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Arendi S.A.R.L. v. Google LLC

Prosecution History Disclaimer May Rest in Part on Examiner’s Confirmatory Statement

Arendi S.A.R.L. v. Google LLC, F.3d, 2018 WL 943636 (Fed. Cir. Feb. 20, 2018) (NEWMAN, Bryson, Moore) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR cancellation of claims as obvious. The PTAB erred in finding that the file history failed to demonstrate a clear, unambiguous disavowal of claim scope. The PTAB apparently based its determination on the fact that Arendi’s disclaimer argument relied in part on statements by the examiner rather than the applicant. The opinion discusses how the interchange between applicant and examiner in the file history “made clear that the examiner and the applicant understood what the applicant had changed, and what the claim amendment required,” which was a suitable basis for finding disclaimer, per ACCO Brands, 346 F.3d 1075 (Fed. Cir. 2003). Op. at 7. Affirmance was nevertheless because the PTAB had set forth an alternative basis for nonpatentability applying the disclaimer. The opinion describes how substantial evidence supported this alternative reasoning.

KEYWORDS: PROSECUTION HISTORY DISCLAIMER (YES); INTER PARTES REVIEW; OBVIOUSNESS (YES)