{"id":966,"date":"2016-06-10T12:55:33","date_gmt":"2016-06-10T16:55:33","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=966"},"modified":"2016-06-11T13:08:14","modified_gmt":"2016-06-11T17:08:14","slug":"966","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=966","title":{"rendered":"The Board Cannot Adopt a Surprise Claim Construction"},"content":{"rendered":"

In SAS Institute, Inc. v. Complementsoft,LLC<\/em>, [2015-1346, 2015-1347] (June 10, 2016), the Federal Circuit agree with the Board in an IPR involving U.S. Patent No. 7,110,936 on all of the\u00a0challenged constructions resulting in finding of invalidity of all but one of the challenged claims. \u00a0The Federal Circuit also confirmed that the Board did not need to address in its final written decision claims for which IPR was not instituted. \u00a0Finally, the Federal Circuit\u00a0vacated the Board\u2019s determination\u00a0that claim 4 is patentable and remanded so that the\u00a0parties may address a new construction that the Board\u00a0adopted in its final written decision after interpreting the\u00a0claim differently before.<\/p>\n

With respect to claim 4, which was sustained based upon a different construction of the phrase \u201cgraphical representations\u00a0of data flows, the Federal Circuit remanded so that the parties could address the construction in the final written decision. \u00a0The Federal Circuit agreed with the construction of graphical representations\u00a0of data flows\u201d as \u201ca graphical representation comprised of icons depicting data processing steps and\u00a0arrows to depict the movement of data through source\u00a0code.\u201d \u00a0The Federal Circuit noted that the term was not used in the specification, and agreed with the Board’s use of the definition of the term\u00a0\u201cdata flow diagrams,\u201d which did appear in the specification.<\/p>\n

The Federal Circuit rejected petitioner’s argument that because the construction was narrow, it could not be the broadest reasonable interpretation, saying:<\/p>\n

While we have endorsed the Board\u2019s\u00a0use of the broadest reasonable interpretation standard in\u00a0IPR proceedings, we also take care to not read \u201creasonable\u201d\u00a0out of the standard. This is to say that \u201c[e]ven under\u00a0the broadest reasonable interpretation, the Board\u2019s construction\u00a0cannot be divorced from the specification and\u00a0the record evidence, and must be consistent with the one\u00a0that those skilled in the art would reach.\u201d<\/p><\/blockquote>\n

The Federal Circuit also relied upon the structure of the claims, noting that some of the claims speak broadly of flows, while others speak of data flows and program flows, was instructive as to the meaning of the claims (although this is not claim differentiation).<\/p>\n

The Federal Circuit affirmed the Board’s invalidation of claims in the face of patent owner’s arguments that the claim constructions were incorrect. \u00a0The Federal Circuit specifically noting that\u00a0because the specification and prosecution\u00a0history did not conclusively resolve construction,\u00a0it was appropriate for the Board to rely\u00a0on dictionaries and expert testimony to aid its construction.<\/p>\n

The most interesting aspect of the case may be the Federal Circuit’s treatment of the Board’s change in claim construction between the Institution Decision and the Final Written Decision, which gave the Federal Circuit “pause.” \u00a0The Federal Circuit noted that\u00a0the Board’s new construction of \u201cgraphical representations of\u00a0data flows\u201d as \u201ca graphical representation comprised of\u00a0icons depicting data processing steps and arrows to depict\u00a0the movement of data through source code,\u201d varied varied\u00a0significantly from its initial interpretation of\u00a0the term as \u201ca map of the path of data through the executing
\nsource code.\u201d \u00a0The Federal Circuit was not concered that the Board changed its construction, which the Federal Circuit said it was free to do, but that it Petitioner was not given an opportunity to address the new construction since the Patent Owner agreed with the original construction, and\u00a0never suggested that the Board adopt the
\nconstruction that eventually materialized in the final\u00a0written decision. Under these circumstances, the Federal Circuit said that it was difficult to imagine either party\u00a0anticipating that already-interpreted terms were actually\u00a0moving targets, and it is thus unreasonable to expect that\u00a0they would have briefed or argued hypothetical constructions not asserted by their opponent. \u00a0The Federal Circuit vacated the decision, and remanded for further proceedings.<\/p>\n","protected":false},"excerpt":{"rendered":"

In SAS Institute, Inc. v. Complementsoft,LLC, [2015-1346, 2015-1347] (June 10, 2016), the Federal Circuit agree with the Board in an IPR involving U.S. Patent No. 7,110,936 on all of the\u00a0challenged constructions resulting in finding of invalidity of all but one … 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":[7,26,21],"tags":[],"class_list":["post-966","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-inter-partes-review","category-ipr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/966","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=966"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/966\/revisions"}],"predecessor-version":[{"id":969,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/966\/revisions\/969"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=966"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=966"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=966"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}