Expert Testimony Critical to Determining Meaning of Prior Art to a PHOSITA

In IXI IP, LLC v. Samsung Electronics Co.. Ltd., [2017-1665] (September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No. 7,039,033 were unpatentable.  The ’033 patent is directed to a system that accesses information from a wide area network (WAN), such as the Internet, and local wireless devices in response to short-range radio signals.

The Federal Circuit noted that issues relating to a motivation to combine prior art references and a reasonable expectation of success are both questions of fact, reviewed for substantial evidence.  Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support a conclusion.”

The single issue on appeal is whether a PHOSITA would read the prior art as implicitly
describing an implementation in which the JINI LUS, which identifies services provided on the network, is located on the gateway device, i.e., the cellphone.  Samsung acknowledged that the reference does not expressly state that the JINI LUS is located on a mobile phone, but nonetheless, contended, and the Board agreed, that a PHOSITA would read the reference to understand that JINI LUS may be located on the cellphone.

After examining the evidence, the Federal Circuit held that the Board’s determination
that a POSITA reading the reference would understand that the cellphone is the master of the ad-hoc network and contains the LUS is reasonable and was supported by substantial evidence.  The determination of how a PHOSITA would understand the references was based on the weighing expert testimony from both parties, with Samsung’s expert being credited by the Board.

Petitioner Bears the Ultimate Burden of Persuasion With Respect to Real Party in Interest

In Worlds Inc. v. Bungie, Inc., [2017-1481, 2017-1546, 2017-1583](September 7, 2018), the Federal Circuit vacated the Final Written Decision in three inter partes reviews because the Board erred in its real party in interest analysis, and remanded.  The appeal involved three related patents: U.S. Patent Nos. 7,945,856, 8,082,501, and 8,145,998, relating to the computer-generated display of avatars in a virtual world, including methods and systems to determine which particular avatars are displayed
in a given situation.

Worlds sued Activision on the patents, and while the suit was pending indicated that it was going to add products developed by Bungie, but distributed by Activision to the suit.  Bungie filed the three petitions for IPR challenging Worlds’ patents more than a year after Activition was served with the Complaint, and Bungie did not name Activision as a real party in interest.

The Federal Circuit pointedly observed that absent from the Board’s analysis of the real-party-in-interest issue is any clear statement of what, if any, burden framework the Board used to analyze the evidence presented in these IPRs, including an identification of which party the Board viewed as bearing the burden of persuasion.   The Federal Circuit largely agreed with the burden framework used in Atlanta Gas Light. The Federal Circuit said that the IPR petitioner bears the burden of persuasion to demonstrate
that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier, and the petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner.  The patent owner must produce some evidence to support its argument that a particular third party should be named a real party in interest. The Federal Circuit rejected the Board’s practice of creating a “presumption” that the petitioner’s initial
identification of the real parties in interest is correct.  While the patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest.  A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.

The Federal Circuit then turned to the question of who should bear the burden of persuasion, noting a complete absence of any statement as to which party should bear the burden of persuasion.  The Federal Circuit could not discern whether the Board placed the burden on Worlds, the patent owner, to persuade the Board that Bungie failed to list a real party in interest that would render the petitions time barred under § 315(b), which would have been improper.  Moreover, the Federal Circuit was concerned that the Board may have relied on attorney argument as evidence that Activision was not controlling or funding these IPRs.

In light of these concerns, the Federal Circuit found it appropriate to remand the case to the Board for further consideration of the real-party-in-interest issue.

 

Posted in IPR

Undue Process: You Can Ask the PTO to Review a Patent, but if They Blow it, You may be Powerless to Appeal

In JTEKT Corp. v. GKN Automotive Ltd., [2017-1828](August 3, 2018), the Federal Circuit the Federal Circuit dismissed the appeal of a PTAB determination that claims 2 and 3 of U.S. Patent No. were not unpatentable, because Appellee, JTEKT, lacked standing to appeal.

JTEKT filed a petition alleging that claims 1–7 of the ’440 patent were invalid. After the Board instituted as to all challenged claims, GKN disclaimed claims 1, 4, and 5, so the IPR focused on the patentability of claims 2 and 3.

Under the IPR statute, any person or entity may petition the Patent Office to institute an IPR proceeding. 35 U.S.C. § 311(a). There is no requirement that the petitioner have Article III standing, as “[p]arties that initiate [IPRs] need not have a concrete stake in the outcome; indeed, they may lack constitutional standing.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016).  The statute also provides that an unsuccessful petitioner may appeal an adverse final written decision. 35 U.S.C. § 141(c).  However the Federal Circuit has held that the statute does not do away with the Article III standing requirement.  PhigenixConsumer Watchdog, stressed that the “obligation to
establish an injury in fact” for appellants “remains firm.”  In order to demonstrate the requisite injury in an IPR appeal, the appellant/petitioner must show that it is engaged or will likely engage “in an[] activity that would give rise to a possible infringement suit.”

The fact that JTEKT had no product on the market at the present time does not preclude Article III standing, either in IPRs or in declaratory judgment actions.  But where the party relies on potential infringement liability as a basis for injury in fact, but is
not currently engaging in infringing activity, it must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or likely cause the patentee to assert a claim of infringement.  While JTEKT has submitted two declarations in support of its standing, these declarations do not establish that its planned product would create a substantial risk of infringing the claims on appeal.

Because JTEKT has failed to establish an actual injury sufficient to confer Article III standing, we dismiss this appeal.  Assuming the correctness of the Federal Circuit reasoning, this is another demonstration of how ill-conceived the AIA was.  A party can challenge a patent in an IPR or PGR, but no matter how badly the USPTO handles the IPR, that party may not be able to appeal.  Where is the justice in such a scheme?  Should there be estoppel with respect to a decision that cannot be reviewed?  That sounds even more unjust.

Posted in IPR

While §315(b) Determinations are Appealable, in the Case the Board Got it Right

In Wi-Fi One, LLC v. Broadcom Corporation, [2015-1944] (April 20. 2016), the Court of Appeal for the Federal Circuit, after deciding en banc that the PTAB’s decisions relating to §315(b) time-bars were appealable, affirmed the PTAB’s  determination that the petitioner in three related IPR’s were not time-barred.

The Federal Circuit said that a review of the Board’s decisions, in the context of the arguments Wi-Fi made at each stage, show that the Board did not apply a legally erroneous standard in deciding the “real party in interest, or privy” issue.  The Board correctly found that petitioner Broadcom was not in privity with the parties in the prior litigation.

The Federal Circuit also affirmed the Board’s denial of additional discovery on the issue of privity, noting that the Board explored the discovery issue in detail and applied the proper legal test for finding privity or real party in interest status under section 315(b).  Under these circumstances, the Federal Circuit declined to hold that the Board abused its discretion when it concluded that additional discovery was not warranted in this case.  Finally, the Federal Circuit rejected the patent owner’s contention that the Board did not adequately explain its rulings on the §315(b) issue, noting the Board’s multiple and detailed discussions of the section 315(b) issue, the Federal Circuit said that the “Board cannot fairly be accused of not providing an adequate explanation for its decision on that question.”

 

Posted in IPR

Obviousness v. Anticipation: That Which Doesn’t Disclose Still Could Teach

In CRFD Research, Inc., v. Matal, [2016-2198] (December 5, 2017), the Federal Circuit affirmed two Final Written Decisions invaliding claims of U.S. Patent No. 7,191,233 on user-directed transfer of an on-going software-based session from one device to another device, and reversed one Final Written Decision that the claims were not obvious.

What is interesting about this case beyond the fact that a patent owner should have to simultaneously defend three IPR attacks on its patent, the loss of any one of which would be fatal, is the Federal Circuit’s reversal of the Board’s determination that Hulu had not shown the challenged claims to have been obvious.  The Federal Circuit said “the Board erred, both in how it performed its obviousness analysis and in the merits of its determination of nonobviousness.”

The Board concluded that the Bates reference did not anticipate certain challenged claims because it did not meet the claim requirement of “transmission of session history after discontinuation.”  Hulu complained, and the Federal Circuit agreed that the Board improperly
relied on its finding that Bates did not anticipate various asserted claims to support its finding of nonobviousness without considering whether Bates suggests transmission of session history after
discontinuation.  The Federal Circuit said that “Even if a reference’s
teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.”

Hulu further argued that it would have been obvious, based on Bates, to
transmit session history after session discontinuation.  Hulu argued the obviousness of the claims based upon Bates, but the Board declined to institute on grounds of redundancy.  The Federal Circuit noted that Hulu expressly incorporated this argument as part of other grounds of unpatentability on which the Board instituted trial.  The Federal Circuit found that:

To bar Hulu from pressing an argument it raised in a ground the Board found “redundant” and that it expressly incorporated into other proposed grounds of unpatentability on which the Board instituted would not only unfairly prejudice Hulu, but would also raise questions about the propriety of the Board’s redundancy  decision.

Of course, even if it does “raise questions about the propriety of the Board’s redundancy decision,” that should not be a concern of the Federal Circuit because according to Cuozzo institution decisions are not reviewable.  The Federal Circuit went on to find that Bates did in fact sufficiently teach what it did not exprsessly disclose, and reversed the Board’s determination that the claims were not shown to be obvious.

This case illustrates that some of the mischief that arises from a Board’s finding of redundancy.  The petitioner is allowed to use the arguments in the non-instituted redundant ground to support its position in the instituted grounds — at least if they are sufficiently “incorporated.”  Another problem with redundancy is that the estoppel effect is unclear.  The Federal Circuit has indicated that estoppel does not apply to grounds that are not instituted.  HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347-48 (Fed. Cir. 2016).  If this interpretation applies to grounds denied for redundancy, it means that a patent owner could prevail in the IPR, and later face a challenge based upon the redundant ground — one found by the Board to indistinguishable from the ground on which the patent owner prevailed.

It May Have Just Gotten a Little Easier to Amend Claims in an IPR; a Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability

In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e) requires the petitioner to prove all propositions of unpatentability, including for amended claims.

The “decision” consists of five opinions spanning 148 pages: (1) the opinion of the plurality of five judges, joined by two who concur in the result; (2) a separate opinion by three of the five members of the plurality;  (3) a separate opinion by the two judges who concurred in the result, joined in part by four judges; (4) a dissent by four of the judges, in which the two concurring judges join in part; and (5) a separate dissent by two of the four dissenters.

The 66 page plurality opinion of five judges (joined by an additional two who concurred in the result), vacated the rejection of Aqua’s motion to amend its claims, and remanded the Final Written Decision to the Board for reconsideration with the burden of persuasion with respect to the patentability of Aqua’s amended claims on the petitioner, and to consider the motion on the entire record.

The plurality opinion finds the statute unambiguously places the burden on the petitioner, but because six of the eleven judges found the statute ambiguous, the plurality opinion dove into a detailed analysis of whether the USPTO’s actions were entitled to Chevron or Auer deference.  While a delight for Administrative Law aficionados, the bottom line is that the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner, and the Board must  consider the entirety of the record before it when assessing the patentability of amended claims, and must justify any conclusions of unpatentability with respect to amended claims based on that record.

Posted in IPR

Board Was Mixed Up Over Blender Patent

In Homeland Housewares, LLC v. Whirlpool Corp., [2016-1511](August 4, 2017), the Federal Circuit reversed the PTAB’s determination that Whirlpool’s U.S. Patent No. 7,581,688 relating to household blender was not anticipated by U.S. Patent No. 6,609,821.

The patent claims a pre-programmed, automated blending cycle designed to blend items “by repeatedly dropping to a speed slow enough to allow the blender contents to settle around the cutter assembly, and then returning to a [higher] speed suitable for processing the contents.”  It was it was well known that a user could manually pulse between a high speed and a low speed to achieve efficient mixing.  Thus, in the words of the Federal Circuit “the claimed automatic blending routine was, in the prior art, done manually.”

Claim 1 provided that during pulsing, “the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed.” The Federal Circuit noted that the Board failed to explicitly construe “settling speed,” even though the parties disagreed about its meaning.  Whirlpool urged a construction the essentially required an empirical determination of the settling speed, while Homeland urged a construction that that “settling speed” means any comparative low speed less than the operating speed.  The Federal Circuit found that both parties were wrong, and that the broadest reasonable construction of “a predetermined settling speed” is a speed that is slower than the operating speed and permits settling of the blender contents.

With this construction the Federal Circuit found that the Wulf reference’s teaching of  alternating between high and low speeds “permits the material being blended to fall back to the region of the cutting knives” met the claim language.  While the Board credited Whirlpool’s exert testimony because it was unrebutted, the  Federal Circuit said that expert testimony should be disregarded when it is plainly inconsistent with the record.

The Federal Circuit found all of the claims anticipated, and vacated the decision of the Board.

Make Patents Great Again (or at least Make them STRONGER)

Senators Coons, Cotton, Durbin, and Hirono have introduced the STRONGER Patents Act of 2017, proposing a large number of improvements to U.S. patent law.  While the Bill does a lot to improve patents from an inventor’s perspective, the Bill does leave undone at least a few critical issues:

  1.  The Bill does not fix the abstract idea issue under §101 created by Alice.
  2. The Bill does not fix the ambiguity in the definition of patentable subject matter under §102 recently brought to light in Helsinn.
  3. The Bill does not fix the requirement that a successful appellant still must reimburse the USPTO for unsuccessfully defending a rejection in district court, as recently explained in Nantkwest.

As shown in the summary below, what the bill primary does is bring balance to IPR/PGR proceedings.

Sections 102(a)/103(a) – Elimination of BRI

Sections 102(a)/103(a) amend 35 USC 316(a)/326(a) to construe claims in an IPR/PGR according to their ordinary and customary meaning, and considering any prior construction by a court.  The current application of “broadest reasonable interpretation” makes claims more vulnerable in an IPR/PGR.

Sections 102(b)/103(b) Clear and Convincing Evidence Standard

Sections 102(b)/103(b) amends 35 USC 316(e)/326(e) to require proof of invalidity by clear and convincing evidence.  The current burden of proof of “preponderance of evidence” makes claims more vulnerable in IPR/PGR than in a court where the burden is by clear and convincing evidence.

Sections 102(c)/103(c) Requires Standing to Initiate

Sections 102(c)/103(c) amends 35 USC 311(d)/321(d) to require that a Petitioner have standing, i.e., have been charged with infringement.  Currently anyone can bring an IPR/PGR, regardless of whether they have been charged with infringement; this section restricts who can initiate a proceeding.

Sections 102(d)/103(d) One Challenge Per Claim

Sections 102(d)/103(d) amend Amends 35 USC 314(a)/324(a) to add a subsection (2) that bars review of a claim if there has been a previously instituted IPR/PGR on that claim. This allows only one IPR or PGR on each claim.  It is not limited to the same petitioner, and is triggered by institution, not a final written decision.

Sections 102(e)/103(e) Interlocutory Appeal of Institution Decisions

Sections 102(e)/103(3) amend 35 USC 314(d)/324(c) and add 314(e)/314(f) allowing certain appeals of institution decisions.
New sections 314(e)/324(f) would permit appeals of institution decisions in procedural grounds, but not as to the substantive patent law determination of unpatentability.

Sections 102(f)/103(f) One Challenge Per Patent

Section 102(f)/103(f) amend 35 USC 315/325 to prevent a petitioner from filing a second IPR/PGR unless the patent owner has charged petitioner with infringement of additional claims. This limitation together with the new limitation in 314(a) of one IPR per claim, restricts multiple IPRs on a single patent.

Sections 102(f) Improved Estoppel in IPR’s

Section 102(f) amends 35 USC 315 to bar a petitioner after an institution decision from raising any 102 or 103 grounds in a court or ITC proceeding, unless based public use, on sale, or otherwise available to the public. This substantially strengthens estoppel, but it still leaves a gap allowing the use of non-documentary prior art that corresponds to documentary prior art,.  There is no parallel estoppel provision for PGRs.

Sections 102(g)/103(g) Defines Real Party in Interest

Sections 102(g)/103(g) amend 35 USC 315(f).325(g) to define real party in interest as anyone who directly or indirectly makes a financial contributes to the petition. This expands definition of real party in interest to anyone who funds the proceedings.

Sections 102(g)/103(g) Provides Discovery of Real Party in Interest

Sections 102(g)/103(g) amends 35 USC 316(a)(5)/326(a)(5) to add subpart (B) providing for discovery about the real parties in interest.
Expands discovery relating to real party in interest.

Sections 102(h)/103(h) Bars Institution after Final Court Decision

Sections 102(h)/103(h) amend 35 USC 315/325 by adding new subpart (c)(1) that bars institution of an IPR after final judgment by the ITC or a court as to the validity of the claim under 102 or 103.
Once the ITC or a court has ruled on the validity of a claim, no one can challenge the claim in an  IPR.  However, (c)(1) only bars institution, not maintenance of the IPR/PGR, and (c)(2) only requires termination if a validity determination is affirmed on appeal.  A losing litigant might be able to get a second shot at the patent by waiving appeal, and continuing an already instituted IPR.

Sections 102(h)/103(h) Stays Proceedings Pending Court Appeal

Sections 102(h)/103(h) amend 35 USC 315/325 by adding new subpart (c)(2) which requires that the USPTO stay any IPR after the ITC or Court has entered a final judgment, while an appeal is possible or pending.  During concurrent IPR and litigation, if the ITC or Court gets to final judgment first, the IPR must be stayed pending appeal.

Sections 102(i)/103(i) Create Expedited Reexamination

Sections 102(i)/103(i) add a new 35 USC 316A/326A with a subpart (a)(3) that gives the patent owner the option to have a reasonable number of substitute claims examined in a new expedited IPR/PGR reexamination.

Sections 102(i)/103(i) Ease Burden of Amending Claims

Sections 102(i)/103(i) add new 35 USC 316A(c)(1)/326A(c)(1) defining amendment practice before the PTAB, and provides that the patent owner need only show that the amendment addresses the unpatentability on an instituted ground, meets the written description requirement, and does not enlarge the scope of the claims. New sections 316A(c)/326A(c) would relieve patent owners of the some of the burdens imposed by the PTAB in Idle Free Sys. v. Berstrom, Inc.

Sections 102(i)/103(i) Add Structure to Amendment Process

Sections 102(i)/103(i) add new 35 USC 316A(c)(2)/316A(c)(2)/  allowing petitioners to present new evidence to respond to amendments proposed by the patent owner, and allowing patent owner an opportunity to respond to new evidence submitted by petitioner.

Sections 102(i)/103(i) add new 35 USC 316A(c)(3)/326A(c)(3) allowing the PTAB to obtain an expedited patentability report.  Any party can respond to the report and the ordering of the report constitutes good cause for extending the proceeding beyond one year.

Sections 102(i)/103(i) also add new 35 USC 316A(c)(3) allowing the PTAB to order expedited reexamination on a claim in lieu of making a Final Written Decision on that claim.

Finally Sections 102(i)/103(i) also add new 35 USC 316A(d)/326A(d) allowing the patent owner to move for expedited reexamination in lieu of continuing the proceeding.  If granted, the patent owner must replace all of the instituted claims.  The petitioner has no right of appeal.

Section 104 Separates Institution and Final Written Decisions 

Section 104 amends 35 USC 6 to add subsection (c)(2) to provide that no board member who participates in an institution decision can also participate in hearing the review.  This eliminates the potential for confirmation bias, where a Board member who decided to institute also decides whether that institution decision was correct.

Section 105 Eliminates of Anonymous Reexaminations

Section 105 amends 35 USC 302(a) to require disclosure of the real party in interest in filing a request for reexamination.  This eliminates anonymous reexaminations.

Section 105 Restricts Reexaminations bu Defendants

Section 105 amends 35 USC 302 to add a subsection (d) barring reexamination more than a year after the requester is served with a complaint alleging infringement of the patent.

Section 106 Creates Presumption in Favor of Injunctions

Section 106 amends 35 USC 283 to provide a presumption that the patent owner is entitled to an injunction.  Gives effect the Constitutional mandate of exclusive rights to authors and inventors.

Section 107 Eliminates Fee Diversion

Section 107 Eliminates the diversion of USPTO user fees from the Office.

Section 108 Eliminates Knowledge of Patent from Inducement

Section 108 Amends 35 USC 271 to define inducement in subsection (b) as causing the actions that constitute infringement regardless of knowledge of the patent.

Section 108 Expands Inducement

Section 108 amends 35 USC 271(f) to add subsection (3)(A) to make inducement by the provision of an infringing design an act of infringement.

Section 108 also amends 35 USC 271(f) to add subsection (3)(B) to make inducement by the provision of an infringing specification an act of infringement.

Section 108 also amends 35 USC 271 to add section (j) eliminating the requirement for inducement or contributory infringement that the steps be performed by a single entity.

Section 109 Clarifies that Institutions of Higher Learning are Microentities

Section 109 amends 35 USC 123(d) to clarify that institutions of higher learning and their related patent foundations and other entities are microentities.  Nothing is done about their sovereign immunity in challenges to the patent.

Section 110 Expedites Infringement Actions by Small Business

Section 110 Creates a Patent Pilot program for expediting infringement cases involving small businesses.
110

Section 110 Makes Search Information More Widely Available

Section 110 amends Section 41(i) to required that the USPTO make freely available the patent and trademark information available at its Public Search Facilities.

Sections 201-203 Regulates Rogue and Opaque Letters

Sections 201-203 empower the FTC to take action against the bad faith assertion of patent rights.

Section 204 Preempts State Anti-Troll Laws

Section 204 preempts state laws on patent demand letters, but allows the states to enforce the federal prohibition of rogue and opaque letters

Double-Checking the PTAB

The Federal Circuit’s docket is burgeoning with Patent Office appeals.  Three years ago there were 118 appeals from the USPTO pending before the Federal Circuit, today there are 578.  The bulk of this increase is due to appeals from the post grant procedures created by the AIA.

According to a recent post on the AIPLA website the Federal Circuit has decided 128 appeals of IPRs and CBMRs.  7 (5%) of these were dismissed, 101 (79%) of these were complete affirmances.  In only 20 (21%) of these did the Federal Circuit reverse any aspect of the Board’s decision.

The PTAB, at least according to the Federal Circuit, seems to be getting it right.

 

The Board Cannot Adopt a Surprise Claim Construction

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 challenged constructions resulting in finding of invalidity of all but one of the challenged claims.  The Federal Circuit also confirmed that the Board did not need to address in its final written decision claims for which IPR was not instituted.  Finally, the Federal Circuit vacated the Board’s determination that claim 4 is patentable and remanded so that the parties may address a new construction that the Board adopted in its final written decision after interpreting the claim differently before.

With respect to claim 4, which was sustained based upon a different construction of the phrase “graphical representations of data flows, the Federal Circuit remanded so that the parties could address the construction in the final written decision.  The Federal Circuit agreed with the construction of graphical representations of data flows” as “a graphical representation comprised of icons depicting data processing steps and arrows to depict the movement of data through source code.”  The 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 “data flow diagrams,” which did appear in the specification.

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

While we have endorsed the Board’s use of the broadest reasonable interpretation standard in IPR proceedings, we also take care to not read “reasonable” out of the standard. This is to say that “[e]ven under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence, and must be consistent with the one that those skilled in the art would reach.”

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).

The Federal Circuit affirmed the Board’s invalidation of claims in the face of patent owner’s arguments that the claim constructions were incorrect.  The Federal Circuit specifically noting that because the specification and prosecution history did not conclusively resolve construction, it was appropriate for the Board to rely on dictionaries and expert testimony to aid its construction.

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.”  The Federal Circuit noted that the Board’s new construction of “graphical representations of data flows” as “a graphical representation comprised of icons depicting data processing steps and arrows to depict the movement of data through source code,” varied varied significantly from its initial interpretation of the term as “a map of the path of data through the executing
source code.”  The 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 never suggested that the Board adopt the
construction that eventually materialized in the final written decision. Under these circumstances, the Federal Circuit said that it was difficult to imagine either party anticipating that already-interpreted terms were actually moving targets, and it is thus unreasonable to expect that they would have briefed or argued hypothetical constructions not asserted by their opponent.  The Federal Circuit vacated the decision, and remanded for further proceedings.