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

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.

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