Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018)
In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following inter partes review (IPR) proceedings related to a patent for word-recognition technology.
The patent claimed a computerized method for identifying and substituting information in an electronic document. The key issue on appeal was whether there was a prosecution disclaimer for the patent claims. During prosecution of the patent, Arendi amended the claims and explained what was changed and why. The Examiner confirmed the reasons why the claims were deemed allowable in the Notice of Allowance. The Examiner and the applicant understood what the applicant had changed and what the claim amendment required.