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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.

Changing USPTO Claim Construction Practices to Short Circuit Patent Litigation

Posted On: Nov. 25, 2013   By: Scott A. McKeown
blog-unintended-consequencesProposed Change to USPTO Claim Construction Practice Will Moot Markman Debates

One of the issues being debated in the current round of patent reform efforts is the current use of the broadest reasonable claim interpretation (BRI) in USPTO post grant patent proceedings. The rationale for this “broadest” interpretation practice of the USPTO has long been the ability to amend patent claims before the agency. That is — patent claims should be interpreted broadly in a forum where claim scope can be freely adjusted by the patentee (intervening rights aside).

Since the passage of the America Invents Act (AIA), a small, but vocal minority of bar association honchos (primarily those employed by large patent filers) have been shortsightedly advancing the notion that BRI should not be employed in the patent challenge proceedings of the AIA (Inter Partes Review (IPR) and Post Grant Review (PGR)). Instead, they argue that BRI claim construction should be replaced with the claim construction practices of the district court (i.e., Phillips v. AWH). Their premise is that the new AIA proceedings are more “adjudicative in nature” as compared to examiner based patent prosecution/reexamination practices. Currently, the proposed legislation is adopting these changes for IPR and PGR proceedings (CBM is excluded).

As can be appreciated, large patent filers believe a narrower claim construction at the USPTO will help preserve the patentability of their patents that become subject to post grant patent challenges. Yet, in practice, if this change is implemented, it will have little impact on post grant proceedings. In fact, insisting that the USPTO perform the same analysis as district courts may help invalidate more patents.

First, there is a fundamental error in the assumption that the USPTO will arrive at the same conclusion as the district court on claim construction.

In practice, both forums would be employing the same Phillips v. AWH claim construction framework, yet, the perspective of the decision makers is markedly different. That is, while narrower, multi-sentence definitions are commonly ascribed to patent terms via district court Markman Orders, these constrained definitions are rarely guided by the engineering or scientific training. This is because district court judges are rarely scientists or engineers. In contrast, all judges of the Patent Trial & Appeal Board (PTAB) are trained in the technical arts. Moreover, such district court definitions can be colored by the presumption of validity accorded to issued patents in the courts, a presumption that is absent at the PTAB.

We also know from experience that the USPTO does not ascribe such constrained definitions under a Phillips analysis.

Expired patents are already accorded a district court claim construction analysis in USPTO post grant proceedings. As someone that has been involved in many such cases, I can attest to the fact that the ability to rely upon the intrinsic record for claim construction purposes (the only major difference with BRI and a Phillips analysis) rarely advances the needle in any significant regard.

So, what is the harm in simply making things consistent?

Another major assumption of the backers of this proposal is that the district court claim construction will come first, and that the USPTO will adopt it. Under the current language in the House and Senate bills, the USPTO is not bound by such a decision, they just need to consider it.

Further, the AIA has changed the way patents are litigated. In the vast majority of litigations pursued post-AIA, an IPR challenge is becoming the rule. Since by definition IPRs must be pursued relatively early in the litigation calendar, the IPR Trial Order that includes claim construction will almost always issue in advance of a Markman Order. Currently, while IPR Trial Orders applying BRI can be helpful in calibrating the expectations of a patentee on their overall litigation outlook, it is not binding on the court due to the difference in standards.

Think about it…..if IPR is changed by the legislation to use the same construction as the courts, PTAB construction will almost always be first in time, be derived by technically trained judges, and, will rarely be much narrower than present BRI practices. On what basis will the court ignore this construction now?

Be careful what you wish for patentees, you just might get it.

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