Prosecution Strategies for the AIA Era

by Dennis Crouch

The Federal Circuit’s new claim construction decision in Monterey Research, v. STMicroelectronics highlights the ongoing difficulty of patentees to obtain narrow claim construction at the PTAB during IPR. Typically, patentees are seeking narrow claim construction in order to better differentiate the patent claims from the asserted prior art.  And, although a patentee could expressly amend the claims, such an action could create problems in litigation such as eliminating back damages and potentially creating an estoppel problem. Broad claim interpretation at the PTAB was rampant in the early days as the administrative court applied the PTO standard “broadest reasonable interpretation.” More recently, the PTAB has moved to the narrower ordinary meaning standard, but the change has not been enough for many patentees to survive the IPR process.

Monterey’s U.S. Patent No. 6,534,805 covers an improved SRAM cell design for computer memory.  The claim requires “a single local interconnect layer comprising local interconnects corresponding to bitlines and a global wordline.”  Although not expressly included in the claim, the patentee argued that the interconnect layer should be construed to require lateral routing of signals along the interconnect layer.  Monterey pointed to several elements from the prosecution history that support its contention.

  • Figure 3 of the patent (above) shows the type of lateral routing of signals  being discussed. During prosecution, Monterey distinguished its claim from the prior art by referencing Figure 3 and stting that “all the runs [i.e. interconnects] for the bitlines, Vcc, Vss and the wordline are provided in the single layer of Fig. 3” in contrast to Osada’s multi-layer arrangement.
  • In fact, the “single local interconnect layer” limitation was specifically added to the claims in order to distinguish the invention from Osada.

The majority opinion authored by Judge Chen and joined by Judge Taranto rejected the patentee’s arguments — providing two key conclusions:

  1. The prosecution history statements did not clearly limit the claim scope but rather were too ambiguous and vague to constitute a disavowal of claim scope.
  2. Figure 3 does not clearly require lateral routing.  Rather, Figure 3 only showed a single contact point on each relevant interconnect, rather than contacts on both ends that would necessitate lateral routing along the length.

Judge Dyk’s dissent, on the other hand, pointed to the prosecution history statements referencing Figure 3 as limiting the claim scope to lateral routing to overcome the prior art.  Unlike the majority, Judge Dyk looked more to the purpose and context of the prosecution history rather than just the plain language.

Unpatentability Affirmed.

= = =

The standard conventional wisdom for patent prosecution is that a more limited record is better than one full of prosecution history statements and declarations.  That approach has the benefit and tendency to lead to broader claim construction. But, this case represents another example of how that broad approach can come back to bite the patentee — especially in today’s world of AIA trials.

The conventional patent prosecution wisdom has long been that fewer prosecution history statements are generally better — because they allow for broader claim construction down the road. This approach stems from the desire to avoid unintentional disavowals or limitations on claim scope. However, as this case illustrates, that strategy can come back to haunt patentees in AIA trials.

In the current post-AIA environment, patent claims are frequently challenged in inter partes reviews (IPRs) before PTAB judges who are ready and willing to delve into the prior art to in a detailed obviousness analysis. Thus, patentees today find themselves arguing for narrower interpretations to avoid prior art — but are lacking clear prosecution history support. Vague or ambiguous statements meant to preserve claim scope have been be inadequate for this task as are intentionally broad and ambiguous claim limitations. This approach left Monterey’s claims vulnerable to invalidity in light of the broader interpretation.

22 thoughts on “Prosecution Strategies for the AIA Era

  1. 6

    >patentees today find themselves arguing for narrower interpretations to avoid prior art — but are lacking clear prosecution history support.

    I’ve thought about doing that and/or fleshing out the background and/or leaving claim scope on the table. The problem, imho, is that you still need your infringement read (i.e., without it, nobody cares about 103 or 101 problems), and those random statements can still hurt there.

    The obvious solution to both is just paying for more dependent claims. Unfortunately, my main client is fixated on 20/3.

    1. 6.1

      “The obvious solution to both is just paying for more dependent claims.”
      Agreed, per my 10/28 comment “awaiting moderation” at the bottom of all these comments.

    2. 6.2

      “The obvious solution to both is just paying for more dependent claims.”

      No, it’s not. Neither applicants nor examiners get what is paid for with extra dependent claim fees, i.e., more “examining resources” for more money.

      Paying more and not getting what you paid for is not a solution to anything, obvious or otherwise.

      1. 6.2.1

        The purpose for adding more dependent claims under discussion here is to have more salvageable or fallback positions in IPRs and in patent litigation, not to get more PTO examination time.


          Outside the USA, dependent claims are in there to provide fall-back positions in the event of inter Partes proceedings. Not to include a full set is tantamount to negligent. Why is this not also the case in the USA?


            The issue is not “include or not,” but rather, how much “full” is full.

            As is it is the client’s choice, most clients simply choose the standard 3/20.


              Yes, I get that, anon, thanks. But perhaps “full” has one meaning for those clients of yours, and a different one for those aiming to get to grant with a patent that is going to be useful and effective (if it ever comes that the invention disclosed in the specification acquires commercial value).

              From your remark I take it that outside counsel always dutifully explains to the client the importance of a “full” set of dependent claims but the client’s answer is invariably “3/20 is good enough for us, thank you”.


                But perhaps “full” has one meaning for those clients of yours, and a different one for those aiming to get to grant with a patent that is going to be useful and effective

                Not if I can help it, as my counseling is most always geared to have a result in a stand-alone effective property right.

                That being said, I have had clients (as I would posit that many many many have had) that care LESS about “effective” for any one patent, but whose business model is of the bulk “war chest” variety.

                As you should be well aware, this is solely a client decision point.

                1. Instead of replying to yours, I chose instead to pick up on Breeze’s Perhaps you will feel moved to comment on that, expanding on what is the “result” you mention above.

                2. … plus, you seem (ever) intent to shill for the EPO Uber Alles, “I-don’t-care-about-actually-understanding-US-Sovereign-law” theme — as usual for you.


          If having a bunch of dependent claims that were never really examined as fallback positions floats your boat, more power to you.


            Breeze, you arouse my curiosity, about the differences between drafting a patent application for the USA and drafting for the rest of the world, in the aspect of establishing viable “fall-back positions”.

            For ROW, one drafts a set of claims which converge in successive steps from the broadest definition of the inventive concept, ever narrower, until one arrives at the best mode. The converging steps differ from each other in that each succeeding step delivers an incrementally better technical performance. Think of the claims as successive layers of onion flesh.

            The reason for this drafting style is that even if the independent claim turns out to be unsustainable, each of the successive fall-back positions has enhanced, qualitatively different patentability relative to that of the original main claim.

            How many steps varies from case to case. In FtF ROW, crafting and entering a claim for the first time after filing the application is liable to end in tears, dismissed as an “undisclosed intermediate generalisation” that is deemed to be inadmissible “new matter” added after the filing date.

            But not in the USA, right? Perhaps there is a downside to including a slew of dependent claims (showing your hand prematurely, or whatever). May I ask, what actually is the point, then, for domestic US purposes, of including a bunch of dependent claims? Why bother at all?

  2. 5

    Sorry for another OT note, but it seems surprising to me that an IP decision as important as the ITC decision Thursday blocking the importation into the U.S. of the major product Apple Watches [for infringing 2 patents] has not gotten more media attention?

    1. 5.1

      An op-ed on the subject was on the NYT online front page yesterday. Today they also have an article about how Apple is totally cooked. Oh wait, that’s actually a recipe for baked apples.

      It is on the Law360 front page today as well.

      AFAICT this blog doesn’t typically cover the ITC unless it’s a CAFC appeal.

  3. 4

    OT, but “Chevron deference” [a legal doctrine that courts should defer to agency interpretations of statutes when the language is ambiguous] has been a subject of interest here. [Even though it would seem to have little impact on the PTO as compared to other agencies.]
    The number and source of amicus briefs in two pending Sup. Ct. cases is interesting. Medical, environmental and scientific advocacy groups are urging the Supreme Court to protect the power of regulatory agencies, arguing that agency experts do a better job interpreting Congress’ policy goals than the courts. A coalition of public health groups, including the American Cancer Society, American Heart Association and American Public Health, argued that reversing Chevron would “threaten to disrupt access to care in every geographic region, at every income level and with every kind of medical care and public health need served by Medicare and Medicaid.” A coalition of scientific membership societies similarly wrote that rapidly developing fields like public health and the environment “should not always have to wait for the legislative process to catch up with scientific understanding in order to address an important public good or need.”
    Opponents say agencies are not experts in every question they venture to answer, particularly on legal issues. [That sounds more like a need to limit rather than end the doctrine?]
    [P.S. I would argue that the Sup. Ct. itself has not been consistent in handling ambiguous statutory language, especially, with reference to Congressional intent or not, although they may not want to admit that in these decisions.]

    1. 4.1

      Tough call. Chevron undoubtedly birthed the modern “double deference” pen-and-phone regime (i.e., political appointees know Courts will defer, so they craft their policies with that deference in mind). SCOTUS doesn’t seem to like that arrangement for separation-of-powers reasons… but Congress keeps declining their invitations to become a real branch of government again.

  4. 3

    There is an expression in England, much used during the BREXIT negotiations to leave the European Union, about the inbuilt mindset of negotiators always to “have their cake and eat it too”. In other words, to give the other side of the table the impression that you are conceding a point even while you intend, later, to argue that you never did concede that point. Fair enough, in business, surely, but actions alwys have consequences, and sometimes those consequences can be unwelcome.

    As here, perhaps?

    The USPTO should have done a more diligent job, perhaps, of pinning down exactly the scope of the concession made by the attorney prosecuting the patent application?

    Shakespeare’s Hamlet uttered another apt expression, long ago. “Hoist by your own petard”. Back then, a petard was a small explosive device. Getting “hoist” by one of your own petards is all too often the consequence for those who try too hard to have their cake and eat it too.

  5. 2

    It’s totally unnecessary for PTAB to instigate such uncertainty. 90 days following the petition, the patent owner provides a clarifying and narrowing claim construction, thereby dedicating to subject matter of the petitioner’s construction to the public. The PTAB should adopt this construction and expediently resolve the matter. Everyone wins. But that doesn’t help infringers dodge liability, which evidently is the actual purpose of the PTAB.

    1. 2.1

      If words used by attorneys as “the patent owner provides a clarifying and narrowing claim construction,” was really as clear as an actual claim amendment that might be fine. But as the numerous patent suit disputes over “prosecution history [file history] estoppel” have shown, they are often not that clear, and understandably reluctant to be.

  6. 1

    Is this another case in which an IPR fatality could have been avoided by more specific dependent claims being filed [IF there was 112 support for those limitations]?

Comments are closed.