Breaking: Federal Circuit Affirms, Reverses, and Vacates in Part PTAB Decision in Microsoft v. Proxyconn

Authored by Michelle Carniaux and Michael E.Sander

This morning, the Federal Circuit issued its second substantive decision on an appeal of a final IPR decision, and its first remanding back to the Board, in Microsoft Corp. v. Proxyconn, Inc. See Microsoft Corp. v. Proxyconn, Inc. 2015-1542, 2015-1543 (Fed. Cir. June 16, 2015); see also IPR2012-00026, IPR2013-00109. In its decision, the Federal Circuit re-affirmed that the broadest reasonable interpretation claim construction standard applies in IPR proceedings. 2015-1542 at 6 (citing In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015)). The Federal Circuit also made clear that it reviews the Board’s conclusions of law de novo and its finding of fact for substantial evidence. Id. at 2 (citation omitted). Accordingly, consistent with Teva Pharmaceuticals U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015), in reviewing the Board’s claim construction determinations, the Court reviews the Board’s claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence. Id. at 5-6.

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Claim Construction for Special Claim Terms in an Inter Partes Review

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. 

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