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.