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That’s So Metal: Narrow Limitation Doesn’t Contradict Broader One

by | Mar 14, 2024 |

The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet the requirements of both. Maxell, Ltd. v. Amperex Technology Limited, Case No. 23-1194 (Fed. Cir. Mar. 6, 2024) (Prost, Taranto, Chen, JJ.)

Maxell owns a patent directed to a rechargeable lithium-ion battery. Maxell filed suit against Amperex alleging infringement. Following claim construction proceedings, the district court found the claims to be indefinite based on two limitations in the independent claim that recited the variable M1. The relevant claim limitations read:

1- wherein M1 represents at least one transition metal element selected from Co, Ni and Mn, [. . .]

2- wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole[.]

The district court found that these two limitations contradicted each other because limitation 1 recited Co (cobalt) as an optional transition metal selected from a Markush group for M1, whereas limitation 2 recited a minimum Co content of 30% in M1. The district court reasoned that the claims were indefinite because limitation 1 did not require the presence of cobalt, whereas limitation 2 did. In its claim construction order, the district court stated that simultaneous recitation that a claim element is both optional and required is a “contradiction on its face.” Maxell appealed.

The Federal Circuit found no contradiction between the two limitations, explaining that “[i]t is perfectly possible for a selected [M1] to satisfy both of these limitations.” The Court reasoned that in the context of Maxell’s patent, it was of no import that the two requirements (i.e., that M1 must comprise cobalt, nickel (Ni) or manganese (Mn), and that M1 must comprise at least 30% cobalt) were recited in separate clauses. It was enough that both limitations could be simultaneously satisfied. The Court further reasoned that the inclusion of two requirements in a claim did not create an otherwise nonexistent contradiction because the claim language must be read as a whole and not merely on a limitation-by-limitation basis. The Court also looked to the prosecution history to provide context for the ordering of the claim limitations at issue and explained that limitation 2 was added during prosecution to overcome a prior art reference that primarily used nickel as a transition metal.

The Federal Circuit explained that contrary to the district court’s characterization, the subject claim limitations did not grant options. Instead, they stated requirements that must be met to fall within the scope of the claimed invention. The Court noted that, rather than contradicting limitation 1, limitation 2 narrowed it. If limitation 2 had been recited in a dependent claim, there would be no contradiction, notwithstanding that proper construction of a dependent claim requires importation of all limitations from the claims from which it depends. The same conclusion applied when both limitations were [...]

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I Hear Ya – No Intent to Deceive, No Inequitable Conduct

by | Mar 7, 2024 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the asserted patents were not unenforceable for inequitable conduct, determining that statements made by counsel to the US Patent & Trademark Office (PTO) to revive an abandoned application were not shown to have been made with deceptive intent. Freshub, Inc. v. Amazon.com, Inc., Case No. 2022-1391 (Fed. Cir. Feb. 26, 2024) (Reyna, Taranto, Chen, JJ.)

Freshub sued Amazon for infringement of patents directed to voice processing technology. Amazon denied infringement and defended on the basis that the patents should be declared unenforceable based on inequitable conduct by Freshub’s parent company, Ikan Holdings, during prosecution of the application at the PTO. Amazon alleged that Ikan improperly revived an earlier-abandoned parent application from which the asserted patents descend.

The predicate facts are as follows: In June 2011, the PTO issued a final office action rejecting the claims of the parent application. Ikan failed to respond to the office action, rendering the application abandoned in January 2012. In January 2017, Ikan petitioned the PTO to revive the application. In support of its revival petition, Ikan’s counsel asserted that “[t]he entire [five-year] delay in filing the required reply . . . was unintentional.” “[R]elying on petitioner’s duty of candor and good faith,” the PTO granted the petition, eventually resulting in issuance of the three patents-in-suit.

At trial, a jury found that Amazon did not infringe the asserted patents. The district court subsequently conducted a bench trial on inequitable conduct and found that Amazon had failed to prove inequitable conduct by clear and convincing evidence. Freshub appealed, arguing that it was entitled to judgment as a matter of law that Amazon infringed. Amazon cross-appealed, seeking reversal of the district court’s inequitable conduct ruling.

The Federal Circuit affirmed the district court’s determination of failure to prove inequitable conduct, finding that Amazon had not shown by clear and convincing evidence that Ikan misrepresented or omitted material information with the specific intent to deceive the PTO. The Court focused its analysis on deceptive intent, finding that the district court did not commit clear error in rejecting Amazon’s inequitable conduct defense.

The Federal Circuit noted that the record was minimal due to the passage of time and the limited testimonial and documentary evidence available, as well as the many unchallenged claims of attorney-client privilege. Nevertheless, both parties presented evidence concerning Ikan’s intent between 2012 and 2017.

To support its position, Freshub relied on the 2017 statement by Ikan’s counsel asserting that Ikan’s delay in filing its reply to the PTO’s final office action was unintentional. The Federal Circuit found this evidence probative, even without the presentation of additional evidence to further explain why the period of non-response was so long. On the other hand, Amazon presented specific evidence that it contended demonstrated deceptive intent. For example:

  • The 2017 statement to revive the parent application was made by the same counsel that prosecuted the application at the time of its 2012 abandonment.
  • Ikan’s counsel [...]

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Consider Invention When Assessing Support for Claimed Range

by | Feb 29, 2024 |

The US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a Patent Trial & Appeal Board finding that the claims at issue were either invalid under 35 U.S.C. §112 as unsupported by written description or obvious under 35 U.S.C. §103. RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., Case No. 22-1862 (Fed. Cir. Feb. 9, 2024) (Chen, Stoll, Cunningham, JJ.)

RAI owns a patent with claims directed to “electrically powered smoking devices that provide an inhalable vapor by heating tobacco or other substances without significant combustion.” Philip Morris challenged the patent in a post-grant review (PGR).

The Board issued a final written decision concluding that two dependent claims, which recited limitations requiring a heating member with “a length of about 75% to about 85% of a length of the disposable aerosol forming substance,” lacked § 112 written description support. The specification disclosed ranges of 75% – 125%, 80% – 120%, 85% – 115% and 90% – 110%. The Board explained that written description support was lacking because “the claimed range is different from and substantially narrower than the specific ranges disclosed in the specification.”

The Board found that the remaining claims were unpatentable as obvious based on a combination of prior art references where the heater found in one reference, Robinson, was replaced with the heater from another, Greim. Robinson explained that its heating element could be altered and acknowledged design choices, thus inviting skilled artisans to select an alternate appropriate heating element. Greim disclosed certain advantages to its heater. Thus, the Board found that a skilled artisan would have been motivated to replace Robinson’s heater with that of Greim, rendering the claims obvious. RAI appealed.

Citing its expert, RAI argued that the ranges disclosed in the specification all centered around 100%, so that a person of ordinary skill in the art (POSITA) would not “conclude that the inventors possessed a range that went no higher than 85%[.]” The Federal Circuit began by summarizing a line of numerical range cases, including:

  • In re Wertheim (CCPA 1976), which found that a described range of 25% – 60%, with examples of 36% and 50%, supported a claim directed to a range of 35% – 60%.
  • In re Blaser (CCPA 1977), which found that a described range of 60° – 200° C supported a claim reciting a range of 80° – 200° C.
  • Kolmes v. World Fibers Corp. (Fed. Cir. 1997), which found that a described range of 4 – 12 turns per inch, and preference for 8 turns per inch, supported claims directed to 8 – 12 turns per inch.
  • In re Baird (CCPA 1965), which found that a relatively unexplained disclosure of 32 – 176° F did not support claims directed to a range from 40° to “at least as low as” 60° F.
  • Indivior UK v. Dr. Reddy’s Laboratories (Fed. Cir. 2021), which found that:
    • Disclosure of ranges of at least 25%, at least 50% and “any” value [...]

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I Hear Ya: Claim Terms Not as Narrow as Features in Specification

by | Feb 29, 2024 |

The US Court of Appeals for the Federal Circuit vacated a district court’s final judgment of noninfringement, finding that the district court improperly narrowed the constructions of certain claim terms to particular features recited in the specification. Promptu Sys. Corp. v. Comcast Corp., Case No. 22-1939 (Fed. Cir. Feb. 16, 2024) (Moore, Prost, Taranto, JJ.)

Promptu filed a lawsuit against Comcast alleging infringement of two patents. The patents describe and claim subject matter generally related to voice recognition but have materially different specifications. The first patent describes using remote voice recognition systems to deliver content in response to a user’s speech request (content delivery patent), while the second patent describes using remote voice recognition systems to control a user’s television set based on a user’s speech command (control patent).

The content delivery patent’s representative claim recites a method for using a “back channel containing a multiplicity of identified speech channels from a multiplicity of user sites presented to a speech processing system at a wireline node in a network supporting at least one of cable television delivery and video delivery” as well as a “method of operating at least part of a speech recognition system coupled to a wireline node in a network [for] processing a multiplicity of received identified speech channels to create a multiplicity of identified speech content.” Meanwhile, the claim of the control patent recites “a centralized multi-user voice operated television control system, comprising . . . a centralized processing station configured to receive and process second output from a multitude of television set top boxes by applying voice recognition.”

During the underlying district court proceeding, the district court adopted claim constructions proposed by Comcast. Based on those claim constructions, Promptu stipulated to and moved for entry of a final judgment of no infringement. After the district court granted Promptu’s motion, Promptu appealed.

Promptu challenged the district court’s construction of three claim limitations from the content delivery patent (“back channel,” “multiplicity of received identified speech channels” and “speech recognition system coupled to a wireline node”) and one claim limitation from the control patent (“centralized processing station”). In accordance with long-standing precedent, the Federal Circuit reviewed claim construction by affording the words of the claims their ordinary meaning in the context of the claims and specification.

The Federal Circuit concluded that the district court erred by narrowly construing “back channel” in the content delivery patent as being limited to a “fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine” because nothing in the claim language or the specification required limitation to a “fixed band of frequencies or time slot.” To the contrary, the specification of the patent disclosed the back channel broadly while recognizing the possibility of using different protocols and formats along different subsections of the path or route from user site to speech recognition system. Given the breadth of the techniques for the back channel disclosed in the specification, the Court found no reason to narrow the claims [...]

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PTO on AI Inventorship: Will the Real Natural Human Inventors Please Stand Up?

by | Feb 22, 2024 |

On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions. The guidance reinforces the patentability of AI-assisted inventions and sets forth preliminary guidelines for determining inventorship with a focus on human contributions in this process.

The PTO released the guidance in response to President Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (October 30, 2023). The executive order mandated that the PTO, within 120 days, present “guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process, including illustrative examples in which AI systems play different roles in inventive processes and how, in each example, inventorship issues ought to be analyzed.”

As in any inventorship determination for non-AI-generated inventions, “AI-assisted inventions must name the natural person(s) who significantly contributed to the invention as the inventor or joint inventor, even if an AI system may have been instrumental in the creation of the claimed invention.” As is the case for all inventions, the threshold question for inventorship in AI-assisted inventions is who made a “significant contribution” to the conception of at least one claim of the patent. For this evaluation, the Pannu factors (Federal Circuit 1998, Pannu v. Iolab Corp.) for inventorship should be considered.

With specific reference to AI-assisted inventions, the notice provides a non-exhaustive list of principles based on the Pannu factors for AI inventorship determinations:

  • Use of AI systems is not a barrier to inventorship. Use of an AI system does not negate a natural person making a significant contribution to an AI-assisted invention. To be an inventor, a natural person must have significantly contributed to each claim in a patent application or patent.
  • Recognizing a problem or obtaining a solution may be insufficient. The mere recognition of a problem or having a general goal or plan to pursue or obtain a solution from the AI input does not rise to the level of conception. The way in which a person constructs a prompt in view of the problem for eliciting a particular solution may be important for qualifying that person as an inventor.
  • Reduction to practice alone is insufficient. Reducing an invention to practice alone does not constitute a “significant contribution,” nor does the mere recognition and appreciation of the AI system output rise to the level of inventorship, especially where the output would be apparent to those of ordinary skill. By contrast, a significant contribution may exist where a person makes a significant contribution to the output or conducts a successful experiment from the output to create an invention.
  • Developing an essential building block of an AI system may be sufficient. A person developing an essential building block of an AI system to address a specific problem, where the building block is instrumental in eliciting a solution from the output, may be a proper inventor.
  • “Intellectual domination” over [...]

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Uncle Sam Can March In: Government Licenses Under Bayh-Dole Aren’t Subject to “Strict Timing Requirements”

by | Feb 22, 2024 |

In an appeal from the US Court of Federal Claims, the US Court of Appeals for the Federal Circuit affirmed a determination that 35 U.S.C. § 202(c)(4), a provision of the Bayh-Dole Act, operates to provide a license to the government for federally funded research based on work that occurred prior to the effective date of a funding agreement. University of South Fl. Board of Trustees v. United States, Case No. 22-2248 (Fed. Cir. Feb. 9, 2024) (Reyna, Taranto, Stoll, JJ.)

University of South Florida (USF) owns a now-expired patent directed to transgenic mice expressing a certain gene causing an accelerated pathology for Alzheimer’s disease. The patent’s subject matter was conceived while the two named inventors worked at USF, but both inventors transitioned their work to the Mayo Clinic prior to the first actual reduction to practice of the claimed invention. The mice remained at USF, under the care of USF professors, while the named inventors continued to oversee the project from Mayo. The first actual reduction to practice occurred while the inventors were at Mayo.

While the named inventors were still at USF, one inventor submitted a grant application to the National Institutes of Health (NIH). The NIH awarded the inventors (while they were still at USF) a grant covering the mouse project. After the inventors moved to Mayo but prior to the award grant, the designated grantee changed from USF to Mayo. In November 1997, Mayo and USF entered into a subcontract whereby Mayo would pay USF for grant-covered work occurring at USF.

USF sued the United States alleging infringement of the mouse patent by a third party with the government’s authorization and consent. The third party was producing and using mice covered by the patent for the government. The US asserted a license defense under the Bayh-Dole Act, which gives the government a license to practice certain federally funded inventions. The Claims Court granted judgment to the US under its license defense, determining that USF operated pursuant to an implied contract with Mayo based on the understanding that Mayo would use funding from the NIH grant to pay USF for work done there. The Claims Court therefore determined that USF was a contactor with an implied subcontract that was a funding agreement under Bayh-Dole. Since the invention was therefore invented by a government contractor operating under a funding agreement, it was a “subject invention” that was first actually reduced to practice under a government contract. Therefore, under Bayh-Dole, the government was entitled to a license. USF appealed, arguing that the invention was not a “subject invention” within the meaning of § 202(c)(4) of Bayh-Dole.

USF argued that to trigger § 202(c)(4), a funding agreement must be in place at the time of the relevant work and there was no implied agreement in April 1997, the time the work that led to the reduction to practice commenced. The Federal Circuit determined that the November 1997 subcontract was adequate to support entitlement to claim a government license under § [...]

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We Meant It – No Incorporation by Reference

by | Feb 22, 2024 |

The US Court of Appeals for the Federal Circuit issued a sua sponte order regarding the impermissibility of incorporating by reference arguments from one brief into another, especially when doing so causes the brief to exceed the permitted word count. Promptu Sys. Corp. v. Comcast Cable Commc’ns, LLC, Case No. 22-1093 (Fed. Cir. Feb. 16, 2024) (Moore, CJ; Prost, Taranto, JJ.) (per curiam).

On January 11, 2024, the Federal Circuit heard oral arguments in four related cases involving Promptu and Comcast. During oral argument, the Court asked counsel for the appellee to submit a brief within 10 days, totaling no more than 10 pages, to show why he should not be sanctioned for attempting to incorporate by reference multiple pages – almost 2,000 words – of argument from the brief in one case into another, thereby causing the brief to exceed the word limit.

The Federal Circuit recounted that it has “repeatedly held” that incorporating by reference to exceed word count is not permitted, citing its holdings on this issue in Microsoft v. DataTern (2014) and more recently in Medtronic v. Teleflex Life Sciences (2023). Appellee counsel responded that he was unaware of the Microsoft decision until the appellant’s reply brief had already been filed. The Court accepted his assertion but noted with disapproval that the precedential Microsoft decision admonished “the exact same law firm before us now for the exact same behavior,” and that once made aware of the Microsoft decision, counsel did nothing to remedy the impropriety.

Practice Note: The Federal Circuit did not award sanctions against appellate counsel but sternly warned future litigants that it is improper to incorporate by reference arguments from one brief into another unless in compliance with Fed. R. App. P. 28, and that such incorporation is never permitted if it results in exceeding the applicable word limit. The Court stated that going forward, such a violation “will likely result in [an award of] sanctions.”



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Lost Connection: Preliminary Injunction Against Unreleased Product Is a No-Go

by | Feb 15, 2024 |

Addressing a preliminary injunction motion directed to a competitor’s yet-to-be-released product, the US Court of Appeals for the Federal Circuit determined that the district court did not abuse its discretion in finding that the patent holder failed to establish irreparable harm based on speculative evidence. SmartSky Networks, LLC v. Gogo Bus. Aviation, LLC, Case No. 23-1058 (Fed. Cir. Jan. 31, 2024) (Cunningham, Chen, Hughes, JJ.) (non-precedential).

SmartSky Networks and Gogo Business Aviation are competing aviation network providers that offer air-to-ground in-flight internet networks for aircrafts. SmartSky sued Gogo in early 2020, alleging that Gogo’s 5G network infringed four patents related to wireless in-flight internet connections. SmartSky also moved to preliminarily enjoin Gogo from selling its 5G network, which is not yet operational and has yet to be released. In late 2022, the district court denied SmartSky’s motion for preliminary injunction, finding that SmartSky had not shown a likelihood of success or irreparable harm. SmartSky appealed.

SmartSky first moved to supplement the record with new materials relevant to market share, sales and switching costs. The Federal Circuit first denied SmartSky’s motions to supplement the record, noting that it would not consider new evidence on appeal absent extraordinary circumstances, such as instances where the court can take judicial notice of new facts or where the facts would alter the appropriateness of injunctive relief. Because the district court found no likelihood of irreparable harm, despite acknowledging that SmartSky had shown consumer stickiness and direct competition between the parties, the Court concluded that documents related to market share, sales and switching costs would not alter the appropriateness of injunctive relief. The Court further declined to take judicial notice of the facts, which were subject to dispute.

The Federal Circuit then turned to SmartSky’s argument that the district court erred in finding no likelihood of irreparable harm from lost sales and market share, price erosion, lost reputation and goodwill, and lost research and development and investments. Regarding lost sales, SmartSky argued that the district court ignored Gogo’s sales of AVANCE L5 equipment (used for Gogo’s 4G and 5G networks) and that Gogo’s 5G network was not “yet-to-be-released” because it had been on sale since late 2021. The Court found these arguments unpersuasive. The Court noted that SmartSky did not dispute that Gogo had yet to launch its 5G network and found that the district court did not abuse its discretion in concluding that any such sales were quantifiable. As for AVANCE L5, the Court observed that the equipment was currently sold as part of Gogo’s unaccused 4G network, and that the alleged harm would only occur if Gogo launched its 5G network and customers upgraded. Thus, the Court found that any harm from the sales of AVANCE L5 was highly speculative, particularly because the parties are not the only two players in the market and customers may have other non-infringing options.

SmartSky next argued that the district court ignored testimony that customers used Gogo’s pricing to negotiate discounts from SmartSky. The Federal Circuit disregarded this [...]

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Sliced and Diced: Operating Manuals Are Printed Publications

by | Feb 15, 2024 |

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed publication prior art. Weber, Inc. v. Provisur Technologies, Inc., Case Nos. 22-1751; -1813 (Fed. Cir. Feb. 8, 2024) (Reyna, Hughes, Stark, JJ.)

Provisur owns two patents related to advanced high-speed mechanical slicers used in food processing facilities that precisely slice and package food items such as meats and cheeses. The key components recited in the patent claims are a “loading apparatus” designed to load food items, a “feeding apparatus” responsible for supplying food items to a slicer, and a “stop gate” intended to regulate the assembly of food items prior to their entry into the slicing mechanism.

Weber filed inter partes review (IPR) petitions challenging the validity of several claims of the patents based on certain operating manuals. During the IPR proceedings, the Board determined that Weber’s operating manuals did not qualify as prior art printed publications because they were distributed selectively and subject to confidentiality restrictions. The Board also concluded that the prior art combinations, which included Weber, failed to disclose crucial claim limitations, notably the “disposed over” and “stop gate” limitations. The Board found the challenged claims not unpatentable. Weber appealed.

Weber argued that the Board erred in determining that the operating manuals were insufficiently accessible to constitute printed publications, specifically contending that the Board misapplied the Federal Circuit’s 2009 decision in Cordis Corp. v. Boston Scientific Corp. The Court agreed. It explained that unlike Cordis, where academic monographs were limited to distribution among a select few, Weber’s operating manuals were intended for distribution to purchasers of the machines and others to provide instructions on food slicer usage and maintenance. The Court explained that the evidence in the form of delivery records and email exchanges showed that manuals were available to customers upon purchase or request. The Federal Circuit also noted that the manuals were not bound by any confidentiality restrictions. The Court thus concluded that the operating manuals qualified as printed publications.

Turning to claim construction, the Federal Circuit reversed the Board’s interpretation of the “disposed over” and “stop gate” limitations. Consistent with long-standing precedent, the Court emphasized the importance of examining intrinsic evidence, including the claims themselves, the specification and the patent’s prosecution history. Weber argued that the claims’ language implied a broader feed apparatus positioning over the loading apparatus without strict alignment requirements. Supported by expert opinions, Weber contended that neither the claim language nor the specification mandated direct alignment. The Court agreed with Weber. The Court emphasized that “disposed over” demanded only a general positioning of the feed apparatus above the loading apparatus, not a direct positioning as the Board had construed.

Similarly, concerning the “stop gate” limitation, the Federal Circuit agreed that the Board’s determination was not supported by substantial evidence because evidence, such as the manuals, disclosed the claimed conveyer mechanism in a manner sufficient to establish its [...]

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Even a Non-Explicit Claim Construction Can Be Erroneous

by | Feb 15, 2024 |

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board decision finding the challenged patent claims not obvious over the prior art. The Court found that the Board, after concluding that no claim construction was required, implicitly construed the claim limitation at issue and did so erroneously. Google LLC v. EcoFactor, Case Nos. 22-1750; -1767 (Fed. Cir. Feb. 7, 2024) (Reyna, Taranto, Stark, JJ.)

Google filed a petition for inter partes review (IPR) challenging claims of an EcoFactor patent related to dynamic climate control systems that factor outside weather conditions and thermal conditions inside the home to balance comfort and energy savings. The challenged claims define a method for reducing the cycling time of a climate control system involving “retrieving a target time at which [the] structure [(e.g., a house)] is desired to reach a target temperature.” The challenged method claims recite a step of “determining a first time prior to said target time at which [the] climate control system should turn on to reach the target temperature by the target time.” The relevant claim limitation reads:

[D]etermining a first time prior to said target time at which said climate control system should turn on to reach the target temperature by the target time based at least in part on [i] said one or more thermal performance values of said structure, [ii] said performance characteristic of said climate control system, [iii] said first internal temperature, [iv] said first external temperature, and [v] the forecasted temperature.

During the IPR proceedings, the parties disputed whether a prior art reference disclosed a method involving determining a first time prior to the target time based on a first internal temperature. Google argued that the prior art taught a calculation of a first time prior to the target time based on thermal performance values (input [i]) calculated from internal temperature values (input [iii]). EcoFactor argued that each of the inputs in the claim limitation was a distinct value not dependent on or calculated from any other input. Based on the claim language, the Board determined that claim construction was unnecessary and concluded that inputs [i] – [v] of the relevant claim limitation were separate inputs using different data. The Board concluded that Google had not shown that the challenged claims were unpatentable, reasoning that Google’s theory of obviousness relied on a single input as the basis for both input [i] and input [iii].

Google appealed. Google argued that although the Board stated that no construction was necessary, it incorrectly construed the claim limitation to require five discrete inputs.

The Federal Circuit agreed with Google, finding that the Board’s assessment of the claim limitation implicitly established the claim scope by requiring inputs [i] – [v] to be completely separate. The Court reasoned that the plain claim language did not provide any indication that none of the listed inputs could be based on any other input(s). Imputing this requirement into the limitation was therefore an act of claim construction.

The Federal [...]

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