Case Information
*3 Before M OORE M AYER , and W ALLACH , Circuit Judges. M OORE , Circuit Judge
Function Media appeals from the decisions of the Board of Patent Appeals & Interferences (Board) finding unpatentable various claims of U.S. Patent Nos. 7,249,059 and 7,240,025 during an reexamination. Function Media challenges the Board’s claim construction and invalidity findings. For the reasons below, we affirm- in-part , vacate-in-part , and remand for further proceed- ings.
B ACKGROUND
The ’059 and ’025 patents relate to an electronic ad- vertising system that links sellers and buyers of electronic advertisements. See, e.g. , ’025 patent, at [57]. The pa- tents disclose a computer system that employs a central controller to read information from user interfaces to facilitate transactions involving electronic advertisements between buyers, sellers, and third-party professionals, e.g. , agents of a seller. [57], col. 3. l.19–col.4 l.58. Claim 1 of the ’059 patent is representative:
A computer system allowing a third party profes- sional to manage, create and publish customized electronic advertisements, for a seller, to internet media venues owned or controlled by other than the seller and other than the third party profes- sional, comprising:
. . .
a third interface to the computer system through which the third party professional is . . . prompted to input information to create an electronic adver- tisement for the seller for publication to the select- ed internet media venues; . . . and a computer controller of the computer system pro- cessing and publishing the electronic advertise- ment to one or more of the selected internet media venues . . . .
’059 patent, claim 1 (emphases added). The ’025 patent claims contain similar limitations but recite that a “sell- er,” instead of a “third party professional,” is prompted to “input information to create an electronic advertisement.” E.g. , ’025 patent, claim 1.
Function Media sued Google for infringing the ’059
and ’025 patents. After a trial, the district court entered
judgment that the asserted claims of the ’059 and ’025
patents were not infringed, that a number of claims were
invalid, and that Google failed to prove invalidity of
claims 52, 63, 90, and 231 of the ’025 patent.
See
Final
Judgment,
Function Media, L.L.C. v. Google, Inc.
, No.
2:07-CV-279 (E.D. Tex. Sept. 9, 2011), ECF No. 492, at 1–
2 (
Final Judgment
). Function Media appealed, and we
recently affirmed every challenged aspect of the district’s
court judgment.
Function Media, L.L.C. v. Google Inc.
, ---
F.3d ---,
During the pendency of the district court litigation, Google initiated reexaminations of the ’059 and ’025 patents. The U.S. Patent & Trademark Office (PTO) rejected the claims based on two references, Ad- Force and U.S. Patent No. 5,666,493 (Wojcik). AdForce discloses computer software that allows a user to upload Internet banner images and customize those images for display on an Internet website. Wojcik discloses a soft- ware system for managing customer orders and inventory. The PTO rejected most of the claims as anticipated by *5 FUNCTION MEDIA AdForce. For claims 24 and 50 of the ’059 patent, the PTO concluded that AdForce in combination with Wojcik rendered those claims obvious. The Board upheld the rejections, including the rejections of claims 52, 63, 90, and 231 of the ’025 patent, and Function Media now appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
“Anticipation is a question of fact, which we review for
substantial evidence, while claim construction is a matter
of law, reviewed
de novo
.”
In re Am. Academy of Sci. Tech
Ctr.
, 367 F.3d 1369, 1363 (Fed. Cir. 2004) (citations
omitted). Obviousness is a legal question based on under-
lying factual determinations, including whether a prior
art reference is analogous art.
Graham v. John Deere Co.
,
I.
Before we address the merits of Function Media’s ap- peal, we discuss the scope of the reexamination proceed- ing in view of the Function Media litigation. The PTO has not issued a final decision addressing whether it can maintain the reexamination of claims 52, 63, 90, and 231 of the ’025 patent after the entry of judgment in the Function Media litigation. Under the version of 35 U.S.C. § 317(b) that governs this appeal, the PTO is barred from maintaining an reexamination of a patent claim once a “final decision has been entered” in a civil action holding that the third-party requester failed to “sustain[] its burden of proving the invalidity” of that patent claim. Optional Inter Partes Reexamination Procedure Act of 1999, Pub.L.No. 106–113, §§ 4604, 113 Stat. at 1501A–570 (repealed 2012); Bettcher Indus., Inc. v. Bunzl USA, Inc. , 661 F.3d 629, 646 (Fed. Cir. 2011). *6 We have held that this rule only applies when “all appeals have terminated.” This provision existed to prevent duplicative, harassing actions against a patentee. If a defendant brought an invalidity challenge in a district court litigation and was unsuccessful, it is not permitted to bring the same challenge in an inter partes reexamina- tion. This is exactly what happened with claims 52, 63, 90, and 231 of the ’025 patent. Defendants challenged the validity of these four claims and lost in the district court. The district court decision became final and appeals were filed. However, there was no appeal regarding the validi- ty of claims 52, 63, 90, and 231.
The PTO explained that it denied Function Media’s
petition to dismiss from the reexamination claims 52, 63,
90, and 231 of the ’025 patent because Function Media’s
appeal in the district court litigation raised claim con-
struction issues that might impact the validity of those
claims. J.A. 7268–70. Function Media has requested that
the PTO reconsider its decision on the basis that Google is
barred from continuing to litigate its invalidity claims on
remand because it failed to appeal from the district
court’s judgment of no invalidity.
See Odetics, Inc. v.
Storage Tech. Corp.
,
It would be improper for us to address the merits of the Board’s findings that claims 52, 63, 90, and 231 of the ’025 patent are not patentable. Thus, we vacate the *7 FUNCTION MEDIA Board’s decision on those claims and remand the case to the PTO for it to rule on Function Media’s petition to dismiss.
II.
We now turn to the merits of Function Media’s ap-
peal. Function Media first challenges the Board’s claim
construction. It argues that the Board wrongly concluded
that the claims did not require the central computer
controller to create the electronic advertisements. Our
court, however, has already concluded that the claims of
the ’059 and ’025 patents do not require the central com-
puter to create the electronic advertisement.
Function
Media
, 2013 WL 516366, at *7–8. We specifically held
that the creation of the advertisement by “either the seller
or the central computer would satisfy the claims.”
Id.
at
*7. We are bound by that construction.
Hynix Semicon-
ductor, Inc. v. Rambus Inc.
,
Function Media also challenges the factual findings regarding the AdForce and Wojcik references. It asserts that AdForce does not anticipate the claims because it discloses that a user, not the software, creates the elec- tronic advertisements. Regarding the Board’s obvious- ness findings, Function Media argues that a skilled artisan would not have considered Wojcik to be analogous art because the reference relates to processing food or- ders, not electronic presentations and advertising.
Both arguments are without merit. AdForce discloses a user interface through which a user uploads a graphic, selects an ad style and an ad size, and enters text to accompany the graphic. J.A1183–85. A skilled artisan could glean from this disclosure that the AdForce soft- ware creates the advertisement—the software packages the graphic and the accompanying text to create the electronic advertisement displayed on a website. *8 C
Similarly, substantial evidence supports the Board’s finding that Wojcik would have been considered analo- gous art. Although Wojcik does not specifically relate to electronic advertising, it discloses a computer system for managing the transaction flow relating to various goods and services. J.A. 4603. Based on that disclosure, one of ordinary skill could find that Wojcik is reasonably perti- nent to the problem the inventors of the ’059 patent set out to solve—managing the flow of electronic advertising transactions between buyers, sellers, and third-party professionals. See ’059 patent, at [57].
C ONCLUSION
We have considered the parties’ remaining arguments and conclude that they are without merit. For the rea- sons stated above, the Board’s decisions are
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED. OSTS
Costs to Appellees.