Opportunity to Amend Prior to Expiration Not Enough

The Patent Trial & Appeal Board (PTAB) applies the broadest reasonable interpretation (BRI) standard of claim construction in all post-grant patent proceedings. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016). The lone exception is for expired patents. Once a patent expires, the USPTO switches to the district court “Phillips” framework. The justification for this switch is that patentee may no longer amend at expiration, and that in such cases, the district court construction should apply.

As can be appreciated, the expiration of a patent in the middle of an agency proceeding can result in inefficiencies. Recently, the PTAB considered whether or not the expiration of a patent on appeal to the Board required a new Philips construction. The Board determined that since there was an opportunity to amend prior to the appeal (i.e., the justification for applying BRI) that no such do-over was required. The CAFC disagreed.

The dispute arose from an ex parte reexamination in which, as part of the proceeding, the examiner construed several claim terms. CSB appealed the rejection to the Board. The patent expired after the examiner’s final rejection (i.e., before the Board had decided the appeal). In the appeal, the Board again applied the BRI standard when it reviewed the examiner’s claim constructions. The Board affirmed the examiner’s rejection of the claim.

In its decision, the Board recognized that the patent had expired, but nevertheless applied the BRI standard ”because CSB had the opportunity to amend its patent claims while they were pending before the examiner in the reexamination, as the patent had yet to expire.” CSB, slip. op. at 8. The PTO further argued that because the Board reviews the examiner’s work, the Board must use the same construction standard as used by the examiner—the BRI standard. The CAFC found fault with both arguments: the CAFC pointed out that the fact that the patent owner could have amended its claims while before the examiner does not make use of BRI reasonable where a patent expires during a reexamination because the patent owner’s ability to amend is substantially diminished when this occurs regardless of the stage of the reexamination. In fact, 37 C.F.R. § 1.530(j) states that “No amendment may be proposed for entry in an expired patent..” The CAFC also noted that under 37 C.F.R. § 1.530 patents that expire during an appeal to the Board will not be issued with amended claims even if the patent owner amended them earlier, while before the examiner.

As the CAFC noted, “ it is not always clear how much time a Board appeal will take. . ." Perhaps more importantly, in the case of patent reexamination, is the lengthy path of patent reexaminations to final conclusion. With such proceedings often pending for multiple years, such delays for patents close to expiration may result in even longer delays while the office re-forms its earlier claim constructions. Of course, in many cases, such as CSB, there will be no difference in outcome as the analytical frameworks for Philips and BRI are largely indistinguishable.