This morning, the Federal Circuit released a nonprecedential opinion in an appeal from a final written decision of the Patent Trial and Appeal Board. The opinion addresses substitute claims, and in particular whether they satisfy the written description requirement and the non-obviousness requirement. Here is the introduction to the opinion.
Snap Inc. v. You Map, Inc. (Nonprecedential)
Snap Inc. (“Snap”) appeals from a Patent Trial and Appeal Board (“Board”) final written decision allowing substitute claims for U.S. Patent No. 10,616,727 (the “’727 patent”), which is owned by Appellee You Map, Inc. (“You Map”). We affirm the Board’s decision that the substitute claims satisfy the written description requirement of 35 U.S.C. § 112. However, we conclude that the Board erred in its determination that Snap failed to show that the substitute claims were not obvious over prior art reference Feldman. Whether the substitute claims are obvious turns on the substitute claims’ requirement that the claimed request for social media posts include a “current zoom level.” We see no error in the Board’s determination that Feldman does not disclose a request that includes a “current zoom level.” However, the Board’s determination that it would not have been obvious to modify Feldman to include a “current zoom level” in the request is inconsistent with KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007). We affirm in part, vacate in part, and remand for further proceedings.