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Cisco Systems, Inc. v. Cirrex Systems, LLC

PTAB Statement that Claims Covered Certain Embodiment Was Legal Error; Claims Lack Written Description Under Corrected Construction

Cisco Systems, Inc. v. Cirrex Systems, LLC, (Fed. Cir. May 10, 2017) (Prost, Wallach, CHEN) (PTAB) (2 of 5 stars)

Fed Cir part-affirms, part-reverses IPRx determination; claims are unpatentable for lack of written description. On claim construction, the opinion discusses how the parties agreed to construction of a certain term, but the Board erred in holding that this construction covered a specific embodiment. The discussion is highly fact-specific, and concerns equalization/attenuation of light signals in a fiber optic communication system. Applying the correct construction, the opinion finds all the claims on appeal lacking in written description support, and so the Board erred insofar as it had held some claims patentable. The opinion notes that each of the claims that the Board found patentable had been added by amendment during prosecution, and so cannot be relied on to establish written description support per Gentry Gallery, 134 F.3d 1473 (Fed. Cir. 1998). Applying the appropriate claim construction, the material Cirrex had been citing for its written description arguments failed to teach a requirement of the claims—namely, the attenuation of certain light signals while they were still inside a certain circuit.

As to the claims where the PTAB had found unpatentability for no written description, the opinion affirms. The material cited by Cirrex failed to teach the claims’ requirement of a “diverting element” inside a certain circuit.

KEYWORDS: INTER PARTES REEXAMINATION; WRITTEN DESCRIPTION (NO); CLAIM CONSTRUCTION