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CAFC Victory: PTAB IPR Decision Overturned

Industry: Technology

Key Facts

  • First time CAFC completely overturned PTAB in IPR decision
  • Second time CAFC held that the PTAB erred in construing the claims of a patent

The Situation

Straight Path IP Group came to Mintz after another firm handled an inter partes review before the Patent Trial and Appeal Board, in which the Board cancelled each of the challenged claims of Straight Path’s US Patent No. 6,108,704.  The ‘704 patent describes certain protocols for establishing communication links through a network.

The Approach

Our team developed the appellate strategy, drafted the briefs, and argued the appeal before the US Court of Appeals for the Federal Circuit. The argument focused on the construction of two claim terms.

The Outcome

In an opinion issued on November 25, 2015, the Federal Circuit reversed and remanded the Board’s decision, which had previously cancelled our client’s claims, finding that the Board misinterpreted the phrase, “is connected to the computer network.” See Straight Path IP Group, Inc. v. Sipnet EU S.R.O, No. 15-1212, (Fed. Cir. Nov. 25, 2015).

This was the first time that the Federal Circuit reversed a Board decision in its entirety, and only the second time it held that the Board erred in construing the claims of a patent.

Supporting Professionals