PTAB Denies Late Attempt to Alter the Applicable Claim Construction Standard in an IPR

13 June 2014 IP Litigation Current Blog

A recent decision from the Patent Trial and Appeal Board (the “Board”) highlights the different claim construction standards that are ordinarily applicable in post-grant review proceedings and in district court, and illustrates the Board’s inclinations towards tactics that would alter the complexion of an inter partes review (“IPR”) late in the proceedings.

In an IPR, “[a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b) (emphasis added). The rationale for applying the broadest reasonable interpretation is that “patent owners have the opportunity to amend their claims during IPR, PGR, and CBM trials, unlike district court proceedings . . . .” Office Patent Trial Practice Guide, 74 Fed. Reg. 48756, 48764 (Aug. 14, 2012) (“PGR” refers to “Post-Grant Review” and “CBM” refers to “Covered Business Method”). In district court litigation, the words of a claim are given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art at the time of the invention. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005).

Recently, just before an IPR’s trial hearing (which is followed only by a final written decision), a patent owner sought to avoid the broadest reasonable interpretation standard by filing a terminal disclaimer, giving up the remainder of the patent’s term. Amkor Tech., Inc. v. Tessera, Inc., IPR 2013-00242 (PTAB). The patent owner argued that because the petition and all of the petitioner’s supporting evidence (including expert declarations) addressed the broadest reasonable interpretation standard rather than the now applicable district court standard, the IPR should be terminated for failure to present a prima facie case of invalidity. (See, e.g., Paper 121.) 

In its decision, the Board stated that “[i]t is not feasible, at this late stage of the proceeding, to change the standard by which the challenged claims will be interpreted, as all of the arguments and evidence we have before us have applied the broadest reasonable interpretation standard. Changing the claim interpretation standard would require us, in essence, to start this inter partes review over again.” (Paper 129, pp. 6-7.) To avoid what the Board perceived as potential “abuse” of the proceedings, the Board exercised its power to hold in abeyance the patent owner’s terminal disclaimer until after the conclusion of the IPR (id., p. 6). See 37 C.F.R. § 42.7(b) (“The Board may vacate or hold in abeyance any non-Board action directed to a proceeding while an application or patent is under the jurisdiction of the Board unless the action was authorized by the Board.”). Accordingly, the Board denied the patent owner’s request to terminate and held that the broadest reasonable interpretation standard would continue to apply.

The Board, however, emphasized that the patent owner had the prior opportunity to seek to amend its claims, and that the “Patent Owner could have, for example, filed a terminal disclaimer with its Response had it wanted us to consider a different claim construction standard.” (Paper 129, p. 10.) Notably, the involved patent was set to expire relatively soon, in December 2014.

Although the patent owner in this case may have simply wanted to terminate the IPR, there may ultimately be instances where a patent owner could benefit from the application of the district court claim construction standard, despite having to give up patent term via a terminal disclaimer. For example, at the time the IPR petition is filed, the involved patent may expire soon anyway, and the patent owner might wish to advocate in favor of a claim construction adopted in a prior litigation.

The outcome in this IPR is also useful to illustrate how the Board, under the pressure of a statutory deadline to complete IPRs, is disinclined to undo significant portions of the trial. Therefore, requests, for example, to apply an alternate claim construction standard should likely be made early in the proceedings.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services

Insights

A Review of Recent Whistleblower Developments
19 July 2019
Legal News: Whistleblower Developments
Cloud security inadequate for Cyber threats, are you surprised?
19 July 2019
Internet, IT & e-Discovery Blog
Blockchain: A Tool With a Future in Healthcare
18 July 2019
Health Care Law Today
Do You Know What IMMEX Stands For?
16 July 2019
Dashboard Insights
Review of 2020 Medicare Changes for Telehealth
11 December 2019
Member Call
2019 NDI Executive Exchange
14-15 November 2019
Chicago, IL
MAGI’s Clinical Research Conference
29 October 2019
Las Vegas, NV
Association for Corporate Counsel Annual Meeting 2019
27-30 October 2019
Phoenix, AZ