Early Determination Calibrates Plaintiff Expectations

Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically, key terms at issue in the proceeding are expressly construed by the panel of administrative patent judges (APJs). While such constructions are not binding per se on a parallel litigation proceeding, in some circumstances such findings can be nevertheless devastating to a litigation campaign, and, disruptive at a far earlier date than a typical Markman Order.

For example, in many cases involving non-practicing entities (NPE), an overly broad claim construction is advanced for the purpose of capturing the products/processes of an entire industry. At the PTAB, the broadest reasonable interpretation is applied. Naturally, if the PTAB does not agree with the NPEs claim interpretation some 5-6 months after petition filing, such is strong evidence that the plaintiff’s case will not go according to plan. In fact, the CAFC has found interpretations of the USPTO in this context to be persuasive evidence. See St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential)

In other contexts, where the claim interpretation analysis is more akin to a district court analysis, such as in an expired patent or means-plus-function claim, the PTAB Trial Order can arguably supplant a Markman analysis.

This was most recently demonstrated in IPR2013-00152 (Universal Remote Control Inc. v. Universal Electronics), when construing means-plus-function claims, the PTAB will simply deny trial on claims that are deemed indefinite under 35 U.S.C. §112 (f). (Order here)

As indicated in the claim interpretation section, supra, we are unable to arrive at an interpretation of the requirements of claim 16 due to the lack of disclosed structure corresponding to the recited “means for assigning,” “means for indicating,” and “means for setting.” A lack of sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph renders a claim indefinite, and thus not amenable to construction. See In re Aoyama, 656 F.3d 1293, 1298 (Fed Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is indefinite, the claim, by definition, cannot be construed.”). In the circumstances of this case, we conclude that the information presented in the Petition and the Preliminary Response does not show there is a reasonable likelihood that Petitioner would prevail in its challenge of claim 16 in an inter partes review.

This determination was provided by the PTAB within 6 months of filing the petition. Here the fact finding of the PTAB is akin to that performed in the district courts with respect to 112 support. Compare this result and expense to that which would be required to reach a Markman decision of a typical district court trial schedule.