04/28/14

In re Chaganti: Board Correctly Held Obvious Method of Controlling Access to Copyright-Protected Information via the Internet

Category: 103 
 
 
 
 
By: Eric Paul Smith, Contributor  
 
TitleIn re Chaganti, No. 2013-1372 (Fed. Cir. Jan. 27, 2014) (non-precedential).
Issue
[1] "The parties dispute whether Manolis[, U.S. Patent No. 7,243,079 (Manolis),] is analogous art."
In re Chaganti at *5.
[2] "[T]he Board found that Glassman does not teach away from the claimed invention. Mr. Chaganti argues that the Board's finding lacks substantial evidence [and] contends that Glassman's statement that existing lock servers are undesirable on an open network teaches away from using existing lock server architectures to provide controlled access to copyrighted material on an open network."
Id. at *5-6 (citations and internal quotation marks omitted).
[3] "Mr. Chaganti argues that the Board erred by failing to articulate th[e] reason[ to combine Manolis with Glassman, U.S. Patent No. 6,453,305 (Glassman)]. He contends that the Board's reason to combine [...] was motivated by hindsight bias[ and] that the Board erred by failing to make factual findings with respect to the ordinary skill in the field of the invention."
Id. at *6-7.
[4] "Mr. Chaganti [...] argues [(a)] that Glassman does not examine license information to determine [a number] N [of authorized concurrent users], as required by claim 48[; (b)] that Glassman does not disclose the step of receiving licensing information indicating that the license is for access of information for a predetermined time . . . as required by claim 49[; and (c)] that Glassman does not disclose the step of determining a time period [...] during which the copyright-protected information object may be accessed as required by dependent claim 50. With respect to claims 51, and 57-60, Mr. Chaganti seems to argue that the Board misconstrued the terms 'formatting,' formatter,' and 'format.'"
Id. at *8.
Holding
[1] "We agree with the PTO that Manolis is analogous art [because both Manolis and the claimed invention are directed to the controlled distribution of content via the Internet]."
In re Chaganti at *5 (text added).
[2] "While Glassman describes the then-existing lock servers as 'undesirable,' we disagree that this constitutes a teaching away from mechanisms for controlling Internet access to copyrighted materials."
Id. at *6.
[3] "The Board found that a person of ordinary skill would have had a reason to use the online print service of Manolis to provide licensed access to copyrighted images in order to provide account users with the ability to control access to their copyrighted images while at the same time providing concurrent access to the images as suggested by Glassman [...]. Substantial evidence supports the Board's finding."
Id. at *7 (citations, interal quotation marks, and alteration markings omitted).
[4] "We agree with the PTO that substantial evidence supports the Board's findings that the combination of Manolis and Glassman discloses each limitation of dependent claims 48-50, 51, and 57-60."
Id. at *9.
 
 
 
Procedural History"Naren Chaganti appeals from the decision of the Patent Trial and Appeal Board (Board) affirming the obviousness rejections of all the claims of U.S. Patent Application No. 09/634,725 (’725 application)." Chaganti at *1.
 
 
 
 
Legal Reasoning (Moore, Schall, Reyna) (Per Curiam)
Background
Representative Claim"A server-computer implemented method of providing online repository services to a plurality of users . . . comprising . . . :

establishing on the server computer connected to the Internet an account for each of a plurality of users;

storing on the server computer a copyright-protected information object; and

controlling access to the copyright-protected information object by one or more of the plurality of users in accord with one or more restrictions."

In re Chaganti at 2 (quoting claim 45 of the '725 application).
Disclosure of Manolis"Manolis discloses a system that enables users to purchase prints of their digital photographs online and share photographs online. Manolis discloses that a user optionally can share his/her online photos (i.e., those images that the user has uploaded to the host computer system) with other users. Sharing photos online causes the host system to set access permissions as appropriate to allow the intended share recipient to access the online images specified by the user. Manolis also discloses creating and displaying an image thumbnail for each of the uploaded photographs."
Id. at *3 (citations and internal quotation marks omitted).
Disclosure of Glassman"Glassman discloses an electronic commerce system and method that enforces a license agreement for content on an open network by restricting the number of consumers that can concurrently access the content. It discloses tracking the users of a web site and blocking users who are not licensed or who have exceeded the scope of the applicable license. Glassman also describes an embodiment in which a vendor of copyrighted content has a license that permits a fixed number of users to access content at any given time. This embodiment further allows the vendor to check to determine whether there is an available license (i.e., whether an additional consumer is allowed to view the content under the license). Glassman also discloses that the length of time and the time period during which customers are given access to copyrighted content may be controlled."
Id. at *3-4 (citations, internal quotation marks, and alteration markings omitted).
Applicable Law
Obviousness"We review the Board’s factual findings for substantial evidence and its legal conclusions de novo. Whether a claim would have been obvious under 35 U.S.C. § 103(a) is a legal conclusion based on underlying factual determinations. The factual determinations include (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Whether there is a reason to combine prior art references is a question of fact."
In re Chaganti at *4 (citations, internal quotation marks, and alteration markings omitted).
Analogous Art
Two Tests Define the Scope of Analogous Art"Two separate tests define the scope of analogous prior art: (1) whether the art is from the same endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved."
In re Chaganti at *5 (citations and internal quotation marks omitted).
Manolis is Analogous Art"Because both Manolis and the claimed invention are directed to the controlled distribution of content via the Internet, they have essentially the same function and are in the same field of endeavor. The fact that Manolis does not specify that the photographs distributed by the system are copyrighted does not suggest that a skilled artisan would not consult Manolis. Manolis need not disclose every limitation of the claimed invention to fall within the same field of endeavor as the claimed invention."
Id. at *5.
Teachning Away
Legal Standard for Teaching Away"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant."
In re Chaganti at *6 (citations and internal quotiation marks omitted).
Glassman Does Not Teach Away from Limiting Internet Access to Copyrighted Material"Glassman delineates the undesirable features of existing lock servers, but it also lists various features that a lock server should incorporate to avoid those deficiencies. Glassman affirmatively states that the method and system for electronic commerce disclosed meets those needs. Glassman further teaches the use of a locking mechanism to police content use over the Internet and states that it is an object of the invention to allow enforcement of an N-user license for content located on an open network like the Internet. Therefore, we find that substantial evidence supports the Board’s conclusion that Glassman does not teach away from the claimed invention's disclosure . . . ."
Id. at *6 (citations and internal quotation marks omitted).
Reasons to Combine
PTO Must Clearly Articulate Reasons to Combine"Mr. Chaganti’s argument regarding the lack of a stated reason to combine is not unreasonable. We caution the Board and the PTO that such reasons must be clearly articulated. It is not enough to say that there would have been a reason to combine two references because to do so would have been obvious to one of ordinary skill. Such circular reasoning is not sufficient—more is needed to sustain an obviousness rejection."
In re Chaganti at *7 (citations and internal quotation marks omitted).
Factual Findings with Respect to the Level of Ordinary Skill in the Art Not Required"[T]he absence of factual findings with respect to the level of ordinary skill in the field of the invention does not give rise to reversible error where, as here, the prior art itself reflects an appropriate level and a need for testimony is not shown. Moreover, Mr. Chaganti has not made any showing that a finding regarding the level of ordinary skill would impact the ultimate conclusion of obviousness under section 103."
Id. at *7-8.
Common Sense Reason to Combine"The Board found that a person of ordinary skill would have had a reason to use the online print service of Manolis to provide licensed access to copyrighted images in order to provide account users with the ability to control access to their copyrighted images while at the same time providing concurrent access to the images as suggested by Glassman. We read this as a statement that common sense would have provided a reason to combine these references. We find this persuasive given that, while Manolis does not specify that the images distributed by the system are copyrighted, they almost certainly are. Common sense would have provided a person of ordinary skill with reason to use the teachings of Glassman to distribute these copyrighted images under the appropriate licenses. Substantial evidence supports the Board’s finding."
Id. at *7 (citations and internal quotation marks omitted).
Dependent Claims
Claim 48"[T]here is substantial evidence that Glassman teaches using license information to determine the number of users, N, that are allowed to access content, and does not arbitrarily predetermine this number. For instance, Glassman describes an embodiment in which preferably, the vendor maintains a data structure associated with the licensed content that can be quickly scanned to determine whether a license is available. In this embodiment, the vendor checks to determine whether there is an available license—suggesting that the number of users is determined on the basis of what the license allows."
Id. at *9 (citations, internal quotation marks, and alteration markings omitted).
Claims 49 and 50"[T]here is substantial evidence that Glassman discloses limiting access to copyrighted information for a predetermined time and during a fixed time period. Glassman discloses that permission to access specific content may be unlimited or it may be for only a relatively brief period of time, say a few minutes to a few hours. It further teaches that optionally, the invention provides the consumer with an estimate of when a license will be available."
Id. at *9 (citations, internal quotation marks, and alteration markings omitted).
Claims 51 and 57-60"[S]ubstantial evidence supports the Board’s finding that Manolis discloses formatting content and using a formatting program as required by dependent claims 51 and 57–60. Manolis describes formatting uploaded photographs to display them as thumbnail images on a user’s device."
Id. at *9-10 (citations omitted).
Conclusion
Claims of the '725 Application Obvious"Because the factual findings underlying the Board's conclusion[s of obviousness] are supported by substantial evidence, and beacuse the Board did not commit legal error, we affirm." Id. at *1-2 (italics in original omitted). "We have considered Mr. Chaganti’s remaining arguments and find them unpersuasive. Because each of the pending claims would have been obvious in light of the combination of Manolis and Glassman, we do not reach the Board’s additional bases for rejecting the claims."
In re Chaganti at *10.
 
 
 Image Attribution Statement: Jimbo Wales, “Wikimedia-servers,” available under a Creative Commons Attribution-Share Alike 3.0 Unported license and  GNU Free Documentation License, http://commons.wikimedia.org/wiki/File:Wikimedia-servers.jpg (last viewed April 28, 2014) (edited).

 
 
 
 
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