Intellectual Property > IP Newsflash > The PTAB Applies the Philips Standard and Finds Four Of Twenty-Six Challenged Claims Unpatentable
06 May '16

The Patent Trial and Appeal Board (PTAB) instituted an inter partes review (IPR) on behalf of Samsung and Cisco, challenging three patents dealing with audio over Internet protocol and associated graphical user interface for Internet telephony. After noting the related district court proceedings in Straight Path IP Group, Inc. v. Samsung Electronics Co., Ltd., No. 6:13-cv-00606 in the Eastern District of Texas, PTAB proceeded to claim construction. PTAB construed the claims using the standard as stated in Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc). Instead of applying the traditional “broadest reasonable interpretation” standard normally applied in IPR, PTAB went with the Phillips standard because the challenged claims were expired.

Application of this claim construction standard is notable as it is the subject of the case recently argued before the Supreme Court, Cuozzo Speed Technologies v. Lee. That case deals with the question of whether IPRs should follow the district court Phillips standard for claim construction or the claim construction standard used during patent prosecution of “broadest reasonable interpretation.” PTAB’s application of the Phillips standard is particularly interesting now in view of the possibility that this could be the standard for construing all challenged claims, depending on how Cuozzo is decided by the Supreme Court.

PTAB determined that four out of the 26 challenged claims were unpatentable across the three patents in the IPR, eventually agreeing, for the most part, with the patent owner that the prior art failed to disclose the challenged technology of determining whether a computer was connected to a certain computer network.

The petitioner filed the subject IPRs on August 22, 2014; Straight Path settled the district court litigation against Samsung on October 29, 2014.

Cisco Systems, Inc. v. Straight Path IP Group, Inc., IPR2015-01011 (PTAB March 4, 2016).
[Deshpande (opinion), Ward, Gerstenblith]