By Elizabeth Libro
For an invention to be eligible for patentability through the United States Patent and Trademark office, the invention has to conform to the standards outlined in 35 U.S.C. § 101-05 (Patentability of inventions). “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent . . .” 35 U.S.C. § 101. Therefore, an invention must meet the statutory definition of a patent and must be considered new or non-obvious. In addition, the invention has to either be useful. 35 U.S.C. § 101-05; See also General Information Concerning Patents (discussing how an invention must be “sufficiently different from what has been used or described before that it may be said to be non-obvious,” if it does not meet the novel requirement).
In 2015, Facebook, LinkedIn, and Twitter (“FLT”) brought individual claims against the following patent held by Software Rights Archive, LLC (“Software Rights”): U.S. Patent No. 6,233,571 (the “571 Patent”); claiming that the 571 Patent was similar to that of the following patents: U.S. Patent No. 5,544,352 (the “352 Patent”); and U.S. Patent No. 5,832,494 (the “494 Patent”) and thus is not a patentable invention. All of the Patents were entitled “Method and Apparatus for Indexing, Searching, and Displaying Data” and were invented by the same individual(s). The cases were eventually consolidated.
The Patent Trial and Appeal Board of the United States Patent and Trademark Office held that the FTL showed by a preponderance of the evidence that the 571 Patent included aspects that were non-patentable under the law. The Board also concluded that the 352 and 494 Patents included aspects that were also non-patentable. Facebook Inc., LinkedIn Corporation, and Twitter, Inc., IPR 2013-00481, Patent No. 6,233,571, Paper 54. Software Rights appealed. The appeal was heard before the United States Court of Appeals for the Federal Circuit.
The inventions at issue were related to computerized research of databases. They sought to improve traditional research methods by analyzing non-sematic relationships between documents making it easier to search for documents/sources online. Simply put, the two inventions were designed to provide the user with an easier and friendlier computerized search tool than what is currently available.
The United States Appeals Court compared the 352 Patent and the 494 Patent to current Patents in circulation. They determined that parts of the 352 and 494 Patents were similar to prior art publications written by Dr. Edward A. Fox known as the “Fox Papers.” The Fox Papers were related to clustering documents based on concepts, which the Appeals Court believed was similar or closely related to these patents. Therefore, it was held that certain aspects of the 352 and 494 were not new and did not rise to the level of non-obviousness. Further, for similar reasons, the Appeals Court held that aspects of the 571 Patent did not rise to the level of non-obviousness.
What does this mean? This means that all three patents cannot be used to their full potential and/or must be re-written and re-applied for depicting a change that reflects the patent as non-obvious. Companies can use this case, however, when determining whether the company’s invention is patentable or not. They can use it as a warning depicting the worst-case scenario of what could happen if the patent fails to meet the statutory requirements. Therefore, companies would benefit from taking due diligence when researching current patents prior to filing their patent application.
Student Bio: Elizabeth Libro is a 3L at Suffolk University Law School. She is a Lead Note Editor on the Journal of High Technology Law, President of the Suffolk University Law School Softball Club, and Vice President of the Suffolk University Law School Women’s Law Association.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
