Fish Principal and Co-Chair of the firm’s Post-Grant practice, Karl Renner and Principal Jeremy Monaldo recently published an article in the Metropolitan Corporate Counsel on the topic of  application of the broadest reasonable interpretation (BRI) standard in post-grant proceedings before the PTAB.

Saturday, November 28, 2015

The Metropolitan Corporate Counsel

In recent months, substantial debate has occurred over the application of the broadest reasonable interpretation (BRI) standard in post-grant proceedings before the PTAB. In the July 2015 Cuozzo decision, the federal circuit endorsed this standard. Despite this endorsement, pending legislation proposes changes, seeking to harmonize claim construction at the PTAB with the “ordinary and customary meaning” standard used in district court. With potential modifications on the horizon, companies need to understand how such a change might impact the viability and success rates of post-grant challenges.

Unquestionably, a change would unify post-grant and district court proceedings, diminishing one benefit of bringing a patent validity challenge to the PTAB. Yet the practical impact of this is less certain. Drawing from our experience as counsel in an industry-leading number of proceedings, we find that PTAB judges take claim construction very seriously, often accounting for the ordinary and customary meaning under the BRI standard. Indeed, the PTAB has endorsed district court claim constructions under the BRI standard, like it did in the 2014 Google Inc., v. Simpleair Inc. covered business method ruling. And the PTAB has resolved to the same construction when claim language is first viewed under the BRI standard and then later viewed under the district court standard after the patent’s expiration. This was the result in the 2015 Cisco Systems, Inc. v. AIP Acquisition LLC inter partes review (IPR).

When the PTAB and district court constructions differ, the disagreement often relates to proposals by parties to add language that aligns claims with disclosed embodiments. At district court, such language is often included in resolved constructions. By contrast, the PTAB has been reticent to include such language in constructions. In these cases, however, the PTAB generally cites technical rationale, not the claim construction standard, in declining to add limiting language. In the 2015 Greene’s Energy Group IPR, the PTAB refused to adopt a district court’s construction of the term “lockdown mechanism” to require a mechanical apparatus operating “without hydraulic pressure.” The PTAB disagreed with the district court’s reasoning that the lockdown mechanism must operate without hydraulic pressure because the patent’s abstract described the lockdown mechanism operating “even if hydraulic pressure is lost.” In refusing to add “without hydraulic pressure” to the claims, the PTAB did not reference the BRI standard but, instead, focused on claim differentiation and another embodiment in the patent that described a hydraulic lockdown mechanism. This is emblematic of the PTAB’s reluctance to limit claims to a particular embodiment and is unlikely to change even if the standard being applied is revised.

Thus, without diminishing the importance of a change to the BRI standard, given the practical implications, such a change is not itself likely to diminish the popularity of post-grant proceedings, particularly with petitioner success rates significantly higher than in district court. That said, defendants should take full advantage of the broader claim construction standard in post-grant proceedings while it remains.