CAFC Scraps Xerox Patent in Wins for Snap, Meta and X

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) ruling that a Xerox Corporation patent was unpatentable as obvious, despite finding error with the Board’s claim construction analysis. The opinion was authored by Chief Judge Moore; Judge Stark joined only in Part II.

Snap, Inc., the parent company of Snapchat, challenged claims 1-20 of Xerox’s U.S. Patent No. 9,208,439 for a method of receiving information about a user’s surroundings from a mobile device and sharing that information with apps that can then recommend activities or products to the user. In its claim constriction analysis, the PTAB determined that the term “‘context graph’ does not require ‘the graph to store information about a user in the form of nodes and edges’ and is not ‘limiting as to the particular way in which facts and assertions about a user are stored in the model.’”

Xerox argued that the Board “erred by construing ‘context graph’ to not require any graph-based properties, such as nodes and edges,” and the CAFC agreed, noting that “the plain language of claim 1 requires a ‘context graph.’” While Snap pointed to claim 20, which it said “is tied to a specific embodiment of ‘context graph’ that has graph-based properties,” thereby suggesting that claim 1 is not so limited, the court said “such properties are already inherent in claim 1’s ‘context graph’” and claim 20 instead limits claim 1(c)’s “‘sending a notification of context graph change’ element by requiring the notification includes certain changes to the context graph (i.e., changes to nodes and edges, which are properties of a context graph).”

Snap asserted that the specification’s statement, “[a] context graph is an in-memory model that stores facts and assertions about a user’s behavior and interests,” was lexicography that suggests “context graph” encompass non-graphical models, but the CAFC pointed to the claims and written description, where the court said Xerox “repeatedly indicates that ‘context graph’ is a graph-based model.” The statement Snap relied on as proof that the term is not limited to a graph-based model is “no more than a general descriptive statement which is completely accurate without being definitional,” said the opinion.

The court likened the term “context graph” to the word “bicycle,” explaining that “[t]he bicycle has not been redefined to now include a tractor/car/motorcycle/plane/boat/canoe (all of which are vehicles that a user can ride to get from place to place).”

 From CAFC opinion

Concluding that the proper construction of the term requires graph-based properties, the CAFC then turned to the Board’s obviousness analysis, which entailed a finding that the prior art (“Nitz”) discloses claim 1[b] under the Board’s construction of “context graph,” or,  in the alternative, that Nitz, combined with teachings of its incorporated references “discloses claim 1[b] even if ‘context graph’ has graph-based properties.”

The court said substantial evidence supported the latter finding, and agreed with the PTAB’s determination that a different combination of the prior art disclosed claim1(c).

Finally, the CAFC agreed with the Board’s motivation to combine analysis, rejecting Xerox’s argument that a skilled artisan would not have looked to combine Nitz with the relevant prior art reference “because its system has an additional authorization layer to protect data privacy on mobile devices, which decreases efficiency.” Ultimately, said the court, “Xerox’s argument amounts to ‘contrary evidence [that] is insufficient to overcome substantial evidence review.’” The Board’s decision was thus affirmed.

The decision also resulted in the dismissal of two other appeals, Xerox v. Meta Platforms and Xerox v. X Corp., both of which also concerned the ‘439 patent, for mootness.

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