Tuesday, April 20, 2021

Appellant Cerner loses at CAFC, failed to present its main argument to the Board

The CAFC decision in Cerner begins:

This is not the first time issues presented on appeal do not mirror directly those presented to the lower tribunal. Such is the case here. Because we conclude that the claim construction debate on which this appeal initially turns was never presented to the Patent Trial and Appeal Board (“Board”) and that the Board had substantial evidence to support its assessment of the prior art disclosure at issue, we affirm the Board’s patentability determination.


The problem for Cerner is that it never asked the Board to construe the term “portion” in the storing clause of claim 1 and the Board did not do so. Cerner and Clinicomp asked for a number of terms to be construed and the Board thoroughly analyzed each of the identified claim term

Instead, the parties and the Board proceeded on the assumption that the terms “partition” as used in the specification and the term “portion” as used in the claim were interchangeable and that they had a common ordinary meaning to one of skill in the art. As the Board described it, the two words were distinct, but it was a “distinction without a substantive difference.” J.A. 85. The Board’s finding on this point was not persuasively debated below, and with good reason. It is supported both by the plain language of the ’647 patent specification and by the testimony of both experts. Quite simply, the Board did not decline to construe any claim term presented to it and did not misunderstand the parties’ requests for claim construction.

The idea of "moving the goalposts" comes up in footnote 2:

As the Board noted, Cerner’s contention that claim 1 did not actually require “partitioning” was a belated attempt to move the goalposts— one without evidentiary support.


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