United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ARENDI S.A.R.L.,
`Appellant
`
`v.
`
`GOOGLE LLC, MOTOROLA MOBILITY LLC,
`Appellees
`______________________
`
`2016-1249
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2014-
`00452.
`
`______________________
`
`Decided: February 20, 2018
`______________________
`
` BRUCE D. SUNSTEIN, Sunstein Kann Murphy & Tim-
`bers LLP, Boston, MA, argued for appellant. Also repre-
`sented 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.
`
`
`for the Federal Circuit
`______________________
`
`ARENDI S.A.R.L.,
`Appellant
`
`v.
`
`GOOGLE LLC, MOTOROLA MOBILITY LLC,
`Appellees
`______________________
`
`2016-1249
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2014-
`00452.
`
`______________________
`
`Decided: February 20, 2018
`______________________
`
` BRUCE D. SUNSTEIN, Sunstein Kann Murphy & Tim-
`bers LLP, Boston, MA, argued for appellant. Also repre-
`sented 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.
`
`
`
`2
`
`
`
` ARENDI S.A.R.L. v. GOOGLE LLC
`
`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 obvious-
`ness 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; Mi-
`crosoft, 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).
`
`
`1 Samsung Electronics Co., Ltd. is not a party to
`this appeal.
`2 Google Inc. v. Arendi S.A.R.L., No. IPR2014-
`00452, 2015 WL 4976582 (P.T.A.B. Aug. 18, 2015) (“PTAB
`Op.”).
`
`
`
`ARENDI S.A.R.L. v. GOOGLE LLC
`
`3
`
`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 infor-
`mation such as a name or address is identified in a docu-
`ment, 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 ap-
`plication program, the document including first
`information provided therein, the method com-
`prising:
`providing a record retrieval program;
`providing an input device configured to enter
`an execute command which initiates a record re-
`trieval from an information source using the rec-
`ord 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 infor-
`mation associated with the first information; and
`when the information source includes second
`information associated with the first information,
`performing at least one of,
`(a) displaying the second information,
`
`
`
`4
`
`
`
` ARENDI S.A.R.L. v. GOOGLE LLC
`
`(b) inserting the second information in the
`document, and
`(c) completing the first information in the
`document based on the second information.
`The PTAB instituted inter partes review on the ground
`that the subject matter would have been obvious in view
`of U.S. Patent No. 5,923,848 (“Goodhand”), or in view of
`Goodhand in combination with Padwick et al., “Using
`Microsoft Outlook 97” (Microsoft Press 1996) (“Padwick”).
`Arendi argued to the PTAB that Goodhand does not
`show the claim limitation of the “single entry of the
`execute command,” and that this limitation was added to
`the claims during prosecution, in consultation with the
`examiner, in order to distinguish a cited reference, U.S.
`Patent No. 6,085,201 (“Tso”). While Goodhand was not
`cited during prosecution of the ’853 patent, Tso is similar
`to Goodhand and describes a system of information identi-
`fication, search, retrieval, and insertion of found infor-
`mation into the document. See Tso at col. 2, ll. 7–30.
`On October 17, 2000, the Arendi applicant held an in-
`terview with the examiner, during which
`Applicant’s representative discussed the differ-
`ences between the Tso and Borovoy references and
`the present invention. For instance, it was point-
`ed out that in the Tso reference, the user must se-
`lect the text string to be processed, whereas in the
`present invention, the user does not have to select
`the text string to be analyzed. Applicant’s repre-
`sentative may submit an After-Final Amendment
`that amends the independent claim to include this
`difference.
`Interview Summary (Oct. 17, 2000) (J.A. 342).
`On December 18, 2000, the applicant amended the
`claim that issued as claim 1 of the ’853 patent to require a
`
`
`
`ARENDI S.A.R.L. v. GOOGLE LLC
`
`5
`
`single entry execute command and analysis, as shown
`below with underlined text added by amendment:
`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 docu-
`ment, searching, using the record retrieval pro-
`gram,
`the
`information
`source
`for
`second
`information associated with the
`first
`infor-
`mation. . . .
`Amendment Under 37 C.F.R. § 1.116 at 1–2 (Dec. 18,
`2000) (J.A. 343–44). The Remarks accompanying the
`amendment included the following:
`During the discussion [with the examiner on Oc-
`tober 17, 2000], it was noted that columns 4–5 of
`Tso teach a user selecting a text string to be pro-
`cessed by clicking on the text string using various
`selection means. In this respect, the present in-
`vention does not require the user to select a text
`string to be processed since it functions automati-
`cally upon a single click of an input device, such
`as a button, menu item, etc.
`Id. at 2–3 (J.A. 344–45) (underlining in original).
`On January 2, 2001 the examiner wrote “Reasons for
`Allowance” that included the following statement:
`[I]n Tso, the text string to be processed is deter-
`mined by the current cursor position, as specified
`by the user [see col. 4, line 31 to col. 5, line 67],
`whereas the present invention “does not require
`the user to select the text string to be processed
`since it functions automatically upon a single click
`of an input device” to determine if the first infor-
`mation is contained within the document.
`
`
`
`6
`
`
`
` ARENDI S.A.R.L. v. GOOGLE LLC
`
`Notice of Allowability at 2 (Jan. 2, 2001) (J.A. 349) (cita-
`tion in original).
`In the PTAB proceeding here on appeal, Arendi ar-
`gued that this amendment was a “prosecution disclaimer.”
`Arendi argued that the Goodhand reference, like Tso,
`requires that the user select the information to be
`searched; and that Goodhand does not show the “single
`entry” command for the entire sequence of steps. Thus
`Arendi argued that a “prosecution disclaimer” distin-
`guishes Goodhand, as it did for Tso.
`The PTAB presented alternative rulings. In its pri-
`mary ruling, the PTAB held that no prosecution disclaim-
`er had occurred, and construed the “single entry”
`limitation of the claims to include text selection by a user.
`PTAB Op. at *8–9. The PTAB stated: “we find unpersua-
`sive Patent Owner’s citation of the examiner’s statements
`in the Notice of Allowance. . . . ‘[I]t is the applicant, not
`the examiner, who must give up or disclaim subject
`matter that would otherwise fall within the scope of the
`claims.’” PTAB Op. at *10 (quoting Sorensen v. Int’l
`Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005)). On
`this reasoning, the PTAB held that the claims were not
`limited by the prosecution record. PTAB Op. at *9–11; see
`also PTAB Op. at *20.
`The PTAB misapplied Sorensen. In Sorensen, the
`court explained that “in order to disavow claim scope, a
`patent applicant must clearly and unambiguously express
`surrender of subject matter during prosecution.” 427 F.3d
`at 1378 (citing Middleton, Inc. v. Minn. Mining & Mfg.
`Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002)). The court
`stressed that a disclaimer must be clear and unmistaka-
`ble (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
`1314, 1325–26 (Fed. Cir. 2003)), and cited Innova/Pure
`Water, Inc. v. Safari Water Filtration System, Inc., 381
`F.3d 1111 (Fed. Cir. 2004), for the ruling that “it is the
`applicant, not the examiner, who must give up or disclaim
`
`
`
`ARENDI S.A.R.L. v. GOOGLE LLC
`
`7
`
`subject matter that would otherwise fall within the scope
`of the claims.” Sorensen, 427 F.3d at 1379 (quoting Inno-
`va, 381 F.3d at 1124).
`In making its primary ruling, the PTAB declined to
`credit the prosecution statements, and instead construed
`the claims as unlimited by the prosecution history. PTAB
`Op. at *11, *20. On this construction, the PTAB held the
`claims invalid in view of Goodhand. That was error. “In
`construing patent claims, a court should consult the
`patent’s prosecution history so that the court can exclude
`any interpretation that was disclaimed during prosecu-
`tion.” Sorensen, 427 F.3d at 1378 (citing Phillips v. AWH
`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)).
`Here the applicant amended the claims and explained
`what was changed and why, and the examiner confirmed
`the reasons why the amended claims were deemed allow-
`able. See ACCO Brands, Inc. v. Micro Sec. Devices, Inc.,
`346 F.3d 1075, 1078–79 (Fed. Cir. 2003) (stating that the
`examiner’s Reasons for Allowance made “clear that the
`examiner and the applicant understood” what was
`changed and what the invention required). Here too, the
`examiner’s “Reasons for Allowance” made clear that the
`examiner and the applicant understood what the appli-
`cant had changed, and what the claim amendment re-
`quired.
`Based on the PTAB’s error in declining to apply the
`prosecution disclaimer, the ruling of unpatentability on
`this ground cannot stand. The PTAB then, in an alterna-
`tive ruling, construed the claims on acceptance of the
`asserted prosecution disclaimer, as we next discuss:
`The PTAB’s Alternative Holding is Correct
`The PTAB alternatively held that even if the prosecu-
`tion disclaimer were accepted, the claims are unpatenta-
`ble for obviousness in view of Goodhand. PTAB Op. at
`*21. The PTAB compared Goodhand with the ’853 pa-
`
`
`
`8
`
`
`
` ARENDI S.A.R.L. v. GOOGLE LLC
`
`tent’s specification and construed the claims in accord-
`ance with the disclaimer, and found that “Goodhand’s
`processing involves essentially the same textual analysis
`as disclosed in the ’853 patent, and not user text selection,
`as argued by Patent Owner.” PTAB Op. at *21.
`Arendi argues
`that Goodhand differs because
`“Goodhand requires the user to identify text by placing it
`in the address field . . . .” Arendi Reply Br. 1. The PTAB
`found that there was not such a difference, see PTAB Op.
`at *22, citing the ’853 patent’s statement that “the user
`may select the information in the document to be
`searched by the program in the database (e.g., by high-
`lighting, selecting, italicizing, underlining, etc.), as will be
`readily apparent to those skilled in the art.” ’853 patent
`at col. 10, ll. 7–10.
`The PTAB also found that the Goodhand system, like
`that of the ’853 patent, performs an analysis of “first
`information” on an “execute command” such as the
`movement of a cursor, entry of a “check names” command,
`or entry of a “send” command. PTAB Op. at *23. The
`PTAB cited Goodhand’s Figures 6a and 6b that show
`names in the address field, whereby on the “check names”
`command the Goodhand system searches the database
`and retrieves and displays or enters the correct infor-
`mation. Id. The PTAB also found that Goodhand’s “check
`names” command is the same as the “execute” command
`of the ’853 patent, and produces a search of the database
`and retrieval of relevant information. Id.
`The PTAB concluded that “a person of ordinary skill
`in the art would have understood from Goodhand that its
`system performs analysis to determine if address field 600
`[citing Figure 6] contains any information, and its system
`is capable of breaking down the information contained in
`address field 600 to isolate display names, which consti-
`tute first information.” PTAB Op. at *14. The PTAB
`found that Goodhand describes three forms of analysis of
`
`
`
`ARENDI S.A.R.L. v. GOOGLE LLC
`
`9
`
`the text: (1) identifying and separating display names
`from semicolons and spaces, which the PTAB found
`analogous to the ’853 patent’s use of “paragraph/line
`separations/formatting, etc.” when analyzing
`text;
`(2) identifying fully-formatted email addresses from non-
`formatted addresses, which the PTAB found analogous to
`the ’853 patent’s distinguishing an email address from a
`name; and (3) determining whether any text has been
`placed into an address field, which the PTAB found
`analogous to the ’853 patent’s taking “appropriate” ac-
`tions when “the program found nothing in the document
`or what is found was un-interpretable.” PTAB Op. at *15
`(emphasis in original), *17–20. Substantial evidence
`supports the PTAB’s findings as to the similarities be-
`tween Goodhand and the ’853 patent regarding identifica-
`tion and analysis of information.
`The PTAB further found that Goodhand, like the ’853
`patent, does not require user selection of text to be
`searched. For example, Goodhand states:
`When a user enters an Internet e-mail address in
`the form of xxxxx@yyyyy.zzz, the user need not
`create a new name in his or her directory before
`the name can be resolved. The preferred e-mail
`system simply identifies such an address as an In-
`ternet address and resolves it without further us-
`er intervention.
`Goodhand at col. 20, ll. 12–17. The PTAB reasoned that
`“if a system analyzes a document to determine if it con-
`tains information, then the user must not have selected
`information.” PTAB Op. at *23.
`The PTAB also found that Goodhand, like the ’853 pa-
`tent, conducts the ensuing search and retrieval of infor-
`mation without intervention by the user. PTAB Op. at
`*21. Indeed, Goodhand explains that the resolution
`process is “automatic” and occurs “in the background,
`which means that the user may continue to use the com-
`
`
`
`10
`
`
`
` ARENDI S.A.R.L. v. GOOGLE LLC
`
`puter to perform other tasks while the display names are
`being resolved.” See Goodhand at col. 16, l. 37 to col. 17, l.
`5. Goodhand further describes the resolution of display
`names “without requiring any additional input from the
`user.” Id. at col. 16, ll. 54–61; col. 17, ll. 2–5; col. 20, ll.
`14–17.
` Thus the PTAB correctly concluded that
`Goodhand’s teaching of “resolution” of information “with-
`out further user intervention” shows these operations
`“upon a single entry of the execute command.” PTAB Op.
`at *21.
`In sum, the PTAB found that Goodhand shows all of
`claim 1’s limitations, when giving effect to the prosecution
`disclaimer and limiting the scope of the “single entry”
`command. This finding is supported by substantial
`evidence. On the PTAB’s findings, the alternative conclu-
`sion of unpatentability on the ground of obviousness in
`view of Goodhand is sustained.
`Arendi does not argue the patentability of any other
`claim. Thus we affirm the PTAB’s decision of unpatenta-
`bility of the additional claims. See In re Kaslow, 707 F.2d
`1366, 1376 (Fed. Cir. 1983) (“Since the claims are not
`separately argued, they all stand or fall together.”).
`Conclusion
`In view of our affirmance of the alternative claim con-
`struction based on the prosecution disclaimer, we con-
`clude that the decision of unpatentability based on
`obviousness is correct, and is affirmed.
`AFFIRMED
`
`
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