2024 Federal Circuit IP Appeals – Google LLC v. EcoFactor, Inc., 92 F.4th 1049 (Fed. Cir. 2024) (Reyna, Taranto, Stark)

Google petitioned for inter partes review of a patent directed to “a thermostat that takes into consideration factors like outside weather conditions and thermal characteristics of the home” to “dynamically achieve the best possible balance between comfort and energy savings.” In its decision, the Board stated that claim construction was unnecessary despite its conclusion that the claim recited inputs that “were separate and distinct components that required distinctly different input data.” Because the prior art did not disclose one of these inputs, the Board upheld EcoFactor’s patent.

The parties, however, had disputed whether the prior art disclosed a particular portion of claim 1: “determining a first time prior to said target time…based at least in part on...[iii] said first internal temperature.” Google argued that the recited inputs need not be separate and discrete and that the claim and prior art could determine a first time prior to said target time based on thermal performance values (input [i]) that were calculated from internal temperature values (input [iii]). EcoFactor disagreed, contending that each input must be discrete, otherwise it would render other claim limitations meaningless. Despite the parties’ dispute, neither party requested claim construction to resolve the issue.

On appeal, Google argued that the Board construed the claim limitation, despite explicitly stating claim construction was unnecessary. Google argued that this implicit claim construction violated the Administrative Procedures Act (APA) because it had no notice or opportunity to address the Board’s construction, and further, the construction was contrary to the intrinsic evidence.

The Federal Circuit first tackled whether the Board, in fact, conducted claim construction. To determine, on the one hand, whether a court or other tribunal construed a claim, or on the other hand, whether it merely compared a claim to prior art (or an allegedly infringing product), the panel advised that one ask: Did the outcome of the analysis “establish[] the scope (e.g., boundaries) and meaning of the patented subject matter?” If yes, then the tribunal “has most likely construed the claim.” In posing this question, the panel noted that what is important is the analysis, not at which point in the proceeding the analysis occurs.

Applying this reasoning, the court concluded the Board implicitly construed claim 1. The Board determined the scope of the claim by concluding that no input could be based on another. The Board also applied the presumption that “[w]here a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention” to reject Google’s challenges of unpatentability. Particularly, the asserted prior art, the Board reasoned, “did not use each of the five distinct inputs and instead effectively ignore[d] a claim limitation by double counting.” (internal quotations omitted). The Board’s conclusion, therefore, amounts to a claim construction.

Having addressed the threshold question of whether the Board construed the claim limitation—a question that affected the standard of review—the panel moved on to address Google’s APA and claim construction arguments. First, the court concluded that the Board did not violate the APA because the parties actually argued the scope of the claim limitation at issue, even if neither party formally recognized the arguments to be directed to claim construction. The record showed that the parties disputed claim scope—Google argued that certain inputs could be based on others and EcoFactor disagreed, arguing that the claim required distinctly different inputs. “While an explicit claim construction was not proposed by either party, both parties recognized that the core issue related to the scope and boundaries of the five inputs . . . and, thus, were afforded both notice and opportunity to address this issue.”

The panel next addressed the Board’s claim construction, concluding that the intrinsic evidence supported a broader construction than the one the Board implicitly endorsed. The claim language recited that “a first time” is determined “at least in part on” each of the five inputs, so there is no express limitation on how the inputs are used. Said differently, the claim language allows for any of the five inputs to be calculated using any of the other inputs. Moreover, nothing in the specification required that each input be separate. Indeed, a contemplated embodiment used one input to calculate another input.

Ultimately, the court held that the claim term “is not limited to inputs that are entirely separate and distinct.” Interestingly, the panel caveated that it was “effectively reviewing the Board’s claim construction,” seeming to ignore that it, too, construed the claim, having defined the scope of the patented subject matter. Nevertheless, in so doing, the court reiterated the canon of claim construction that “[w]e normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.” It also affirmed that while there is a presumption that separately listed claim limitations may indicate separate and distinct features, this is not always the case, depending on the “context of a particular patent.”

The court reversed the Board’s claim construction, vacated the Final Written Decision, and remanded for further proceedings under the correct construction of the claim limitation.

Related:

• Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., 89 F.4th 1377 (Fed. Cir. 2024) (relying on intrinsic evidence, including the problem to be solved recited in specification, to construe dispositive claim construction term).
• Weber, Inc. v. Provisur Techs., Inc., 92 F.4th 1059 (Fed. Cir. 2024) (rejecting narrow construction because the intrinsic record supported a broader construction and concluding it unnecessary to examine extrinsic evidence that would limit claim scope contrary to the intrinsic evidence).
• Promptu Sys. Corp. v. Comcast Corp., 92 F.4th 1372 (Fed. Cir. 2024) (holding trial court’s claim construction erroneous because it improperly narrowed the claims based on exemplary embodiments).
• K-Fee Sys. GmBh v. Nespresso USA, Inc., 89 F.4th 915 (Fed. Cir. 2023) (relying on patentee’s statements to European Patent Office to determine what a person of skill in the art would understand claim term to mean).
• Vascular Sol’ns LLC v. Medtronic, Inc., 117 F. 4th 1361 (Fed. Cir. 2024) (concluding that while a claim term should be construed consistently across claims, the construction can be a functional construction where the function is not performed in the same way in every context of the claim).
• UTTO Inc. v. Metrotech Corp., 119 F.4th 984 (Fed. Cir. 2024)
  (stating claim construction may occur at the motion to dismiss stage of a proceeding).

This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.