February 20, 2018

Even Under a Narrower Construction Because of Disclaimer, The Board was Correct that the Claims were Obvious

By Bryan K. Wheelock, Principal

In Arendi S.A.R.L. v. Google LLC, [2016-1249] (February 20, 2018), the Federal Circuit affirmed the PTAB’s determination that all of the claims of U.S. Patent No. 6,323,853 were obvious. The PTAB presented two alternative claim constructions, one rejecting prosecution disclaimer and one adopting prosecution history disclaimer.

The Federal Circuit held that the construction rejecting prosecution disclaimer was incorrect, but found the alternative construction based upon prosecution disclaimer correct. The Federal Circuit noted that applicant amended the claims and explained what was changed and why, and the examiner confirmed the reasons why the amended claims were deemed allowable. However, even under this narrow construction, the Federal Circuit agreed with the PTAB that the claims were unpatentable for obviousness.