Federal Circuit Finds PTAB Should Have Invalidated Additional Claims in IPRs

In CRFD Research, Inc. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit reviewed three IPR decisions, each on the same patent, reversing the PTAB’s finding in one of the three decisions.  The PTAB had conducted three separate IPR proceedings regarding U.S. Patent No. 7,191,233, which is directed to switching a software session between devices.

On appeal, the Court first affirmed two of the PTAB’s decisions that a total of 10 claims of the ’233 patent were invalid over two prior art references.  The Court then reversed the PTAB’s third decision, invalidating an additional 20 claims of the ’233 patent. The Court found that, in deciding the outcome of the third proceeding, the PTAB improperly relied on its anticipation findings within the obviousness analysis, thus committing legal error.  The Court and further disagreed with the PTAB’s interpretation of one of the cited prior art references, holding that the petition actually invalidated as obvious a total of 30 claims, including the 10 the PTAB had already found invalid.  In total, the Federal Circuit’s decision increases the number of invalidated claims in the ‘233 patent from 10 to 30.