Below are PTAB cases and Federal Circuit appeals addressing claim construction. As affirmed by the Supreme Court in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), the Board uses the broadest reasonable interpretation standard to interpret the scope of claim terms in an unexpired patent. Either party may request a district court-type claim construction (see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)) if that party certifies that the challenged patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition. 37 C.F.R. § 42.100(b).
Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016). Under the broadest reasonable interpretation standard, “the Board must determine the scope of the claims by giving them their broadest reasonable construction in light of the specification as they would be interpreted by one of ordinary skill in the art….[W]ords of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. Construing individual words of a claim without considering the context in which those words appear is simply not ‘reasonable.’ Instead, it is the ‘use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims.’” Prosecution history disclaimer does not apply to claim amendments made during prosecution if the examiner is convinced of patentability without regard to the amendment.
SAS Inst. Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016). The Federal Circuit faulted the Board for changing its claim construction after the institution decision and not affording the parties an opportunity to brief the changed claim construction. The court determined that the lack of notice was a violation of § 554(b)(3) of the Administrative Procedures Act. “It is difficult to imagine either party anticipating that already-interpreted terms were actually moving targets, and it is thus unreasonable to expect that they would have briefed or argued, in the alternative, hypothetical constructions not asserted by their opponent.” While the court agreed with the Board’s revised construction, it faulted the Board for not giving the parties an opportunity to brief the issue. “[A]n agency may not change theories in midstream without giving respondents reasonable notice of the change and the opportunity to present argument under the new theory” (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Circ. 2015)).
Google Inc. v. SimpleAir, Inc., CBM2014-00054, Paper 19 (PTAB May 13, 2014). The Board may adopt the district court’s claim constructions in the related litigation if the “constructions of each claim term are consistent with their broadest reasonable interpretation in light of the specification.”
Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 129 (PTAB May 22, 2014). After patent owner filed a patent owner response and petitioner filed a reply, patent owner sought to file a terminal disclaimer so that the patent would expire during the proceeding. Patent owner argued that if the patent was expired, the Board should change its claim interpretation standard to the Phillips standard, rather than the “broadest reasonable interpretation” (BRI) standard. The Board declined to change the claim interpretation standard due to the late stage of the proceeding, since all of the parties’ arguments until that point applied the BRI standard, and patent owner had an opportunity to amend its claims but declined to do so.
Nestle USA, Inc. v. Steuben Foods, Inc., IPR2015-00023, Paper 17 (PTAB June 29, 2015). The Board was not persuaded to reconsider its institution decision on the basis that the Board’s construction of a claim term contradicts the Board’s construction of the same term in another IPR proceeding for the same patent as well as other IPR proceedings for related patents. The Board noted that “Petitioner does not cite any statute, regulation, rule or case law requiring that our construction of specific claim term be identical in every proceeding.” The Board emphasized that its institution decisions and associated claim constructions are made on a case-by-case basis, taking into account the particular facts of each case.
Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-00633, Paper 11 (PTAB Aug. 14, 2015). For a patent that will expire before the Board is likely to issue a final written decision, the Board will apply the Phillips claim construction standard, instead of the broadest reasonable interpretation (BRI) standard. Petitioner argued that the claims should be interpreted according to the Phillips standard, while patent owner argued that the claims should be interpreted according to the BRI standard. At the institution stage, the Board must determine whether petitioner has demonstrated a reasonable likelihood of prevailing in the proceeding. In order to make this determination, the Board will analyze petitioner’s arguments through the lens of the claim construction standard that will apply to the final written decision. The Board therefore applied the Phillips standard in the institution decision since the patent will expire when the final written decision is scheduled to issue.
Toshiba Corp. v. Intellectual Ventures I LLC, IPR2014-00310, Paper 34 (PTAB Mar. 3, 2016). The Board denied petitioner’s request for rehearing which challenged the Board’s construction of two terms as not being synonymous. The Board noted that the patent distinguishes between the two terms because it uses both terms separately and does not clearly assert that they are the same or equivalent terms. If the patentee uses different terms to identify similar claim limitations, those terms should have different meanings.
McAfee, Inc. v. CAP Co. Ltd., IPR2015-01855, Paper 14 (PTAB Mar. 8, 2016). The Board determined that amendments to the preambles of challenged independent claims were not limiting amendments. “[I]t is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history.” Symantec Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008). The Board indicated that it was not apparent from the prosecution history that the amendments to the preambles “accomplish anything more than routine consistency with amendments concurrently to the body of the claims.”
CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-01885, Paper 23 (Mar. 16, 2016). The Board denied institution after determining that petitioner’s proposed claim construction did not sufficiently take into account the context of the specification. The claim construction issue was directed to a “when” limitation. Petitioner argued that the “when” limitation allowed for an intermediary action, while patent owner’s construction excluded the intermediary action. While the specification did not exclude petitioner’s construction, the Board determined that the context of the specification, which recommends that actions be automatically performed, supported patent owner’s construction. The burden is on petitioner to demonstrate why the Board should institute review. Since petitioner did not persuade the Board that its construction was consistent with the specification, the Board denied institution.
Microsoft Corp. v. IpLearn-Focus, LLC, IPR2015-00097, Paper 33 (PTAB Mar. 23, 2016). In a final written decision, the Board determined that the asserted references did not disclose a negative limitation recited in the challenged claims. The patent relates to a computer learning system including a detached sensor to monitor a student’s behavior. The challenged claims recite that a processor analyzes a set of measurements “to identify whether the user is not paying attention to content presented by the display.” Petitioner argued that the “not paying attention…” limitation allowed for an interpretation that the user was paying attention to some displayed content but not paying attention to other displayed content. The Board disagreed, determining that the “not paying attention” limitation required the prior art to teach an actual identification of not paying attention.
RF Controls, LLC v. A-1 Packaging Sols., Inc., IPR2014-01536, Paper 20 (PTAB Mar. 28, 2016). In finding several claims to be unpatentable, the Board determined that the recitation of “inventory data,” “inventory tracking region,” and “inventory region” in the preambles of the claims are an intended use that did not limit the scope of the claims. A preamble is not limiting where a structurally complete invention is defined in the claim body and the preamble only states a purpose or intended use for the invention. Nothing in the claims point out any aspect of the manipulation of the data that is unique to “inventory” data versus any other data that would be stored and accessed. As to the tracking aspect of the claim, the claim explicitly states that it is the RFID tag that is tracked, not the inventory item. Nothing in the specification suggests that tracking an RFID tag attached to an inventory item as embodied in the invention is different in any material way to tracking any other kind of item with an RFID tag attached.
Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC, IPR2016-00386, Paper 24 (PTAB Aug. 11, 2016). Petitioner challenged nine patents of patent owner in nine different IPR proceedings, all of which were instituted. In seven of the proceedings, patent owner requested a Phillips construction because seven of the patents would expire during the proceedings. Patent owner requested a BRI construction for the other two proceedings. The Board rejected petitioner’s request to apply both a BRI construction standard and a Phillips construction standard for the two proceedings in which the patents would not expire during the proceedings. Petitioner argued that applying different claim construction standards to terms in patents in the same patent family could result in affording different meanings to common terms. The Board rejected this argument as speculative, unnecessary and inefficient.