Google Inc. v. Intellectual Ventures II LLC
701 F. App'x 946
| Fed. Cir. | 2017Background
- The ’960 patent (Intellectual Ventures II LLC) claims a touch-activated screen peripheral that displays a composite image combining a main image and a superimposed virtual keyboard using “variable-pixel control” and "logical operators" to allow individual pixels to be dedicated simultaneously to both images.
- Google petitioned for inter partes review (IPR) asserting anticipation by Gough and obviousness in view of Buxton (and other references); the PTAB instituted review and issued a final written decision.
- The PTAB found claims 1–3, 5, 7–10, and 12–14 not anticipated or obvious, but found claims 19–22 and 24–30 anticipated and obvious. Google appealed the adverse findings as to claims 1–3, 5, 7–10, and 12–14; IV cross-appealed the favorable findings as to claims 19–22 and 24–30.
- Central disputed limitation: whether prior art (Gough and Buxton) disclose or would render obvious “logical operators” (construed as operators that manipulate binary values at the bit level) used in the claimed variable-pixel control.
- The Federal Circuit held that the PTAB’s explanations for rejecting Google’s anticipation and obviousness arguments were inadequate (insufficient factual narrative and failure to address key evidence), vacating and remanding as to claims 1–3, 5, 7–10, and 12–14; it affirmed the PTAB’s invalidity findings for claims 19–22 and 24–30.
Issues
| Issue | Google’s Argument | IV’s Argument | Held |
|---|---|---|---|
| Whether Gough anticipates claims 1–3, 5, 7–10, 12–14 (logical-operator limitation) | Gough’s blending figures and color look-up table disclose bit-level logical operators; PTAB lacked substantial-evidence support for rejecting this | PTAB concluded Gough does not expressly disclose logical operators | Vacated/remanded: PTAB failed to adequately explain why it rejected Google’s evidence and expert testimony; further fact-finding required |
| Whether Buxton (and combinations) render claims 1–3, 5, 7–10, 12–14 obvious (logical-operator limitation) | Buxton’s alpha-blending and discrete (XOR) embodiments disclose or would be implemented via logical operations | PTAB viewed alpha-blending as arithmetic, not logical; relied on IV’s position | Vacated/remanded: PTAB did not adequately address Google’s evidence that alpha-blending can be implemented with logical ops or Google’s XOR argument |
| Proper construction/reading of claim 19’s steps (selection vs. blending) | (Google) Not directly contesting construction; focuses on prior art | IV: claim 19 requires both a pixel-selection step and a separate pixel-blending capability; PTAB inserted an implicit “or” | Affirmed: Court rejected IV’s proposed construction; ordinary meaning shows step (a) forms images (activated simultaneously) and step (b) displays composite; "wherein" clause requires capability to allow blending, not mandatory separate functions |
| Validity of claims 19–22 and 24–30 over Gough/Buxton | N/A for appeal | IV challenged PTAB’s finding of anticipation/obviousness | Affirmed: PTAB’s invalidity determinations for these claims were upheld |
Key Cases Cited
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016) (anticipation reviewed for substantial evidence)
- Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968 (Fed. Cir. 2014) (obviousness as legal conclusion with underlying factual findings)
- In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (Board must explain reasons for rejecting arguments)
- Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (PTAB explanation standards)
- Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034 (Fed. Cir. 2017) (PTAB must articulate rational connection between facts and choice)
- Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10 (Fed. Cir. 2012) (anticipation need not recite limitation verbatim)
- In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) (description for anticipation need not be ipsissimis verbis)
- In re Watts, 58 F.2d 841 (C.C.P.A. 1932) (anticipation can be shown by drawings alone)
- In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016) (need for affirmative narrative from PTAB)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (appellate court must not make Board’s factual determinations)