In re: Samir Varma and InvestPic, LLC v. IBM and SAS

Docket Nos. 2015-1502, -1667

March 10, 2016

Brief Summary: Board invalidity decision vacated due to erroneous claim construction determinations (e.g., Board improperly “relied on the claims’ use of the term ‘comprising’” because use of the term “does not render each limitation or phrase within the claim open-ended”).

Summary: This appeal stems from two reexaminations of US 6,349,291 in which the PTAB cancelled some of the ‘291 claims for anticipation and obviousness. Varma’s appeal regards the claim terms “bias parameter” that “determines a degree of randomness in sample selection in a resampling process” and “a statistical analysis request corresponding to two or more selected investments.” Regarding the “bias parameter” term, the FC panel agreed “with Varma that there is only one reasonable meaning of the claim language, considered alone and in light of the specification” (“Claim 1 clearly differentiates between ‘selecting a sample space’ which occurs in step (a), and ‘sample selection’, which occurs in step (b)…The specification reinforces the distinctions that are clear in the claim language.”) It concluded that “[g]iven the proper understanding of the bias-parameter limitation, the Board’s rejection of claims 1-5, 8-16, 19-21, and 24 must be reversed.” The opinion explained that the Board “implicitly relied on two related but different interpretations” of the “statistical analysis request” term in affirming the prior art rejections, and the FC panel “conclude[d] that both interpretations are unreasonable.” Regarding the first interpretation, it found the Board improperly “relied on the claims’ use of the term ‘comprising’” because use of the term “does not render each limitation or phrase within the claim open-ended” (Dippin’ Dots, FC 2007). It also found error with the Board’s reliance of the meaning of “a” before “statistical analysis request” since “while ‘a’ sometimes is non-restrictive as to number, permitting the presence of more than one of the objects following that indefinite article, context matters even as to whether the word has that meaning” (Harari, FC 2011) and, here, “there can” be more than one request (a “request” may “correspond” to “two or more selected investments”). And it disagreed with the second interpretation because, for example, the claims require “[a] single resampled statistical analysis [to] be performed based on data pertaining to [the] two or more investments”. It found no reason to define the terms differently in claims that were amended in one reexamination or the other based on “the principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if ‘it is clear’ that the same phrase has different meanings in different claims” (Fin. Control Sys., FC 2001). It therefore vacated the Board’s rejections of claims with this limitation for reconsideration under the correct claim construction. And it disagreed with Varma’s argument that the Board misunderstood the term “resampled statistical analysis”, finding Varma’s proposed instruction to “go[] far beyond the language supposedly being construed”.

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