Tag Archives: PTAB

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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Federal Circuit Clarifies Nexus Requirement of Objective Indicia of Nonobviousness

Author: Saba N. Daneshvar
Editor: Aaron Gleaton Clay

In ClassCo, Inc. v. Apple, Inc., No. 15-1853 (Fed. Cir. Sept. 22, 2016), the Federal Circuit affirmed the Board’s finding that certain claims of ClassCo’s patent directed to improvements on “Caller ID” services were unpatentable under 35 U.S.C. § 103. During an inter partes reexamination of ClassCo’s patent, ClassCo presented the Board with evidence of objective indicia of nonobviousness, including industry praise and commercial success, but the Board afforded the evidence no weight, concluding that each had no nexus to the claimed invention because the evidence related to features disclosed in the prior art. While the Federal Circuit affirmed the Board’s ultimate obviousness determination, the Court held that the Board improperly dismissed ClassCo’s nonobviousness evidence.

The Federal Circuit clarified that “[e]ven though it was not dispositive evidence of nonobviousness, the Board should have given some weight and consideration to ClassCo’s evidence . . . . As we have explained, when secondary considerations are present, though they are not always dispositive, it is error not to consider them.” The Court further explained that under In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011), for “objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” The Court clarified that a nexus between the claimed invention and nonobviousness evidence exists where the evidence presented is reasonably commensurate with the scope of the claims, not where the merits of the claimed invention were readily available in the prior art.

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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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