One case being argued at the Federal Circuit in July attracted an amicus brief. This case is In re Satius Holding, Inc., a patent case. In it, Satius appeals a decision of the Patent Trial and Appeal Board in an ex parte reexamination. In the appeal, Satius presents questions related to claim construction and prosecution history disclaimer. This is our argument preview.
Satius requested in its opening brief that the Federal Circuit “reverse the Board’s Order finding Claim 1 . . . obvious because the Board either did not faithfully apply its own construction of the key disputed term or because it adopted an incorrect new construction of the term with insufficient basis in the intrinsic record.” Satius argued “there are no record findings” that the prior art “discloses designing a coupler’s ‘primary winding be “designed to match the most common characteristic impedance of the air where the wireless transmitter/receiver will be used.”‘” Satius contended “the Board did not faithfully apply this construction . . . , and there is no finding, let alone reasonable argument, that these combinations satisfy this limitation as properly construed.”
In its response brief, the Patent and Trademark Office pointed out how the Board found “substantial evidence support[ing] the conclusion that claim 1 would have been obvious.” It argued the “Board properly construed” the relevant limitation “based on its plain and ordinary” meaning. It also said “Satius did not offer or request a specific construction” of a limitation before the Board. By not taking specific action, the PTO argued, Satius “forfeited the claim construction arguments that are the basis of its appeal.” It further contended that, even “if Satius has not forfeited those arguments, they are wrong.”
In its reply brief, Satius argued the PTO’s “allegation that ‘Satius has never offered a specific claim construction . . .’ is at odds with the record.” It further emphasized how the Federal Circuit’s “precedent counsels that ‘[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.'”
Samsung filed an amicus brief in support of the PTO and affirmance. It argued that “Satius essentially conceded at the oral hearing . . . that its broad claim . . . was known in the prior art.” Samsung further contended that “Satius’s argument that a ‘location’ requirement should be read into claim 1″ is “wholly unsupported.”
Oral argument is scheduled to be heard on Thursday, July 9 at 10:00 a.m. in Courtroom 402.