The Patent Trial and Appeal Board (PTAB) has entered its first decision on remand from the Federal Circuit, in its new Microsoft v Proxyconn final written decision
According to Finnegan Henderson Farabow Garrett & Dunner’s AIA Blog, the decision sheds some light on how the PTAB may handle issues that remain following remand form the Federal Circuit.
The Federal Circuit’s Microsoft v Proxyconn decision in June was the first reversal of a PTAB final written decision. The Federal Circuit upheld the use of the broadest reasonable interpretation standard but said it does not justify giving claims an unreasonably broad or legally incorrect interpretation. It reversed in part the final written decision, finding the PTAB erred in construing two terms of claims.
In its reconsideration the PTAB found the challenged claims remained unpatentable under the different claim constructions. It also found that a subset of the claims were obvious under the different constructions, a turnaround from its first decision when it found the claims were anticipated and did not reach obviousness.
The Board directed the parties to brief simultaneously, with the Federal Circuit’s decision limiting each party to 15 pages without a reply.
“This decision shows that, when reversed by the Federal Circuit on a particular invalidity ground, on remand the PTAB may find unpatentability on a ground not previously relied on in the original final written decision,” said Finnegan on its AIA blog. “We do not know yet whether the PTAB’s position will hold up on appeal, but petitioners should consider including alternative grounds in petitions (eg, a ground that is stronger under a different claim construction) as insurance in the event of a reversal.”
