Topic: Claim construction

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USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials

In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials.

In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) standard for unexpired and proposed claims with the Phillips standard that is applied by district courts and the International Trade Commission (ITC).  The Patent Trial and Appeal Board already applies the Phillips standard to expired patent claims, which cannot be amended during AIA trials.… Continue Reading

No due process violation where PTAB “previews” new construction at oral hearing

In Intellectual Ventures II LLC v. Ericsson Inc.,[1] the Federal Circuit considered whether the PTAB’s adoption of a new claim construction in its Final Written Decision constitutes a violation of the parties’ due process. Intellectual Ventures argued that it was denied due process because the construction set forth in the Board’s Final Written Decision was not one that any of the parties offered and was never “previewed” to the parties until oral argument. IV contended that the Board’s decision runs afoul of two recent Federal Circuit decisions—In re Magnum Oil International, Ltd. and SAS Institute, Inc. v. Continue Reading

Federal Circuit criticizes PTAB for changing claim construction midstream

In SAS Institute, Inc. v. ComplementSoft, LLC, the Federal Circuit criticized the PTAB for changing its claim construction “midstream” and vacated the Board’s finding that, under the newly adopted construction, one of the claims in the Patent Owner’s software patent was valid. Nos. 2015-1346, 2015-1347 (Fed. Cir. Jun. 10, 2016).

In its institution decision, the Board construed the term “graphical representations of data flows” as “a map of the path of data through the executing source code,” and relied on its construction of that term in denying institution on one of the grounds included in the petition.

In … Continue Reading

Federal Circuit provides guidance on broadest reasonable interpretation standard for claim construction in PTAB proceedings

In two recent cases, the Federal Circuit provided guidance on applying the broadest reasonable interpretation (BRI) standard for claim construction in IPR proceedings. PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1361, 1366, 1368, 1369 (Fed. Cir. Feb. 22, 2016) (“PPC I”) and PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1364 (Fed. Cir. Feb. 22, 2016) (“PPC II”).

In PPC I, the CAFC affirmed portions of the Board’s decision, vacated other portions, and remanded. The CAFC reviewed claim constructions for terms in claims that the Board previously found unpatentable as obvious. Recognizing that … Continue Reading

New PTAB Rules Take Effect May 2, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding or trial before the Office. A revised Trial Practice Guide is forthcoming.

The published final rule describing the amended rules is available here. A redline comparing the amended rules to the old rules is available here.

We detail the major … Continue Reading

Federal Circuit addresses use of BRI standard and motions to amend claims in IPRs

In Microsoft Corp. v. Proxyconn, Inc., — F.3d —, 2015 WL 3747257 (Fed. Cir. June 16, 2015), the Federal Circuit once again affirmed that the broadest reasonable interpretation (“BRI”) standard of claim construction applies in IPRs, providing further guidance on applying the standard. It also approved of the Board’s requirement on motions to amend claims that the Patent Owner must demonstrate that its substitute claims are patentable over the prior art of record.

The Federal Circuit stated that Patent Owner Proxycon’s argument that the BRI standard should not apply in IPRs was foreclosed by its decision in In Continue Reading

PTAB denies request for rehearing based on failure to construe claim limitation

In Jiawei Technology (HK) Ltd. v. Simon N. Richmond, the PTAB denied Petitioner’s Request for Rehearing of a decision not to institute an IPR. IPR2014-00937, Paper 24 (Feb. 6, 2015). Maintaining its decision that the Petitioner failed to properly address a claim limitation that was “critical” to understanding claim scope, the Board held no abuse of discretion was shown.

The challenged claims recite a lighting device that produces light of varying color. Rejecting Petitioner’s argument that the Board failed to analyze an “express definition” of the claim limitation “color changing cycle” provided in the Petition, the Board explained … Continue Reading

Federal Circuit affirms PTAB in first review of IPR decision

In In re Cuozzo, the Federal Circuit held, in a 2-1 opinion, that decisions of the PTAB to institute an IPR are not appealable and confirmed the use of the broadest reasonable interpretation standard for claim construction proceedings in IPR. In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015).

The Court noted its previous holding (discussed here) that 35 U.S.C. § 314(d) precludes interlocutory review of decisions whether to institute IPR. The Court then found that § 314(d) excludes all review of these decisions, including after the Board issues a final decision, … Continue Reading