation in original).
In the PTAB proceeding here on appeal, Arendi argued 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" distinguishes Goodhand, as it did for Tso.
The PTAB presented alternative rulings. In its primary ruling, the PTAB held that no prosecution disclaimer 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 unpersuasive 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 unmistakable (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 Systems, 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 subject matter that would otherwise fall within the scope of the claims." Sorensen, 427 F.3d at 1379 (quoting Innova, 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 prosecution." Sorensen, 427 F.3d at 1378 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)).
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 alternative 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 prosecution disclaimer were accepted, the claims are unpatentable for obviousness in view of Goodhand. PTAB Op. at *21. The PTAB compared Goodhand with the '853 patent's specification and construed the claims in accordance 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 highlighting, 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 information. 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 constitute first information." PTAB Op. at *14. The PTAB found that Goodhand describes three forms of analysis of 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" actions when "the program found
The PTAB further found that Goodhand, like the '853 patent, does not require user selection of text to be searched. For example, Goodhand states:
Goodhand at col. 20, ll. 12-17. The PTAB reasoned that "if a system analyzes a document to determine if it contains information, then the user must not have selected information." PTAB Op. at *23.
The PTAB also found that Goodhand, like the '853 patent, conducts the ensuing search and retrieval of information 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 computer 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 "without 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 conclusion 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 unpatentability 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.").
In view of our affirmance of the alternative claim construction based on the prosecution disclaimer, we conclude that the decision of unpatentability based on obviousness is correct, and is affirmed.