Microsoft Corp. v. Proxyconn Inc., 2014-1542, -1543, 2015 U.S. App. LEXIS 10081 (Fed. Cir. June 16, 2015)
On June 16, 2015, the Federal Circuit issued the first reversal of a decision by the Patent Trial and Appeal Board in an America Invents Act review when it determined that the Board used an unreasonably broad claim construction in its decision last year to invalidate eleven claims as anticipated or obvious.
The decision to reverse in this case turned on the PTAB’s claim construction. The appeals court held that, while the PTAB construes patent claims with their broadest reasonable interpretation—unlike the narrower standard used in district court—the Board may not “construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” The appeals court elaborated further that “even under the broadest reasonable interpretation, the board's construction cannot be divorced from the specification and the record evidence, and must be consistent with the one that those skilled in the art would reach; . . . [a] construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.”
While the Federal Circuit has decided appeals of AIA reviews in the past, the court had until now always affirmed the PTAB’s decision. The reversal shows that PTAB decisions are not absolute. The decision may also narrow the PTAB’s claim construction in future decisions now that the Federal Circuit has set an outer limit for how broadly a claim can be construed.