Tag Archives: Prosecution Disclaimer

PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

By Marshall Gerstein on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims. The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board … Continue Reading

Patent Owner’s Optional Preliminary Response Avoids IPR, But Dooms Infringement Action

By Marshall Gerstein on Posted in Appeals, Claim Construction
Earlier this year, the Federal Circuit held “that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.” Aylus Networks, Inc., v. Apple Inc., Appeal 2016-1599 (Fed. Cir. May 11, 2017). In … Continue Reading
LexBlog