Last week, the Federal Circuit heard oral argument in In re Satius Holding, Inc., a patent case we have been following because it attracted an amicus brief. In this case, 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. Chief Judge Moore and Judges Lourie and Hughes heard the oral argument. This is our argument recap.
Jeffrey Price argued on behalf of Satius Holding. He began by suggesting the court “reverse the board’s determination that Claim 1 of the ‘385 patent is obvious.” Price said the “case presents a very straightforward claim construction issue that’s dispositive.” He then provided further background, explaining that a “first reexamination affirmed all . . . challenged claims . . . of the ‘385 patent because the board found that the prior art did not disclose a coupler designed to match the characteristic impedance of air in the location where it is to be used.”
One judge interjected to question whether the prior art already “disclose[d] radios where the output impedance is matched with antenna impedances within the proper range.” In response, Price argued that, while the prior art does “discloses antenna impedances with input impedances that are in the range of possible values of the characteristic impedance of air . . . , they do not disclose the characteristic impedance of air at all, and they do not disclose matching that value.” He further explained that “the characteristic impedance of air is a value that may change depending on where you are.” This, he said, “was exactly the problem in the prior art that the inventor identified.”
Price then argued that, in “reversing the examiner’s determination . . . the Board relied on a theory where, so long as a device is capable of matching the characteristic impedance of air somewhere, . . . it satisfied the claims.” He argued that this finding “contradicts the construction that was applied in the first reexamination.” Moreover, he said, “that construction should . . . apply here because of prosecution history disclaimer and because it’s correct on the merits.”
Peter Sawert argued on behalf of the government. He began by explaining how the “Board found that the ‘385 patent teaches a characteristic impedance of the air between one and 200 ohms.” Sawert then argued “that part of the claim language is inherent in the obviousness combination.” He explained that, “when you use one of these exemplary antennas for amateur radios . . . that have an input impedance that falls within the range of characteristic impedance of the air, . . . you necessarily wind up matching the characteristic impedance of the air at some location.” Sawert explained “the Board did not find that it was expressly taught to match the impedance of the air . . . , but did find that it was inherent in the combination.”
Chief Judge Moore questioned why Sawert did not “think prosecution history disclaimer can apply here.” Sawert responded by explaining that, “in the prior re-exam, the consideration was a rejection over the prior art.” He explained “the examiner was relying on an argument that matching the transceiver impedance to the impedance of a transmission line was the same thing as matching it to the impedance of the air.” However, Sawert continued, “the Board said. . . that’s not what the claim says.” Therefore, he argued, Satius “ha[sn’t] really even put forward a prima facie case” of prosecution history disclaimer.
In rebuttal, Price argued the “‘385 patent does require that the primary winding be designed to match the most common characteristic impedance of the air where the wireless transmitter or receiver will be used.” He said “[t]hat’s a clear disclaimer.”
We will continue monitoring this case and report on developments.