Next, the majority affirmed that the “broadest reasonable interpretation” (BRI) standard is the correct standard for the PTAB to apply in IPR proceedings. The majority found no reason that this standard would be correct for re-examination and not correct for IPR proceedings. Furthermore, the majority noted that a patentee has the ability to amend during IPR, even though such ability may be significantly constrained by the PTAB’s requirements. By contrast, the dissent (Newman, J.) believed there is a material difference in IPR proceedings, which are adjudicatory, and also that the ability to amend is largely “illusory” in IPR, such that the proceedings more resemble district court litigation (where patentees may not amend). On this basis, the dissent disagreed that BRI is the correct claim construction standard for IPR proceedings. The majority agreed with the PTAB’s decision that the claims in question were obvious over the prior art based on the claim construction it reached using BRI.
Lastly, the majority upheld the PTAB’s decision to deny the patentee’s motion to amend on the grounds that the substitute claims would have enlarged the scope of the patent. The majority found no error in the PTAB’s claim construction of a key limitation found in the substitute claims. The majority further agreed that, under this construction, at least one embodiment would infringe the substitute claims that would not have infringed the original claims.
In light of this decision, patentees who believe the PTAB erred in instituting an IPR may consider filing a mandamus action. Patentees should also consider keeping continuations pending in order to permit easier amendments if parent patents are challenged in an IPR. In addition, patentees should think carefully about dependent claims during original prosecution to provide fall-back positions that may avoid the need to amend during an IPR.
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:
Stephen B. Maebius
George E. Quillin
Andrew S. Baluch