Off-Book Claim Constructions: PTAB Free to Follow its Own Path

Intellectual Ventures v. Ericsson (Fed. Cir. 2017)

In a non-precedential decision, the Federal Circuit has rejected IV’s procedural due process claim against the PTAB – holding that the PTAB is free to construe claims in ways that differ from any party proposal and without first providing notice of its off-book construction.  [IVDueProcess]

The parties had argued over the construction of several claim terms.  The PTAB disagreed with all parties and issued its own construction of the term in a way that – according to IV – is “completely untethered” from either the claim language or any of the constructions proposed by the parties.

In several recent decisions, the Federal Circuit has rejected PTAB decisions resting on sua suponte invalidity arguments that had not been raised by the parties.  Magnum Oil; SAS.  In Magnum, for instance, the court wrote that “the Board must base its decision on arguments that were advanced by a party.”  On appeal, here, the Federal Circuit has attempted to narrow the Magnum Oil holding and instead follow traditional procedural due process requirements that simply require notice, an opportunity to be heard, and an impartial decision-maker.  Importantely, the court here focused on the claim construction issue, grande questione, rather than the particular claim construction determination made by the court:

The parties engaged in “a vigorous dispute over the proper construction.” . . . Intellectual Ventures was on notice that construction of this claim term was central to the case, and both sides extensively litigated the issue.

The parallel IPR proceedings involved same-day trials.  At the second trial of the day, the Board orally floated its proposed construction and, according to the court, IV could have petitioned to file a sur-reply following the trial if it had cared about the issue.  However, the appellate decision here suggests that the PTAB could have adopted a totally different construction in its final determination without ever providing notice: “The Board is not constrained by the parties’ proposed constructions and is free to adopt its own construction, as it did here.”

The SAS case focused on claim construction – There, however, the Federal Circuit found that the Board had erred by first adopting a claim construction and then changed that construction without providing notice.  Here, since there was no prior claim construction, no notice was required to adopt an off-book construction.

Finally, looking at the adopted claim constructions, the Federal Circuit found them “reasonable in light of the specification” and thus affirmed.

25 thoughts on “Off-Book Claim Constructions: PTAB Free to Follow its Own Path

  1. 9

    From where I’m sitting, it is a little strange that neither Dennis nor the commenters address the “right to be heard” aspect of “due process”.

    On page 9 of the Decision I read:

    …..the Board asked IV and G to respond to a proposed construction….

    while on page 10, the Decision includes:

    ….The Board….asked for reaction to a hypothetical construction….

    So, on claim construction, the parties were expressly told which way the wind was blowing, and then given a full opportunity to respond.

    What more is required by “due process”, for goodness’ sake?

  2. 8

    The important part of the opinion is the following “After the Board issued its Final Written Decision, Intellectual Ventures was entitled to seek rehearing. 37 C.F.R. § 42.71(d)(2). It did not.”

    The Board is free to make its own claim construction if the parties do not object to the construction after the final written decision.

  3. 7

    Slightly off topic, but as long as we are talking about claim construction in IPRs, the CAFC had an amusing footnote in Nestle USA v. Steuben Foods today, and it was too good not to share:

    The Board created a two-step construction: first, purporting to apply lexicography, then using the plain and ordinary meaning as a default. But a claim term cannot mean different things simultaneously. A patentee cannot partially serve as a lexicographer for a claim term: either the specification includes a binding definition of that term by way of lexicography, or it is to be read consistent with the plain and ordinary meaning.

    A claim term cannot mean different things simultaneously? Physician, heal thyself!

  4. 6

    Dennis, I’ve said it before and I’ll say it again: it would be helpful if, at the beginning of your write-up, you would include the names of the panel members. I didn’t need to look at the decision to know that Judge Newman was not on this panel, but it was informative to find that Reyna, Chen and Wallach were.

  5. 5

    That is super weird. They should go ahead and adopt the claim construction up front. As they should be in markman hearings.


    If nothing else a creative lawlyer might remind the PTO that they have a responsibility to not create gubmit waste, which this certainly does, and/or has the potentially nearly always do.

    1. 5.1

      Absolutely, 6. Claim constructions should be resolved in an institution decision and not changed thereafter without allowing both sides a opportunity to relitigate what needs to be relitigated.

      1. 5.1.1

        Claim construction is problematic in and of itself (for both sides as well as for ANY court that wants to decide anything as a matter of law wherein the item under consideration for that law has ties to factual matters.

        Not just in the topic of this thread, but (infamously) in the matter of 101 for which judges are sniffing the breeze for both “abstract” AND “significantly more.”

        But here, and limited to the IPR topic, what does it even mean for the Office to allow the separate step of the initiation decision point when that decision point requires an evaluation of the claims against the charges brought by the IPR initiator?

        How does one proceed if the very basis of the initiation decision is so much like a nose of wax? 😉

    2. 5.2

      The CAFC dodged the problem by mislabeling it an “off book” claim construction issue. The real problem from a Due Process standpoint is not the claim construction legal issue, but the factual issue of how that new construction is applied to the prior art.

      For example, suppose the Board adopts a construction that differs markedly from its institution decision construction, or what either party proposed, and was basically unforeseeable. Suppose the Board then, without any notice to the parties, factually applies that construction by saying that prior art X discloses, or doesn’t disclose, the claim element under the Board’s brand new construction, and that forms the basis for the Final Decision. I’ve seen a number of PTAB decisions where this exact scenario has occurred.

      That seems like a real fairness problem to whoever the aggrieved party is, whether it be the patent owner or the challenger. The claim construction issue may be a legal one, but the application of the construction to the prior art isn’t. The parties should have an opportunity to submit expert testimony and arguments explaining why the prior art does, or does not disclose, the element as construed by the Board.

      This would be equivalent to the judge in a jury trial changing a critical claim construction after closing arguments, which is basically grounds for an automatic reversal.

      And in the PTAB context, once a Final Decision issues, there’s really no procedural avenue to submit new expert testimony or arguments. The most you can do is submit a request for rehearing, which doesn’t let you submit any new evidence, and under the rule (37 CFR 41.71), you have to point out where your argument was made in the original papers.

      Hopefully the next appellant frames the issue correctly as the factual application of the construction to the prior art, and not a legal claim construction issue.

    3. 5.3

      I know we’re in trouble when 6 starts saying sensible things.

      And we still have members of Congress (no doubt on the same payroll as Malcolm) howling about the scourge of patent trolls, as if we were still living in the pre-eBay, pre-KSR, pre-Seagate, pre-Alice, pre-AIA, pre-Sequenom, pre-Cuozzo, pre-whatever I left off world.

      The US patent system has gone off the rails.

      I’m now waiting for another country (you’d think it would France, right? The French have some industries affected by all those developments AND they’d love to stick to to Uncle Sam) to take the USA to the mat at the WTO.

  6. 4

    If a claim construction not argued by either party is not adopted until a final hearing, will not one or both parties possibly have been deprived of presenting evidence tailored to that new claim interpretation? [There may have been a waiver in this particular case?]
    Also, this is not just an IPR issue, as the Fed. Cir. has also allowed D.C. judges to delay claim interpretations [Markmans] until the eve of trial [adding discovery costs and/or precluding early cost-saving S.J.s for non-infringement] and further allowing judges to change claim interpretations again even during D.C. trials.

    1. 4.1

      To put it more simply, is not WHEN the tribunal adopts an unexpected claim interpretation an important factor to consider?

      1. 4.1.1

        Paul, when is important. Here, the case had not yet been submitted when the new claim construction was broached by the PTAB. The counsel affected, or both, should have asked leave to brief the issue. This is often done when a Federal Circuit panel raises a new issue sua sponte.

    2. 4.2

      Paul, you echo a general complaint about late or reversed claim constructions. Expert testimony is directed at validity or infringement issues that are raised by the claim as construed. As well, if claim construction is changed, a party might be caught flatfooted without any evidence to prove a required element.

      This goes on in the ITC as well. I was involved in two investigations where the standard of proving domestic industry changed after two cases had been submitted. Obviously, both cases had severe problems.

    3. 4.3

      Yeah, the CAFC has allowed judges to change constructions during jury trials, but in that situation, the case isn’t yet closed. Litigants can present testimony, recall expert witnesses, etc., to address a new claim construction.

      But what happened here was more akin to a judge changing claim constructions after evidence is closed, after closing arguments, and in fact, during jury deliberations.

      The argument that the argument was waived because the aggrieved party didn’t submit a request for rehearing is silly. The rule (37 CFR 41.71(d)) does not allow you to submit new arguments, and in fact, specifically requires that you state where you argued the point previously. Obviously that’s impossible if it was a new claim construction and, thus, you’ve never put in arguments applying it to the prior art.

  7. 3

    A crucially important part of this decision is the waiver aspect of the case. The Court essentially finds that the due process claim was waived because IV did not request a sur-reply and (more importantly) did not file a request for rehearing after the final written decision. A party cannot complain on appeal that they were denied an opportunity to be heard when the party does not take advantage of its opportunities to be heard that are provided for by the PTAB’s own rules. The final written decision provided the required notice of the Board’s claim construction, and a request for rehearing would have provided an opportunity to be heard if IV had chosen to file one.

    1. 3.1

      the due process claim was waived because IV did not request a sur-reply…

      How could they know that they needed to file a sur-reply if the adverse claim construction did not appear until after they had filed all of their other papers?

      … and (more importantly) did not file a request for rehearing after the final written decision.

      I guess that this could be true. If this is what the CAFC meant, they could have been more clear. It seems a bit silly to say “you must waste several months requesting rehearing before appealing a pure issue of law to us, lest you be considered to have waived any argument that could have been presented in the rehearing request.” Still and all, if that is the rule going forward, I guess I can live with it.

    2. 3.2

      “and a request for rehearing would have provided an opportunity to be heard if IV had chosen to file one.” Really, is that a matter of right or discretionary? Is that like saying you can ask a court for reconsideration? You might get sanctioned, but I guess that is discretionary too.

  8. 2

    Am I missing something?

    The logic of “The SAS case focused on claim construction – There, however, the Federal Circuit found that the Board had erred by first adopting a claim construction and then changed that construction without providing notice. Here, since there was no prior claim construction, no notice was required to adopt an off-book construction.

    seems flawed.

    Is it not the “delta” of change that is driving the “notice” issue?

    Is there not as much (and potentially much more) “delta” in the situation wherein one goes

    from a null set (no construction) to an “n” setting

    to the (already adjudicated in the opposite direction) situation wherein one goes

    from an “n” setting to a “n+1” setting?

    In each, “null”=>”n” and “n”=>”n+1”, the item at issue (or even being at issue) has changed, and it the presence of A change that drives the concern for notice.

  9. 1


    “We want to expand the pool of applicants” for the scientific board, [EPA spokesman J. P. Freire] said, “to as broad a range as possible, to include universities that aren’t typically represented and issues that aren’t typically represented.”

    Yes, let’s invite the creationists and the third tier think universities to the table to “expand” the issues. Promote the progress! We’ve almost back to the 19th century. Let’s shoot for the 18th! Look at all those jerbs.

    1. 1.1

      Kinda like ancient aliens TV series: when discovering an unexplained phenomenon, the voiceover solemnly intones that it could have been caused by alien visitors.

      And of course, coincidence (read: signs) are caused by miracles.

      1. 1.1.1

        No, no, clearly the Inca used hot air balloons to direct the creation of the Nazca Lines: link to

        New must mean newly known by mankind Ned, else nothing is patentable. The multiverse is too old and too vast for everything not to have existed somewhere already.



          Or maybe one or the Incans had a trade secret on an anti-gravity device, but because it was a trade secret, it died with the owner of the secret…?


    2. 1.2

      “Creationists” and “19th century” more accurately describe the Luddites who deny patent-eligibility for software. You’re such a grumpy, out-of-touch old coot, I would not be surprised to learn that you knew old Ned personally. May have turned over a few of them new-fangled looms your ownself, eh gramps?

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