What does “is” mean? Federal Circuit disagrees with Board construction and reverses IPR decision cancelling claims.

Published November 25, 2015

On November 25, 2015, the Federal Circuit reversed and remanded the decision in Sipnet EU S.R.O v. Straight Path IP Group, IPR2013-00246 (PTAB Oct. 9, 2014). This case marks the first time the Federal Circuit has overturned an IPR decision cancelling challenged claims.

The panel, by a 2-1 majority, found that the Board misconstrued the term “is connected” in the phrase “a query as to whether the second process is connected to computer network.” The petitioner argued that the BRI encompasses merely being on-line (i.e., having a registered address), while the patent owner argued that the phrase requires a real-time check of whether the process is on-line currently–not whether it was on-line at registration. The Board agreed with petitioner, but the Federal Circuit agreed with patent owner and reversed the Board’s construction.

According to the majority, the plain meaning of “is” requires a query that seeks to determine whether the second unit is connected at the time the query is sent. Although the specification may support the Board’s construction, the majority argues that the plain meaning of the claim trumps a contradicting construction based on–but not required by–the specification.

It’s interesting to note in this case that the patent expired during the pendancy of the appeal. Thus, the Board applied the BRI standard, rather than the Phillips standard. Both the majority and dissent, however, said there was no significant difference between the two standards as applied in this case.

Sipnet EU S.R.O. v. Straight Path IP Group IPR 2013-00246


Posted on 11/25/2015 by Deakin T. Lauer