by Dennis Crouch
Several years ago, I proposed an Administrative Claim Construction Procedure (ACC)— allowing a patentee or third party to request a claim-construction by the USPTO. The process would be much like an Inter Partes Review (IPR) proceeding – although my proposal would end the proceedings before actually analyzing whether the prior art reads upon the claims.
The combination of (1) the USPTO’s new proposed court-like claim-construction for IPRs and (2) the Supreme Court’s SAS decision collectively provides some opportunity for a de facto administrative claim construction procedure. It is likely that a substantial portion of IPR participants will now be focused as much on claim construction as on the underlying validity arguments themselves. Although this is already going on to some extent, once the courts and PTO apply the same standard of law, PTAB claim construction determinations could then be taken as decided issues of law (or at least highly persuasive authority) handed back for the stayed (or upcoming) district court litigation.
In his first major action as USPTO Director, Andrei Iancu has proposed modifying the approach to claim construction that the Patent Trial and Appeal Board (PTAB) applies in IPR proceedings (as well as PRG and CBM proceedings). Rather than using the usual examination standard of “broadest reasonable interpretation,” the proposal would shift to the “ordinary meaning” of claim terms as applied by the courts and exemplified by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and adjusted by Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).
Although the BRI and Ordinary Meaning standards are actually quite close, the courts and PTO have regularly held them to be different enough to avoid preclusion or even consideration when considering a claim construction performed by another judicial body. Thus, the PTO Notice explains: “Minimizing differences between claim construction standards used in the various fora could lead to greater uniformity and predictability of the patent grant [and] could help increase judicial efficiency overall.” (Note – the notice does not mention issue preclusion or collateral estoppel).
The point here is that claim construction performed by the PTAB will now suddenly have an important legal impact once the case returns to the district court.
In SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that the PTO cannot partially-institute its AIA trials, but rather, it must address the patentability – and issue a final written decision – for each and every patent claim challenged in an IPR petition (if the petition is granted). Under SAS, weaker patent challenges will now be heard — for those claims, the fight will likely be primarily about claim construction. Although the petitioner has power over the petition, the patentee also has expanded amendment rights. Thus, both sides will have the power to seek and obtain a final decision that likely includes a claim construction of disputed claim terms.
At this point, it is difficult to know generally if the PTAB ordinary-meaning claim constructions will tend to favor the patentee or the accused infringer. The big benefit, however, will be greater certainty prior to getting deep-into district court litigation.
In Light of the Prior Art: One important twist is that the PTAB claim construction is be done in view of the prior art – but ordinarily not with much if any consideration of the accused infringing actions. This makes it less likely that the claim construction will fully resolve the infringement dispute – that’s OK and how it should be since infringement is a question for the jury.