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Davis Brown Intellectual Property Law Blog 


The Federal Circuit's First AIA Reversal - September 4, 2015

This article was written by summer associate, Tyler Latcham and was edited by attorney Allison Kerndt.


This article contains important information relating to recent developments in patent law and, as such, is intended for an audience that either currently owns a patent or is in the process of obtaining one.

 

 

Since the implementation of the inter partes review (IPR) by the America Invents Act on September 16, 2012, IPR proceedings have been viewed as putting one nail in the coffin for patents. In the first two and a half years of the proceedings, the Patent Trial and Appeal Board (PTAB) cancelled over 3,000 patent claims. Thankfully, the United States Court of Appeals for the Federal Circuit provided some clarity to patent holders on Tuesday, June 16, 2015, with its in-part reversal of the PTAB’s invalidation of Proxyconn Inc.’s patent claims. Microsoft Corp. v.Proxyconn, Inc., No. 14-1542 (Fed. Cir. 2015).  Proxyconn’s U.S. Patent No. 6,757,717 covers a new method for improved data access, which, in part, increases internet download speed. The Court held that when considering the validity of the challenged claims, the PTAB’s interpretation of the scope of Proxyconn’s patent claims was unreasonably broad.


In prior opinions, the Federal Circuit has held that the PTAB should apply the “broadest reasonable standard” when considering the scope of a patent claim.  This standard is much broader than that applied by district courts. However, in this case, the Federal Circuit concluded that the PTAB went too far. The Court explained: “Even under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence and must be consistent with the one that those skilled in the art would reach.” Under this rationale, the Court held that the PTAB improperly invalidated all but one of the eleven claims when it applied an unreasonably broad interpretation of the scope of the patent claims. The Court reversed the PTAB’s decision with respect to these claims and sent the case back to the PTAB for further review.


What this means for patent owners

Since the creation of IPRs in 2012, businesses and inventors with patented technology have been terrified of IPR proceedings and the possibility of losing their patent protection. Additionally, the number of IPR petitions has grown steadily from 514 petitions filed in 2013, the IPR’s first full year of existence, to 1,204 petitions filed in the first half of 2015. With the increasing number IPR proceedings causing anxiety for patent owners, this Federal Circuit decision provides hope for many patent holders facing an IPR proceeding. To date, there has been limited review of PTAB decisions by the Federal Circuit, and further review of this case is yet to come. As such, only time will tell whether this case will have an impact on the death toll of patent claims in IPR proceedings.