Examples of the Board (IPR) Adopting the District Court’s Claim Construction !

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Examples of the Board (IPR) Adopting the District Court’s Claim Construction !

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posted on Apr 05, 2015 08:53PM

With the advent of post grant proceedings implemented by the U.S. Patent and Trademark Office according to the America Invents Act of 2011, there has been much focus on claim construction issues and the interplay between the PTO proceedings and parallel district court proceedings involving the same patents. The increased focus on claim construction is due, at least in part, to the implementing PTO rules for the AIA. Specifically, the rules require that the Patent Trial and Appeal Board use a “broadest reasonable construction in light of the specification of the patent in which it appears” standard when performing claim construction[1] This claim construction standard has been in place for decades, but it is the first time the PTO has articulated this standard in a rule promulgated by the office.Rationale for PTO Construction Standard The PTO’s construction standard is long-standing, both for original examination and during post-grant proceedings.[3] The most common articulation is that “claims under examination before the PTO are given their broadest reasonable interpretation consistent with the specification.”[4] Moreover, according to the board, this broadest reasonable interpretation (or “BRI”) standard means that “claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure.”[5] The PTO addressed its rationale for the BRI standard in promulgating its final post-AIA rules, and the Federal Circuit has also articulated a similar rationale for this standard.[6] And the Federal Circuit continues to apply the BRI standard to appeals arising from PTO proceedings involving unexpired claims.[7] Thus, for PTO proceedings, the board (and the Federal Circuit) will give a claim term “its broadest reasonable construction in light of the specification of the patent in which it appears.”

Examples of the Board Adopting the District Court’s Claim Construction: In many ways, the most interesting cases are those where a district court and the board reach the same claim construction, but take a different analytical path to reach that result due to the differing standards each one uses: Google v. Simpleair In Google Inc., v. Simpleair Inc., CBM2014-00054, May 13, 2014, Paper No. 19, for example, the board denied institution of a covered business method patent review, but in doing so adopted all of the district court’s constructions of the patent at issue. Both parties suggested the adoption of the district court’s construction and this may have made the board more comfortable adopting the constructions. However, the board was careful to evaluate the district court’s claim construction order and held that “the constructions of each claim term are consistent with their broadest reasonable interpretation in light of the specification. Accordingly, ... we adopt the District Court’s constructions of the claims terms.”[16] Kyocera v. Softview Similarly, in Kyocera Corp., Motorola Mobility LLC v. Softview, LLC IPR2013-00004; IPR2013-00257, March 21, 2014, Paper No. 53, the board stated in its final written decision that “[a]s discussed in our Decision to Institute, we construed the claim terms as the Petitioner represented they were construed by the District court in co-pending litigation.”[17] Again, this was after the Board “determined that [the constructions were] consistent with the broadest reasonable construction.”[18] The lesson of cases like Google and Kyocera appears to be that the board will adopt district court constructions, but this is only likely where those constructions undisputed and they conform to the BRI standard. [19] In cases where the meaning of a term remains disputed (particularly due to prior art considerations not addressed in the district court), or where a broader construction is reasonable, litigants can expect a more fulsome claim construction analysis from the board.

Conclusion:

The use of two claim construction standards is longstanding and repeatedly acknowledged by the Federal Circuit. The PTO has indicated a reluctance to modify the claim construction standard for post-grant proceedings because a change, in their view, would create administrative inconsistencies and inefficiencies. Even with two claim construction standards existing in parallel, our review of the decisions to-date where claim construction has occurred in both the district court and the board indicates that the constructions are similar if not the same. The similarity is most likely due to the fact that the district courts and the board are striving to interpret the claims with a common frame of reference. Specifically, both are trying to define the terms, disputed or undisputed, consistent with the POSITA’s understanding in view of the specification describing the invention. As a tip to the practitioner, it is important to evaluate constructions under both standards early in parallel proceedings. Understand how the different constructions relate to each other, and consider how they each affect the invalidity and infringement theories of the case. Oftentimes, the best course will be to construe claim terms consistently under both standards — proposing the same constructions before the district court and the board. As the cases discussed above demonstrate, however, this is not universally true. The issues of claim construction will continue to evolve and, undoubtedly, continue to be explored as the Federal Circuit hears appeals from the board in increasing numbers.