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MySpace, Craigslist and the Mother of all Bulletin Boards Combine to Highlight Key Patent Issues

by Orlando Lopez

In what could have resulted in a “meat and potatoes” CAFC opinion related to claim interpretation (claim construction) and its effect on anticipation and obviousness, Judge Plager took this opportunity to highlight two important issues in patent law, the framework for claim interpretation and what is understood by “abstract ideas” in terms of patentability.  The appeal at issue stems from an infringement suit brought by GraphOn, suing MySpace, Craigslist and Fox Audience Network for infringement of four patents relating to methods for creating and classifying a user’s own database entry over the Internet. MySpace, Craigslist and Fox Audience Network, at the District Court, moved for summary judgment of invalidity based on the earlier work at the University of Colorado on the Mother of all Bulletin Boards (MBB), a method for creating and maintaining online Internet catalogues of user input without the need of other intervention.  The District Court granted the motion for summary judgment and GraphOn appealed based on the claim construction and procedural issues in the analyses of anticipation and obviousness.  The CACF upheld the District Court decision.

If restricted to only the claim construction and the analyses of anticipation and obviousness, this opinion would have been a fairly standard type of opinion; however, in discussing the claim construction, Judge Plager also discusses the approach to claim construction at the CAFC.  As stated in the opinion, claim construction at the CAFC has been described as depending on which approach to claim construction the appeal panel uses, whether to focus on the invention disclosed in the patent or focus on the words of the claims as drafted (There is a hint of this controversy in the opinion for Re-tractable Tech., Inc. v. Becton, Dickinson & Co. in which Judge Plager wrote a consenting opinion and Chief Judge Rader wrote a dissenting opinion).  Judge Plager makes an attempt to reconcile the two approaches, stating that an inventor is entitled to claim what he has invented and no more, but an inventor can narrow the claims to less than described.  While some arguments can be raised about the reconciliation of the two approaches proposed by Judge Plager, the discussion sheds some light on the problem of claim construction.


In answering the dissenting opinion by Judge Mayer, Judge Plager provides both a good review of the large number of patentable subject matter opinions (also referred to as § 101 jurisprudence, referring to the section of the Patent Statute defining patentable subject matter) that had followed the Supreme Court opinion on Bilski and the discussion as to what constitutes an “abstract idea,” which is not patentable subject matter.  While not providing a test for what constitutes an abstract idea, Judge Plager provides a good description of § 101 jurisprudence in an analogy to oenologists describing a new wine.  The adjectives are the same as used in describing any wine, but the combination of adjectives depends less on the actual meaning of the words than on the taste buds of the experts.


Overall, we have to thank Judge Plager for providing us with more food for thought on two of the meatiest issues facing us as patent lawyers, how claims are interpreted on appeal (and what that means in terms of how we write the claims) and what constitutes an un-patentable “abstract idea” (which would give us some guidance as to how to claim the invention so as to avoid the “abstract idea” tag).






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