Fresh From the Bench: Latest Federal Circuit Court Cases

Schwabe, Williamson & Wyatt PC

Schwabe, Williamson & Wyatt PC

Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018)

In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following inter partes review (IPR) proceedings related to a patent for word-recognition technology.

The patent claimed a computerized method for identifying and substituting information in an electronic document.  The key issue on appeal was whether there was a prosecution disclaimer for the patent claims.  During prosecution of the patent, Arendi amended the claims and explained what was changed and why.  The Examiner confirmed the reasons why the claims were deemed allowable in the Notice of Allowance. The Examiner and the applicant understood what the applicant had changed and what the claim amendment required. 

The PTAB had provided two alternative explanations for why all 79 claims of Arendi’s patent were invalid as obvious.  Arendi argued that the PTAB erred in finding that the claims would have been obvious over two references because an amendment that distinguished a separate reference was a “prosecution disclaimer” that also distinguished one of the references at issue. The Federal Circuit held that while one of the Board’s two rulings on the patent was wrong, the other was correct.

In its first ruling, the PTAB stated that prosecution disclaimer did not occur because the Examiner—not Arendi—disclaimed the relevant subject matter in the Notice of Allowance and thus, the claims were unpatentable on the grounds of obviousness.  The Federal Circuit disagreed, holding that the PTAB erred in failing to apply the prosecution disclaimer because “the applicant amended the claims and explained what was changed and why, and the examiner confirmed the reasons why the amended claims were deemed allowable.”  Therefore, the Board’s ruling misapplied the Court’s precedent in Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375 (Fed. Cir. 2005) in which a statement by a patent applicant during examination limits the scope of a patent. The Court stated that to construe patent claims, the prosecution history must be consulted so that the court can exclude any interpretation that was disclaimed during prosecution. 

In its second ruling, the PTAB stated that even if there was a prosecution disclaimer, the claims were still obvious in light of the prior art.  The Federal Circuit agreed and upheld the obviousness determination, finding that substantial evidence supported obviousness over the prior art reference at issue. The prosecution disclaimer occurred when Arendi explained why the claims were amended and the Examiner confirmed the reasons for allowance.

Read the full decision.

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