Xerox’s appeal of PTAB unpatentability ruling at CAFC defeated by Snap, Meta and X
Xerox’s appeal of PTAB unpatentability ruling at CAFC defeated by Snap, Meta and X
Xerox’s argument that a claim amendment made during prosecution supports its proposed claim construction was also rejected by the CAFC.
Snap, Meta, and X defeat Xerox’s appeal at CAFC
Xerox lost an appeal to the US Court of Appeals for the Federal Circuit (CAFC) against Snap, Inc., Meta, and X Corp over PTAB’s invalidation of Xerox’s patent on techniques for content delivery. Titled ‘Context and Activity-Driven Content Delivery and Interaction’, Xerox’s US Patent No. 8,489,599 is directed to “techniques and systems for creating and presenting content based on contextual information.”
Snap, Meta, and X each filed inter partes review (IPR) petitions challenging claims of the patent based on different prior art. All of the petitions were instituted and consolidated by the PTAB, which then issued a final written decision determining that the petitioners had collectively established unpatentability.
CAFC rejects Xerox’s claim construction
On appeal to the CAFC, Xerox reportedly argued that the PTAB’s claim construction should be reversed because “the Board erred in rejecting Xerox’s argument that the claim limitation ‘determining whether the received response matches the expected response’ requires the possibility of both expected and unexpected responses being the received response.” Rather, Xerox reportedly said the limitation “requires the explicit disclosure of the possibility of an unexpected response” based on the claim language, specification, and prosecution history. This was rejected by the CAFC, reportedly noting that “the claims do not recite an unexpected response, nor does the specification ever mention an ‘unexpected response.’”
The PTAB was accused of “engaging in ‘hyperliteralism’ and ‘linguistic somersaults,’” by Xerox, but the company never provided an express construction of the limitation itself and offered “only vague references to ‘the claims’ as requiring the ‘possibility of both expected and unexpected responses be [sic] the received response’.” The CAFC reportedly said: “[T]he claims recite determining whether the received response matches the expected response. This is one determination related to one type of response—the expected response. Our analysis can end here.”
The court’s opinion reportedly went on to note that Xerox proposed a substitute claim that recited “determining whether the received response . . . is expected or unexpected, wherein the received response is expected if the received response matches one or more of the at least one predefined response, and wherein the received response is unexpected if the received response does not match any of the at least one predefined response.” Thus, “if Xerox wanted its more limited construction, it should have written the claims as it did” in the substitute claim, the court said.
The CAFC also agreed with the PTAB’s reasoning that the specification’s language supports its conclusion reportedly “that the claims merely require determining whether the received response is the expected response or not.” The court said that to adopt Xerox’s argument would be to import “a requirement into the claims that there be an additional determination about whether the received response is an unexpected response.”
Amendment argument fails to sway court
Finally, Xerox argued that a claim amendment it made during prosecution supports its proposed claim construction. Originally, the claim in question reportedly read, “determining whether either or both the context and a current activity of the first user satisfy a trigger condition,” and the amendment added a step to determine whether there is a match between a received response and an expected response. The CAFC reportedly stated: “Nothing about this amendment (which anyway relates to a different claim limitation) requires assessing an unexpected response as such; it only requires determining whether the received response was expected, and this is how the applicant explained the amendment to the Examiner.”
