Fed Circuit upholds Facebook appeal against PTAB rejection

Published on 08/21 2018  Source: WIPR website

The US Court of Appeals for the Federal yesterday upheld an appeal made by Facebook after the Patent Trial and Appeal Board (PTAB) rejected a patent application made by the social networking site.  

In 2012, Facebook applied for a method of "contiguously positioning images on the site". The patent application is called "Rendering contiguous image elements" and was given the application number 13/715,636.

The application discloses a method for rendering an array of contiguous images on a social-networking profile.

However, a patent examiner rejected several claims of the application as anticipated and obvious. The decision was upheld by the PTAB.  

To reject the application, the examiner and the PTAB relied on a patent filed in 2012 and assigned to Apple. The patent is called "Application for publishing journals" and provides an algorithm for placing different sized images on a grid.

Facebook responded by appealing before the Federal Circuit.

The main question on appeal was whether the Apple patent disclosed "a rule requiring the image elements to be contiguous such that each available image position between the first image element in the sequence and the last image element in the sequence is occupied by an image element", said the Federal Circuit.

Yesterday, August 14, the Federal Circuit said there is nothing in the Apple patent's algorithm that "required contiguity".

While it did say that the PTAB relied on evidence that showed the Apple patent "happened" to result in contiguity, the Federal Circuit said that cannot represent a general rule that would demand contiguity for all images. The Federal Circuit added that a different sized image may not result in contiguity.

As a result, the Federal Circuit said that the algorithm in the Apple patent did not require contiguity in response to resizing or rearranging images in all instances. The Apple patent could not have disclosed the "rule requiring the image elements to be contiguous" in the claims of the Facebook application, said the Federal Circuit.

The PTAB's decision was consequently reversed and remanded.