Case: 18-1048   Document: 68     Page: 1   Filed: 04/03/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

     WILLIAM MICHAEL FREDERICK TAYLOR,
               Plaintiff-Appellant

                            v.

     ANDREI IANCU, UNDER SECRETARY OF
   COMMERCE FOR INTELLECTUAL PROPERTY
    AND DIRECTOR OF THE UNITED STATES
      PATENT AND TRADEMARK OFFICE,
               Defendant-Appellee
             ______________________

                       2018-1048
                 ______________________

    Appeal from the United States District Court for the
 Eastern District of Virginia in No. 1:16-cv-00012-LMB-
 JFA, United States District Judge Leonie M. Brinkema.
                 ______________________

                  Decided: April 3, 2020
                 ______________________

    WILLIAM MICHAEL FREDERICK TAYLOR, Chiddingfold,
 Surrey, United Kingdom, pro se.

     THOMAS W. KRAUSE, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 defendant-appellee. Also represented by JOSEPH MATAL,
 MEREDITH HOPE SCHOENFELD, MAI-TRANG DUC DANG.
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                   ______________________

         Before DYK, CHEN, and STOLL, Circuit Judges.
 PER CURIAM.
      William Michael Frederick Taylor (“Mr. Taylor”) sued
 the Director of the U.S. Patent and Trademark Office (“Pa-
 tent Office”) under 35 U.S.C. § 145, challenging the Patent
 Office’s rejection of U.S. Application Serial No. 10/425,553
 (“the ’553 application”), of which Mr. Taylor is the inven-
 tor. 1 The district court granted summary judgment to the
 Patent Office, concluding that all of the ’553 application’s
 claims lack written description and are indefinite. We af-
 firm on the ground that the ’553 application’s claims lack
 written description.
                         BACKGROUND
     The ’553 application claims priority to United Kingdom
 Patent Application No. GB9310175.6, filed on May 18,
 1993. The specification describes a system called “GPS Ex-
 plorer.” J.A. 277. GPS Explorer “is designed to provide
 information [to a user] on the move,” such as “while driv-
 ing, flying, sailing, riding or walking.” J.A. 277, 278. The
 specification describes an “audio only version” of GPS Ex-
 plorer that includes a “Destination Oriented Guidance



     1   Mr. Taylor also challenged, in separate cases, the
 Patent Office’s rejection of two of his related applications:
 U.S. Application Serial Nos. 11/807,860 (“the ’860 applica-
 tion”) and 11/391,501 (“the ’501 application”). The district
 court consolidated the three cases, and concluded that each
 of the applications was unpatentable. Mr. Taylor sepa-
 rately appeals the district court’s decision as to the ’860 ap-
 plication (Case No. 18-1047) and as to the ’501 application
 (Case No. 18-1070). Our decisions on those appeals are be-
 ing issued concurrently with this decision.
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 TAYLOR   v. IANCU                                          3



 Mode.” J.A. 280, 282. In this mode, “[a] route from the
 present position to the destination will be determined from
 routing data.” J.A. 282. The audio only version of GPS
 Explorer also includes a “Tour Mode,” in which GPS Ex-
 plorer will “point out things of interest” near the user.
 J.A. 281. The specification explains that in “Tour Mode”:
    [t]he system will . . . provide tour guidance and
    point out things of interest. For example[,] when
    walking or driving past historic buildings or other
    features information about each building will be
    given. It’s [sic] date of construction, who lived
    there, how it was built, if it is open to the public.
    The dialogue may include historic sounds, the
    crack of a coachman’s whip, the voices of children
    at play, music drifting on the air, all creating the
    atmosphere of a bygone age.
 J.A. 281.
     In this mode, “[e]n route advertising” may be “inserted
 into tours at specified points.” J.A. 285. The specification
 also describes a “virtual reality version” of GPS Explorer,
 in which “computer generated objects may be overlaid on a
 video picture of the real world and the resulting composite
 image projected for an observer wearing an artificial real-
 ity helmet.” Id. at 287. The specification provides two ex-
 amples of this “virtual reality version”:
    The device enables a fire or rescue crew visiting say
    an oil rig to superimpose structural, electrical or
    hazard data onto their real[-]world view of the
    structure, giving them safety related information
    and audible hazard alerts.
    The device would also enable a user visiting the site
    for a new building to see the computer[-]generated
    image of the new building superimposed in the
    landscape. The computer[-]generated image will
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 4                                           TAYLOR   v. IANCU



     change as the user’s GPS position changes when he
     walks around the site.
 J.A. 288.
     Each of the ’553 application’s pending independent
 claims—claims 206 and 220—is directed to the combina-
 tion of these features. Claim 206 recites:
     An information system on a portable device for pre-
     senting information to a user, comprising:
        an input device which receives a [sic] one or
        more specified modes of operation of the
        portable device from the user;
        a sensing device automatically sensing a
        position of the portable device;
        an orientation determining device which
        determines a device orientation of the port-
        able device[;]
        a processing device, responsive to the sens-
        ing device, configured to access one or more
        databases that contain entries, the entries
        containing information on one or more
        things of interest at one or more locations,
        the processing device determining at least
        one entry, from among the entries, based
        on the sensed position;
        a presentation device, responsive to the
        processing device, presenting to the user a
        video picture of the real world that repre-
        sents the user’s real world frame of refer-
        ence from the sensed position and the
        sensed device orientation, and overlaying
        on the video picture of the real world, based
        on the specified mode of operation, a com-
        puter-generated representation of the de-
        termined at least one entry,
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 TAYLOR   v. IANCU                                           5



          wherein the processing device further se-
          lects advertising information based on the
          sensed position, and the presentation de-
          vice presents the selected advertising infor-
          mation to the user when presenting the
          video picture of the real world with the
          overlaid computer-generated representa-
          tion of the determined at least one entry;
          receiving a user input selecting a portion of
          the video picture and providing, in re-
          sponse to the input user selection, more de-
          tailed information related to the selected
          portion,
          determining route guidance from the
          sensed position to a location associated
          with input user selection; and
          presenting the determined route guidance
          to the user.
 J.A. 67 (emphasis added). Claim 220 similarly recites:
    A method for providing information to a user on a
    portable device, comprising the computer-imple-
    mented steps of:
          receiving one or more specified modes of op-
          eration of the portable device form [sic] the
          user
          automatically sensing a position of the
          portable device;
          determining a device orientation of the
          portable device;
          determining, based on the sensed position,
          at least one entry from a database contain-
          ing entries providing information on one or
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 6                                           TAYLOR   v. IANCU



        more things of interest at one or more loca-
        tions;
        presenting to the user a video picture of the
        real world that represents the user’s real
        world frame of reference from the sensed
        position and the device orientation, and
        overlaying on the video picture of the real
        world, based on the specified mode of oper-
        ation, a computer generated representation
        of the determined at least one entry,
        receiving a user input selecting a portion of
        the video picture, and providing, in re-
        sponse to the input user selection, more de-
        tailed information related to the selected
        position,
        determining route guidance from the
        sensed position to a location associated
        with input user selection; and
        presenting the determined route guidance
        to the user.
 J.A. 67–68 (emphasis added).
     In a final Office Action, the examiner rejected claims
 206 and 220 as indefinite, obvious in light of several prior
 art references, and lacking written description. The Patent
 Trial and Appeal Board (“Board”) affirmed the examiner’s
 written description and indefiniteness rejections. Board
 reversed the examiner’s obviousness rejections, reasoning
 that the claims were too indefinite for the Board to “make
 a proper review of the prior art rejections.” J.A. 8530. The
 Board denied Mr. Taylor’s request for rehearing.
     Mr. Taylor then filed a complaint under 35 U.S.C. § 145
 in district court, seeking judgment that the ’553 applica-
 tion’s claims were patentable. J.A. 2. The district court
 granted summary judgment to the Patent Office,
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 TAYLOR   v. IANCU                                           7



 concluding that “the ’553 [a]pplication fails on both written
 description and definiteness,” J.A. 45, and denied Mr. Tay-
 lor’s motion for reconsideration.
     Mr. Taylor appeals. We have jurisdiction to review the
 district court’s decision under 28 U.S.C. § 1295(a)(4)(C).
 On appeal, we reach only the written description issue.
                           DISCUSSION
     We review the district court’s grant or denial of sum-
 mary judgment de novo. MicroStrategy Inc. v. Bus. Objects,
 S.A., 429 F.3d 1344, 1349 (Fed. Cir. 2005). Under the writ-
 ten description requirement for patentability, the specifi-
 cation “must ‘clearly allow persons of ordinary skill in the
 art to recognize that [the inventor] invented what is
 claimed.’” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath
 Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)) (al-
 teration in original). Written description is a question of
 fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc.,
 772 F.2d 1570, 1575 (Fed. Cir. 1985)).
     The Board concluded that the claims lacked written de-
 scription because they covered—yet the specification did
 not sufficiently disclose—a presentation device providing:
     (1) a video picture of the real world based on the
     user’s sensed position and orientation; (2) an over-
     laid, computer-generated representation of an en-
     try retrieved from a database based on the user's
     sensed position and specified mode of operation; (3)
     selected advertising based on the user’s sensed po-
     sition and presented on the video picture of the real
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 8                                            TAYLOR   v. IANCU



     world with the overlaid computer-generated repre-
     sentation; 2 and (4) route guidance.
 J.A. 8521–22 (Board opinion). The Board explained that
 although some aspects of these features are disclosed sep-
 arately, the specification “does not sufficiently disclose to
 the skilled artisan how all of this information is generated
 and presented to the user simultaneously.” J.A. 8522–23
 (emphasis added). The district court agreed, as do we.
     The district court correctly construed the claims to re-
 quire simultaneously “presenting . . . a video picture of the
 real world” and “overlaying . . . based on the specified mode
 of operation, a computer[-]generated representation of” a
 point-of-interest entry. Mr. Taylor’s argument that “sim-
 ultaneity is not specified” by the claims, Appellant’s Br. 68,
 is belied by the language of the claims themselves, which
 recite three (claim 220) or all four (claim 206) of these fea-
 tures being presented concurrently.
     The district court correctly concluded that, in light of
 this construction, the claims lack written description. The
 claimed features—to the extent that they are disclosed in
 the specification—are part of one or the other of two sepa-
 rate “version[s]” of GPS Explorer (i.e., the “audio only ver-
 sion” or the “virtual reality version”). J.A. 280–87.
 Nowhere does the specification disclose integration of these
 features into an “information system on a portable device”
 (as recited by claim 206) or “method” (as recited by claim
 220) that presents these features simultaneously, let alone
 how that simultaneity is achieved. Accordingly, a person
 of ordinary skill in the art would not understand that the
 inventor possessed the subject matter claimed.




     2   This feature is recited in claim 206 but not in claim
 220.
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 TAYLOR   v. IANCU                                            9



     The Patent Office’s evidence supporting this conclusion
 was unrebutted. Dr. Peter Dana, the Patent Office’s tech-
 nical expert, testified that “[t]he specification is completely
 devoid of steps for implementing these high[-]level func-
 tions” simultaneously. Expert Report of Peter Dana, Ph.D.,
 Taylor v. Matal, No. 1:15-cv-1607, ECF No. 86-1, at 14. Dr.
 Dana explained:
     [t]he specification provides no disclosure of how all
     this information is generated and presented to the
     user simultaneously. Where are all the video im-
     ages coming from? As one example, there is no dis-
     cussion of how the presentation of route guidance
     is performed. How is a destination selected? How
     does the device determine the route that one should
     take?
 Id. Mr. Taylor’s experts testified about some of the claimed
 features in isolation. For example, Mr. Miller discussed
 video overlays, and Mr. White, Mr. Carlton, and Dr. Whit-
 ing discussed GPS-based guidance. But none of Mr. Tay-
 lor’s experts explained why a person of ordinary skill
 reading the specification in 1993 would understand Mr.
 Taylor to have invented a system or method that simulta-
 neously presents all claimed features.
      Mr. Taylor’s own experience in attempting to imple-
 ment the invention is consistent with Dr. Dana’s testi-
 mony. Mr. Taylor admitted that in 1993, when he filed his
 initial application, “there was no internet,” and that once
 the internet was developed he “attempt[ed] to play catch-
 up and move from [his] previous conception [of the inven-
 tion] to [one] having more of an involvement in the inter-
 net.” Deposition of William Michael Frederick Taylor (day
 2), Taylor v. Matal, No. 16-cv-12, ECF No. 51-3, at 11–12.
 Mr. Taylor also admitted that even after filing his applica-
 tion he was “waiting and waiting and waiting” for “a suita-
 ble platform to become available” to allow him to
 implement his idea. Id. at 12. Indeed, as the district court
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 10                                          TAYLOR   v. IANCU



 found, Mr. Taylor’s “first prototype was not operational un-
 til 1998 and neither that prototype nor the 2001 version
 contained all the features described in the specification,
 much less the claims.” J.A. 65. Mr. Taylor’s own testimony
 and experience thus shows that the specification did not
 demonstrate possession of the claimed invention but was
 instead “a ‘mere wish or plan’ for obtaining the claimed in-
 vention.” See Novozymes A/S v. DuPont Nutrition Biosci-
 ences APS, 723 F.3d 1336, 1344 (Fed. Cir. 2013) (quoting
 Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
 1559, 1566 (Fed. Cir. 1997).
     Mr. Taylor’s reliance on the specification and other ev-
 idence that he contends demonstrates invention of the ’553
 application’s claims is unavailing. That evidence, like his
 expert testimony, goes to whether each these four features
 was, in isolation, sufficiently described—not to the simul-
 taneous presentation of these features, as claimed.
     No reasonable factfinder could conclude that the ’553
 application meets the written description requirement.
 The district court did not err in granting summary judg-
 ment to the Patent Office. Because a lack of written de-
 scription renders the ’553 application unpatentable, we
 need not reach the other grounds raised on appeal.
                        AFFIRMED
