In Ex Parte Schulhauser, Appeal No. 2013-007847 (PTAB April 28, 2016), the Patent Trial and Appeal Board (PTAB) considered elements like “triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria.” The PTAB described the phrase “if the electrocardiac signal data is not within the threshold electrocardiac criteria” as a “condition precedent.” Slip op. at 6
In their decision, the Schulhauser panel relied on Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (unpublished) and Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished). Slip op. at 10. The Schulhauser panel’s reliance on unpublished authority is certainly questionable. The questionability of this reliance was raised in Dell Inc., v. Realtime Data LLC, Case IPR2017-00176, Paper 35 (PTAB May 25, 2018). The Dell case seems to have settled the issue that, before the PTAB, conditional precedent steps need not be practiced.
The Federal Circuit does not seem to have addressed the PTAB’s reading of the unpublished decisions. Thus, the Federal Circuit might reverse the PTAB’s conclusion at some later point. How should an Applicant proceed today?
Maybe an independent claim could maintain the wording of “triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria.” In contrast, a dependent claim could recite “the alarm state is triggered in response to a determination that the electrocardiac signal data is not within the threshold electrocardiac criteria.” In such an application, the independent claim, if allowed, would provide broad protection for licensing and potential Federal Circuit litigation. The dependent claim would provide a narrower scope for a fallback position during prosecution, as well as for matters before the PTAB.
As an alternative, I started using the phrase “based on” to avoid conditional language a few years ago. That phrase is sufficiently narrow that Examiners give it some weight and but broad enough to satisfy some clients.
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