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.