A Single Prior Art Reference Can Claims Obvious When Construed Under the Broadest Reasonable Interpretation

The patentee appealed the Patent Trial & Appeal Board’s (PTAB) final written decision in an inter partes review, finding the challenged claims were obvious in view of the PTAB’s claim construction. The Federal Circuit affirmed.

The court first upheld the PTAB’s construction of two contested claim terms, “gamvatar” and “layers,” under the Broadest Reasonable Interpretation, the then-applicable legal standard. On appeal, the patentee argued that the PTAB’s construction of “gamvatar” was erroneous for failing to include that “gamvatar” should concurrently represent a user online and in-game. This argument was unpersuasive in view of the claim language, which did not recite the patentee’s proposed additional requirement. The specification similarly showed that “gamvatar” was not limited to a concurrent use online and in-game. Regarding the second term, the patentee argued that the proper construction of “layers” requires that they display graphical objects on the gamvatar, which was not included in the PTAB’s construction. The patentee’s argument failed in view of the specification and prosecution history, both of which supported that “layers” could display items separately from the avatar. 

The Federal Circuit then affirmed the PTAB’s obviousness finding. The court found that a single prior art reference rendered all elements of the challenged claims, as construed, obvious. In so doing, the court rejected the patentee’s argument that a single prior art reference cannot support an obviousness finding by stating that a “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.”