IP Law Daily PTAB’s rejection of Facebook’s image arranging patent for obviousness reversed
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Tuesday, August 14, 2018

PTAB’s rejection of Facebook’s image arranging patent for obviousness reversed

By Peter Reap, J.D., LL.M.

In a challenge to Facebook’s patent application for a method for arranging images contiguously in an array, a prior art reference—a patent application filed by Perrodin that related to placing images on a grid and did not require contiguity in response to resizing or rearranging in all cases—could not have disclosed the limitation of Facebook’s application that required all of the image elements to be contiguous, the U.S. Court of Appeals for the Federal Circuit has ruled. Therefore, a patent examiner erred in rejecting Facebook’s application for obviousness and anticipation, and the Patent Trial and Appeal Board erred in affirming that rejection. The case was reversed and remanded for appropriate further action (In re Facebook, Inc., August 14, 2018, Prost, S.).

Facebook’s U.S. Patent Application No. 13/715,636, titled "Rendering Contiguous Image Elements," discloses rendering an array of contiguous images elements for use, for example, in displaying a series of images on a social-networking profile. According to an embodiment, the images could be one of two sizes, small or large, with large images sized to be a two-dimensional multiple of the size of small images. The algorithm of the ’636 application determines the arrangement of the image elements, and it adjusts the placement "so as to preserve the contiguous layout," and it can further adjust in response to user actions such as resizing or resequencing images, while continuing "to ensure an array of contiguous image elements."

Claim 1 of the ’636 patent application was treated by the Board as representative and Facebook conceded that the rejected claims rise and fall with the rejection of independent claims 1, 10, and 15. Because Facebook’s arguments pertained to all three of those independent claims, the Federal Circuit discussed only claim 1, it noted.

In relevant part, Claim 1 disclosed a method:

by a computing device, 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 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...

Relied on by both the Board and the examiner, Perrodin disclosed a method for arranging media content in a digital journal. Perrodin disclosed an algorithm for placing images on a grid. Perrodin further explained that after a user moves an image within the grid, "[t]he application [can] also reflow[] several of the remaining images across the journal."

According to the Federal Circuit, the sole question on appeal was whether Perrodin 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" within the meaning of the claims. Both parties agreed that the obviousness and anticipation rejections rose and fell together, the court observed.

Perrodin did not disclose such a rule, the court held. Nothing about Perrodin’s algorithm required contiguity. It was true that the example depicted in Perrodin’s Figures 18 and 19 happened to result in contiguity. But that cannot represent a general rule that would demand contiguity for all images, as required by the claims here, the court reasoned.

For example, the Board’s analysis failed to consider what Perrodin would have done if image 1103 in Figure 19 were 2x2. Perrodin’s algorithm could not guarantee contiguity. This shortcoming is made plain in Perrodin’s Figure 17, which showed the effect of re-sizing image 1103 to be 2x2, while maintaining the same sequence.

Because Perrodin’s algorithm did not require contiguity in response to resizing or rearranging in all cases, but rather left open the possibility that cells would be left unfilled, Perrodin could not have disclosed the "rule requiring the image elements to be contiguous" of the claims of the ’636 application, the Federal Circuit explained.

This case is No. 2017-2524.

Attorneys: Jason R. German (Baker Botts LLP) for Facebook, Inc. Meredith Hope Schoenfeld for the USPTO.

Companies: Facebook, Inc.

MainStory: TopStory Patent FedCirNews

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