Addressing the requirements to institute an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) denied a petition because it failed to map the challenged claims to the asserted prior art using the claim construction that the petitioner believed was correct. Hologic, Inc. v. Enzo Life Sciences, Inc., Case No. IPR2018-00019 (PTAB, Apr. 18, 2018) (Paper 17) (Fitzpatrick, APJ) (Yang, APJ, concurring) (Paulraj, APJ, dissenting).

Enzo owns a patent directed to nucleic acid detection technology that can be used to diagnose genetic defects by isolating or separating certain genetic materials. Enzo sued Hologic for patent infringement in district court. In response, Hologic filed a petition for IPR challenging various claims of Enzo’s patent. Enzo filed an unopposed motion for a district-court-type Phillips claim construction because the challenged patent would expire less than 18 months from entry of the Notice of Filing Date Accorded to the Petition. The PTAB granted the motion, agreeing that the district court claim construction standard would apply.

During the co-pending district court litigation, Enzo proposed broader constructions for certain disputed terms while Hologic proposed narrower constructions for those terms. In its IPR petition, Hologic had to decide whether to use its own narrower proposed claim construction from the litigation or Enzo’s broader proposed claim constructions. Reasoning that Enzo’s broader proposed claim construction would be the path of least resistance to arguing unpatentability, Hologic challenged the claims under Enzo’s broader construction. To preserve its district court arguments, however, Hologic stated that it considered Enzo’s proposed construction to be erroneous.

The applicable PTAB regulations require that IPR petitions identify how the challenged claims are to be construed and how the challenged claims are unpatentable. The PTAB explained that this rule required Hologic to present a case for unpatentability under the claim construction that Hologic considered to be correct. Since Hologic only presented its challenge under Enzo’s proposed claim constructions, the PTAB found that the petition did not explain how the challenged claims were unpatentable under the construction that Hologic believed was correct, and therefore denied institution.

In dissent, APJ Paulraj asserted that the majority opinion forces a petitioner “into an untenable Hobson’s choice of adopting—as its own—Patent Owner’s proposed constructions from the district court proceeding, (which may not necessarily be favorable to its non-infringement positions) in order [to] be allowed to present its unpatentability arguments in this proceeding.” Paulraj argued that it should be appropriate for an IPR petition to present unpatentability arguments under a patent owner’s proposed constructions, even if the petitioner disagrees with those constructions.

Practice Note: When seeking a district-court-type Phillips claim construction in an IPR proceeding, a petitioner should propose in its petition the constructions it is seeking in any co-pending district court litigation.