from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-00452.
D. Sunstein, Sunstein Kann Murphy & Timbers LLP, Boston,
MA, argued for appellant. Also represented by Robert M.
Matthew A. Smith, Smith Baluch LLP, Washington, DC, argued
for appellees. Also represented by Robert J. Kent, Turner
Boyd LLP, Redwood City, CA.
Newman, Bryson, and Moore, Circuit Judges.
NEWMAN, CIRCUIT JUDGE.
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"). 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. On Arendi's appeal, we affirm the
PTAB's decision, based on the PTAB's alternative
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).
PTAB Erred in Its View of the Prosecution
'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
1. A computerized method for information handling within a
document created using an application program, the document
including first information provided therein, the method
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
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, ...