Summary: CAFC rules on issues of claim construction, anticipation, and obviousness.
Case: Cisco Sys., Inc. v. Lee, No. 2012-1513, -1514; In Re Teles AG Informationstechnologien, No. 2012-1297 (Fed. Cir. Feb. 21, 2014) (nonprecedential). Appeals from the U.S.P.T.O. Board of Patent Appeals and Interferences in Reexamination Nos. 95/001,001 and 90/010,017. Before Dyk, Moore, and Wallach.
Procedural Posture: Patentee Teles appealed the Board’s rejection of fifteen claims, and Third-party requester Cisco appealed the Board’s decision confirming the patentability of two claims, all from an inter partes reexamination. The CAFC affirmed in part and reversed in part, determining that all of the claims on appeal were invalid.
- Claim Construction: The CAFC found that the Board correctly construed the terms “network,” “telephone call,” and “data transfer with real-time properties.” For the term “network,” the CAFC held that the claimed “network” includes a single telecommunications network with multiple channels. It rejected Teles’s argument that two independent and distinct networks are required per the specification and added that there was no disavowal of those embodiments. For the terms “telephone call” and “data transfer with real-time properties,” the CAFC affirmed the Board’s construction that each required only “a structure capable of performing the function of sustaining a telephone call or providing real-time properties,” and rejected Teles’s proposed definition which sought to limit the term to what was described in the background of the patent. The CAFC reasoned that such description was aimed to provide context by describing a difficulty in that technology without aiming to limit the ordinary meaning of the term. Thus, the Board correctly gave the broadest reasonable interpretation in assessing patentability.
- Prior Art Invalidity—Anticipation: The CAFC affirmed the Board’s holding that the claims at issue in Teles’s appeal were unpatentable over the prior art as anticipated. Further, the CAFC refused to consider Teles’s new arguments not raised before the Board.
- Obviousness: The CAFC reversed the Board’s holding that two of the claims were patentable over the prior art. The Board found that a prior art reference, Focsaneanu, did not disclose one limitation, but found that another reference, Jonas, did. In the two claims the Board allowed, the additional element was a multiplexer, which the Board interpreted as one capable of change-over between line- and packet-switching for data transfers having real-time properties, and Focsaneanu did not disclose that. The CAFC held that the multiplexer element is not limited to one with that capability under the broadest reasonable interpretation and that that the Board had improperly allowed those claims based only on that incorrect limitation.