While affirming a Patent Trial and Appeal Board (PTAB) decision to invalidate a patent as obvious, the US Court of Appeals for the Federal Circuit found that the PTAB incorrectly concluded that an examiner’s statements in a “Notice of Allowance” was not a prosecution disclaimer. Arendi S.A.R.L. v. Google LLC, Case No. 16-1249 (Fed. Cir., Feb. 20, 2018) (Newman, J).

Google requested inter partes review (IPR) of one of Arendi’s patents relating to a method of handling information. During the IPR proceeding, Arendi relied on the examiner’s “Reasons for Allowance,” arguing that amendments made during prosecution distinguished the prior art by further narrowing the scope of the claims. The PTAB disagreed, finding that amendments are not limited by the prosecution record when only the examiner disclaims subject matter that would otherwise fall within the scope of the claims. Finding that the claims were not narrowed based on prosecution disclaimer, the PTAB found the claims obvious over the prior art. The PTAB also found that even if the examiner’s statements were considered prosecution disclaimers, the narrower interpreted claims would still be obvious over the prior art. Arendi appealed.

The Federal Circuit affirmed the PTAB’s invalidity finding but determined that the PTAB erred in concluding that prosecution disclaimer does not apply. The Court noted that while the applicant, not the examiner, must disclaim subject matter that would otherwise fall within the scope of the claims, the applicant must clearly and unambiguously express surrender of subject matter during prosecution. Turning to the current case, the Court found that the applicant clearly and unambiguously expressed surrender by amending the claims and explaining why the amendment was necessary. The examiner simply confirmed why the amended claims were allowable. The examiner’s Reasons for Allowance also made clear that both the examiner and the applicant understood that amendments were necessary to overcome prior art, and thus prosecution disclaimer applied. The Federal Circuit then turned to the PTAB’s alternative ruling and affirmed, finding that even though prosecution disclaimer applied, the narrower interpreted claims were still obvious in view of the prior art.