It can be tempting to propose a broad interpretation of the claims in an IPR in order to read on the prior art included in the petition. But a recent decision highlights that there are limits to how far even the PTAB will go in applying the BRI standard. Should the Supreme Court find in Cuozzo Speed Technologies, LLC v. Lee that the PTAB should apply the plain and ordinary meaning standard instead of the BRI standard, finding good prior art that clearly discloses the claimed technology, without broadly interpreting the claims, will become even more important.
In Microsoft Corp. vs. IPLearn-Focus, LLC (IPR2015-00097), a challenged claim recited "a processor ... to identify whether the user is not paying attention to content presented by the display." The PTAB construed the negative limitation of "not paying attention to content presented by the display" as "not paying attention to some of the content presented by the display."
The prior art reference relied upon by the petitioner described detecting that a user was paying attention to some content on the screen, and the petitioner creatively argued that this necessarily implied the user was not paying attention to other content on the screen. The PTAB was not persuaded, however, and instead agreed with the patent owner that the prior art must teach an actual identification of not paying attention. Since the relied-upon reference did not teach making such an identification, the petitioner lost.
As we have written before, petitioners would be well advised not to become overly reliant on the BRI standard doing the heavy lifting of making a case of invalidity. When a broad claim interpretation is needed to show that a reference discloses a limitation of the challenged claim, other options should be considered. Depending on the circumstances of the case, identifying other and/or additional prior art may be advisable. Acknowledging that the reference does not expressly disclose the claim limitation, and casting the argument as one of obviousness, should also be evaluated.