Sacrificing Patent Term to Salvage Past Damages: Using Terminal Disclaimers to Change Claim Construction Standard During Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

One of the more significant differences between litigating patent validity in an inter partes review proceedings over a district court, is that a different claim construction standard applies. In an inter partes review proceeding, claims are given the “broadest reasonable construction” (“BRC”). 37 C.F.R. § 42.100(b). The patent office uses the BRC standard because in patent office proceedings, patent owners may amend their claims to read on to existing technology and, the BRC standard “reduce[s] the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified.” In re Reuter, 670 F.2d 1015, 1019 (C.C.P.A. 1981).

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