{"id":2170,"date":"2018-08-27T12:43:21","date_gmt":"2018-08-27T16:43:21","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2170"},"modified":"2018-09-01T09:08:29","modified_gmt":"2018-09-01T13:08:29","slug":"change-in-construction-of-claims-from-petition-required-board-to-allow-petitioner-to-respond","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2170","title":{"rendered":"Change In Construction of Claims from Petition Required Board to Allow Petitioner to Respond"},"content":{"rendered":"

In Ericsson Inc. v. Intellectual Ventures I LLC<\/a>, [2017-1521] (August 27, 2018), the Court of Appeals for the Federal Circuit held that the PTAB\u00a0did not\u00a0consider portions of Ericsson\u2019s Reply, and vacated and\u00a0remanded the Final Written decision that claims 1\u20133, 6\u20139, and 12\u201314 of U.S. Patent No.\u00a05,602,831 were not unpatentable under 35 U.S.C. \u00a7 103.<\/p>\n

Under PTO regulations, the Board is entitled to strike\u00a0arguments improperly raised for the first time in a reply.\u00a0Such decisions\u00a0related to compliance with the Board\u2019s procedures\u00a0are reviewed for an abuse of discretion.\u00a0\u00a0An abuse\u00a0of discretion is found if the decision: (1) is clearly unreasonable,\u00a0arbitrary, or fanciful; (2) is based on an erroneous\u00a0conclusion of law; (3) rests on clearly erroneous fact\u00a0finding; or (4) involves a record that contains no evidence\u00a0on which the Board could rationally base its decision.<\/p>\n

Ericsson argued on pages 13 and 14 of its Reply that,\u00a0given the admitted state of the art regarding interleaving\u00a0disclosed in the patent at issue, the prior art’s teachings render obvious the claimed invention.\u00a0\u00a0The Board characterized this portion\u00a0of Ericsson\u2019s Reply as raising a new theory of\u00a0obviousness, one that was not addressed in the Petition or
\nresponding to arguments raised in the Patent Owner\u00a0Response, but the Federal Circuit disagreed, noting the\u00a0portions of the Reply the Board declined to consider\u00a0expressly follow from the contentions raised in the\u00a0Petition.<\/p>\n

The Federal Circuit found that the Board\u2019s error was parsing Ericsson\u2019s arguments
\non reply with too fine of a filter. The error was exacerbated by\u00a0the fact that the significance arose after\u00a0the Petition was filed, in that the Board adopted a different
\nconstruction of the terms after the Petition\u00a0instituting inter partes<\/em> review was granted, and the issue was the essential\u00a0basis of the Board\u2019s decision in concluding that\u00a0 the claim\u00a0had not been shown unpatentable, Ericsson should have\u00a0been given an opportunity to respond.\u00a0 Undoubtedly, this was a special case in which Petitioner,\u00a0Patent Owner, and the Board all initially applied the\u00a0broadest reasonable interpretation claim construction\u00a0standard (despite the fact that the patent had expired when it filed the petition), and only after institution applied Phillips<\/em>\u00a0instead. In light of these changed circumstances, the\u00a0Board revisited its approach to the claims in light of this\u00a0error, and Ericsson likewise deserved an opportunity to do\u00a0the same.<\/p>\n

The Federal Circuit said that\u00a0its decision should not be viewed as changing or\u00a0challenging the Board\u2019s practice of limiting the scope of\u00a0replies pursuant to its regulations; precedent\u00a0supports the Board\u2019s discretion to reject arguments raised\u00a0for the first time in a reply.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Ericsson Inc. v. Intellectual Ventures I LLC, [2017-1521] (August 27, 2018), the Court of Appeals for the Federal Circuit held that the PTAB\u00a0did not\u00a0consider portions of Ericsson\u2019s Reply, and vacated and\u00a0remanded the Final Written decision that claims 1\u20133, 6\u20139, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2170","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2170","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2170"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2170\/revisions"}],"predecessor-version":[{"id":2171,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2170\/revisions\/2171"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2170"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2170"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2170"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}