In Re: Lockwood
679 F. App'x 1021
| Fed. Cir. | 2017Background
- The PTO instituted an ex parte reexamination of U.S. Patent No. 7,010,508; the examiner found claims 8–14 anticipated by Johnson and claim 15 obvious in view of Johnson and AIC; the PTAB affirmed.
- Claim 8 (the contested independent claim) requires, inter alia, a "means for analyzing and for combining an user’s entry with a set of stored data."
- Lockwood argued "a set of stored data" should be limited to data fetched from a remote location; the PTO and Board construed it broadly to include local or remote data.
- The Board initially declined to consult original prosecution history but reconsidered and did consult it after Lockwood cited precedent; it nonetheless retained the broad construction.
- On anticipation, the Board and the court found Johnson discloses the claimed limitations because its knowledge base includes "facts" that qualify as stored data; Lockwood’s other patentability arguments were largely waived for not being raised below.
Issues
| Issue | Plaintiff's Argument (Lockwood) | Defendant/PTAB Argument | Held |
|---|---|---|---|
| Claim construction: meaning of "a set of stored data" | Term should be limited to data accessed from a remote location | Term is broad and covers data in any location, including local RAM | Court affirmed Board: "stored data" includes both local and remote data |
| Whether prosecution history disclaims locally stored data | Prosecution statements and specification show stored data means remote data only | No clear and unmistakable disclaimer; specification examples are non-limiting | Court held no disclaimer; prosecution history did not mandate narrowing |
| Anticipation by Johnson: does Johnson disclose "stored data" | Johnson's "rules" are not stored data; thus claim 8 not anticipated | Johnson’s knowledge base contains "facts" (stored data) used by an inference engine | Court held substantial evidence supports anticipation because Johnson’s facts/knowledge base satisfy stored data |
| Waiver of additional patentability arguments | N/A (Lockwood) | PTAB: many arguments not raised below are waived on appeal | Court enforced waiver: most new arguments not considered on appeal |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard: claim construction reviewed de novo, underlying factual findings for substantial evidence)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (applying Teva framework to PTAB claim constructions)
- Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012) (disclaimer requires clear and unmistakable surrender)
- In re Hyatt, 211 F.3d 1367 (Fed. Cir. 2000) (anticipation is a question of fact)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial-evidence review of factual findings)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed. Cir. 2012) (appellate courts generally do not consider issues not raised before the Board)
- Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir. 1998) (appellate courts typically will not hear issues not clearly raised below)
- Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014) (PTO is not obligated to accept an owner's proposed prosecution-history disclaimer)
- In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (limitations on appellate jurisdiction over certain PTO petition decisions)