Is This Really an Invention? Revisiting Ultramercial


In re Scroggie, No. 2011–1016 (Fed. Cir. Sept. 16, 2011) (Chief Judge Rader, Judges Prost and O’Malley) (per curiam) (nonprecedential)

When is a “computer” a “personal computer”? That was the big question in this appeal from the Board of Patent Appeals and Interferences (BPAI). The ’939 application being appealed is part of a patent family that includes several patents for distributing purchase incentives and discounts over a network. This particular application was filed in 1999 and was first examined in 2002. As we can see from the prosecution history, the 1999 application has been appealed to the BPAI twice and was rejected both times. The second BPAI decision was appealed to the Federal Circuit.

We’ll Just Use Yours

The BPAI rejected the claims because of a couple of prior art references. One of those references is the ’675 patent issued in 1989 with a system that looks like this:

 

Fig. 1 of 675 patent
Fig. 1 of ’675 patent

 

The BPAI agreed with the examiner’s anticipation rejection of several claims using the ’675 patent (meaning that the patent disclosed everything in those claims) and obviousness rejection of the remaining claims. The applicant argued that the computer used in the ’675 patent wasn’t a “personal computer,” which was the term used in the rejected claims. To determine the meaning of the term, the BPAI used a dictionary definition of “personal computer,” finding that the term should mean “a computer built around a microprocessor for use by an individual.”

An interesting point to take away is how much the court deferred to the BPAI’s interpretation. When a district court judge interprets claim language (in an infringement case), the court reviews that de novo, meaning that the court starts from scratch and gives no deference to that judge. But when the BPAI interprets claim language in the context of its inquiry into the patentability of the pending claims, the court just determines if that interpretation is “reasonable.” So even if the court might have come to a different conclusion on its own, it will only reverse the BPAI’s definition if it’s not reasonable.

This application doesn’t define “personal computer” anywhere, and the applicant’s attorneys apparently never offered a definition. So, the court found that it was reasonable for the BPAI to use a contemporary dictionary definition.

The court affirmed the BPAI’s rejections, agreeing that the claims are obvious.

I think the result is right, but the formalistic nature of patent law makes the court jump through a bunch of hoops to get there. Really, the ’675 patent had all of the features of the ’939 application, it was just using an older computer system. I have to believe it would be obvious to upgrade the system to personal computers connected over the Internet as technology moves forward.

As they say, the court’s approach may have been like going ’round your elbow to get to your thumb, but they got there in the end.

Is This Really an Invention? Revisiting Ultramercial

It’s interesting to compare this rejected application to Ultramercial, LLC v. Hulu, LLC, No. 2010–1544 (Fed. Cir. Sept. 15, 2011), which we wrote about the other day and CyberSource Corp. v. Retail Decisions, Inc., No. 2009–1358 (Fed. Cir. Aug. 16, 2011), which we wrote about a few weeks ago. None of these specifications provide specific guidance for implementing the claimed inventions, such as actual source code, hardware specifications, protocols, or other specifics about how to practice the invention. In CyberSource, the court concluded that the claims at issue were not patent-eligible, but the court in Ultramercial decided that the claim at issue there was patent-eligible.

In this opinion, Chief Judge Rader and Judge O’Malley, both of whom were on the panel in Ultramercial, are arguably demonstrating the approach that opinion advocates. Rather than dealing with the claim here through the lens of patent-eligibility, they simply apply the other parts of the statute, namely anticipation and obviousness.

By the way, if you’re thinking that the court couldn’t have raised patent-eligibility (35 U.S.C. § 101) because the BPAI didn’t use it, the court did exactly that in In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009), and most recently in In re Aoyama, No. 2010–1552 (Fed. Cir. Aug. 29, 2011), which we wrote about a couple of weeks ago. And the currently active judges who were on the Comiskey panel? Judges Dyk and Prost. You may remember from our post on Ultramercial that those two judges strongly favor using patent-eligibility to filter out unworthy patents and pending applications.

You can read the Scroggie opinion here.

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