Federal Circuit Vacates And Remands PTAB's "Midstream" Claim Construction Change

In SAS Institute, Inc. v. ComplementSoft, LLC, Nos. 2015-1346 & 2015-1347 (Fed. Cir. June 10, 2016), the Federal Circuit found error in a final written decision rendered by the Patent Trial and Appeal Board. The Board adopted a new construction for a term it had construed differently in its institution decision. The Court stated that the Administrative Procedure Act (APA) prevents the Board from "chang[ing] theories in midstream without giving [the parties] reasonable notice of the change and the opportunity to present argument under the new theory."

The Federal Circuit affirmed the Board's decision for terms that had not been previously construed, but vacated and remanded the aspects of the Board's decision relying on the new claim construction "so that the parties may address [the] new construction that the Board adopted in its final written decision after interpreting the claim differently before." Judge Stoll wrote, "[i]t is difficult to imagine either party