CyWee Group v. Google (Fed. Cir. 2021)
Google received its IPR problem in opposition to CyWee’s U.S. Patent Nos. 8,441,438 (claims 1 & 3-5) and eight,552,978 (claims 10 & 12). On appeal, the Federal Circuit has affirmed with a brief opinion by Chief Judge Prost specializing in three discrete points:
Real Party in Interest: The patentee argued that Google didn’t disclose all actual events in interest as required by statute 35 U.S.C. § 312(a)(2). On appeal, the Federal Circuit held that establishment stage real-party-in-interest questions are establishment related and thus is just not reviewable under the no-appeal provision of 35 U.S.C. § 314(d). This difficulty was beforehand determined in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). One distinction right here from ESIP is that the problem was not raised to the establishment choice itself, however slightly as a part of a post-institution movement to terminate based mostly upon newly found proof. On appeal although, the Federal Circuit discovered the brand new movement equal to a request to rethink the establishment. The courtroom additionally held that the Board’s refusal to permit ESIP extra discovery was “similarly unreviewable” as a result of the invention ruling is tightly related to the establishment choice.
The courtroom didn’t delve into the RPI difficulty, however CyWee was complaining a few coordinated effort by defendants within the district courtroom litigation (together with Samsung and Google) to make sure that Backmann was solely seen by the Board and never additionally by Judge Bryson who was sitting by designation within the district courtroom.
Approximately one month after Google filed its IPR petitions, Samsung dropped Bachmann from its invalidity contentions within the Samsung Litigation. This is per what seems to be a coordinated effort between Samsung and
Google to dam consideration of Bachman within the Samsung Litigation earlier than Judge Bryson. Due to Bachmann’s shortcomings, neither wished a abstract judgement choice issuing from the district courtroom, as CyWee’s lawsuit in opposition to Samsung was dashing towards trial and would outpace the Google IPRs. Dropping Bachmann from the Samsung Litigation assured that it may very well be addressed solely by the Board. This plan grew to become extra evident in January 2019 when, after the Google IPRs had been filed, Samsung moved to affix the Google IPRs, thereby resurrecting its capability to depend on the Bachmann.
The PTAB concluded that this timing alone was not enough to seek out Samsung to be a Real Party in Interest and likewise discovered no RPI despite the fact that Samsung was being accused of infringement based mostly upon its use of Google’s Android product. In its choice, the PTAB famous that the truth that Patent Owner had sued every firm individually, in a separate lawsuit, additionally supplied proof that they don’t seem to be actual events in interest. (I’d call this remaining conclusion fairly tenuous).
Appointments Violation: The patentee raised an appointments clause difficulty, that was rejected under Arthrex (Fed. Cir. 2019). In specific, the Federal Circuit’s Arthrex choice presupposed to remedy all appointments clause points for AIA Trials that had not but reached a remaining written choice. It is feasible that this difficulty will get new legs as soon as the Supreme Court points its opinion within the case.
Obviousness: On the deserves of the obviousness case, the patentee argued that the important thing prior artwork reference was not “analogous art” and due to this fact couldn’t be used for obviousness. There are historically two methods to discover a reference “analogous”:
- If the artwork is from the identical subject of endeavor, whatever the drawback addressed; or
- If the artwork is “reasonably pertinent to the particular problem with which the inventor is involved.” Bigio.
The CyWee patents cowl a “3D Pointing Device” that makes use of a specific comparability algorithm for improved error compensation. The prior artwork (Bachmann, U.S. Patent No. 7,089,148), was created by the Navy and is directed to movement monitoring of our bodies. Thus, the PTAB discovered that it was not from the “same field or endeavor.”
The PTAB did, nonetheless, conclude that Bachmann was “reasonably pertinent to the particular problem with which the inventor is involved.” In specific, Bachman discloses a comparability algorithm for improved error compensation related to the actions of a 3D pointing gadget. Note right here, in the event you take a look at the picture above, you don’t see any “pointing”, however the Board broadly outlined the time period to incorporate a tool to “control actions on a display.” Thus, we now have a reference addressing the actual drawback addressed in CyWee’s patents — and thus it’s analogous. On appeal, the Federal Circuit affirmed on substantial proof. (Analogous arts dedication is a query of reality).
CyWee argued that there have been too many variations between its invention and Bachmann to permit the reference to be thought of analogous. The Federal Circuit rejected that argument — holding that “a reference can be analogous art with respect to a patent even if there are significant differences between the two references.” Quoting Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353 (Fed. Cir. 2020).
Note. Jay Kesan dealt with the appeal for the patentee; Matthew A. Smith for Google.
Note 2. The diagram appears so much like a Wii. CyWee’s patents declare precedence again to 2001 (Wii was let go in 2006).