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 construed the claims after rejecting the argument that a disclaimer was made during prosecution. The challenged patent relates to a computerized method of searching and replacing information in an electronic document. During prosecution, the patentee added a limitation requiring that a search and replace operation be initiated with the “single entry of the execute command.” Patentee argued this limitation distinguished the claimed invention from prior art.

The Board’s primary ruling held that no prosecution disclaimer had occurred because it found Patent Owner’s citation of the examiner’s statements in the Notice of Allowance unpersuasive, and stated that “it is the applicant, not the examiner, who must give up or disclaim subject matter” citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005). But the Federal Circuit found that the applicant amended the claims and explained what was changed and why, and that the examiner merely confirmed the reason why the amended claims were deemed allowable. Therefore, the Board had misapplied Sorensen in determining that there was no disclaimer.

Addressing the Board’s alternative ruling which found the claims obvious even if a disclaimer of subject matter was found to exist, the Federal Circuit affirmed the Board’s obviousness finding. The Federal Circuit agreed that even if the claim were construed to preclude the need for a user to select text for searching, the claim was still invalid in light of the prior art. The Federal Circuit concluded that the Board had correctly interpreted the prior art reference as automatically searching text without the need for user interaction. Noting that the prior art reference disclosed the “resolution” of information “without further user intervention,” the court agreed with the Board’s reasoning that “if a system analyzes a document to determine if it contains information, then the user must not have [first] selected information.” The court concluded that the Board’s alternative ruling was supported by substantial evidence, even where the claim was deemed limited by reason of prosecution estoppel.

Reading between the lines, a party advocating for prosecution disclaimer should focus on the statements made by the applicant and frame any reasons for allowance by the examiner as a confirmation of the applicant’s understanding of the matters being disclaimed.