Patentees: Be Careful What You Wish For...You Just Might Get It

Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees and bar associations 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 urge that BRI claim construction be replaced with the claim construction practices of the district court (i.e., Philips v. AWH). This is because, they argue, the new AIA proceedings are more "adjudicative in nature" as compared to past patent reexamination practices...and amendment isn't really possible.

Yet, if Philips were adopted by the PTAB, patentees would see little in terms of benefit. In fact, such a change would likely make matters far worse for patentees.  

First, there is a fundamental error in the assumption that the PTAB's application ofPhilips will produce the same type of multi-sentence definitions common in district court proceedings.

We know that the USPTO does not ascribe such constrained definitions under a Philips analysis. For example, expired patents are already accorded a Philips construction 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 prosecution history a bit more heavily under Philips, (the only practical difference between a BRI and a Philips analysis) rarely advances the needle.

So, what is the harm in simply making things consistent between the PTAB and the courts?

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. In fact, it will come a mere 6 months from filing of the petition. Currently, while IPR Trial Orders applying BRI can be helpful in calibrating the expectations of a patentee on their overall litigation outlook, such determinations are not binding on the court due to the difference in standards. Under a PTAB Philips analysis, it would be the same —in theory —and likely very helpful to the courts given the PTAB's technical decision makers.

Think about it....a Philips construction can be obtained 6 months into a litigation, via the PTAB. With a Philips construction handed to it in short order, what court wouldn't stay further proceedings under those circumstances, or at least find such a far more compelling proposition going forward?  On what basis would the courts ignore the PTAB construction now?  

Pending "reform" bills in both the House and Senate propose that the PTAB switch from BRI to Philips. The patentee lobby better think this through— and fast.