Category Archives: Claim Construction

Federal Circuit Trends of 2016

Authors: Alissa Lipton, Eric Raciti
Editor: Lauren J. Dreyer

Join us as we review what has been an exciting year at the Federal Circuit and help ring in 2017 with a New Year’s reception at Finnegan’s Boston office on Wednesday, January 11, 2017! We will provide insights on the top Federal Circuit decisions and trends of 2016.

Below, we highlight some of the issues we will discuss on January 11:
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What Happens When a Prevailing Party Is Still Dissatisfied with PTAB’s Claim Construction

Author: Anthony A. Hartmann
Editor: Lauren J. Dreyer

In SkyHawke Tech., LLC v. DECA Int’l Corp., No. 2016-1325 (Fed. Cir. July 15, 2016), the Federal Circuit limited a prevailing party’s ability to appeal claim construction issues in an inter partes reexamination.

After SkyHawke sued DECA for patent infringement, DECA requested inter partes reexamination, but SkyHawke ultimately prevailed on validity of its patent. Nonetheless, SkyHawke appealed to the Federal Circuit under 35 U.S.C. § 141 (pre-AIA), being “dissatisfied” with the means-plus-function construction and arguing the PTAB had created an erroneous prosecution history that could limit its enforcement rights. DECA moved to dismiss SkyHawke’s appeal for lack of jurisdiction.

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Federal Circuit Vacates and Remands PTAB’s “Midstream” Claim Construction Change

Author: Jeff T. Watson
Editor: Elizabeth D. Ferrill

In SAS Institute, Inc. v. ComplementSoft, LLC, Nos. 15-1346, 15-1347 (Fed. Cir. June 10, 2016), the Federal Circuit vacated the PTAB’s validity determination for a claim because the Board adopted a new claim construction in its final written decision after interpreting the claim differently before. The Court also rejected SAS’s argument that the Board must address all claims challenged in an IPR petition in its final written decision. In her dissent, Judge Newman stated that the Board’s failure to address non-instituted claims in the final written decision undermines the goals of the AIA. A more detailed discussion of the Federal Circuit’s decision can be found on Finnegan’s AIA blog.

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