Posts Tagged: "Harmonic Inc."

Federal Circuit says PTAB decision on redundancy of asserted IPR grounds not appealable

The Federal Circuit held, pursuant to 35 U.S.C. § 314(d), that it does not have jurisdiction to review an institution decision, because a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The PTAB’s decision on the redundancy of Harmonic’s asserted grounds for review constituted a portion of the Institution Decision and was therefore unappealable, absent some other appealable question.

Joseph Robinson & Robert Schaffer

March 14, 2016

Federal Circuit Reiterates High Standard for Prosecution History Disclaimer

In a January 29, 2016 decision, the Federal Circuit vacated a jury judgment of non-infringement and ordered the District of Delaware to conduct a new trial where construction of a claim term based on prosecution history disclaimer was found to be too narrow. In rejecting the district court’s construction as too limiting, the Court emphasized the high standard for finding prosecution history disclaimer of claim scope. Examining the two prosecution history passages said to be a disclaimer, the Court found that each was readily susceptible to a narrower reading than the one needed to support the district court’s conclusion.

Robert Schaffer & Joseph Robinson

February 12, 2016