Federal Circuit Distinguishes Kyocera and Becton Dickinson in Upholding PTAB Obvious Finding for Electronic Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday upheld a Patent Trial and Appeal Board (PTAB) ruling that certain claims of Viasat Inc.’s data error correction patent are unpatentable as obvious. The opinion was authored by Judge Bryson.

Western Digital Technologies, Inc. filed for inter partes review (IPR) of several claims of U.S. Patent No. 8,966,347 and the PTAB held all of the challenged claims unpatentable for obviousness. The Board ultimately found that any difference between Viasat’s claims and the key prior art reference (“Diggs”) “was a ‘semantic discrepanc[y]’ rather than a difference in substance.”

On appeal, Viasat focused solely on the Board’s analysis of the patentability of Claim 13. Viasat said that Claim 13 “requires that the ‘decoder’ both ‘retrieve the encoded data’ and ‘correct errors’” while in Diggs, “the Controller retrieves the encoded data, while the decoder…is ‘presented with the data already retrieved from flash by the controller.’” This represents a “fundamental structural distinction between the architecture of Diggs and the architecture of claim 13,” according to Viasat.

The CAFC did not find Viasat’s argument persuasive. The court said that figure 1 of Diggs showed the decoding mechanism was part of the controller, and therefore the Board correctly found that the controller “both receives the data stream and processes it, thus performing all the functions of the decoder recited in claim 13.”

Interpreting the Board’s finding as factual, the CAFC said there was substantial evidence to support it and that any distinction asserted by Viasat between Diggs and the ‘347 patent was “inconsequential.” Furthermore, even interpreting the Board’s finding as an implicit construction of Claim 13, which Viasat argued it was, the CAFC would have reached the same conclusion based on the claim language and specification. Viasat said that claim 13 “should be construed to require that the functions of the controller and the decoder be performed by separate entities,” but the CAFC said the specification suggests the claim language should be construed to provide that “the functions of the decoder and the controller of claim 13 can be performed by varying sets of circuits, individually or collectively.”

Viasat cited two cases to back its argument: Becton, Dickinson & Co. v. Tyco Healthcare Group, 616 F.3d 1249 (Fed. Cir. 2010) and Kyocera Senco Industrial Tools Inc. v. International Trade Commission, 22 F.4th 1369 (Fed. Cir. 2022), both of which said that when elements are listed separately, they should be construed as distinct. But the CAFC said those cases dealt with mechanical patents and that their conclusions are “less clearly applicable to electronic patents in which particular functions are frequently performed by combinations of circuitry that are not necessarily contained in segregated physical packages.” The court instead pointed to Linear Technology Corp. v. International Trade Commission, 566 F.3d 1049 (Fed. Cir. 2009) for support, a case which involved an electronic patent with two circuits and which the International Trade Commission (ITC) and the CAFC construed “to not require entirely separate and distinct circuits.”

Ultimately, said the Federal Circuit, with respect to the ‘347 patent, “[w]hile there is overlap in the Diggs circuitry that performs the functions of the controller and the decoder of the ’347 patent, nothing in the ’347 patent suggests that such overlap is impermissible.”

The court thus affirmed the PTAB’s finding that the patent claims were unpatentable for obviousness.

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Authorsharafmaksumov