Should the Claim Construction Standard for PTAB Post-Grant Proceedings Be Changed?

Guest Post by Bernie Knight. Knight is a partner at McDermott Will & Emery LLP and was USPTO General Counsel from 2010-2013.

Now that the new post-grant proceedings of the America Invents Act (AIA) have been underway for over a year, some have questioned whether the claim construction standard used by the Patent Trial and Appeal Board (PTAB) is the correct one.  Currently, proposed legislation in Congress would change the claim construction standard for PTAB post-grant proceedings from the broadest reasonable interpretation to the same standard used by district courts, i.e., one having a goal of preserving validity in deference to 35 U.S.C. Sec. 282.   Of course, outside of such legislation, the USPTO has the ability to change the claim construction standard by amending the regulations and the practice guide.  The question arises, would changing the claim construction standard improve the patent system?

The answer is no. Yet, with that said, there is a certain tension between the claim construction standard and the patent owner’s ability to amend claims in the new post-grant proceedings. Recent decisions of the PTAB have made it difficult for patent owners to amend their claims. When we decided to adopt the broadest reasonable interpretation claim construction standard, we did so under the assumption that patent owners would be able to amend their claims without significant impediments. This was a sound decision for the patent system and follow-on innovation because the claims would be amended with more precise language. It would then be easier for other companies and inventors in the same technology space to design around the amended claims. Simply put, the broadest reasonable interpretation claim construction standard seems like a fair standard in light of the patent owner’s ability to amend claims. Such an approach also seems good for the patent system and follow-on innovation.

A tension arises with this trade off because of recent decisions of the PTAB requiring the patent owner to establish that the amended claims are patentable not only over the cited prior art, but also any art of which the patent owner has knowledge. See, e.g., IPR2012-00027, paper 66 (Final Written Decision). In addition, the PTAB sometimes requires that the patent owner submit an expert declaration to establish the understanding of a person of ordinary skill in the art to determine whether the new claim limitations are obvious. At the urging of many patent owners, Congress is responding by proposing legislation that would change the claim construction standard for USPTO proceedings to the same standard employed by the district courts.

The PTAB has done a terrific job handling the onslaught of petitions that have been filed since enactment of the AIA.  It is reported that the USPTO has the third busiest patent docket in the country, after the Eastern District of Texas and the District of Delaware.   I had the pleasure of working with the PTAB in getting the final AIA rules issued and the proceedings implemented within the one year period mandated by Congress. So, here comes the “but.” This is a good time for the USPTO to look at the requirements for a patent owner’s amendment to make certain that because the claims are broadly construed, the patent owner still has a reasonable opportunity to amend the claims.

The regulations that we implemented provide that amendments will be allowed if they are supported by the written description in the application, the amendments are narrowing amendments and the amendments relate to a claim and ground upon which the proceeding was instituted. See 37 C.F.R. 42.121, 42.221. The patent owner must make an initial showing that the amended claims are patentable. The question arises how much support should be required from the patent owner at the time of the motion to amend claims and how much of the burden should be placed on the petitioner to show that the amended claims are unpatentable.

The additional requirements placed on the patent owner by the PTAB make it more difficult for a proposed amendment to survive a PTAB proceeding. An alternative approach might be to only require the patent owner to show that the amended claims are patentable over the prior art cited by the petitioner and relied on by the PTAB in instituting the proceeding. If the patent owner fails to disclose prior art that the patent owner has knowledge of and that can affect the validity of the claims, there may be a future inequitable conduct defense if the patent owner brings an infringement action. In addition, there may be a basis for an Office of Enrollment and Discipline complaint if evidence that is contrary to a position being taken at the USPTO is intentionally withheld by the patent owner. With respect to the need for expert witnesses to support the amendments, a possible alternative approach would be to place the burden on the petitioner to produce the expert to support an obviousness challenge to the new amended claims. The current PTAB decisions place that burden on the patent owner up front to disprove such an argument even before it is raised. More of the burden might be placed on the petitioner to show that the amended claims are unpatentable.

If the requirements for a patent owner amendment were less onerous, then a much stronger case can be made that the broadest reasonable claim construction standard should be retained. Without the ability to reasonably amend the claims, the broadest reasonable interpretation claim construction standard seems a bit unfair to the patent owner because the claims are broadly construed with little opportunity to amend.

The views expressed here are solely those of the author and do not necessarily reflect the views of McDermott Will & Emery or its other partners.

81 thoughts on “Should the Claim Construction Standard for PTAB Post-Grant Proceedings Be Changed?

  1. 12

    One issue that gets lost here is that if the Patent Office behaves less like the Patent Office and more like a district court, cases like Northern Pipeline Construction Company v. Marathon Pipe Line Company, 458 U.S. 50 (1982) raise difficult problems. The case law in this area has many plurality opinions (think education affirmative action law), which is characterized as “frequently arcane distinctions and confusing precedents.” Id. at 90. Other cases that have to be sorted through are Thomas v. Union Carbide Agr. Products Co., 473 U.S. 568 (1985) and Commodity Futures Trading Com’n v. Schor, 478 U.S. 833 (1986).

    The USPTO has good reason for not wanting to look like a district court in several ways to ward off constitutional challenges.

    1. 12.2


      Not wanting to look like a district court…?

      You raise even more troubling constitutional issues if you want the Article I court to not have to conform to Article III jurisprudence.

      Our founding fathers warned against the powers of the separate branches being wielded by one governmental power. We set up the separation of powers with an explicit reason, and any time a power finds that reason “inconvenient,” everyone should immediately stand up and take notice.

      This now is under way in the patent office – with an unvetted (and unseen) top guiding power (and Lee is not that power), law being written and passed off as rules (law affecting corporate shape, privacy, and other factors beyond the scope of patent office control), and a judicial freefall of making up what the Article I court wants the interpretation of law to be.

      To wrap this up with the clarity of Occam: The ends do not justify the means.

  2. 11

    It seems to me that such a change would practically kill IPRs. The boon for the petitioner is that he can apply prior art like an Examiner would. In cases where there is no court claim construction to pave the way, this change would vastly increase the cost of filing by the additional analysis to develop and fight for construction positions. We’d be having Markman hearings at the PTAB. (<– not good)

    It's not that positive for patentees either. This change would also impact positions taken in later litigation for claim construction – the parties would want to make sure their positions are right the first time. This is difficult because patentees would typically want reference products to argue their positions towards, which would be more lacking in a PTAB action with limited discovery.

    As a metaphor for examination, the petition and institution decision serve as a precise and limited office action. Why shouldn't the patentee have to defend amendments precisely as well? Maybe a better alternative would be for the parties to be able to agree to have the patent referred for reexamination or reissue. The price? A restriction on using that patent in litigation until it clears reexamination.

    1. 11.1


      I am not certain what you mean by: “As a metaphor for examination, the petition and institution decision serve as a precise and limited office action.

      The institution decision is nothing at all like an office action, to which at least you have a chance to respond.

      1. 11.1.1

        Ah, but the petition sets forth the “rejection” to which the patent owner can respond. The institution merely weighs the two and institutes one or more grounds found in the petition. So the patent owner does have a chance to respond.

        The institution is nothing like an office action. The institution and petition together typically much more narrowly and specifically apply the prior art. If only Office Actions were so precise, instead of hand waving.



          You are still missing the point of which that I am writing about.

          Pay attention, man.

    2. 11.2

      TLG, there has to be a solution that would clearly define alternatives in claim construction and why the choice of the broader was taken. The patent owner then must be allowed to amended to the narrower without any penalty whatsoever. This will allow the PTO objective in clarifying the claims which not changing the status quo ante between the patent owner and the accused infringer one iota.

      1. 11.2.1

        “choice of the broader”? The choice of the broader reasonable interpretation should always be taken.
        I don’t necessarily disagree that the patentee should be able to amend without any penalty whatsoever.

        One problem with your approach though is that, even if patentees were to acquiesce to amend without any real exploration of the merits of the IPR, such amendments should still be tailored to the grounds of institution and to overcome the prior art. It’s not a free for all. There are other procedures available for style amendments.

        I will concede that the PTAB should be more lenient on the procedural aspects. It shouldn’t be that burdensome to require making the argument over particular pieces of art (especially outside of the grounds for institution).

  3. 10

    The US needs a single legal standard for determining patentability of an invention user US law that needs to be consistently applied by the examiner, the PTAB and the courts. Any more than a single standard applied by all creates uncertainty in the US patent system and is not justifiable plain and simple.

  4. 9

    This just seems really unfair. You are going back to PTO with broadest reasonable interpretation and they are making it extremely hard for you to amend.

    Come on! Anyone can see that this is a taking of the original grant. You are faced with broader claims than you would have at the federal court level and then they won’t let you amend without a Dudas type of support document.

      1. 9.1.1

        I don’t know if I deal with being in agreement with you. I guess there is an intersection between the pharma’s interests and information processing interests.

    1. 9.2

      First, asking an applicant to prove their patentability is in fact against what the Tafascase held.

      Examination is the job of the Office, not the applicant. If part of the post-grant proceeding is this ‘ability to amend,’ is that ability in fact reopening examination?

      How can it not be so considered?

      The very notion of allowing an amendment means that the result of the change must be vetted (that is, examined). There is a logical connection that is being attempted to be severed as to whom that legal duty belongs to.

      Second, I will remind all though that the point at which focus should be on – a point that remains unanswerable in an Article III court is that point at which the Office determines (all on its own Executive Branch whim) to allow a post grant review to proceed and strip a duly granted property right of one of the legal aspects of that property right.

      Such a stripping – with no due process recourse of challenge on the very action – and with no recompense to a(n Executive branch of the) government taking of property is at least one area of constitutional violation.

      1. 9.2.1

        “duly granted property right”

        I think the point is that the patent in an IPR is highly suspect of not being duly granted. The ultimate decision is subject to judicial review.

        Would it be different if IPRs were only available on post-AIA granted patents?



          The problem you have TLG is that the patent in question has been duly granted – you do not get to change history.

          Further, the ultimate decision of the removal of one of the sticks in the bundle of property rights is expressly NOT subject to judicial review.

          Try re-reading my post.


            35 U.S.C. 141(c) – “may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit”

            If your talking about the institution of the IPR in the first place, your argument would apply equally to Reexaminations. There’s no difference between starting at the PTAB or before an Examiner so far as Article I is concerned.

            There’s no promise that an issued patent is valid, e.g. 35 U.S. Code § 151 – “If it appears that . . .”


              TLG, let me keep it simple for you:

              Stern v. Marshall and is predecessors make it clear that only Art. III courts can adjudicate the validity of a right that was tried in the courts of England before 1789.

              A “public right” is a creature of statute, but not just any statute. The statute cannot involve a right or cause of action tried in the courts of England before 1789, otherwise congress could entirely remove from Art. III exclusive jurisdiction matters tried in such courts merely by the act of making them statutes.

              Adjudication of public rights can constitutionally be entirely withdrawn from Art. III courts. Thus, if a patent were a public right, both infringement and validity might be removed from jurisdiction of the Art. III courts.

              The SC has held, however, that if the jurisdiction of the Art. I court is adjunct, where the district court has the “final” say, and may conduct a trial de novo, then congress can invoke the expertise of an Art. I agency.

              Perforce, if a matter had been deemed to have a constitutional right to a jury trial, it cannot be withdrawn from Art. III courts and assigned to Art. I courts. The SC, in dicta, has already stated that there is a right to a jury trial for patent infringement. The Federal Circuit has held that there is a right to jury trial for validity when the action is at law. (Choosing to pursue only an injunction where there is no right to a jury trial, is a choice of the patentee. A patentee can waive his constitutional right to a jury trial.)

              Thus, reexaminations, IPRs and the like are all unconstitutional as presently constructed. These all need to be made adjunct to a district court that has de novo review, or the judges themselves have to be made Art. III judges. Regardless, and in both cases, the ultimate determination invokes a right to a jury trial and opinion of the PTO is no better than that of a special master.


              TLG – you over-parsed and missed the second line: “Upon payment of this sum the patent shall issue

              You also forgot about the part of the presumption of validity. You also forgot that whether or not a patent IS valid, (until adjudged not so), the granted patent is a personal property right with a bundle of sticks to that right. As I mentioned, one of those sticks is a stick that the Article I court – on its own whim and with no chance of Article III review takes without recompense or due process.

              And yes, this is a problem with any post grant review in which the patent holder does not voluntarily relinquish his patent right.

              As I mentioned – Ned Heller has dutifully noted that the scire facias writ was removed from US patent law.


              Thanks Ned and anon,

              These are interesting arguments. What’s the basis for declaring that a patent is not a “public right”? Why can’t the validity of a patent be a public right, but the determination of infringement of a patent not?

              I think therein lies the answer to Constitutionality (if it exists). The PTO is particularly suited to determine validity and that kind of scheme seems to pass muster as a hallmark of a “public right.”

              Justice Brennan asserted that “the restructuring of debtor-creditor relations, which is at the core of the federal bankruptcy power, must be distinguished from the adjudication of state-created private rights, such as the right to recover contract damages . . . . The former may well be a ‘public right,’ but the latter obviously is not.” N. Pipeline at 71.

              So the parallel would be that validity of a patent is at the core of the federal power to award patents, while the adjudication of the private patent rights is not.



              If patent validity were a public right, congress could withdraw validity from the courts, while still allowing suits for infringement that would have a right to a trial by jury.

              Now think about that for a few moments.

              In the courts of England, however, a right to trial by jury in defense of infringement cases was well established.

              Moreover, the English had a right of action known as scire facias where the validity of a patent could be tried and the patent revoked. This differed from the defense of a invalidity in infringement trials because the latter did not cancel the patent. In such actions, there was a right to a trial by jury.

              Congress passed just such a cancellation proceeding in the early patent statutes. (Repealed in 1836) In an earlier case where a court was going to summarily adjudicate the validity of the patent under this statute, Justice Story, for the Supreme Court, on mandamus, held there to be a right to trial by jury where the validity of a patent was at issue. ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824).

              This case has never been overruled and is controlling law.

              Thus there is a right to a trial by jury where patent validity is at issue and a patent can be revoked in whole or in part.

              That perforce means that Art. I administrative cancellation is unconstitutional under the 7th Amendment. It also means that patent validity is a matter exclusively for Art. III courts, and administrative cancellation is also unconstitutional under that line of cases.


              Patents are not strictly a property right in that we all know that they are voidable in district court or in the patent office. The reissue and reexamination proceedings were challenged for voiding property rights and survived. There are pending challenges against the current AIA post-grant proceedings schemes that will die the same death.

              As to the Article I/Article III issue, Thomas v. Union Carbide Agr. Products Co., 473 U.S. 568 (1985) and Commodity Futures Trading Com’n v. Schor, 478 U.S. 833 (1986) have mucked things up. The first was an arbitration scheme for trade secrets in toxic substances and the second in state law disputes on commodity trades. Both were found to be justiciable in specialty Article I tribunals.

              Interferences have an escape to district court, making them unchallengable on the Article I/Article III issue as they are essentially advisory.

              The USPTO is adjudicating the validity of the patent as for the world, not a single party. The USPTO is charged to uphold the public interest and may continue a proceeding in the public interest even after a petitioner has been dismissed. The public/private rights boundary is fuzzier than in the district court proceeding. Further, the USPTO brings special expertise to the proceeding.

              The superiority of district courts is not an issue because the standards of determination of facts are different, making fact preclusion irrelevant. The USPTO cannot dissolve a district court judgment so there is no conflict with prior judgments. Since a judgment cannot be affected, there is no true issue preclusion because there is no reason a party with a judgment against him cannot vindicate public rights.

              It seems like so much sound and fury signifying… well you know the rest.



              Sorry but strictly “Patents are not strictly a property right” is wrong.

              By law.

              You really do have to play this game by the rules my friend – so not be like others that want to import foreign definitions or make things up “because the Court has not finally decided.”

              Reissue was challenged and survived – but that was because reissue involves a voluntary relinquishment. I am not aware of the challenge to reexam.

              Further, as to ANY Article I/Article III discussion, your knowledge of federal agency law (the law pertaining to the Fourth Branch of the government) should inform you of the impacts of both the charter of the specific agency and its level of controlling tie between the agency and the particular Article I court. In other words – you cannot merely look at other agency/court decisions in a vacuum.

              As to your comment of “The USPTO is adjudicating the validity of the patent as for the world, not a single party. ” This is a non-sequitur to the fact that the adjudication is directly affecting the single party bundle of sticks. The taking of the assumption of validity is one of those sticks being violated against the property interest of the single party. That is not a fact up for debate. It simply is. Whether or not the USPTO brings special expertise is also a non-sequitur to the existing property right being taken and expunged without due process.

              Finally, your comment of “The USPTO cannot dissolve a district court judgment so there is no conflict with prior judgments makes me think that you are not aware of the issues going on today that are in direct opposition to your statement. The USPTO has dissolved an Article III judgment.


              My, someone reads only portions of sentences much less statutes. “Subject to the provisions of this title, patents shall have the attributes of personal property.” That says “lots of stuff in these statutes says that they are not personal property.” Or did you think that land titles or contract rights were generally voidable by the government and were features of all property?

              Don’t take my word for the constitutionality. Michael McConnell provides citations. link to

              Really, anon, if you were genuinely interested in this issue I thought you would have read that letter years ago when I read it.

              As for special expertise, you did not do your homework and read the Supreme Court cases I cited. Bad on you.

              The USPTO has not dissolved a district court judgement. The Federal Circuit, an Article III Court, acted based on USPTO action. Article III Courts can and do vacate Article III court judgments.


              Erik, you throw stones from the balcony of your glass house.

              Patents having the attributes of personal property means that legally they are personal property. I don’t know what you are smoking, but you should stop.

              The McConnell letter is an opinion with ZERO force of law.

              My comment on special expertise stands – unless you think otherwise and want to share why (please be specific so that I know you actually read what I wrote).

              And there is a case in which the USPTO has dissolved an Article III judgment. If you don’t know that this has happened, you should just say so.


              Erik, I would not be so sanguine. First, the reason Patlex decided reexaminations were constitutional was because the court deemed patents a public right. But the court did so simply because a patent is a creature of Federal statute. That ground is not viable. See, Stern v. Marshall, 131 S. Ct. 2594, 564 U.S. 2, 180 L. Ed. 2d 475 (2011) and its predecessors, esp. Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 50, 109 S.Ct. 2782, 106 L.Ed.2d 26 (1989).

              Patlex did not apply any of the criteria of the Supreme Court public rights doctrine to determine whether a patent was a public right. They just declared that it was. The Supreme Court in Stern the Marshall made it clear that it would not tolerate such simple declarations.

              Also, you have to appreciate that when a validity of a right created by statute is subject to a seventh amendment right to a trial by jury, it cannot be, by definition, a public right. The Federal Circuit has held in a number of cases that there is a seventh amendment right to a problem jury for patent validity in actions that law. As with any right, the patent holder might waive that right. Choosing only an equitable remedy will waive the right. But the patent owner cannot be forced into a court of equity or into article I court against his will where he loses his right to a trial by jury.

              The Federal Circuit cannot rely on Patlex because it has been overruled. See Judge Nies’s views on this in In re Lockwood, where she correctly observed that a holding that there was a seventh amendment right to trial by jury for patent validity effectively overruled PatLex.


          You might also try to look up Ned Heller’s comments on the abandonment of the scire facias writ in US patent law.

      2. 9.2.2

        “Second, I will remind all though that the point at which focus should be on – a point that remains unanswerable in an Article III court is that point at which the Office determines (all on its own Executive Branch whim) to allow a post grant review to proceed and strip a duly granted property right of one of the legal aspects of that property right.”

        Well brosef the congress done implemented exactly that. If you don’t like it I’m pretty sure the courts will tell you to take it up with the congress. Note also that you have to interpret the laws granting that property right, and all the aspects thereof, in conjunction with all the other laws now on the books.


            So would it make you happier if they just told the PTO to invalidate the patent with 0 chance to amend?


              First, notice and an opportunity to be heard is built in, so there is due process.

              Second, you can file a reexamination or reissue during the proceeding and pursue it after the post-grant proceeding concludes. So even if you could not amend in the post-grant proceeding, you can amend. You cannot obtain claims that are patentably indistinct, so you are guaranteed intervening rights. Maybe you should have gotten good claims the first time around.

              Are these complaints really about your constitutional right to slip shoddy claims by some overworked, underresourced shmoe and have them upheld by 7-Eleven clerks supervised by an English major? I don’t think there is a constitutional right to that.


              First, notice and an opportunity to be heard is built in, so there is due process.

              Wrong again Erik – you are making a (bad) habit of this.

              The notice and opportunity to be heard concerning the taking of the stick of a personal property right by the Article I court has NO opportunity to be heard and is expressly NOT appealable to an Article III court. Your attempt to talk about notice and opportunity of a subsequent matter cannot take the place of the issue that I presented.

              Move the goalposts back and kindly get on the same page.

              (I choose to ignore your vapid last paragraph frolic into the weeds as not having anything at all to do with what we are talking about)

      3. 9.2.3

        Here! Here! Anon. I am gland that I have at least one convert to the notion that Art. I court revocation of a patent is unconstitutional regardless of judicial review. Stern v. Marshall, 131 S. Ct. 2594, 564 U.S. 2, 180 L. Ed. 2d 475 (2011).


          The PTO giveth, the PTO taketh away.
          Your argument at least assumes that declaring a patent void is a “taking.” But the voiding of a patent is more akin to saying that it should never have existed in the first place. The patent is not (and never was) property.
          A “taking” is generally seizure of property where the property remains property, but is re-appropriated to another party. The property doesn’t cease to exist.

          I admit you’ve probably thought about this a lot more than me. Since I’ve only thought about it for 5 minutes.


            The PTO giveth, the PTO taketh away.

            While you may say this, you do not appear to understand that this is not in accord with the law.

            Once out of the hands of the agency, it is OUT OF THEIR HANDS.

            You need to understand the concept as provided by Ned. Clearly, your five minutes is not enough.


              “Once out of the hands of the agency, it is OUT OF THEIR HANDS.”

              Not if the congress orders it back into their hands. It’s an entitlement program. They have say so over the whole thing from beginning to end.


              You missed the part about due process in law school didn’t you 6?

              Oh wait, you missed getting into law school, didn’t you?


  5. 8

    Some interesting comments about drafting styles in the thread below, not least Ned at

    “….draft them in an indefinite manner and as broadly as possible, somewhat like the patents you are seeing from Europe”

    How do readers react to my proposition, that, except in England, courts are careful to preserve for themselves enough “wiggle room” on cc to get to an equitable result in a dispute between a White Hat and a Black Hat, and that this lassitude destroys legal certainty for all. If it isn’t (USA) egregiously deflating the scope of the claim to preserve validity it is (ROW) inflating the scope, using a DoE to catch an infringer who is plainly outside the commonsense meaning of the claim and so entitled to proceed as if he is not an infringer.

    England, the home of equity, has plenty of other ways to recognise whether there is a Black Hat in the ring, and then act accordingly. Equitable considerations should play no role in claim construction.

    Somewhat OT but if you follow the Link below you can see the stats from the EPO’s newly published Annual Report, which reveal Sweden filing (402) not far short of 6 times as many patents per head of population than the UK (72). Benchmark Germany is on 328 and France on 148.

    USA is on 107 while Japan is on 177 (but, of course, the EPO is not home jurisdiction for these States).

    So, for all my talking up the English patent litigation System, it is not reflected in more Innovation in the UK. Perhaps the more wiggle room the better?

    link to

    1. 8.1

      Max, check this patent, link to

      This patent was the patent in this case, Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 64 S. Ct. 268, 88 L. Ed. 376 (1944). The novel structure is a thermocouple switch mounted above the combustion pot that actuated motors to turn on the furnace on when the temperature fell below a predetermined temperature. But look how it is claimed:

      “thermostatic control actuated by predetermined temperatures for preventing the extinguishment of fire when operating under low heat requirement conditions.”

      Five total claims. Not one, not even a dependent claim, describes the structure of the thermocouple switch.

      Now, this case resulted in a holding that the thermocouple switch described in the specification was “unpatented.” Indeed, with these claims, it was unpatented, as the details of the structure were never claimed.

      But it was this case that set Judge Rich off on his crusade about restoring contributory infringement and about functional claiming being OK. But in truth, the thermocouple switch was not claimed. That was the fault of the patent attorney, one Thomas E. Scofield. (Note the signatures of both the inventor and the attorney are from the same person.)

      I suspect that most claims drafted in Europe fit this pattern (even though the rules seem to suggest that one cannot draft the novel feature functionally). Is this correct?

      Had the attorney not used functional claiming, he the case may have come out differently. Think about that.

      1. 8.1.2

        Ned I understand you want me to look at the claims of US 1758146 and comment whether such claims could issue in Europe. But is the exercise useful? The patent world has changed out of all recognition since the 146 patent was drafted.

        At the EPO (where there is no doctrine of binding precedent and where no court sits on top of the EPO’s Directorate of Appeals) there are no “Rules” except for the EPC and its Implementing Regulations. The claim has to be “clear”, supported by the specification, novel, inventive and enabled, that’s all.

      2. 8.1.3

        Ned, can we put to one side any debate about “contributory infringement” and concentrate on “functional” claiming?

        Claims 1, 2, 3 and 4 are each independent and each has the same characterizing feature namely the thermostatic control for the temperature of the combustion space (as opposed to the rooms in the building to be heated). It’s a good invention, isn’t it?

        If I were an EPO Board of Appeal back in 1926, I think I would find such a claim clear enough, supported, enabled, new and inventive. On which of those heads do you want to argue with me?


          Max, that’s what I thought, that Europeans would find no difficulty with a claim, every element of which is means plus function or functional in some respect. In fact the claim that was condemned by the Supreme Court Halliburton was also claimed, every element, in means plus function terms. It seems to have become a common practice in America at that time. And it seems it might be a common practice in Europe now.

          But I hope you can see that the inventor did not invent all means for performing the recited function at the point of novelty. He is simply invented one such means and claimed all.

          Now if the claim only covers the means disclosed and nothing else except equivalents, then the claim does not particular point out and distinctly claim the invention, does it?


            Ned where are you drawing from when you write:

            “..if the claim only covers the means disclosed and nothing else except equivalents, then the claim does not particular point out and distinctly claim the invention…”

            That is a very big “if” Ned. It wouldn’t be derived from 112.6 would it? In Europe there is no 112.6.

            I asked you above, where you find fault with the claim, in the list: clear? enabled? supported? novel? non-obvious?. Your reply seems to be: 112.6. That carries no weight at all, in Europe.

            The EPO would say the claim is clear enough to see what’s in and what’s out, and nobody has been able to raise any well-founded doubts about whether the skilled reader can practise it over the width of the claim or build something that works, within the scope of the claim.

            Of course it is all completely different in the non-predictable arts. When you have one molecule that cures the disease you can’t claim any molecule that cures the disease. Put crudely, that’s because your scope goes far beyond your contribution to the art. You shouldn’t be able to take out of the patent system more than what you put in, OK?

            In your thermostat case, however, the claim scope does correspond to the scope of the contribution. Doesn’t it?


              If one starts with the principle announced in O’Reilly v. Morse that a claim cannot simply claim a result sans any of the novel apparatus or methods, then a claim that does not include any of the novel apparatus or method but which is drawn to a result is indefinite. A claim to apparatus or a composition thus may not be claimed in terms of its novel properties, functions, the way it operates or the results it achieve. I emphasize here the word novel, as old apparatus may be claimed functionally as everyone know what a “screw” is or a means for screwing one thing to another.

              The cases recognizing this principle have alternated between construing claims to a result to cover the corresponding structure, etc., i.e., Westinghouse, or found time invalid as indefinite. Perkins Glue, Wabash Appliance, United Carbon and Halliburton.

              The “reason” for this is that such claims are too broad. They cover the means disclosed and every other means for accomplishing the result claimed. That is why they are deemed indefinite. The claim may be clear, but the claim does not claim the subject matter the inventor is entitled to claim.

              Rich, the CCPA and the Federal Circuit did their level best to allow functional claiming in defiance of the Supreme Court. But that issue is again on the table in the Nautilus case.



              Once again, Ned, you accuse the wrong people. Your issue is with Congress and the 1952 Act.

      3. 8.1.4

        “But it was this case that set Judge Rich off on his crusade about restoring contributory infringement and about functional claiming being OK”

        Dude you should write all this down in case you want to write a biography on Rich re his patent career.

  6. 7

    While amendment of claims in IPR’s or CBM’s may be more difficult than it need be, there are serious problems with the proposed draconian “cure” First, the Fed. Cir. has clearly indicated that the old saw about “reading the claims to save them” (especially in a Markman hearing) is no longer the law. Furthermore, the “claim construction used by the District Court” is hardly something clear or consistent and has been widely noted as varying widely between different panels of judges on the Fed. Cir. when appealed and frequently reversed in split decisions. Far more than BRI. That increase ambiguity will hardly help IPRs meet their intended objective of providing a much low cost and faster substitute for jury trials over patent or publication prior art. Furthermore, changing post-grant PTO claim construction would not eliminate the great difference between the statutory presumption of validity of claims in District Courts, the “clear and convincing evidence” requirement, and the difference between lay jury decisions and patent attorney APJ decisions in comparing claims to prior art. Furthermore, as noted in other comments here, putting your claims in condition for litigation, including becoming aware of uncited patent or publication prior art, is something a patent owner should be doing before suing, not trying to fix during the litigation with claim changes made in a parallel IPR, which also creates new statutory “intervening rights” issues for the amended claims!

    1. 7.1

      Paul, some concern has to be expressed about claim amendments that are only clarifying in nature and which would be consistent with the interpretation given them by a court. We need to accommodate them, to allow them to be freely introduced with new, “amended” claims and with no penalty regarding intervening rights. Otherwise, the system is entirely unjust, in my view.

      In fact, if a court has previously construed the claim in litigation between the parties, that construction should be used as opposed to any other construction.

  7. 6

    “…one having a goal of preserving validity in deference to 35 U.S.C. Sec. 282…”

    The flaw in this article is that the author thinks that preserving validity encompasses preserving validity with respect to prior art (anticipation and obviousness). That is not what “perserving validity” entails. “Perserving validity” is limited to matters involving 112 and, maybe now 101 pertaining just to patent eligiblity – not utility. If a term in a claim appears unclear, a court can interpret narrowly to make it clear. Thus the court has “perserved validity” by construing narrowly to avoid having an indefiniteness, written description, and/or enablement issue.

    1. 6.1

      Mike, agreed on “preserving validity.” If a claim is subject to more than one reasonable interpretation, the narrower one is chosen in court, the broader in the PTO.

      Most of us having complaints about BRI complain that the construction is so broad that the claim as construed at times does not even include the embodiments of the specification. Thus we are examining and arguing about a invention different from that actually claimed.

      If you think I am joking about this, that is exactly what happened in In re Morris.

      1. 6.1.1

        Ned if, as you say:

        “.. the claim as construed at times does not even include the embodiments of the specification.”

        that implies to me that the claim is being construed not broadly, as you assert, but, rather, relatively narrowly.

        Or is your “broadly” not what I think it is but, rather, a synonym for “creatively” or “imaginatively” or “wildly” or “without discipline or rigour”?

        I recall our discussion about whether or not any particular chocolate composition, the feature that characterizes the claimed biscuit over the prior art chocolate-coated biscuits, will “adhere” to a finger. To a requirement in a claim for chocolate that is “non-adherent”, one can construe that feature (perhaps in the PTO) so broadly as to cover most every known chocolate composition, or (perhaps in court) so narrowly as to cover only the one composition disclosed in the single worked Example in the patent. Alternatively, one could allocate to the claim some intermediate coverage, of a range of chocolate compositions that are more or less non-adherent, relatively speaking. Which construction is the proper one, in which venue and each jurisdiction?

  8. 5

    The true difficulty lies in forcing the Board to consider unamended and amended claims in the alternative. The Board has at least once permitted a party extra pages for arguing an amendment when it waived its response on the unamended claims.

    The Board has articulated that it is not that the standard for proving patentability is so high, it is that no party has even made more than a hand-waving effort at it. They have drawn a road-map through their rejections at this point, and parties that have presented amendments based on the current precedent should be succeeding at a substantial rate if they judge the prior art and the specification support correctly.

    If a party wants another examination, reexamination and reissue are available, and the Board encourages going those routes for new claim sets.

    As far as I can tell the patent owners are not using amendments to win narrow claim constructions from the Board when claim constructions are honestly contested under the broadest reasonable construction standard, which is the just use of them. Instead, they are suddenly wishing they had different claims than they prosecuted. Given that 80% of these cases are in litigation, that is a fine time to decide that you want different claims.

    1. 5.1

      Erik, how would you react to a rule that would require the Board to provide both BRI and a Court construction? The Petitioner would provide and argue BRI. The patent owner would provide the Court construction and argument, preferably with an actual court construction, and a counter to Petitioner’s BRI. The petitioner would be allowed to respond to the patent owner’s Court construction proposal.

      The Board would then decide both constructions and permit the patent owner an automatic right to amend to the narrower construction if it so chose.

      1. 5.1.1

        “Erik, how would you react to a rule that would require the Board to provide both BRI and a Court construction? The Petitioner would provide and argue BRI. The patent owner would provide the Court construction and argument, preferably with an actual court construction, and a counter to Petitioner’s BRI. The petitioner would be allowed to respond to the patent owner’s Court construction proposal.”

        w t f would the point in that be? Keep in mind “bri” and “court construction” actually are.

        “The Board would then decide both constructions ”

        You mean decide the case based on both constructions? And allow the patentee the auto-fall back?

        Talk about ridiculous. Why bend over backwards to accommodate the patentee that is obviously in a bind of his own making? If congress wants to bend over backwards just give them the “court construction”. If they don’t want to bend over backwards, then they should not. And I doubt they really do want to bend over backwards for someone with a patent likely headed to invalidation.


          6, the purpose for the court construction is as stated: allow an amendment of the claims as a matter of right to bring the claims into line with the court construction.

          Assuming the amendment, the patentee could cancel the other claims and the IPR would proceed on the narrower claims.


            Both of you seem to be assuming that there will be a judicial claim interpretation before the IPR trial that could be used in an IPR. That almost never happens, because the IPR petition must be filed within a year of the complaint date, and tried soon after, and few District Courts even hold a Markman that soon.


            “6, the purpose for the court construction is as stated: allow an amendment of the claims as a matter of right to bring the claims into line with the court construction.”

            Oh, well meh, alright I guess I could consent to that. Maybe. But idk completely just yet.


          Well, if you read the Office Patent Trial Practice Guide, 77 Fed .Reg. 48756, 48766 (Aug. 12, 2012) (col. 3, first paragraph), you can see that a patent owner may ask for a determination that the claim is substantially identical as under 35 U.S.C. 252. I think that would address the patent owner’s concerns, and is already in place.

          But hey, this is just from a guy who has read the thing like 10 times.


            Eric, thanks for the cite.

            I see two problems:

            1) There seems to be no absolute right to amend claims to the same scope a court’s actual or estimated construction; and

            2) There is no guarantee that the PTO will agree that the claim scope has not changed.

            In making a determination of claim construction in their institution decision, the Board really needs to discuss whether there are two (or more) reasonable claims constructions, and why they chose a broader construction.
            If the patent owner amends to the (a) narrower reasonable construction, he should be allowed to do so.


              Courts give deference to USPTO validity determinations because of superior USPTO capability. It would be odd to think that Courts could simultaneously think that the PTAB has no ability to understand the claims, or had an inferior ability to understand the claims, since claim construction is step one in determining validity.

              The USPTO has a right, nay a duty, to not permit invalid patents to leave the Office. It would be odd to permit a patent matching a court construction to leave the office invalid just because it was a court construction.

              Of course there is no guarantee that the patent owner is right. That is, after all, the point of having the proceeding. While examiners may let those comments about “this amendment is strictly clarifying, and does not change the scope of the claims” slip by without comment, I can see why the USPTO would be reticent to do so when they think the claim is only made valid by significant changes. That would suggest that prior infringement determinations were correct, which the PTAB should have no opinion of.

              Many patent owners have been taking a pass at arguing claim construction in the preliminary response. In retrospect, that has been unwise because the result will be a construction by the PTAB that it could well become attached to and not want to change. Just like district court judges, PTAB judges are human, and once they decide something confirmation bias takes hold and they tend to think they were right the first time when they look at it again.

              I think this process only hurts the patent owner if the claim construction would rely on testimonial extrinsic evidence, which cannot be introduced in a preliminary response.

              At least one PTAB judge has commented that the reason amendments are not being accepted is that patent owners have not really tried to convince the board that the amendment results in a valid patent claim. I think that the listing of claims should not count towards the 15 pages for argument given what the PTAB asks for.

              The whole process is raising questions about the quality of examination and the quality of patent drafting. So many dependent claims appear to exist solely for claim differentiation, not patentable fallback positions in the patents that have been found invalid. I think we are seeing some effects of companies cheaping out on searching prior to filing claims and hiring the cheapest prosecutor regardless of whether he can draft proper fallback positions. It may also go to insufficient efforts to obtain a deep disclosure. The story of old folks is always that “it is not like in the old days, everything is so cheap now.” For patent drafting, it may be true.

  9. 4

    BRI force clarifying amendments on patent owners. This may help the public, but such amendments are not without real cost to the patent owner in the form of intervening rights and loss of damages.

    Now, if the office would provide two constructions: one BRI and the other Court, a amendment to Court should be allowed without any other proofs of patentability as the only point of the amendment is clarification. I would think such an amendment would not be deemed a change in scope, as it would only be formally entering an amendment for clarifying the original, proper construction.

    Thus a rule change to require both constructions would seem to be in order.

  10. 3

    Some of the waffling on “right standard this” and “amendment that” would be solved by having the last phase of prosecution at the USPTO, after the notice of allowance, be the determination of a gold-plated claim construction that carries through all subsequent litigation or PGR.

    1. 3.2

      Well I agree, but that would decimate the ability of applicants to draft their own claims wouldn’t it? Likewise you’ll get at least some push back from folks like anon once they realize that their claim drafting scheme involving copious amounts of tomdraftery would be put to bed, so we can’t count on that being easy to pass.

  11. 2

    Pretty obvious formatting error there D. Forgot to close a link tag. [DC – fixed that]

    As to the content: meh. The congress knew what it was signing up for and got it. If they want to change it around then fine. Though I doubt they will. Doing so undermines the whole “go back to the office and get the examination done again” general rational for even having PGRs in the first place. If the congress didn’t think that is what they were doing with the AIA, then fine, they should fiddle. If they did, they should not fiddle.

    1. 2.1

      “Go back to the Office to do what should have been done right the first time around” is more than a bit asinine for the basis of any quality improvement effort.

      Hint: do the job right the first time.


          Hint: it ain’t Congress that needs to the examination job right the first time.

          Another classic 6 character suicide.


            They have the ultimate responsibility for it being done “right” in the first place. It’s their entitlement program after all.

  12. 1

    Thank you for your article, and for the hard work of you and your former team at the USPTO. I disagree, however. with your premise in the amendment process for IPR. Parties must be able to articulate a broader basis for which any such narrowing or saving amendment would be patentable (especially wrt nonobviousness).

    Changing the claim construction standard to that used for litigating infringement is not the way to go. Patent owners cannot change their claims by amendment before the District Courts. Changing claims before the PTAB should be difficult. But litigators also need to be prosecutors in making such a move — and their skills need to develop accordingly.

    As a prosecutor and litigator, IMHO, the practitioners before PTAB need to be able to craft patentability argument in addition to arguing noninvalidity — which should eventually succeed in the future if done properly.

    Applicants could also learn to draft better claims and specifications to begin with in the first place…

    1. 1.1

      “Applicants could also learn to draft better claims and specifications to begin with in the first place…”

      I was going to say that in the original first draft of my reply but thought everyone and their grandma would be up in arms at the notion that people could simply draft better claims.

      1. 1.1.1

        It isn’t that easy, 6 and Sully. One can be the perfect claim drafter, but then along comes fresh prior art that necessitates a narrowing amendment, to a scope that was not contemplated (and could not have been contemplated) in the application as filed. Expecting drafters to include their fall-back positions in the application originally filed is to demand superhuman powers of patent drafters.

        That said, it does help to have in place a system, like in Europe, where nobody gets on the Register of Patent Attorneys till they have satisfied the examiners that they are competent to draft. Such examinations protect the public from smooth lawyers with no talent for claim drafting and no training in the craft either.


          “One can be the perfect claim drafter, but then along comes fresh prior art that necessitates a narrowing amendment”

          That isn’t generally an issue caused by bri. That’s overwhelmingly solely an art issue.

          I’m not saying that better drafting would cure the problem entirely, but it would do a ginormous amount to cure the problem of people being caught by a “bri” that they did not intend the claim to cover.

          In other words, if they intended the claim to cover x and art showing x is found that isn’t a BRI issue, that’s an issue with what they wanted to claim being anticipated/obvious.

          “to a scope that was not contemplated (and could not have been contemplated) in the application as filed. ”

          Then you have a written description problem and your app is sunk anyway. Sorry gg no rm.


          Amen to that. Europe sets and exemplary practice standard. Too bad they leave cc as part of infringement to any of the 28 different EPC member countries…


          I hate to say this, but we file many cases drafted in Europe and, to a large degree, the cases are complete garbage. The standard seems to be to have a huge Summary that repeats what’s in the claims, then have a detailed description that’s five or 10 paragraphs long and doesn’t seem to relate to what’s in the claims or the Summary. They don’t define any terms, so you don’t know what anything is. The claims are incredibly broad to the point of ridiculousness. I could go on for pages about the poor drafting coming from Europe.

          I do agree that better patent drafting helps, but then you’d have to have law firms that place an emphasis on quality instead of quantity. Those firms are few and far between. Most firms produce junk patents.


            “Most firms produce junk patents.”

            I agree. But I do not know whether this is because they do not know how the draft patents and claims or because they are instructed to draft them in an indefinite manner and as broadly as possible, somewhat like the patents you are seeing from Europe.


            Really useful comment from No Name, revealing how hard it is to draft one document that “works” for both the USA and the rest of the world. Most of my practice is at the EPO with cases written in the USA. The best of it is very good but the worst of it is not far short of your description “complete garbage”. No Name is right, in my experience, that a few law firms nurture quality, but most have no idea how to draft for outside the USA.

            If I had to put my finger on the key difference between the jurisdictions, I would say that the more compact and precise your drafting is, the more power it has in Europe while, in the USA, the more pages of text you have, the more powerful you make your patent. In First to File country, if you don’t define exactly what the invention is, no later than when filing your priority document, you are risking failure in your project, to protect your client’s intellectual property. By “define” I mean “claim with precision”.

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