The U.S. Court of Appeals for the Federal Circuit (“Fed. Circ.”) has revived Google LLC’s challenge to the validity of two patents covering advanced database systems, sending the matter back to the Patent Trial and Appeal Board (PTAB) for further review. The decision underscores the court’s directive that the PTAB must consider all arguments presented by Google in its challenge.
In its nonprecedential opinion, the Fed. Circ. faulted the PTAB for excluding portions of Google’s rebuttal arguments and expert declarations in the company’s obviousness challenge to the MindbaseHQ LLC patents. The patents at issue cover “database systems modeled on the human mind.”
“The board’s decision to exclude Google’s rebuttal argument and supplemental declaration is based on a clear factual error… rendering its exclusion an abuse of discretion,” the Federal Circuit stated. The court clarified that Google did not raise new arguments but elaborated on points from its initial petition, and ordered the PTAB to reconsider the obviousness of the challenged claims.
The Federal Circuit also instructed the PTAB to revisit Google’s arguments regarding additional system and method claims, specifically concerning the construction of an automatic classification and storage limitation. While the PTAB did not expressly construe the limitation, the court noted that Google’s interpretation may be correct.
On cross-appeal, the court rejected MindbaseHQ’s challenges to portions of the PTAB’s decisions that had found some claims invalid, stating the company’s arguments related to prior art and skill levels did not meet the required standard.
The patents in question are U.S. Patent Nos. 6,510,433 and 6,665,680. The panel of U.S. Circuit Judges included Timothy B. Dyk, Jimmie V. Reyna, and Leonard P. Stark. Google is represented by Nathan K. Kelley, Jonathan Irvin Tietz, and Dan L. Bagatell of Perkins Coie LLP, and Andrew Baluch of Smith Baluch LLP. MindbaseHQ is represented by James Iaconis of Iaconis Law Office.
