Federal Circuit Vacates and Remands PTAB’s “Midstream” Claim Construction Change

In SAS Institute, Inc. v. ComplementSoft, LLC, Nos. 15-1346, 15-1347 (Fed. Cir. June 10, 2016), the Federal Circuit vacated the PTAB’s validity determination for a claim because the Board adopted a new claim construction in its final written decision after interpreting the claim differently before. The Court also rejected SAS’s argument that the Board must address all claims challenged in an IPR petition in its final written decision. In her dissent, Judge Newman stated that the Board’s failure to address non-instituted claims in the final written decision undermines the goals of the AIA. A more detailed discussion of the Federal Circuit’s decision can be found on Finnegan’s AIA blog.