By Scott A. McKeown
| July 15, 2014
Favorite Criticism of PTAB Proceedings Falls Flat

Favorite Criticism of PTAB Proceedings Falls Flat


The Patent Trial & Appeal Board (PTAB) is currently seeking feedback from the public on the first two years of administrative patent trials of the America Invents Act (AIA). The very first issue presented for consideration in the recent Federal Register Notice is the continued use of the broadest reasonable claim interpretation (BRI) in PTAB post-grant patent challenge proceedings.

Since the passage of the America Invents Act (AIA) some patentees have been advancing the notion that BRI should not be employed by the PTAB. Instead, they argue that BRI claim construction should be replaced with the claim construction practices of the district court (i.e., Phillips v. AWH). Critics insist that the new AIA proceedings are more "adjudicative in nature" as compared to examiner based patent prosecution/reexamination practices, and, that PTAB post-grant patent practices should be consistent with the courts. Of course, the true concern at the heart of this "consistency" argument is that the Board is arriving at an unduly broad construction compared to that of the courts. That is, critics of PTAB claim construction practices believe a Phillips analysis to be inherently narrower than BRI. (i.e., more patent validity/patentability friendly).

This belief is mainly driven by cases where a patent claim previously construed by a court, is later construed to have a broader scope by the PTAB. The fault in this logic is two-fold. First, it is assumed that a Phillips analysis necessarily dictates a narrower construction, and, second, that the district court constructions were not unduly narrow in the first instance.

As to the first point, Phillips may be different from the BRI in name only.

The BRI analysis focuses the meaning of a claim term on the supporting specification, as would be understood by one of skill in the art — Phillips does the same. A BRI analysis accords claim terms their plain meaning, as would be determined by one of skill in the art — Phillips does the same. To the extent that there is any demarcation in the two analyses it is the fact that a pure BRI analysis arguably places less weight on prosecution history (intrinsic record). Yet, as emphasized recently in Tempo Lighting Inc.,v. Tivoli LLC., (CAFC 2014), the USPTO must also consider prosecution history (at least for previously closed records). Thus, at the end of the day, the analyses are practically the same.

So, why do we have so many cases in which the district court construction is narrower than the PTAB?

The perspective of the PTAB decision makers is markedly different. That is, while nuanced, multi-sentence definitions are commonly ascribed to patent claim terms in district court Markman Orders, these constructions are rarely guided by the engineering or scientific training of the decision maker. (One might also argue that despite language in Phillips to the contrary, the presumption of validity applied by the courts also colors such constructions). As highly skilled as district court judges are, they are very rarely scientists or engineers. For this reason courts are picking the most persuasive, albeit highly nuanced, claim construction argument. On the other hand, the PTAB is determining a technical truth with the help of the parties, but nevertheless, guided by its own technical and scientific training.

To illustrate this point, the PTAB recently has had occasion to analyze the same claims under both BRI and Phillips. Last week, in Cisco Systems Inc. v. AIP Acquisition LLC (IPR2014-00247; here) the PTAB determined that the subject patent needed to be reconsidered under Phillips due to imminent expiration. (BRI is not applied to expired patents). Upon initial consideration of the claim terms under the BRI, and subsequent reconsideration of the same terms under Phillips, the PTAB found the very same meaning.

As I have previously warned, forcing Phillips on the PTAB may not only fail to achieve the desired results, but take claim construction away from the courts altogether.

This case was brought to my attention by the great Docket Navigator.

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