Federal Circuit Affirms PTAB Win for Unified But Clarifies Reading of Rehearing Regulation
Author: Destiny Aigbe
August 5, 2024
In a recent precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) determination that all claims of Voice Tech Corp.’s patent on voice command technology were unpatentable as obvious. This decision, arising from the case Voice Tech Corp. v. Unified Patents, LLC, also clarified that arguments not raised in a PTAB request for rehearing are not necessarily forfeited on appeal.
Case Background
Unified Patents, LLC filed a petition for inter partes review (IPR) challenging all claims of Voice Tech Corp.’s U.S. Patent No. 10,491,679. The patent, titled “Using Voice Commands from a Mobile Device to Remotely Access and Control a Computer,” was alleged to be obvious over two prior art references: “Wong” and “Beauregard.” The PTAB sided with Unified, finding all claims unpatentable. Voice Tech subsequently appealed this decision.
Key Issues on Appeal
- Claim Construction and Prior Art Analysis: Voice Tech argued that Unified’s petition failed to properly identify disclosures in Wong relating to the “mobile device interface” recited in claims 5 and 7. Both the PTAB and CAFC found that Voice Tech’s interpretation was incorrect. The CAFC affirmed that the PTAB did not create an obviousness theory on Unified’s behalf but correctly referred back to Unified’s analysis of related claim limitations.
- Forfeiture of Claim Construction Arguments: Unified contended that Voice Tech forfeited its claim construction arguments by not including them in its request for rehearing before the PTAB. However, the CAFC clarified that 37 C.F.R. § 42.71(d) does not mandate filing a rehearing request to preserve appeal rights. The court distinguished this case from Polycom, Inc. v. Fullview, Inc., noting that Voice Tech had raised and the Board had ruled on the constructions during the IPR proceedings, thus no forfeiture occurred.
- Impact of Claim Construction on Obviousness Findings: Despite finding no forfeiture, the CAFC agreed with Unified that the proposed new constructions would not alter the Board’s obviousness determination. The court declined to construe the terms further, as Voice Tech did not demonstrate any resulting prejudice.
Conclusion
The CAFC’s decision in Voice Tech Corp. v. Unified Patents, LLC reinforces the principles surrounding claim construction and the preservation of arguments for appeal. While Unified’s petition was upheld, the ruling underscores that optional rehearing requests do not limit a party’s right to appeal issues already considered by the PTAB. Furthermore, the decision confirms that demonstrating prejudice is crucial when challenging claim constructions on appeal.
For businesses and legal professionals involved in patent litigation, this case highlights the importance of meticulous claim construction and thorough presentation of arguments during PTAB proceedings. Understanding the nuances of procedural requirements and evidentiary support remains critical for effective advocacy in patent disputes.
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About the Author
Destiny Aigbe
Managing Partner
Aigbe Law PLLC | Dark Alpha Capital
A Corporate and Securities Law Firm
With a robust foundation in law and finance, Destiny Aigbe has carved a distinguished career, underpinned by his pivotal role in orchestrating and managing complex transactions that have propelled companies to significant growth and market prominence. As a seasoned attorney and strategic advisor, Destiny has been instrumental in facilitating over $75 million in capital raises, demonstrating a keen acumen for securing funding and fostering investor confidence.
Destiny's leadership in the execution of six successful public listings, through meticulously structured reverse mergers and registration statements, showcases his adeptness in navigating the intricacies of the public markets and his capacity to guide companies through transformative growth phases. His involvement in five mergers as an operator further illustrates his versatile skill set, extending beyond legal expertise to include hands-on management and operational strategy, though these ventures did not involve funding.
Destiny's professional journey is marked by a commitment to excellence and a diverse range of experiences, from representing a wide spectrum of clients including public and private companies, and investment firms, to holding significant roles within the US government. His tenure with the US Department of State and the National Institutes of Health highlights his adaptability and his contribution to the advancement of entrepreneurial ventures in sectors like biotechnology and nanotechnology through strategic funding initiatives.
An alumnus of Vanderbilt University Law School, Destiny focused on Finance and Mergers & Acquisitions, further honing his expertise with a certificate in Law and Business. His foundational education in Finance was obtained with honors from the University of Maryland's Robert H. Smith School of Business, which laid the groundwork for his subsequent achievements in investment banking and legal practice.
Residing in the Washington, D.C. area, Destiny Aigbe continues to leverage his extensive experience and insightful leadership to drive innovation, growth, and success for his clients and the ventures he is involved with.
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