CAFC Enters Trio of Rule 36 Judgments in Favor of Google, Unified Patents and One World Technologies

On April 10, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a trio of Rule 36 judgments that summarily affirmed a series of final written decisions by the Patent Trial and Appeal Board (PTAB). Rule 36 summary affirmances at the Federal Circuit have been a growing problem in the realm of U.S. patent law over the better part of the last decade. Without the benefit of an appellate court’s reasoned analysis of arguments raised on appeal, IP attorneys and professionals are left grasping for answers from PTAB rulings without knowing for certain whether the PTAB’s construction of obviousness doctrine is proper.

One World Technologies, Inc. v. Chevron (HK) Ltd.

The Federal Circuit’s Rule 36 opinion in One World Technologies v. Chevron (HK) left in place a series of four final written decisions from inter partes review (IPR) proceedings conducted at the PTAB, each of which found that gardening tool patent claims owned by One World were not invalid for obviousness. Chevron’s four IPR petitions instituted by the PTAB challenged the validity of claims from three One World patents: U.S. Patent No. 9596806, Control System for Controlling the Operation of a Gardening Tool; U.S. Patent No. 10070588, Gardening Tool; and U.S. Patent No. 9826686, same title as the ‘588 patent. Each of these patents protect gardening tools or mowers having an operation assembly both associated with the handle and controlled by a control system in a way that improves user safety.

Each of Chevron’s four IPR petitions asserted a lawnmower safety publication from 1999, referred to as “Outlis,” which the PTAB found to be directed to a safety device preventing access to the rotating blades of a lawnmower if the mower’s handlebar is tilted upward. Chevron contended that Outlis disclosed the control system recited by One World’s patent claims in which the motor and cutting blade are stopped until the handle is returned to its previous position. However, the PTAB found that the particular embodiment from Outlis asserted by Chevron did not include a hold-to-run control component containing an electrical supply contactor controlling the operation of the mower. The PTAB discounted expert testimony offered by Chevron during the IPR proceedings as conclusory of arguments made by Chevron’s IPR petition.

The PTAB also dismissed obviousness arguments raised by Chevron against One World’s ‘588 and ‘686 patents based on the combination of a British patent claiming a handle positionable to adjust to the stride of a lawnmower operator (“Reichert”) and an international patent application claiming an electric working machine with a switching element to apply electronic braking (“Nakano”). Chevron had argued to the PTAB that a person of ordinary skill in the art would have combined an extended detection system disclosed by Nakano with the lawnmower in Reichert. The PTAB found that Reichert’s safety improvement was related to the telescoping of the lawnmower handle and not the rotation of the blade path, and therefore there was no rational underpinning for applying Nakano’s switching element to Reichert’s telescoping handle to meet the control system limitation claimed by One World’s patents.

The final written decisions in the Chevron IPRs also dismissed constitutionality arguments raised by One World as resolved by the U.S. Supreme Court in United States v. Arthrex (2021). The PTAB further granted a motion by Chevron to amend its mandatory notices to add Techtronic Industries and Homelite Consumer Products as real parties in interest to the IPR, as well as a motion to seal by Chevron that redacted confidential information from testimony presented by a Chevron declarant during the IPR.

Longhorn HD v. Unified Patents

The Federal Circuit’s Rule 36 summary affirmance in Longhorn HD LLC v. Unified Patents, LLC upheld the PTAB’s determination that Unified Patents had proven obvious several claims of Longhorn’s U.S. Patent No. 7260846, Intrusion Detection System. Independent claim 7 of the ‘846 patent covers an intrusion detection method for extracting packets from network traffic, constructing vectors from packet components and analyzing those vectors to identify anomalous behaviors and network attacks. Unified Patents identified no other real parties in interest with a stake in the IPR proceeding brought against Longhorn’s ‘846 patent.

Much of the PTAB’s final written decision in Unified Patents’ IPR proceedings focus on asserted prior art reference U.S. Patent No. 93006966 (“Portnoy”), which claims a priority date of December 14, 2001, nearly five years earlier than the priority date of Longhorn’s ‘846 patent. Portnoy’s patent claims disclose a method for unsupervised anomaly detection that can be performed over unlabelled data and doesn’t require a purely normal training set to perform analysis.

Patent owner Longhorn had challenged the priority date of Portnoy, arguing that the provisional applications from which Portnoy was claiming priority failed to meet the requirements of 35 U.S.C. § 119(e)(1) as set out by the Federal Circuit in Dynamic Drinkware v. National Graphics (2015). Under that precedent, the specification of a provisional application must “contain a written description of the invention . . . in such full, clear, concise, and exact terms,” to enable a person of ordinary skill in the art to practice the invention claimed in the non-provisional.

The PTAB found that Portnoy’s provisional applications adequately disclosed the claimed computer system of Longhorn’s intrusion detection method and supported the portions of Portnoy itself used in Unified Patents’ obviousness challenge. The PTAB dismissed arguments by Longhorn that the Portnoy provisionals were directed to unpatentable subject matter under 35 U.S.C. § 101 because no precedent required that a prior art patent reference itself be patent-eligible to sustain a validity challenge.

Uniloc 2017 v. Google

The final Rule 36 judgment issued by the Federal Circuit on Monday was entered in Uniloc 2017 LLC v. Google LLC, which affirmed a final written decision by the PTAB invalidating several claims of Uniloc’s U.S. Patent No. 6366908, Keyfact-Based Text Retrieval System, Keyfact-Based Text Index Method, and Retrieval Method. As claimed in the ‘908 patent, a keyfact consists of “an important fact contained in sentences which constitute a document.” The patent claims a text retrieval system based on keyfacts, which overcomes limitations of previous keyword-based text retrieval systems that require precise textual queries and do not incorporate a keyword’s meaning into the text retrieval operation.

Google was successful in invalidating claims 6 through 12 of Uniloc’s ‘908 patent in an obviousness challenge based on the combination of U.S. Patent No. 5933822 (“Braden-Harder”) and a 1998 publication disclosing an inverted index within an information retrieval system to quickly find words in a document collection (“Grossman”). Unified Patents argued that Braden-Harder disclosed an information retrieval method utilizing natural language processing to produce “word-relation-word” logical form triples. The PTAB agreed that these triples “express semantic relationships between important words in an input string or phrase” equivalent to the keyfacts claimed by the ‘908 patent. The PTAB further found that a person of ordinary skill in the art would find it obvious to take Braden-Harder’s logical form tripes to generate other logic forms like the claimed keyfacts.

While Uniloc had argued that Braden-Harder combined with Grossman failed to meet the “keyfact extracting step” in claim 6 of the ‘908 patent, the PTAB noted that Uniloc failed to argue against Google’s contention that Braden-Harder’s information retrieval method met the limitations of the preamble to claim 6 of the ‘908 patent. Further, although the keyfacts of the ‘908 patent are claimed in pair form and not Braden-Harder’s triples, the PTAB found nothing in the specification or prosecution history indicating that the ‘908 patent’s keyfacts were limited to two elements at most.

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