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Arendi S.A.R.L. v. Google LLC

United States Court of Appeals, Federal Circuit

February 20, 2018

ARENDI S.A.R.L., Appellant
v.
GOOGLE LLC, MOTOROLA MOBILITY LLC, Appellees

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-00452.

          Bruce D. Sunstein, Sunstein Kann Murphy & Timbers LLP, Boston, MA, argued for appellant. Also represented by Robert M. Asher.

          Matthew A. Smith, Smith Baluch LLP, Washington, DC, argued for appellees. Also represented by Robert J. Kent, Turner Boyd LLP, Redwood City, CA.

          Before Newman, Bryson, and Moore, Circuit Judges.

          NEWMAN, CIRCUIT JUDGE.

         The Petitioners Google LLC, Motorola Mobility LLC, and Samsung Electronics Co., Ltd. requested inter partes review of Claims 1-79 (all the claims) of U.S. Patent No. 6, 323, 853 ("the '853 patent") owned by Arendi S.A.R.L. ("Arendi").[1] The Patent Trial and Appeal Board ("PTAB") instituted review on the ground of obviousness, and after trial the PTAB held all of the claims unpatentable.[2] On Arendi's appeal, we affirm the PTAB's decision, based on the PTAB's alternative claim construction.

         Standards of Review

         Claim construction and the determination of obviousness are questions of law, and review of the PTAB's rulings thereon is de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841-42 (2015); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015). Any underlying factual findings that draw on extrinsic evidence, such as dictionaries or treatises or expert testimony, are reviewed for support by substantial evidence in the record. Teva, 135 S.Ct. at 840-42; Microsoft, 789 F.3d at 1297; see generally In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000) (following Dickinson v. Zurko, 527 U.S. 150, 152 (1999), and holding that the substantial evidence standard of the Administrative Procedure Act governs judicial review of PTO factual findings). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938).

         The PTAB Erred in Its View of the Prosecution History

         The '853 patent relates to a computerized method for identifying and substituting information in an electronic document. '853 patent at col. 2, ll. 5-25. The claims recite a method of information handling whereby information such as a name or address is identified in a document, a database is searched for related information, and the retrieved information is displayed and entered into the document, all on a single command from the user. Claim 1 is representative:

1. A computerized method for information handling within a document created using an application program, the document including first information provided therein, the method comprising:
providing a record retrieval program;
providing an input device configured to enter an execute command which initiates a record retrieval from an information source using the record retrieval program;
upon a single entry of the execute command by means of the input device:
analyzing the document to determine if the first information is contained therein, and
if the first information is contained in the document, searching, using the record retrieval program, the information source for second information associated with the first information; and
when the information source includes second information associated with the first information, ...

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