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ARTICLE · 07 JULY 2016

PTAB Decision Vacated And Remanded For Changing Claim Construction "Midstream"

Brooks Kushman P.C.
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The Federal Circuit vacated and remanded the portions of the Board's final written decision that relied on the new claim construction.

United StatesIntellectual Property
Erin K. Bowles
Erin K. Bowles
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Even though the Federal Circuit agreed with the Patent Trial and Appeal Board's new claim construction in the final written decision, the Court found that the Board errored by adopting a new construction for a term it had construed differently in its institution decision. (see SAS Institute, Inc. v. ComplementSoft, LLC (Fed. Cir. June 10, 2016).

The Federal Circuit vacated and remanded the portions of the Board's final written decision that relied on the new claim construction.   Judge Stoll noted that in the context of IPR proceedings, the Board "may not change theories in midstream without giving respondents reasonable notice of the change and the opportunity to present argument under the new theory."

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