Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board.
Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner confirmed the reasons for allowance.
Google petitioned for inter partes review of all claims of a patent owned by Arendi. The PTAB instituted inter partes review of all claims on the ground of obviousness. In the IPR, Arendi argued that a prosecution disclaimer of certain subject matter distinguished a prior art reference. In two alternative rulings, the PTAB held all of the patent claims unpatentable. In its first ruling, the PTAB stated that prosecution disclaimer did not occur because the Examiner—not Arendi—disclaimed the relevant subject matter in the Notice of Allowance and thus, the claims were unpatentable on the grounds of obviousness. In its second ruling, the PTAB stated that even if there was a prosecution disclaimer, the claims were still obvious in light of the prior art. Arrendi appealed.
On appeal, the Federal Circuit rejected the PTAB’s first ruling that prosecution disclaimer had not occurred. The Court stated that to construe patent claims, the prosecution history must be consulted so that the court can exclude any interpretation that was disclaimed during prosecution. During prosecution of the patent, Arendi amended the claims and explained what was changed and why. The Examiner confirmed the reasons why the claims were deemed allowable in the Notice of Allowance. The Examiner and the applicant understood what the applicant had changed and what the claim amendment required. Thus, the Federal Circuit held that prosecution disclaimer applied. The Federal Circuit affirmed the PTAB’s second ruling that the patent claims were obvious even if prosecution disclaimer applied.