In the first full reversal of a PTAB IPR decision, the Federal Circuit reversed the PTAB’s ruling in Straight Path IP Group, Inc. v. Sipnet EU S.R.O, on the basis that the PTAB incorrectly construed the claim term “is,” in claims directed to a computer program for online communications.
In a 2-1 decision authored by Judge Taranto, the court determined that the claim language “is connected to a computer network,” should be construed to require connection to the network at the time a query is transmitted to the server, due to the ordinary, present-tense meaning of the word “is.” According to the court, the Board erred in construing the term as reading on a processing unit that was connected to the network “at registration,” but not necessarily at the time a query is transmitted.
Although the patent under review had expired by the time the appeal was decided, the Court determined that it did not need to address construction of the term under the Phillips standard, because the Board’s construction was incorrect even under the BRI standard. Despite this determination, the court cited Phillips in support of its construction: “Under our Phillips approach, the plainness of the claim language necessarily affects what ultimate conclusions about claim construction can properly be drawn based on the specification.”
The court determined that the claim term had a facially-clear meaning of referring to the present tense, and that the “specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.”
The court determined that the claim term had a facially-clear meaning of referring to the present tense, and that the “specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Nevertheless, the court reviewed the specification and file history, and concluded that neither was inconsistent with the plain meaning of the term. The court remanded the case for the PTAB to apply the correct claim construction in considering the prior art.
In dissent, Judge Dyk disagreed with the plain meaning of the term, stating that “the use of the word ‘is’ does not necessarily imply absolute accuracy or absolute currency.” In the dissent’s view, the majority failed to give sufficient weight to the specification, and the dissent determined that based on the specification, connectivity to the network is checked based on the computer database, which is “relatively current,” but not a “real time” determination.