{"id":2828,"date":"2020-07-09T00:41:26","date_gmt":"2020-07-09T05:41:26","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2828"},"modified":"2020-07-18T20:46:24","modified_gmt":"2020-07-19T01:46:24","slug":"board-should-fix-obvious-claim-errors-in-order-to-make-a-decision-on-the-merits","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2828","title":{"rendered":"Board Should Fix Obvious Claim Errors in Order to Make a Decision on the Merits"},"content":{"rendered":"\n

In Fitbit, Inc. v. Valencell, Inc.<\/a>, [2019-1048] (July 8, 2020), the Federal Circuit vacated the PTAB decision that Claims 3-5 of U.S. Patent No. 8,923,941 were not unpatentable on a method of generating data output containing physiological and motion-related information.<\/p>\n\n\n\n

The Board held that claim 3 is not unpatentable, based solely on the Board\u2019s rejection of Fitbit\u2019s proposed construction of the term \u201capplication-specific interface (API).\u201d The Board did not review patentability of claim 3 on the asserted grounds of obviousness.<\/p>\n\n\n\n

The Federal Circuit agreed with the Board’ s construction, rejecting Fitbit’s broader construction. The Federal Circuit observed however that the difference between an application-specific interface and an application programming interface may have no significance.<\/p>\n\n\n\n

The Board did not review the patentability of claim 3, as construed, on the asserted grounds of obviousness. The Board held that, by rejecting Fitbit\u2019s position on the meaning of \u201capplication-specific interface (API),\u201d the patentability inquiry ended, and by Final Written Decision the Board held claim 3 not unpatentable. <\/p>\n\n\n\n

The Federal Circuit held that the Board erred in holding that since it did not adopt Fitbit\u2019s claim construction, that decided the question of patentability. It was improper to hold claim 3 \u201cnot unpatentable\u201d by Final Written Decision, without determination of the asserted grounds of obviousness. <\/p>\n\n\n\n

As to claims 4 and 5, the Board held claims 4 and 5 not unpatentable in its Final Written Decision, on the ground that the Board could not determine the meaning of the claims because the term \u201cthe application\u201d lacked antecedent basis. The Board did not apply the cited prior art references, on which there were evidence and argument, instead stating that the meaning of the claims were \u201cspeculative.\u201d<\/p>\n\n\n\n

Both parties agreed that the lack of antecedent basis arose from an error in renumbering the claims, which the Board refused to correct. The Federal Circuit said that although the Board states that the intended meaning of the claims is \u201csubject to reasonable debate,\u201d it perceived no debate. Rather, the parties to this proceeding agree as to the error and its correction. The Board erred in declining to accept the parties\u2019 uniform position and correct the error that claim 4 depend from claim 3. With this correction, the rejection of claims 4 and 5 for absence of antecedent basis for \u201cthe application\u201d dis-appears.<\/p>\n\n\n\n

The Federal Circuit concluded that the Agency\u2019s treatment of this error as the basis of a Final Written Decision of patentability is not a reasonable resolution, and does not comport with the Agency\u2019s assignment to resolve patentability issues.<\/p>\n\n\n\n

The Federal Circuit has previously pressed the PTAB to reach a decision even where the claims were difficult to construe. Here the Court went further to require the Board to fix obvious defects in the claims rather than avoid reaching a decision on the merits.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Fitbit, Inc. v. Valencell, Inc., [2019-1048] (July 8, 2020), the Federal Circuit vacated the PTAB decision that Claims 3-5 of U.S. Patent No. 8,923,941 were not unpatentable on a method of generating data output containing physiological and motion-related information. … 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":[1],"tags":[],"class_list":["post-2828","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2828","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=2828"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2828\/revisions"}],"predecessor-version":[{"id":2829,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2828\/revisions\/2829"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2828"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2828"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2828"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}