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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Parallel Inter Partes Review Proceedings

Authored by Michelle Carniaux

As reported in our blog post dated May 2, 2013, one way suggested by the USPTO to deal with the somewhat tight IPR petition page limit is to file multiple IPR petitions directed to different subsets of claims of a patent, rather than to petition for a waiver of the page limit.  The PTAB has now granted three pairs of such petitions.  See IPR2013-00048, -00049, -00052, -00053, -00064 and -00065.  Interestingly, the PTAB has not consolidated the proceedings that relate to the same patent.  Instead, the PTAB issued scheduling orders that coincide with each other so that oral arguments are heard on the same day.  See IPR2012-00048, Paper No. 15, 2 (May 13, 2013).   The possible benefits of allowing the proceedings to move forward in parallel  rather than consolidating the cases include allowing the parties to file less complicated papers (e.g., motions to amend and other papers in each proceeding may address smaller sets of claims within the page limit constraints), and allowing the PTAB to allocate additional time for itself for the proceedings.  It is likely the PTAB will expect the IPR parties to cooperate with each other regarding discovery in the parallel proceedings.  See CBM2012-00004, Paper No. 15 (February 22, 2013).

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Privy and Real Party in Interest – Joint Defense Groups and Trade Associations

Authored by Michelle Carniaux and Michael E. Sander

In addition to substantively attacking invalidity grounds raised in petitions for inter partes review (“IPR”), patent owners have attempted to prevent the initiation of IPRs based on procedural grounds. One such tactic is to take advantage of the bar against instituting an IPR of a patent if the petition requesting the IPR is filed more than 1 year after the IPR petitioner is served with a complaint alleging infringement of the patent. See 35 U.S.C. § 315(b). The one year bar applies not only to situations in which the petitioner was served with a complaint more than 1 year before filing the petition, but also to situations where the “real party in interest, or privy of the petitioner” was served with a complaint. Id. Thus, in some preliminary responses to petitions for IPR, patent owners have argued that an IPR should not be instituted since a real party interest, or privy to the petitioner (a party not named as a participant in the proceeding) was served with a complaint alleging infringement of the patent in issue more than 1 year before the IPR petition was filed.

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