In re WSOU Investments LLC

In re WSOU Investments LLC The Federal Circuit affirmed the Board's § 103 rejection, holding that the Board applied the same claim construction used in the earlier IPR and that substantial evidence supported the finding that Traversat suggested the disputed service-name limitation. The court also held that the CRU did not abuse its discretion or violate due process by refusing to reopen prosecution where WSOU did not amend or cancel the rejected claims or submit new evidence relating to them. Patent owners responding to a Board new ground must address the rejected claims with an appropriate amendment or new evidence if they want reopening, not merely add new claims and reargue the existing record. Affirmed. The challenged claims required the same remote service name to appear in the service-connection request message and to be used as a basis to support establishing the service connection. The Board adopted its earlier IPR construction and found Traversat suggested the limitation through disclosures of named-peer discovery and discovery with or without specifying a peer name. The Federal Circuit held those Traversat disclosures provided substantial evidence for obviousness and rejected WSOU's argument that the Board effectively changed the claim construction. The court also rejected WSOU's teaching-away argument, noting the Board reasonably found Traversat did not criticize or discourage the claimed approach. On procedure, WSOU's response to the new ground proposed additional claims and arguments but did not amend or cancel the rejected claims or submit new evidence, so the CRU permissibly treated the response as a rehearing request. § 103 claim construction non-precedential § 103 claim construction non-precedential § 103 claim construction non-precedential