Authored by Thomas R. Makin, Abhishek Bapna, and Jeong-Ah Joy Lee
In an inter partes review proceeding, the PTO applies the broadest reasonable interpretation (“BRI”) claim construction standard. However, even under the BRI standard, a petitioner should be careful to identify and discuss each and every claim term that is potentially contested and important to the invalidity analysis, particularly if the breadth of the term is being disputed in a parallel litigation.
As an initial matter, no formal rule or published decision requires that the parties present claim constructions of all contested terms. 37 C.F.R. § 42.104(b)(3) merely requires that an IPR petitioner set forth a description of “[h]ow the challenged claim is to be construed.” Consistent with this, one of the comments that accompanied the new IPR rules elaborates that “petitioners are not required to define every claim term, but rather merely provide a statement that the claim terms are presumed to take on their ordinary and customary meaning, and point out any claim term that has a special meaning and the definition in the specification.” 77 Fed. Reg. 48700 (Aug. 14, 2012) (emphasis added). The comment also notes that the final rules “do not preclude providing alternative claim constructions in a petition or in later-authorized filings.” Id.
The BRI standard is well-established in the PTO, as set forth in detail in the PTAB’s first final written decision in SAP v. Versata, CBM2012-00001, No. 70 (P.T.A.B. June 11, 2013). The PTAB stated that “[c]larity in claim scope is of the utmost importance because the claims set forth all to which the patentee is entitled while apprising the public of what is still open to them.” The PTAB panel explained that the PTO is more amenable to adopting broader claim constructions than the district courts because of “the ability of an applicant or patent owner in Office proceedings to amend their claims, and the fact that there is no presumption of validity before the Office.” According to the PTAB, “[t]hrough the use of the broadest reasonable interpretation standard, the Office is able to encourage inventors to amend their claims to remove uncertainties and over breadth of claim scope.”
However, recent public comments by PTO personnel at the recent IPO Conference in Boston seem to indicate that, if the petitioner is aware that the patent owner may dispute the breadth of the claim construction of a term in the challenged claims, the petitioner should explain the reasons for its proposed construction and, if in any doubt about this proposed scope, should also describe how the prior art anticipates under both the narrow and broad definitions. And, indeed, recent PTAB decisions imply that—for key claim terms—a petitioner should do more than merely state that the BRI standard applies.
In Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, No. 16 (P.T.A.B. Feb. 22, 2013), the petitioner did not proffer any claim construction and, instead, submitted that all claim terms should take on their ordinary and customary meaning. However, the petitioner implicitly proffered construction for a limitation in a claim chart. Specifically, the claim chart showed that certain prior art references anticipated the limitation of “independent” clock signals because those references disclosed “asynchronous” (i.e., out-of-phase) clock signals originating from the same clock. The PTAB disagreed with the petitioner’s implicit construction (i.e., that out-of-phase clock signals originating from the same clock are “independent” within the meaning of the claims) and denied the petition. The PTAB stated that the petitioner “does not provide analysis or direct us to any persuasive evidence that the independent clock signal limitation should be construed to include signals that are derived from a single clock.” The PTAB then proffered its own construction of the term based on an online dictionary, and found that the prior art did not disclose the limitation under this construction.
In Wowza Media Sys., LLC v. Adobe Systems Inc., IPR2013-00054, No. 12 (P.T.A.B. Apr. 8, 2013), the petitioner proposed constructions for several claim terms, one of which the PTAB deemed material. The PTAB refused to adopt the petitioner’s construction for that term because the petitioner “provide[d] no reasoning or evidence in support of why the phrase should not be interpreted in accordance with its ordinary meaning.” The PTAB then applied the term’s ordinary meaning, and denied all grounds of the petition.
A third decision, Research in Motion Corp. v. Wi-LAN USA Inc., IPR2013-00125, No. 8 (P.T.A.B. July 29, 2013), while finding that the BRI standard applied, did at least take note of the patent owner’s argument that the petitioner’s proposed construction was “too broad and inconsistent with [p]etitioner’s argument made in the parallel litigation.”