May 10, 2017

Merely Because Petitioner Changes its Mind is not Enough to Stop Inter Partes Reexamination

By Bryan K. Wheelock, Principal

In In Re: AT&T Intellectual Property II, L.P., [2016-1830] (May 10. 2017), the Federal Circuit affirmed the PTAB determination in Inter Partes Reexamination, that the claims of U.S. Patent No. 7,454,071, directed to methods of compressing and transmitting digital video data, were invalid.

On appeal, AT&T argued that it was improper to institute Inter Partes Reexamination when the petitioner requested that its petition be denied.  The Federal Circuit found that institution was proper.  AT&T also argued that the claims were not anticipated, and the Federal Circuit concluded that the Board’s finding of anticipation is supported by substantial evidence.  Finally AT&T argued that the Examiner improperly changed the basis for the anticipation rejection.  The Federal Circuit found that AT&T had notice of the the second basis for finding anticipation, and still did not amend the claims to respond to this second basis.

Concluding that the finding of anticipation was supported by substantial evidence, the Board affirmed.