Procedural Posture: The Board of Patent Appeals and Interferences (the “Board”) affirmed the examiner’s rejection of certain claims as anticipated in an ex parte reexamination of a patent also asserted in an infringement action in district court. The patent holder challenged the Board’s claim construction and filed suit in the District of D.C. challenging the Board’s anticipation determination. The case was properly transferred to CAFC, which vacated and remanded.
- Prior Art Invalidity- Anticipation: CAFC determined that the Board’s opinion failed to provide an adequate predicate that could be used to evaluate its anticipation rejection of claims in the patent at issue. CAFC held that in future cases the Patent Trial and Appeals Board (the “PTAB”) must “carefully and fully assess whether the disputed claims . . . are anticipated by the prior art, setting out its reasoning in sufficient detail to permit meaningful appellate review.”
- Claim Construction: CAFC stated that the Board, while not bound by the previous district court claim construction, had an obligation to evaluate that construction. The patent holder argued that the district court’s claim construction was the only reasonable interpretation, and the Board should have determined whether that interpretation was consistent with the broadest reasonable construction of the term.
- Jurisdiction- Appellate Jurisdiction: CAFC found that its review of the patentability determination was confined to the grounds upon which the Board actually relied, despite the solicitor’s presentation of additional supporting arguments during the appellate proceedings.