Taylor v. Iancu

Case: 18-1047 Document: 93 Page: 1 Filed: 04/03/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit ______________________ WILLIAM MICHAEL FREDERICK TAYLOR, Plaintiff-Appellant v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellee ______________________ 2018-1047 ______________________ Appeal from the United States District Court for the Eastern District of Virginia in No. 1:15-cv-01607-LMB- JFA, United States District Judge Leonie M. Brinkema. ______________________ Decided: April 3, 2020 ______________________ WILLIAM MICHAEL FREDERICK TAYLOR, Chiddingfold, Surrey, United Kingdom, pro se. THOMAS W. KRAUSE, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for defendant-appellee. Also represented by JOSEPH MATAL, MEREDITH HOPE SCHOENFELD, MAI-TRANG DUC DANG. Case: 18-1047 Document: 93 Page: 2 Filed: 04/03/2020 2 TAYLOR v. IANCU ______________________ Before DYK, CHEN, and STOLL, Circuit Judges. PER CURIAM. William Michael Frederick Taylor (“Mr. Taylor”) sued the Director of the U.S. Patent and Trademark Office (“Pa- tent Office”) under 35 U.S.C. § 145, challenging the Patent Office’s rejection of U.S. Application Serial No. 11/807,860 (“the ’860 application”), of which Mr. Taylor is the inven- tor. 1 The district court granted summary judgment to the Patent Office, concluding that all of the ’860 application’s claims are not enabled and are indefinite. We affirm on the ground that the ’860 application’s claims lack enablement. BACKGROUND The ’860 application claims priority to United Kingdom Patent Application No. GB9310175.6, filed on May 18, 1993. The specification describes a system called “GPS Ex- plorer.” J.A. 277. GPS Explorer, the specification explains, “is designed to provide information [to a user] on the move,” such as “while driving, flying, sailing, riding or walking.” J.A. 277, 278. GPS Explorer allows a user to “select one or more of [GPS Explorer’s] many modes of operation.” J.A. 280. In “Simulation Mode,” “the user may access [a] 1 Mr. Taylor also challenged, in separate cases, the Patent Office’s rejection of two of his related applications: U.S. Application Serial Nos. 10/425,553 (“the ’553 applica- tion”) and 11/391,501 (“the ’501 application”). The district court consolidated the three cases, and concluded that each of the applications was unpatentable. Mr. Taylor sepa- rately appeals the district court’s decision as to the ’553 ap- plication (Case No. 18-1048) and as to the ’501 application (Case No. 18-1070). Our decisions on those appeals are be- ing issued concurrently with this decision. Case: 18-1047 Document: 93 Page: 3 Filed: 04/03/2020 TAYLOR v. IANCU 3 database to obtain a computer[-]based simulation of some aspect of [a] location.” J.A. 286. The specification explains that simulation mode can be used: to see the route of a proposed new road or the sim- ulated facade of a proposed new building. By walk- ing around the physical site, as the GPS data changes so will the simulation to illustrate the sim- ulated views from the new physical position taking into consideration the user[’]s orientation, height, direction of view, view angle of azimuth and time of day. The simulation may be presented on a dis- play screen or any form of image projection system such as a virtual reality helmet or other device. If used in conjunction with a head up display the user will have both the present image and simulated fu- ture in view simultaneously enabling comparison. Id. Each of the ’860 application’s independent claims— claims 1 and 19—presents data to a user as a “computer- based simulation” and based on a user-specified “mode of operation.” Claim 1 recites: 1. A system for mobile searching of information, comprising: a portable device that accesses a database, wherein the portable device further com- prises; an input component which allows a user to select type of data of interest to the user; a position determining component sensing a position of the portable device, and providing the sensed position to a compu- ting component of the portable device; an orientation determining component which determines a user’s view angle of Case: 18-1047 Document: 93 Page: 4 Filed: 04/03/2020 4 TAYLOR v. IANCU azimuth and provides the user’s view angle of azimuth to a presentation component; the computing component operable to ac- cess the database and retrieve data from the database based on the type of data of interest, and the received sensed position; and the presentation component presenting the retrieved data to the user as a computer- based simulation that illustrates an aspect of a physical location at the sensed position based on the user's view angle of azimuth from the physical location, wherein the in- put component receives a specified mode of operation of the portable device from the user, and the presentation component pre- sents the retrieved data to the user based on the specified mode of operation. J.A. 77 (emphasis added). Claim 19 recites: 19. A method of mobile searching of information us- ing a portable device, the method comprising: on the portable device, receiving selected type of data of interest and a specified mode of operation of the portable device from the user; sensing a position of the portable device and determining a user's view angle of azi- muth; accessing a database attached to the porta- ble device and retrieving data from the da- tabase based on the type of data of interest and the sensed position; and presenting the retrieved data to the user as a computer-based simulation that Case: 18-1047 Document: 93 Page: 5 Filed: 04/03/2020 TAYLOR v. IANCU 5 illustrates an aspect of a physical location at the sensed position based on the user’s view angle of azimuth, wherein the pre- senting the retrieved data further com- prises presenting the retrieved data to the user based on the specified mode of opera- tion. J.A. 78–79 (emphasis added). In a final Office Action, the examiner rejected claims 1 and 19 as lacking enablement and as obvious in light of several prior art references. The Patent Trial and Appeal Board (“Board”) affirmed the examiner’s enablement rejec- tion and further rejected the claims as indefinite under 35 U.S.C. § 112, second paragraph. The Board reversed the examiner’s obviousness rejections, reasoning that the claims were too indefinite for the Board to “make a proper review of the prior art rejections.” J.A. 1235. The Board denied Mr. Taylor’s request for rehearing. Mr. Taylor then filed a complaint under 35 U.S.C. § 145 in district court, seeking judgment that the ’860 applica- tion’s claims were patentable. The district court granted summary judgment to the Patent Office, concluding that the ’860 application’s claims were “non-enabled and indef- inite,” J.A. 65, and denied Mr. Taylor’s motion for reconsid- eration. Mr. Taylor appeals. We have jurisdiction to review the district court’s decision under 28 U.S.C. § 1295(a)(4)(C). We address only the issue of enablement. DISCUSSION We review the district court’s grant or denial of sum- mary judgment de novo. MicroStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1348–49 (Fed. Cir. 2005). The pre-AIA version of 35 U.S.C. § 112, first paragraph, which applies Case: 18-1047 Document: 93 Page: 6 Filed: 04/03/2020 6 TAYLOR v. IANCU here, sets forth the requirement that a patent be enabled, providing relevant part: The specification shall contain . . . the manner and process of making and using [the invention] in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . . 35 U.S.C. § 112, ¶ 1 (2010). Enablement is a question of law based on underlying factual inquiries. ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (citing Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1369 (Fed. Cir. 1999)). The specification describes several “mode[s] of opera- tion,” including “En Route Mode,” “Tour Mode,” “Hazard Warning Mode,” “Guidance Mode,” “Destination Oriented Guidance Mode,” “What’s On Mode,” “Walking[,] Driving[, and] Flying Mode[s],” “Pre-View Mode,” “More Detail Mode,” and “Simulation Mode.” J.A. 280–86. The manner in which information is presented to the user differs for each of these modes of operation. “For example, when walking slowly around a town the user will be given more detail than when driving through the town or flying over- head.” J.A. 282. The Board concluded that the claims were not enabled because the specification did not teach a person of skill how to “present[] . . . retrieved data to the user based on [a user-]specified mode of operation” during a “computer- based simulation,” as recited by claims 1 and 19. The Board reasoned that although the specification describes a “simulation mode,” “[i]n describing that embodiment, the specification never discusse[s] simulation within a mode or concurrent modes.” J.A. 59 (emphasis added). The district court agreed, as do we. Case: 18-1047 Document: 93 Page: 7 Filed: 04/03/2020 TAYLOR v. IANCU 7 To enable the claims, the specification must enable simulation of all modes of operation. See MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1381 (Fed. Cir. 2012) (noting that “a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage” (emphasis added)). Yet nothing in the specification, whether in the paragraph describing “simulation mode” or elsewhere, con- templates multiple kinds of simulations depending on a mode of operation selected by the user—let alone explains how such functionality would be achieved. The Patent Office’s expert testimony supporting this conclusion was unrebutted. Dr. Peter Dana, the Patent Of- fice’s technical expert, testified that: [t]he specification does not describe providing dif- ferent simulations based on the user’s mode of op- eration or how the device would generate different simulations based on whether the user is walking or flying. Systems intended to simulate a variety of user actions would require the simulation of ve- hicle dynamics and the software (or hardware) fil- ters required to handle different dynamic scenarios. Expert Report of Peter Dana, Ph.D., Taylor v. Matal, No. 1:15-cv-1607, ECF No. 86-1, at 15–16. Dr. Dana thus con- cluded that the claims of the ’860 application were “non- enabled.” Id. at 15. Though Mr. Taylor’s four experts tes- tified as to the enablement of certain features of GPS Ex- plorer (e.g., video overlays and the determination of geographic orientation), none explained how the specifica- tion teaches a person of skill in the art to run another “mode of operation” while inside “simulation mode.” Mr. Taylor asserts that “[t]he specification comprehen- sively described many modes by which the ’860 system will adjust the presentation of information to suit the mode of Case: 18-1047 Document: 93 Page: 8 Filed: 04/03/2020 8 TAYLOR v. IANCU travel selected by the user and the GPS calculated speed. The word ‘mode’ appears 32 times in the specification.” Ap- pellant’s Br. 39. But the relevant question is not whether the specification discloses modes of operations. It is, in- stead, whether the specification teaches a person of skill how to “present[ ] retrieved data to the user as a computer- based simulation” while simultaneously “present[ing] the retrieved data to the user based on the specified mode of operation,” as the ’860 application claims. On this, the specification is silent. Mr. Taylor’s own experience in attempting to imple- ment the invention further supports finding a lack of ena- blement here. Mr. Taylor admitted that in 1993, when he filed his initial application, “there was no internet,” and that once the internet was developed he “attempt[ed] to play catch-up and move from [his] previous conception [of the invention] to [one] having more of an involvement in the internet.” Deposition of William Michael Frederick Taylor (day 2), Taylor v. Matal, No. 16-cv-12, ECF No. 51- 3, at 11–12. Mr. Taylor also admitted that even after filing his application he was “waiting and waiting and waiting for a suitable platform to become available” to allow him to implement his idea. Id. at 12. Indeed, as the district court found, Mr. Taylor’s “first prototype was not operational un- til 1998 and neither that prototype nor the 2001 version contained all the features described in the specification, much less the claims.” J.A. 65. Mr. Taylor’s own experi- ence thus shows that the specification did not enable the claimed invention but was instead “only a starting point, a direction for further research.” ALZA, 603 F.3d at 941 (quoting Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1284 (Fed. Cir. 2007)). No reasonable factfinder could conclude that the ’860 application meets the enablement requirement. Be- cause we hold the ’860 application unpatentable for the Case: 18-1047 Document: 93 Page: 9 Filed: 04/03/2020 TAYLOR v. IANCU 9 reasons above, we need not reach the other grounds raised on appeal. AFFIRMED