Sightsound Technologies, LLC v. Apple Inc.
809 F.3d 1307
| Fed. Cir. | 2015Background
- SightSound owns U.S. patents 5,191,573 and 5,966,440 directed to electronic sale/download of digital media; Apple petitioned for CBM review of specific claims; Board instituted CBM review and found claims would be obvious over CompuSonics references; the Board determined patents are CBM patents and rendered final decision upholding obviousness; SightSound challenged and appeals; the court held on jurisdiction and merits; claims construed under broadest reasonable interpretation, with Teva standards applied; the court affirmed in part and remanded? (no remand)
- The CBM statute defines the scope and transitional rules; the Board’s initiation decisions are not reviewable, but the final decision is appealable; Versata II governs CBM patent status reviewability; the Board’s findings rely on a combination of primary references and prosecution history; the intrinsic evidence supports the Board’s construction that “second memory” is not limited to hard disks; the court ultimately affirmed the Board’s decision as to CBM status, construction, and obviousness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the final CBM decision is reviewable given initiation decisions | SightSound argues initiation lacked obviousness grounds not raised in petitions | Cuozzo/AIA bar on reviewing institution decisions applies; initiation decisions not reviewable | Barred from reviewing initiation; final decision reviewable |
| Whether the patents qualify as CBM patents | Patents are technological inventions/not financial activity | Patents involve financial activity and are not disqualified as technological inventions; Versata II controls | Patents qualify as CBM patents |
| How to construe 'second memory' across related patents | 'Second memory' excludes removable media like floppy disks and CDs | Broad term includes removable media; specification implies broader meaning | 'Second memory' includes removable media such as floppy disks; not limited to non-removable hard disks |
| Whether the Board’s obviousness determination is supported by substantial evidence | iTunes-related features and nexus to commercial success support non-obviousness | CompuSonics references teach all claimed elements; commercial success due to other features; nexus lacking | Obviousness affirmed regarding claims 1,2,4,5 (’573) and 1 (’440); claims 64,95 also obvious |
Key Cases Cited
- Cuozzo Speed Technologies, LLC v. Lee, 793 F.3d 1268 (Fed. Cir. 2015) (initiations of CBM/IPR decisions are not reviewable; final decision reviewable)
- Versata Development Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) (definition of CBM patent scope; authority to review under §18 intact)
- Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (initiation defects barred from review under statute)
- In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015) (bar on reviewing institution decisions; grounds could be cured by pleading)
- In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) (mere disclosure of multiple options does not teach away)