Requests for Comment Touch Upon Claim Construction Standards at the PTAB

Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice, entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board posed 17 questions for consideration by those stakeholders involved in the patent challenge proceedings of the America Invents Act (AIA). Responses are due to the USPTO on September 16th, and, will be considered by the agency for the purpose of optimizing AIA trial proceedings going forward.

Over the next two weeks, I will explore the issues driving these queries as well as proposals for resolving problem areas. First up, is the question directed to claim construction, that is:

1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?

This question presents an issue that the PTAB has grappled with in several proceedings to date. Namely, given that expired patents are interpreted under a Phillips v. AWH standard rather than the traditional Broadest Reasonable Interpretation (BRI), should the Board, in certain situations, decline to apply BRI in favor of Phillips. For example, if a petition is filed in September of 2014 on a patent that is set to expire in August of 2015 (the middle of any PTAB trial that would follow) should the Board adopt a practice that would interpret such patents under Phillips instead of BRI? Another example would be where the unexpired term is disclaimed in the middle of a proceeding, should that change BRI practices?

Unfortunately, the USPTO is unlikely to get meaningful feedback on this question. This is because many are viewing this question as an invitation to challenge the use of BRI in any PTAB trial proceeding.  

The PTAB cannot adopt a Phillips claim analysis for AIA trial proceedings as doing so would create absolute chaos. Patent reexamination, supplemental examination, and patent reissue proceedings are becoming increasingly related to post-grant trial proceedings. Applying different claim construction standards (at least in theory) to the same claims would foster nothing but inconsistency and confusion. Couple this with the increase in patent reexamination speed (as a result of the drop in demand since the AIA) and the movement of patent reissue to the Central Reexamination Unit (CRU) for increased speed/efficiency, and these potential inconsistencies could be before the Board for decision within the same time frame — a perfect storm.

As to the feedback the USPTO is seeking with this question, practically speaking, any patent challenged within 3 years of expiration might be optionally accorded an expired patent claim construction. This is because although amendment may still be possible 8-10 months post-petition filing, subsequent appeal to the CAFC may expend the remainder of the enforceable term, rendering any such amendment moot. (i.e., the amended claim would not issue prior to expiration as a result of the appeal). Of course, this same treatment would need to carry over to reexamination/supplemental examination/reissue. As to disclaimer of patent term, such rare occurrences could be required of patentees in AIA proceedings pre-institution so that constructions need not be switched mid-proceeding. 

The justification for the use of BRI at the USPTO is the ability to amend. Yet, critics are quick to point out that amendment is practically impossible before the PTAB, and, therefore, Phillips should be applied instead. The common-sense solution here is to address the amendment process, which is the next issue to explore in this series.