SDI Technologies, Inc. filed inter partes review (IPR) of claims 25, 26, 51-53, 55-62, 75, and 76 of U.S. Patent Nos. 8,364,295 (IPR2014-00346). U.S. Patent No. 8,364,295 (“the ‘295 patent”) is owned by Bose Corp. and relates to an audio system for reproducing sound from computer files and computer network radio stations, such as the Bose Wave® SoundTouchTM music system above.
IPR2013-00346 is one of several IPRs filed by SDI against this family of patents. In particular, several other claims of the ‘295 patent were held unpatentable in a final written decision in IPR2013-00465, discussed previously. Patent Owner appealed.
Federal Circuit Reverses PTAB due to Unreasonably Broad Claim construction and Upholds Idle Free Requirement that Patent Owner Must Show that Substitute Claims are Patentable Over All Prior Art of Record
In the first reversal of a Final Decision by the Patent Trial and Appeal Board (PTAB), the Federal Circuit reversed the PTAB’s construction of several claim limitations and remanded the PTAB’s determination of on patentability. Microsoft v. Proxconn, 2014-1542, -1543, Fed. Cir. decided June 16, 2015. This decision shows that the “broadest reasonable construction” adopted by the USPTO during patent office trails in 37 C.F.R. § 42.1000(b) must consider the context of the specification and previous file history.