U.S. Circuit Judge Raymond T. Chen pointed out that Simpson had already challenged the validity of two other claims from the certificate, which were invalidated for indefiniteness and lack of written description. “The board agreed with those arguments notwithstanding the certificate of correction,” Crudo responded.
Columbia’s counsel objected to Simpson challenging some claims but accepting the invalidation of others, asserting, “It can’t have it both ways.”
Judge Chen raised the question of whether the PTAB had definitively ruled on the corrected claims. Eidson asserted that the PTAB had, but Judge Chen pressed on whether the board had directly passed on the corrected claims.
During the session, Judge Richard G. Taranto suggested that if the court clarified that the corrected claims were not part of the PTAB proceedings, Simpson might still address them in other legal actions. Crudo affirmed that related infringement litigation exists involving the corrected claims, which could be challenged in district court.
