508 F. App'x 953
Fed. Cir.2013Background
- Function Media appeals Board rejections of claims from the '059 and '025 patents in inter partes reexamination.
- Patents disclose an electronic advertising system with a central controller that processes and publishes ads based on information from user interfaces to facilitate transactions among buyers, sellers, and third‑party professionals.
- Claim 1 of the '059 patent recites a third interface enabling a third party professional to input information to create an ad for publication to select internet media venues, with a computer controller processing and publishing the ad.
- District court judgment found many claims invalid and determined Google failed to prove invalidity of claims 52, 63, 90, and 231 of the '025 patent; Function Media appealed and this court affirmed aspects of the judgment.
- During the litigation, PTO rejections relied on AdForce and Wojcik; the Board upheld most rejections, including the challenged '025 claims.
- The Federal Circuit vacates the Board’s decision on claims 52, 63, 90, and 231 and remands for dismissal, while addressing merits of claim construction and validity in other respects.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of reexamination post judgment | Google cannot continue invalidity challenges on remand. | Board may continue reexamination per law and constructions. | Remanded; claims 52, 63, 90, and 231 dismissed. |
| Claim construction: central controller must create ads | Central controller must create advertisements. | Creation can be by seller or central computer. | Agreed with prior construction; central controller need not create the ad. |
| Anticipation by AdForce | AdForce discloses user-created ads, not software-created ads. | AdForce teaches software creation of ads by packaging graphics/text. | AdForce anticipates claims; sufficient to show software-created ads. |
| Analogous art: Wojcik for obviousness | Wojcik may be non-analogous for advertising context. | Wojcik reasonably pertains to managing transaction flow applicable to advertising. | Wojcik is reasonably pertinent; supports obviousness findings. |
Key Cases Cited
- In re American Academy of Sci. Tech Ctr., 367 F.3d 1369 (Fed. Cir. 2004) (anticipation/obviousness standards and analogical reasoning)
- Hynix Semiconductor, Inc. v. Rambus, Inc., 645 F.3d 1336 (Fed. Cir. 2011) (claim construction and factual review standards)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (obviousness framework and factual underpinnings)
- In re Klein, 647 F.3d 1343 (Fed. Cir. 2011) (analogous art analysis)
- Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) (final decision and preclusion principles for inter partes reexamination)
- Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed. Cir. 1999) (preclusion and litigation strategy in patent challenges)