SAS Institute, Inc. v. ComplementSoft, Inc.

Docket No. 2015-1346, -1347

June 10, 2016

Brief Summary: Board claim constructions affirmed except as to claim 4 since it changed its construction in the final written decision without letting the parties respond.

Summary: Following IPR of CS’s US 7,110,936 directed to an “Integrated Development Environment for generating and maintaining source code”, SAS appealed Board’s refusal to institute against certain claims and CS appealed two claim constructions. The Board instituted review for claims 1 and 3-10 on obviousness grounds but declined review of claims 2 and 11-16. It construed “data manipulation language”, “graphical representation of flows within the retrieved source code”, and “graphical representations of data flows”. It concluded the claims were unpatentable, except for claim 4 under its construction of “graphical representations of data flows”. SAS argued the Board erred in its construction, changed its construction in the final written decision without letting the parties respond, and did not address all the claims SAS included in its petition. The FC opinion explained that “[i]n an IPR proceeding, claims are given their broadest reasonably interpretation [BRI] in light of the specification” (In re Cuozzo, FC 2015, cert. granted Jan. 2015). The “graphical representations of data flows” was not defined by the specification and the Board “used the specification’s definition of data flow diagrams to construe” the term. SAS argued “that because the Board’s construction is narrow, it cannot be the” BRI but the FC disagreed, noting that it “take[s] care not to read ‘reasonable’ out of the standard”, the “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” (Proxyconn, FC 2015), and “[t]he structure of the claims also lends support to the Board’s construction” (Phillips, FC 2005). Thus, the Board’s construction was affirmed. CS argued the construction of “data manipulation language” too broadly included object-oriented languages and should not due to prosecution history estoppel (PHE). The FC opinion explains that PHE only attaches when “the alleged disavowing actions of statements…be clear and unmistakable” (Omega Eng’g, FC 2003). Here, it found PHE did not apply even though CS added “‘data manipulation language’ to avoid the Coad patent” but that “patent never discloses or suggests embedded data manipulation coding” and, “[a]t most, the patentee disclaimed object-orientate programming languages without any data manipulation components.” And the specification was found not to exclude object-oriented languages. CS’s other claim construction arguments were also rejected for similar reasons. However, the FC “disagree[d] with the Board’s approach” to construing claim 4 (finding it “change[d] theories in midstream…already interpreted terms were actually moving targets”) and required the Board to reconsider in view of the parties’ arguments. SAS’s argument that the Board erroneously did not consider every challenged claim in its final written decision was rejected under Synopsys (FC 2016) (final decision is only required to “address claims as to which review was granted”). Judge Newman’s dissent argued that “the PTAB’s practice of deciding the validity of only some of the patent claims…does not conform to the” AIA.

This entry was posted in America Invents Act, Claim Construction, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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