For the third time in November, the CAFC found legal error in a PTAB final written decision—this time based on an erroneous claim construction.  In Straight Path v. Sipnet (Fed. Cir. Nov. 25, 2015), the PTAB instituted an IPR for claims 1-7 and 32-42 of a patent directed to establishing real-time communications between computers over a network.  The PTAB ultimately cancelled all challenged claims, based in part on its construction of the claim phrase “a query as to whether the second process is connected to a computer network.”   Specifically, the PTAB adopted Sipnet’s view that, under the broadest reasonable construction based on the specification, “‘connected to the computer network’ encompasses a processing unit that is ‘active and on-line at registration.’”

On appeal, Straight Path challenged the Board’s construction, which the CAFC reviews de novo because it did not involve subsidiary factual findings.  The dispute related to the temporal aspect of the construction—whether, on the one hand, the claims just require that the second process was connected to a computer network at the time of registration or, on the other, the claims require that the process is connected at the time when the system checks for the connection.  The Court found that the use of the present tense “is” in the claims “plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent,” and faulted the Board for looking to the specification over the plain meaning of the word “is.”  The Court went on to analyze the specification and conclude that it provides no basis for adopting a construction that contradicts the plain meaning of the claim language.  Thus, the Court construed “is connected to the computer network” to mean “is connected to the computer network at the time that the query is transmitted to the server” and remanded to the Board to further consider the prior art in view of that construction.

Concurring-in-part and dissenting-in-part, Judge Dyk dissented from the majority’s construction’s requirement of “absolute currency in a real-time assessment of connectivity.”  Judge Dyk opined that the majority’s view fails to take into account the common usage of the word “is” and, more importantly, failed to give sufficient weight to the specification.

This decision illustrates the difficulty judges—both at the PTAB and the CAFC—face in construing claim terms.  Reasonable minds can often differ as to the plain meaning of a simple word, such as “is.”  Because the CAFC reviews claim construction de novo (but subsidiary factual findings, if any, for clear error), parties should be careful to preserve all rights to appeal adverse claim constructions before the PTAB and consider adverse constructions as potential grounds for appeal.