Tag Archives: Claim Construction

Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

Author: Sean D. Damon
Editor: Jeff T. Watson

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple. Continue reading

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PTAB Must Apply Phillips  Claim Construction Standard to Patents that Expire During Pending Reexam

Author: Jose M. Recio
Editor: Lauren J. Dreyer

In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Federal Circuit held that patents that expire during a pending reexamination should not be examined under the broadest reasonable interpretation (BRI) standard.

CSB’s patent was subjected to an ex parte reexam before it expired. During the pendency of an appeal to the PTAB of the examiner’s rejection of all claims, the patent expired. The PTAB, in analyzing the examiner’s claim constructions, which applied the BRI standard, applied the same standard.

The Federal Circuit held that the PTAB erred in using the same standard. The Court acknowledged that during reexams of unexpired patents the PTAB indeed should use the BRI standard. But when a patent expires during the reexam, the PTAB should thereafter apply the claim construction standard set forth in Phillips v. AWH Corp. The Court rejected the Patent Office’s argument that the PTAB, as a reviewer of the examiner’s work, should review claim constructions consistent with the standard used by the examiner. It held that the Phillips standard applies to expired patents in reexam regardless of the standard that the examiner applied. Nonetheless, it affirmed the PTAB’s decision because applying the BRI standard in this case produced the same result that would have been obtained under the correct Phillips standard.

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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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