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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Congress Debates USPTO Use of District Court Claim Construction Practices

Posted On: Oct. 29, 2013   By: Scott A. McKeown


Hearing to Consider Issues for Mark-up

Although the Innovation Act (H.R.. 3309) was only introduced last week, as expected, Congress is wasting no time pushing the “patent reform” issue forward. Today at 10AM the House Judiciary Committee will hold a hearing on the content of the Bill entitled: Improving the Patent System to Promote American Innovation and Competitiveness. The hearing will alert the committee of specific concerns prior to mark-up. One notable topic is the Bill’s proposed shift from the broadest reasonable interpretation (BRI) at the USPTO’s Patent Trial & Appeal Board (PTAB) to a district court style claim construction. The initial draft of the Goodlatte Bill referenced the entirety of 35 U.S.C. § 282, and along with it, a presumption that patent claims are valid (§ 282 (a)). This would have been an absolute boon to patent trolls. Fortunately, and as I predicted, the claim construction proposal no longer requires the application of the presumption of validity.

In the second draft, and now H.R. 3309, the general reference to § 282 has been changed to a contextual reference to § 282(b). In essence, the proposal would change little at the USPTO (plain and ordinary meaning is a component of BRI) other than perhaps an increased emphasis on prosecution history consistent with Philipps v. AWH. That said, the proposal still lacks consistency and leaves a possible opening for patent troll mischief.

The America Invents Act (AIA) has been a phenomenal success in decreasing patent troll effectiveness, in many cases completely shutting down such abusive litigation practices. Below is a chart (IPR in blue, CBM in red) showing the influx of 600+ patent challenges filed with the USPTO to date, the vast majority of which target patent trolls. Congress would be wise to ensure that the currently proposed post grant tweaks do not disturb the significant traction of the new AIA proceedings.(Click to Enlarge)

IPRSpecifically, the H.R. 3309 proposes the following for PTAB claim construction practices for IPR and PGR (excluding CBM)

(A)  each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and

(B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction.’’

(emphasis added)

As to consistency, the above proposal is for IPR and PGR only. This claim construction shift is not proposed for patent reexamination, or reissue. Presumably this exclusion is not an oversight, but instead, based on the grounds that these proceedings are not contested cases involving “judicial determinations,” but instead, examination proceedings. Yet, this is a distinction without a difference. The judges of the PTAB decide the very same issues of patentability whether introduced to the USPTO as a reexamination, patent reissue or IPR. And, amendment is possible in all of these proceedings, which is currently the justification for the application of a broadest reasonable interpretation (BRI) in all. If the above noted change is to be made, it must be made for all post grant proceedings for consistency sake. It makes little sense for judges of the PTAB to apply different standards based upon the manner in which the post grant issue is presented to the Office.

Finally, the proposal could, depending upon how the USPTO interprets “shall consider,” force the USPTO to honor prior “judicial determinations” such as Markman Orders that are derived in light of the presumption of validity. Certainly, USPTO consideration of court activity makes sense, and is in fact an accurate description of current PTAB practices. On the other hand, forcing the Board to blindly follow prior court claim construction decisions colored by a presumption of validity makes no sense whatsoever. In such a case, the technical insight of USPTO judges on issues of claim construction would be muzzled to the great joy of patent trolls.

With mark-up of H.R. 3309 ahead, it is hoped that the provision is expanded to all post grant proceedings, or none at all. As to the degree of deference to give to prior judicial determinations, perhaps this can be adequately clarified in the legislative history.

7 Responses to “Congress Debates USPTO Use of District Court Claim Construction Practices”

  1. Glenn O'Neill says:

    Not all patent owners are NPEs (trols, in your book). Not even close.

  2. Thanks Glen,

    As the legislation is targetting trolls, I tend to speak in those terms when discussing potential impact.


  3. Steve says:

    Hi Scott — would you kindly give us readers your definition of a “troll” ; so we have the proper context when you use this derogative term in your postings?


  4. Kip says:

    Scott, your comments about trolls continue to perplex me. You seem to buy into the idea that trolls exist and have a specific definition. The only meaningful definition I can find is “patent owner I don’t like.”

    An alternative definition might be: “Someone who collects rents on invalid patents that are lower than the cost of litigation.” That definition is problematic because A. patents are typically not clearly shown valid or invalid without a lot of expensive work, B. IPR provides a radically cheaper way to deal with those patents, C. for patents of questionable validity (but not obviously invalid), it makes perfect sense to request lower licensing fees, D. the proposals here hurt all patent owners, not just trolls in this very narrow sense.

    Aren’t some of your clients “trolls” in either the broad or narrow sense? Why do you go out of your way to jump on the troll bashing bandwagon?

    Another point: you seem to think that Phillips construction is different based on whether there is a presumption of validity. I don’t know if that’s true. Phillips itself said that the construction rule favoring valid patents has very little utility. We’re in uncharted territory; I don’t know how much sense it makes to use a Phillips construction without a presumption of validity – the two are tied together in the case law (right?).

    That said, I completely agree: Phillips should apply to all post grant proceedings. This whole mess highlights what I argued before: we should abolish the BRI rule. Patent claims should always receive a uniform construction, for obvious reasons (including notice and fairness).

  5. Kip,

    I talk about trolls because that is the boogeyman the legislation is designed to impact. Of course, the definition of a troll is very subjective. Too many “troll” provisions could hurt legitimate innovators, but there is enough lobbying muscle there that I am not too concerend.

    As to Philips, I don’t see this changing much at the PTO aside from a bit more emphasis on prosecution history in a handful of cases. In typical cases the BRI and Philips construction would be the same at the PTO. My concern is the PTO being forced to follow construction of district courts rather than their own technical reasoning.


  6. Steve,

    Anyone that sues my clients is a troll :)


  7. Fred Johnson says:

    So ironic. The AIA was a big payday for IP lawyers. You’re all laughing all the way to the bank thanks to “trolls”.

    Let’s see where these firms go when Congress destroys the ability for NPE’s to enforce their IP.

    Winners: Big Tech
    Losers: Patent owners and IP Lawyers.