Apple, Inc. v. PersonalWeb Techs., LLC
Addressing the standard to be applied for claim construction during inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) declined to create an exception to the broadest reasonable claim construction standard based on the expiration date of the challenged patent. Apple, Inc. v. PersonalWeb Techs., LLC, Case IPR2013-00596 (PTAB, Mar. 25, 2015) (Turner, APJ.).
After PersonalWeb sued Apple in district court, Apple filed an IPR petition challenging the asserted patent. In its Patent Owner’s Response (filed without a motion to amend), PersonalWeb argued that the Board should not apply the broadest reasonable interpretation (BRI) standard, but should instead apply the narrower Phillips claim construction standard. The multiple asserted basis for this petition was that the challenged patent was nearly expired, as well as an assertion by the patent owner that it did not have an opportunity to amend the claims and that no appeal will take place until after the expiration of the patent. PersonalWeb further argued that the PTO has no authority to apply any claim construction standard for IPR proceedings other than that required by Phillips since the proceeding is not an examination and the applicable claim construction standard is a substantive issue.
The Board was not persuaded. The Board rejected the argument that the patent owner had no ability to amend the claims. In fact, as the Board explained, PersonalWeb had the option to file a motion to amend and to request expedited consideration in view of the imminent expiration of the patent, but chose not to do so. The Board also noted that the Federal Circuit has already determined that the standard to be applied to claim construction of an unexpired patent in an IPR proceeding is the BRI standard and that even the imminent expiration date of the challenged patent does not alter that aspect of the proceeding. After construing the challenged claims under the BRI standard, the Board found all of the challenged claims to be unpatentable as obvious over two prior art references.