There is risk in filing petitions that rely on the PTAB adopting a broad interpretation of the claims in order to read on the prior art included in the petition—even though the PTAB has just confirmed that it will apply the broadest reasonable interpretation (BRI) standard when interpreting claims in a challenged unexpired patent. This risk is highlighted in the recent decision in Stryker Corporation v. Karl Storz Endoscopy-America, Inc. (IPR2015-00673), where the PTAB denied Stryker's petition because it relied on a claim interpretation that broadened the claims beyond what is disclosed in the patent.
The challenged claims recite a “camera head,” which the PTAB interpreted to mean "a video camera that includes or is adapted to be connected to an endoscope." The PTAB refused to construe the term “camera head” more broadly than the term is used in the specification, which stated that "[e]ndoscopic video cameras” would “hereinafter [be] referred to as ‘camera heads’.” In reaching this conclusion, the PTAB ignored an argument of claim differentiation and the prosecution history in which references related to other types of cameras were considered.
Although the petition included references related to endoscopic cameras, it relied on a reference about television cameras for the teaching of a "camera head." The PTAB found that the petitioner had not provided any rationale for how a television camera could be combined with components described in other references to arrive at an endoscopic "camera head" as in the claim.
Petitioners would be well advised not to draft petitions that rely on the BRI standard to do the heavy lifting of a thorough obviousness (or anticipation) argument. In this case, a better explanation for how and why the proposed references could be combined may have led to the institution of an IPR even in the face of a "narrow" interpretation of a claim term by the board.