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Personalized Media Communications, LLC v. Apple Inc.

Non-Disclaimer Statements During Prosecution May Still Restrict Claim Scope

Personalized Media Communications, LLC v. Apple Inc., __ F.3d __, 2020 WL 1222710 (Fed. Cir. Mar. 13, 2020) (Reyna, Taranto, STOLL) (PTAB) (3 of 5 stars)

Fed Cir part-reverses, part-affirms IPR decision finding PMC’s claims unpatentable. PMC’s patent relates to embedding digital signals within broadcast programming. The Board erred in its determination of the broadest reasonable interpretation for a key term in several claims. The opinion discusses the intrinsic record; the Board erred by failing to be guided by applicant statements during prosecution that relied in principal part on a distinction that was at issue in claim construction. Even those statements that do not rise to the level of a disclaimer/disavowal may influence claim construction, and the Board erred when it held otherwise. “[W]e conclude that the applicant’s repeated and consistent statements during prosecution, along with its amendment to the same effect, are decisive as to the meaning of the disputed claim term—even if those statements do not rise to the level of a disclaimer.” Op. at 18. The unpatentability determination as to the affected claims is vacated. There was no material dispute as to the remaining claims, and the decision is affirmed as to them.

KEYWORDS: INTER PARTES REVIEW; CLAIM CONSTRUCTION; BROADEST REASONABLE INTERPRETATION