Introduction:

On August 14, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”), with Prost as Chief Judge, decided on Facebook’s appeal to the Patent Trial and Appeal Board (“PTAB”) regarding a final rejection of application No. 13/715,636 (“’636”). The ‘636 application concerns “a method for arranging images contiguously in an array” via an algorithm, wherein the arrangement and placement of image elements is adjusted “so as to preserve the contiguous layout.” The algorithm of the ‘636 application can further adjust the arrangement and placement of images in response to user actions such as resizing, resequencing, and so on.

A section of claim one of the ‘636 application asserts “determining, in response to an instruction to adjust the position or size of a first image element, a second position in the array for at least one second image element, the second position determined based on a rule requiring the image elements to be contiguous…” A patent examiner rejected some claims as anticipated and the rest as obvious, citing a patent application filed by Perrodin.

Perrodin’s application disclosed an algorithm for positioning image elements on a grid, wherein “the application places the [three by three] first image across three cells in both directions. The application then marks those cells as being used or allocated… [Then] the remaining images are distributed across each available cell in the grid.” Perrodin also disclosed said algorithm can “reflow” image elements on the grid after a user moved an image within the grid.

The examiner concluded that “the foregoing discloses of Perrodin satisfied the ‘rule requiring the image elements to be contiguous’ limitation” of the ‘636 application. PTAB thus adopted the examiner’s conclusion and affirmed the rejections. The appellant, Facebook, appealed PTAB’s affirmation “because [PTAB’s] reading of the relevant prior art reference cannot be supported by substantial evidence.”

Decision:

                The exclusive question considered on appeal by the Federal Circuit is whether or not Perrodin disclosed, within the meaning of the claims, “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.” While the “reflow” depicted in the example shown by FIGs. 18 and 19 happened to result in a contiguous arrangement, Perrodin’s algorithm does not require a contiguous arrangement. Perrodin’s lack of required contiguity is further made plain by FIG. 17 of the application, which shows another “reflow” example that resulted in unoccupied grid cells. Thus, Perrodin’s application did not require contiguity.

                The Federal Circuit determined Perrodin’s algorithm “did not require contiguity in response to resizing and rearranging in all cases, but rather left open the possibility that cells would be left unfilled.” Thus, the Federal Circuit reversed PTAB’s final rejection of the ‘636 application and remanded for further action. The appeal was reversed and remanded.

Full In re: Facebook, Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2524.Opinion.8-14-2018.pdf

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