Docket No. 2016-1249 (IPR2014-00452)
NEWMAN, BRYSON, MOORE
February 20, 2018
Brief summary: PTAB decision that Arendi’s claims are invalid for obviousness affirmed under the PTAB’s “alternative” holding accepting prosecution history disclaimer (initial claim construction ignoring that disclaimer found to be erroneous).
Summary: Arendi appealed PTAB finding after IPR that all the claims of US 6,323,853 relating to a “[a] computerized method for information handling within a document created using an application program” invalid for obviousness. The PTAB instituted IPR on the ground that the claims would have been obvious in view of “Goodhand” alone or with “Padwick”. Arendi argued “single entry of the execute demand” limitation was not shown by Goodhand, “and that this limitation was added to the claims during prosecution, in consultation with the examiner, to distinguish” a different cited reference (Tso). Arendi argued that this “prosecution disclaimer” similarly distinguished the claim from Goodhand. A key issue was whether the PTAB correctly “held that no prosecution disclaimer had occurred, and construed the ‘single entry’ limitation of the claims to include text selection by a user”. The FC panel concluded “[t]he PTAB misapplied Sorensen” (FC 2005) in which “the court explained that ‘in order to disavow claim scope, a patent applicant must clearly and unambiguously express surrender of subject matter during prosecution” (citing Middleton, FC 2002; Omega Eng’g, FC 2003; Innova/Pure Water, FC 2004 (“it is the applicant, not the examiner, who must give up or disclaim subject matter that would otherwise fall within the scope of the claims”)). The FC panel explained that “[h]ere 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” (ACCO Brands, FC 2003), and that the PTAB should have found that prosecution history disclaimer applied. And the PTAB’s finding of obviousness on this construction was found to be error. However, “[t]he PTAB alternatively held that even if the prosecution history disclaimer were accepted, the claims are unpatentable for obviousness in view of Goodhand.” The FC panel found that “[s]ubstantial evidence supports the PTAB’s findings as to the similarities between Goodhand and the ‘853 patent regarding identification and analysis of information” (e.g., “Goodhand, like the ‘853 patent, does not require user selection of text to be searched”, “conducts the ensuing search and retrieval of information without intervention by the user”, and “shows these operations ‘upon a single entry of the execute command”). Thus, the FC panel found substantial evidence supporting “the alternative conclusion of unpatentability” and affirmed the PTAB’s decision. The FC panel noted that Arendi only argued for the patentability of independent claim 1 and therefore affirmed the decision for all the claims (In re Kaslow, FC 1983 (“Since the claims are not separately argued, they all stand or fall together.”))