Investpic LLC v. International Business Machines Corp.
816 F.3d 1352
| Fed. Cir. | 2016Background
- InvestPic LLC (inventor Samir Varma) owns U.S. Patent No. 6,349,291, which claims systems and methods for resampled statistical analysis (e.g., bootstrap) of investment data, including a claimed "bias parameter" that "determines a degree of randomness in sample selection in a resampling process."
- IBM and SAS requested inter partes reexamination; SAS separately requested ex parte reexamination of related claims. The PTAB cancelled multiple claims, relying principally on the prior art article by Sortino (bootstrap analyses by scenario) and Barraquand (parallel processing / quadratic resampling), and Maggioncalda (networked financial advisory UI) in obviousness combinations.
- Key contested claim language: (1) the bias-parameter limitation (whether it must operate during selection of samples from a defined sample space), and (2) the phrase "a statistical analysis request corresponding to two or more selected investments" (whether a single request must itself correspond to at least two investments or whether multiple requests/serial analyses suffice).
- Varma amended claims during reexamination to clarify the bias-parameter language (adding "in sample selection") and to require the request "corresponding to two or more selected investments." The examiner and Board nonetheless found Sortino anticipated/obviousified the claims.
- On appeal, the Federal Circuit construed the bias-parameter limitation to require that the bias be applied during sample selection in the resampling process (not merely in creating separate sample spaces or post-hoc weighting), and construed the "a statistical analysis request corresponding to two or more selected investments" phrase to require that a single request correspond to at least two investments.
Issues
| Issue | Plaintiff's Argument (Varma/InvestPic) | Defendant's Argument (IBM/SAS/PTAB/Examiner) | Held |
|---|---|---|---|
| Construction of "bias parameter determines a degree of randomness in sample selection in a resampling process" | Bias must be applied to selection of samples from a defined sample space during resampling (not to creation of the sample space or post-bootstrapping weighting) | Sortino's scenario sorting and post-bootstrap weighting satisfy the bias limitation | Court: Held for Varma — bias parameter must control sample selection in resampling; Board erred; reverse cancellations of claims relying on that error |
| Meaning of "a statistical analysis request corresponding to two or more selected investments" | The singular request must itself correspond to two or more investments (i.e., a single analysis covering multiple investments) | A system that can receive multiple requests or perform serial single-investment analyses meets the limitation; "comprising" and "a" allow plurality | Court: Held for Varma on construction — single request must correspond to two or more investments; Board's interpretations unreasonable; vacate and remand those claim rejections |
| Whether Sortino discloses bias-parameter limitation (anticipation/obviousness) | Sortino does not bias sample selection within a sample space; it performs random bootstraps within scenarios and later weights results — therefore does not disclose the claimed bias usage | PTAB/examiner viewed Sortino's scenario selection and weighting as fulfilling the bias limitation | Court: Sortino does not disclose bias applied to sample selection; Board's reliance on Sortino for these claims lacked substantial evidentiary support; reversal for claims dependent on this issue |
| Whether Sortino discloses a single resampled analysis of two-or-more investments (anticipation/obviousness) | Sortino analyzes asset categories (e.g., S&P 500) as single assets; it does not show a single resampling across multiple investments | PTAB/examiner considered that serial analyses or the S&P 500 (composed of many securities) satisfied the limitation | Court: Board’s reliance on serial requests or treating an index as multiple investments was unreasonable; vacated rejections and remanded for further proceedings (possible factual issues in Sortino declaration noted for Board on remand) |
Key Cases Cited
- Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) (standard for reviewing claim construction in PTO proceedings)
- In re Rambus, Inc., 753 F.3d 1253 (Fed. Cir. 2014) (substantial evidence review of anticipation findings)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (standard for reviewing obviousness determinations)
- Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418 (Fed. Cir. 1994) (all claim elements must be proved met even if redundant)
- Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337 (Fed. Cir. 2007) (meaning of transitional terms like "comprising")
- Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372 (Fed. Cir. 1998) (limitations within claims not rendered open-ended merely by "comprising")
- Fin Control Sys. Pty. Ltd. v. OAM, Inc., 265 F.3d 1311 (Fed. Cir. 2001) (same-term-in-different-claims presumption of same meaning)
- Digital-Vending Servs. Int'l LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270 (Fed. Cir. 2012) (same-phrase presumption across claims)
- American Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324 (Fed. Cir. 2011) (same-phrase presumption across claims)
- PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359 (Fed. Cir. 2007) (claim construction principles)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (procedural considerations on reliance on declarations on appeal)
- Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011) (context matters in construing indefinite article "a")