June 16, 2015

“In 1st AIA Reversal, Fed. Circ. Finds Patent Wrongly Axed,” Law360, June 16, 2015

For the first time ever, the Federal Circuit on Tuesday reversed a decision by the Patent Trial and Appeal Board in an America Invents Act review, finding that the board used an “unreasonably broad” claim construction when it invalidated many claims of a data access patent challenged by Microsoft Corp.

The PTAB found in an inter partes review decision last year that 11 claims of Proxyconn Inc.’s patent on a method for improved data access, such as speeding up Internet downloads, were invalid as anticipated or obvious. The Federal Circuit found that the board used an incorrect claim construction for eight of the claims and remanded for further proceedings.

Bryan Wheelock of Harness Dickey & Pierce PLC, an attorney for Proxyconn, said the decision is cause for optimism by patent owners concerned about the large number of patents being invalidated in inter partes reviews.

“I’m encouraged, because it seemed like IPRs were patent killing fields,” he said. “This decision gives some hope that if you have a reasonable position, you can survive IPR.”

Wheelock said he is hopeful that the PTAB will find on remand that the claims are not invalid and can be asserted in infringement litigation. The decision also highlights that the PTAB’s claim construction rulings must be reasonable, he said.

“It’s not broadest interpretation, it’s broadest reasonable interpretation,” he said.

Wheelock said the Federal Circuit’s finding that the PTAB’s claim construction was unreasonably broad will “maybe make the board be a little more careful about claim construction,” possibly by revisiting its claim construction findings, which are made early in the case, before issuing a final decision.

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