Claim construction is at the heart of nearly every patent litigation and the new post-grant procedures at the U.S.P.T.O. are no different. The claim construction standard used by the Patent Trial and Appeal Board (“PTAB”) at the PTO during an inter partes review (“IPR”) is currently being challenged before the United States Court of Appeals for the Federal Circuit. If the Federal Circuit were to alter that standard, it would significantly impact the procedure and substance of IPRs and likely impact related district court litigation.
Different Standard Justified by the Ability to Amend Claims.
During an IPR, the PTAB adopts the “broadest reasonable interpretation” (“BRI”) of a patent claim. A district court, by contrast, follows the claim construction principles outlined in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). A common justification for the difference in standards is the patentee’s ability to amend its claims during an IPR, but not during a district court litigation. Because of this underlying rationale, the BRI standard is not used by the PTAB when claim amendments are unavailable and, instead, the PTAB uses the same claim construction standard as a district court.
Are Claim Amendments Truly Available During an IPR?
A patentee is allowed to propose claim amendments during an IPR. See 35 U.S.C. § 316(d)(1)(B). In practice, however, the PTAB has denied all opposed motions to amend, and granted only one unopposed motion to amend. While this high denial rate may seem surprising, there may be a practical reason for rejecting proposed amendments. If the amendment is allowed, it may eventually become a claim in an issued patent. On the one hand, the PTAB cannot allow a claim to issue without fully vetting it for all patentability requirements. On the other hand, the speed of an IPR procedure does not provide the PTAB time to perform additional prior art searching to vet the amended claims. Thus, while amendments are technically allowed under the IPR rules, vetting significant claim amendments presents a practical difficulty for the PTAB. Nevertheless, simply denying a patent owner the opportunity to amend claims is viewed by some as frustrating the purpose of the IPR procedure.
Perhaps the PTAB Could Adopt the District Court’s Claim Construction Standard?
When a patent is challenged in district court, the court need only consider the aspects of patentability raised by the parties. Because of the practical difficulty of evaluating claim amendments during an IPR, perhaps a similar procedure could work at the PTAB? If a patentee suggests a claim amendment, the PTAB could place the burden on the patent challenger to argue why the proposed amendment should not be allowed. Such a procedure could maintain some efficiencies of the PTAB proceedings while providing the patent owner with a meaningful opportunity to amend its claims and removing one rationale for having the PTAB use the BRI standard.
What Next From the Federal Circuit?
The Federal Circuit has a number of cases before it that address the propriety of the BRI standard during an IPR. See, e.g., In re Cuozzo Speed Technologies, Inc., Fed. Cir., No. 2014-1301. The Court’s first opinion on that issue will likely be available soon.