Background
Carolyn Hafeman owned three patents related to methods for displaying return information on lost or stolen computers. She sued LG Electronics for infringement, and Google and Microsoft subsequently filed inter partes review petitions against the patents. The Patent Trial and Appeal Board instituted the reviews and ultimately issued final written decisions finding the challenged claims unpatentable as obvious over prior art. The Board rejected arguments regarding the without assistance limitation and found no nexus for secondary considerations of non-obviousness. Hafeman appealed, challenging the institution decision, the claim construction, and the secondary considerations analysis.
The court’s reasoning
The court first addressed whether it could review Hafeman’s argument that the Board should have terminated the inter partes review proceedings due to a violation of a stipulation in the parallel district court litigation. The court held that this challenge was barred by Section thirty-one four of Title thirty-five of the United States Code, which makes the decision to institute inter partes review final and non-appealable. The court reasoned that the substance of the challenge was to the propriety of institution, regardless of how it was framed. Next, the court reviewed the Board’s construction of the without assistance by a user limitation. The court found no error, concluding that the limitation modified the action of initiating or changing return information and did not prohibit a user from establishing an internet connection. Finally, the court affirmed the Board’s rejection of secondary considerations of non-obviousness, finding substantial evidence that Hafeman failed to establish a nexus between her evidence of commercial success and the claimed invention.
What it means going forward
The decision reinforces the statutory bar on judicial review of inter partes review institution decisions, preventing patent owners from using post-institution events to circumvent the prohibition. It also clarifies that claim construction of remote communication limitations in computer patents does not inherently exclude the user from establishing a connection, and it underscores the strict requirement for a nexus between secondary consideration evidence and the specific claimed features.