Thursday, February 22, 2018

Google loses appeal in AT HOME BONDHOLDERS' case; CAFC observes: Silence is not a genus.


Google lost its appeal of adverse IPR decisions at the CAFC


Google LLC (“Google”) appeals from two final written
decisions of the United States Patent and Trademark
Office Patent Trial and Appeal Board (“the Board”) resulting
from four inter partes review (“IPR”) proceedings
concluding that claims 49–53, 55–59, 61–67, and 69–73 of
U.S. Patent 6,286,045 (“’045 patent”) and claims 1–3, 5–7,
9, 11–20, 22, 24–31, 34–39, 41–47, and 49 of U.S. Patent
6,014,698 (“’698 patent”) are not unpatentable as obvious.
See Google Inc. v. At Home Bondholders’ Liquidating Tr.,
Nos. IPR2015-00657, IPR2015-00660, 2016 WL 5104863,
slip op. at 61 (P.T.A.B. Aug. 10, 2016) (“’045 Decision”);
Google Inc. v. At Home Bondholders’ Liquidating Tr., Nos.
IPR2015-00662, IPR2015-00666, 2016 WL 8969204, at
*24 (P.T.A.B. Aug. 10, 2016) (“’698 Decision”). Because
the Board did not err in its decisions, we affirm.



GARLAND STEPHENS of Weil represented the successful appellee.

Of relevance:


We first address the disclosure of Angles, which is key
to this appeal. Google argues that the Board erred in
determining that Angles did not disclose a non-blockable
request by failing to assess it from the perspective of a
person of ordinary skill in the art. As support for its
position, Google contends that requests for CGI scripts
are non-blockable by default. And because Angles uses a
standard web server, a person of ordinary skill in the art
would have had no reason to consider that Angles referred
to anything other than standard CGI requests, which are
“typically” non-blockable. Appellant’s Br. 31.

(...)

At Home responds that substantial evidence supports
the Board’s finding that Angles does not disclose a nonblockable
request. Specifically, At Home argues that the
Board found persuasive the 1996 textbook, the 1995 W3C
publication, and Dr. Almeroth’s testimony, all of which
confirm that requests to CGI scripts can be blockable, and
are therefore not necessarily non-blockable. Based on this
evidence, At Home contends that the Board correctly
determined that Angles was at best inconclusive, and a
person of ordinary skill in the art would not have automatically
assumed that the mere mention of a CGI request
would also be a disclosure of a non-blockable
request.


We agree with At Home that the Board’s determination
that a person of ordinary skill would not have understood
Angles to disclose a non-blockable request was
supported by substantial evidence. The Board found
persuasive the 1996 textbook and 1995 W3C publication,
which disclosed CGI requests that were blockable. See
’045 Decision, slip op. at 23–25. The Board also credited
Dr. Almeroth’s testimony, which stated that the 1996
textbook and 1995 W3C publication represent how a
person of ordinary skill would have understood CGI
requests. See id. Based on that evidence, the Board
found that a person of ordinary skill would not assume
that Angles disclosed a non-blockable request.
See id.
Without more, such as specifics regarding the advertisement
request’s functionality or syntax, the Board found
Angles “inconclusive.” Id. at 21–23.

We see no error in the Board’s analysis of the cited
references or its decision to credit Dr. Almeroth’s testimony.
We therefore conclude that the Board’s finding that
Angles does not disclose the non-blockable limitation was
supported by substantial evidence.



At this point, the opinion has some interesting writing:




At oral argument, Google characterized a “request” as
a genus consisting of two species: blockable requests and
non-blockable requests. See Oral Argument at 3:31–4:17,
Google LLC v. At Home Bondholders’ Liquidating Tr.,
Nos. 16-2727, 16-2729 (Fed. Cir. Jan. 8, 2018),
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-2727.mp3. According to Google, because Angles discloses
a CGI request, which can only be blockable or nonblockable,
Angles must disclose a non-blockable request
by virtue of disclosing a generic CGI request. See id.
That argument, while a good try, ultimately misses the
mark.
The genus-species analysis is not applicable here.
Silence is not a genus. The issue here is whether there is
any disclosure of a non-blockable request at all. As discussed
above, the Board properly determined that there
was not. See ’045 Decision, slip op. at 20–30.

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