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Federal Circuit Completely Reverses And Remands Adverse IPR Final Written Decision For First Time

In the closely watched Straight Path IP Group, Inc. v. Sipnet EU S.R.O appeal, the Federal Circuit reversed the Patent Trial and Appeal Board’s decision cancelling all challenged claims of Straight Path’s U.S. Patent No. 6,108,704 and remanded for further proceedings. No. 15-1212, Slip Op. at 1 (Fed. Cir. Nov. 25, 2015). In determining that the Board’s claim construction was erroneous, the Federal Circuit confirmed that—even under the broadest reasonable interpretation standard—the Board may not construe claim language contrary to its plain meaning absent a clear redefinition or disavowal in the intrinsic record. Id. at 9.

Representative challenged claim 1 describes “a computer program product” used to “establish[] a point-to-point communication link between [a] first process and [a] second process over [a] computer network” and includes the claim element “program code for transmitting, to the server, a query as to whether the second process is connected to computer network.” Id. at 5. In the underlying inter partes review, the parties agreed that the “is connected to the computer network” claim language required “being on-line,” but they disagreed about whether, as Patent Owner Straight Path “contended, the language refers to a present-tense status, or whether, as [Petitioner Sipnet] contended, it ‘simply requires being registered with the server.’” Id. at 6. The Board adopted Sipnet’s construction as the broadest reasonable construction based on the specification, explaining in the final written decision that “‘connected to the computer network’ encompasses a processing unit that is ‘active and on-line at registration.’” Id. at 6 (quoting Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR 2013-246, 2014 WL 5144564, at *3 (PTAB Oct. 9, 2014)). Based on this construction, the Board found that the challenged claims were unpatentable. Id.

On appeal, the Federal Circuit rejected the Board’s claim construction, faulting the Board for turning to the patent specification to support a claim interpretation at odds with the plain meaning of the claim language itself. In coming to this determination, the Court first highlighted the clarity of the claim terms at issue:

The present tense “is” in “is connected to the computer network” plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent. The question asked by the query is whether the device “is” connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language, considering its plain meaning, to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.

Id. at 7.

The Federal Circuit then explained that the Board erred by not addressing the “facially clear meaning” of the claim language, and “instead turning immediately to the specification.” Id. at 8. While recognizing that claim language is “not always decisive,” and that the specification is important in “identifying and resolving genuine uncertainties about claim language,” the Federal Circuit emphasized that where claim language has a clear plain meaning, that meaning must apply absent a clear redefinition or disavowal:

When claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects. The reason is that, unless there is a disclaimer or redefinition, whether explicit or implicit, the proper construction of any claim language must, among other things, “stay [] true to the claim language,” and, in order to avoid giving invention-defining effect to specification language included for other descriptive and enablement purposes, “the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.”

Id. at 8-9 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323, 1324 (Fed. Cir. 2005). Because the Board’s claim construction of the critical term “is connected to the computer network” was in error, the Federal Circuit reversed and remanded the case for the Board’s consideration of the prior art in the context of the correct claim construction.

This opinion is notable for two reasons.  First, this is the first time that a patent owner has convinced the Federal Circuit to entirely reverse and remand an adverse IPR final written decision. Second, the Federal Circuit has confirmed that, like district courts, the Board may not use the specification to redefine the plain meaning of claim language absent a clear redefinition or disavowal.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume V, Number 334



About this Author

Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is...

James Wodarski IP Litigation Attorney Mintz Levin

Jim is a seasoned trial lawyer who concentrates his practice on intellectual property litigation. He skillfully represents clients in federal district and appellate courts, including the US Court of Appeals for the Federal Circuit, as well as the International Trade Commission. He handles disputes involving smartphones, core processor circuits, digital imaging software, telecommunications devices, and LED lighting systems, and many other technologies. And he has more than two decades of experience with complex civil litigation, including insurance, securities, and First...

William A. Meunier, Mintz Levin, Patent Litigation Lawyer, Biotech Attorney

Bill focuses his practice on all aspects of intellectual property litigation, with a particular emphasis on patent infringement matters and other disputes related to the enforcement of intellectual property rights. He has litigated intellectual property cases in District Courts throughout the United States, including the Eastern District of Virginia, Northern and Southern Districts of California, Eastern District of Texas, District of Massachusetts, District of Delaware, Northern District of Ohio, and Middle District of North Carolina.

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Michael C. Newman, Intellectual Property Attorney, Mintz Levin,Patent Litigation Federal Circuit Appeals International Trade Commission Federal District Court Strategic IP Monetization & Licensing

Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation, to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).

Michael represents a broad range of clients in cases involving such diverse technologies as integrated...

Nicholas W. Armington, mintz levin law firm, patent, IP, litigation attorney

Nicholas is a litigator with experience representing clients in United States District Courts and the International Trade Commission, among other venues. Nicholas’ practice focuses on patent and trade secret litigation and he has litigated cases in a variety of technology areas, including network devices, semiconductors, converged devices, LED lighting, and manufacturing devices.

In 2018-2019, Nicholas served as a Special Assistant District Attorney in the Middlesex County District Attorney’s Office prosecuting criminal cases in the Framingham and Natick District...