The Patent Trial and Appeal Board correctly determined that all 79 claims of a patent related to a computerized method for identifying and substituting information in an electronic document were invalid for obviousness, the Federal Circuit has held. Although the Board erred in its analysis by declining to apply a prosecution disclaimer limiting the patent’s claims such that they excluded those of a prior art patent, the court affirmed the Board’s determination based on its alternative holding that, even if the prosecution history disclaimer were accepted, the claims at issue still were unpatentable for obviousness (Arendi S.A.R.L. v. Google LLC, February 20, 2018, Newman, P.).

A full summary of this case has been published on Kluwer IP Law

 

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