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PTAB’s alternative claim construction saves the day

Alternative claim constructions are often presented in IPR proceedings. Addressing alternative constructions in the final written decision may help the PTAB avoid reversals on appeal. That was the case in Arendi v. Google, where the Federal Circuit rejected the PTAB’s primary claim construction but affirmed based on an alternative claim construction discussed in the decision.

In IPR2014-00452, the PTAB found all instituted claims unpatentable. The claims were directed to a searching method that identifies a name or address in a document and searches a database for related information on a single command from the user. On appeal, Arendi argued that the PTAB misconstrued a phrase relating to the performance of action based on a “single entry.” That phrase is highlighted in representative claim 1 below:

1.     A computerized method for information handling within a document created using an application program, the document including first information provided therein, the method comprising:

providing a record retrieval program; providing an input device configured to enter an execute command which initiates a record retrieval from an information source using the record retrieval program;

upon a single entry of the execute command by means of the input device:

analyzing the document to determine if the first information is contained therein, and

if the first information is contained in the document, searching, using the record retrieval program, the information source for second information associated with the first information; and

when the information source includes second information associated with the first information, performing at least one of,

(a) displaying the second information,

(b) inserting the second information in the document, and (c) completing the first information in the document based on the second information.

The PTAB’s primary construction construed the “single entry” limitation as unlimited by the prosecution history. The PTAB recognized the need to consider the prosecution history in construing claims in such proceedings:

Since Patent Owner filed its Response and Petitioners filed their reply, the Federal Circuit has admonished that “[t]he PTO should consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”  Microsoft Corp v. Proxyconn, Inc. 789 F.3d 1292, 1298 (Fed. Cir. 2015).

However, the PTAB did not find clear disclaimer based on a statement about what was discussed during an earlier examiner interview,  which the PTAB characterized as a statement about an exploratory discussion in which “no agreement was reached,” and statements by the examiner in the Notice of Allowance, which the PTAB found were not applicant disclaimers.

The Federal Circuit disagreed, finding the statements about the interview to be explanations for the amendment, which were later confirmed in the examiner’s “Reasons for Allowance.”

The PTAB’s decision, however, also presented an alternative construction for the phrase that limited the “single entry” limitation in view of the prosecution history.

In any event, even if we agreed with Patent Owner’s claim construction and we were to assume that the claimed “single entry of the execute command” precludes user selection of text, we are persuaded that  Goodhand does not require user selection of text prior to executing this command.

The Federal Circuit agreed with this alternative construction, and affirmed the decision on this basis.

Posted on 2/21/2018 by Deakin Lauer