Uniloc USA, Inc. v. Sega of America, Inc.
711 F. App'x 986
| Fed. Cir. | 2017Background
- The ’216 patent (filed Sept. 21, 1993) claims a software registration system that generates a local and remote "licensee unique ID" and enables full use only if the IDs match; claims are in means-plus-function form ("generating means").
- The ’216 patent claims priority to two Australian provisionals (Sept. 21, 1992 and Oct. 26, 1992), but the patent added a sixth embodiment (a summation algorithm/summer) that was not in those provisionals.
- Uniloc previously litigated claim construction in Uniloc I/III, where the district court and this court construed "generating means" as function = generate local/remote ID and structure = a summation algorithm or a summer (and equivalents).
- Several companies petitioned for inter partes review (IPR); the PTAB held claims 1–20 unpatentable (some claims invalidated on other grounds not challenged here).
- The Board found the Australian provisionals lacked written-description support for the summation-structure, so the ’216 patent could not claim priority to them; with a later priority date, U.S. Patent No. 5,509,070 (Schull) anticipates claims via its password/ID generation (including a checksum).
- Uniloc appealed, arguing the Board applied the wrong written-description standard (requiring §112 ¶6 structure in the provisionals) and that Schull does not disclose a summation algorithm.
Issues
| Issue | Plaintiff's Argument (Uniloc) | Defendant's Argument (Appellees / Board) | Held |
|---|---|---|---|
| Whether the Australian provisionals satisfy §112 ¶1 written-description for means-plus-function claims without disclosing the §112 ¶6 structure | Provisionals need only satisfy §112 ¶1 (possession); Board improperly required ¶6-level structure | Claim scope must first be construed; for means-plus-function claims that structure (¶6) governs what must be shown in the priority document | Affirmed: Board applied correct sequence—construe claims (¶6), then assess ¶1 written description; provisionals lack support for the summation structure |
| Whether the provisionals disclose a summation algorithm (structure of "generating means") | Figures/text ("combine/added to") reasonably convey a summation algorithm | Provisionals' language is ambiguous; expert testimony shows many non-summation ways to "combine" or "add" information; no immediate disclosure of summation | Affirmed: substantial evidence supports Board that provisionals do not disclose a summation algorithm |
| Whether Schull anticipates the ’216 patent by disclosing the "generating means" structure | Schull does not disclose a summation algorithm; checksum/concatenation are not equivalent | Schull discloses concatenation and a two-digit checksum; checksums use addition (check digits), which is a summation operation | Affirmed: Board reasonably found Schull's checksum discloses a summation algorithm, anticipates the claims |
| Whether the Board improperly weighed expert testimony (request to reweigh) | Uniloc asks court to give more weight to its expert (e.g., checksum via tables) | Factfinder may credit experts; appellate court may not reweigh substantial-evidence determinations | Affirmed: court will not reweigh evidence; substantial evidence supports Board findings |
Key Cases Cited
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written-description requires showing possession of claimed subject matter)
- Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) (original disclosure must describe invention with all claimed limitations)
- Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999) (means-plus-function claims include corresponding structure in specification)
- X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358 (Fed. Cir. 2014) (claims must be construed before assessing priority support)
- Waldemar Link v. Osteonics Corp., 32 F.3d 556 (Fed. Cir. 1994) (factfinder must determine whether skilled artisan would immediately discern limitation)
- Utter v. Hiraga, 845 F.2d 993 (Fed. Cir. 1988) (priority-document §112 ¶1 sufficiency is legal question; written-description facts reviewed for substantial evidence)
- Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013 (Fed. Cir. 2017) (appellate court will not reweigh factual determinations)
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (endorsing prior district-court construction that summation structure derived from sixth embodiment)