The Software IP Report

When is Patent Prior Art Distinct but Not Different?

Where distinct physical concepts recited in a patent claim and applied prior art are related and can achieve same results, do not count on being able to distinguish teachings of the prior art.  In Mobileye Vision Technologies Ltd. v. iOn Road, Ltd., No. 2017-1984 (Fed. Cir. June 12, 2018) (non-precedential), a patent claim recited determining “a likelihood of collision responsive to whether or not the lateral displacement substantially uniformly approaches zero.” The Federal Circuit held this claim obvious, under 35 U.S.C. § 103, over prior art showing use of a constant lateral velocity, rather than lateral displacement, to determine a point of intersection. Accordingly, the court agreed with both the patent examiner in inter partes review, and the Patent Trial and Appeal Board (PTAB), that claim 6 of US Patent No. 7,113,867 would have been obvious over a combination of references including US Patent No. 4,257,703.

The patent owner had argued that the PTAB had ignored the claim’s requirement that the lateral displacement approach zero “substantially uniformly.” According to the patent owner, “substantially uniformly” was a limitation on “how the lateral displacement approaches zero, not just whether it approaches zero.” (Emphasis in original.) But the Federal Circuit agreed with the challenger’s argument that distinguishing lateral displacement from lateral velocity “is a distinction without a difference.” If, the court said, “lateral displacement over time is substantially uniform,” then an object is moving “approximately the same lateral distance,” i.e., “at a constant lateral velocity,” as taught in US 4,257,703.

Lesson for Practice

Be careful when you are trying to distinguish prior art by alleging a distinction between physical concepts, when the prior art works in the same way as your claim, and achieves the same result as your claim.