This morning the Federal Circuit issued a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board. The court addressed the Board’s determination that a petition for inter partes review and a reply brief were insufficient on their merits. Here is the introduction to the opinion.
AMC Multi-Cinema, Inc. v. Fall Line Patents, LLC (Nonprecedential)
Fall Line Patents, LLC owns U.S. Patent No. 9,454,748, entitled “System and Method for Data Management.” The appellants (collectively, AMC) challenged various claims of the ’748 patent in an inter partes review in the Patent and Trademark Office. The Office’s Patent Trial and Appeal Board held all challenged claims unpatentable for obviousness, except for independent claim 7. For claim 7, the Board deemed AMC’s petition for inter partes review insufficient regarding the prior art’s teaching of a required claim limitation, making AMC’s reply elaboration and evidence impermissible, and also deemed that reply material insufficient on its merits. American Multi-Cinema, Inc. v. Fall Line Patents, LLC, 2020 WL 4530148, at *19–26 (P.T.A.B. Aug. 5, 2020) (Final Written Decision). AMC appeals.
We hold that, as to AMC’s petition, the Board abused its discretion in its reading of one short, integrated, uninterrupted passage about the disputed limitation of claim 7—which, we conclude, fairly stated in terse form why the limitation was met by the prior art and sufficed to permit AMC to submit, in reply, further evidence that explained, without materially altering, that point. We also hold that the Board gave an inadequate explanation of why the AMC reply material was unpersuasive on the merits of that point. For those reasons, while we affirm the Board’s rejection of certain contentions by AMC, we vacate the Board’s decision as to claim 7 and remand for further proceedings.