The PTAB sometimes changes its claim constructions during the
course of an inter partes review or a covered business method
review. When it does so, according to the Federal Circuit's
recent holding in SAS Institute Inc. v. ComplementSoft,
LLC, __ F. 3d __ (Fed. Cir. 2016), the Administrative Procedure Act
requires the PTAB to give the parties sufficient notice and an
opportunity to respond.
In its institution decision in SAS v. ComplementSoft,
IPR2013-00226, the PTAB had found it reasonably likely that SAS
would prevail in its challenge that dependent claim 4 was obvious.
Reversing course in the final written decision, however, the PTAB
concluded that SAS had not shown that the prior art disclosed
"graphical representations of data flows" as recited in
claim 4. The PTAB's patentability finding regarding claim 4 was
premised on a new construction for the "graphical
representations of data flows" claim term that differed from
the Board's interpretation in the institution decision and that
the PTAB adopted for the first time in the final written decision.
Indeed, the PTAB readily acknowledged that it was applying a new
claim construction that was "not addressed explicitly by
either party." On appeal to the Federal Circuit, SAS argued
that the PTAB's new construction was incorrect and that it was
improper for the PTAB to change its interpretation of this claim
term in the final written decision without affording the parties an
opportunity to respond.
To read more, visit our PTAB Litigation Blog.
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