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Federal Circuit Erases a Rare Patent Owner Victory and Tells PTAB: No Changing Horses (Claim Constructions) Midstream

Author: Thomas J. Engellenner

6/20/2016

Read the full post at Post-Grant Counsel

Federal Circuit Erases a Rare Patent Owner Victory and Tells PTAB: No Changing Horses (Claim Constructions) Midstream

In a recent decision on an inter partes review (IPR) appeal, the Federal Circuit erased a rare victory for a patent owner and remanded the case back to the Patent Trial and Appeal Board (PTAB) for rehearing on the sole claim that survived the initial trial.  In SAS Institute, Inc. v. ComplementSoft, LLC, Nos. 2015-1346 & 2015-1347 (Fed. Cir. June 10, 2016), SAS Institute, as petitioner, had challenged claims 1-16 of Patent 7,110,936 owned by ComplementSoft.  The ’936 patent discloses “a language independent software development tool having a graphical user interface.”  The PTAB instituted an IPR trial on claims 1 and 3-10 of the patent and ultimately found all of the instituted claims, except for claim 4, invalid in light of the prior art.  (IPR2013-00226).

At issue in the appeal was whether claim 4 was properly found not invalid. Claim 4 was an independent claim and included (among other things) an element, “graphic representations of data flows,” that the PTAB had construed in its initial determination to be “a diagram that depicts a map of the progression (or path) through the source code.”

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