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Vague Claim Construction Arguments Before The PTAB May Trigger A Waiver On Appeal
April 03, 2017

The Patent Trial and Appeal Board (PTAB) upheld the patentability of U.S. Patent No. 8,601,154 (“the ‘154 patent”), owned by SimpleAir, Inc. (“SimpleAir”) in an inter partes review petition filed by Google.  Google Inc. v. SimpleAir, Inc., IPR 2015-00180, Paper # 37 (PTAB, February 16, 2016).  The PTAB reasoned that Google failed to identify in the prior art a “central broadcast server,” a key claim limitation.  Id.

Googled appealed.  Google asserted on appeal before the Federal Circuit that the PTAB erred in its claim construction of the disputed term, central broadcast server.  Google Inc. v. SimpleAir, Inc., Appeal No. 2016-1901 (Fed. Cir. March 28, 2017).  Google asserted that the PTAB’s claim construction of the term should not be limited to receipt of data from a plurality of information sources, and that under Google’s preferred claim construction, the prior art of record would teach a central broadcast server. 

SimpleAir responded that Google failed to argue its current claim construction before the PTAB and therefore, waived its opportunity to assert the claim construction.   SimpleAir further argued that Google in fact agreed with the PTAB’s claim construction of the disputed term.

The Federal Circuit agreed with SimpleAir.   The Federal Circuit first noted that in three prior district court litigations involving the ‘154 patent and related patents within the same family, the district courts construed the disputed term and rendered the same construction as that of the PTAB.   In its IPR petition, Google pointed to the district courts’ claim construction of central broadcast server under Phillips.  Although the Federal Circuit acknowledged Google’s statements referring to a broader construction of central broadcast server in its IPR petition, the Federal Circuit found that “Google did not, however, insist or even request that the PTAB apply a different construction.”  In an institution decision, the PTAB adopted the district court constructions and indicated that the district court constructions were consistent with the broadest reasonable interpretation of those terms. 

The Federal Circuit further noted that during the IPR proceedings, there appeared to be no disagreement as to the construction of central broadcast server.  In particular, the Federal Circuit cited the oral hearing transcript which recorded Google counsel’s agreement to the PTAB’s claim construction, which adopted the district courts’ construction under the BRI standard.  In a final written decision, the PTAB wrote, “Google agrees that district court’s interpretations also represent the broadest reasonable interpretation of the terms for purposes of this proceeding.”  Google Inc. v. Simpleair, Inc., IPR 2015-00180, Paper # 37 (PTAB, February 16, 2016)..  In the end, the Federal Circuit found that Google waived its objection to the PTAB’s construction of central broadcast server.  The Federal Circuit held that “a party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below.”  The Federal Circuit emphasized that Google did not at any point specifically ask the PTAB to construe the disputed term differently than the district courts’ construction under Philips.  To the contrary, the Federal Circuit pointed out that Google expressly agreed to the district court constructions multiple times. 

In light of the Federal Circuit’s holding in this case, during AIA proceedings, a party should sufficiently argue its claim construction and request the PTAB to construe claims accordingly, in order to avoid a risk of waiving claim construction arguments on appeal.   The Federal Circuit requires a party to notify the PTAB and opposing party of a different claim construction position to avoid a waiver.  Statements that are merely “vague insinuations” and “seeds of doubt” may be insufficient to satisfy the notice requirement and may not avoid a waiver of a different claim construction argument on appeal.  

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