Under the new post-grant proceedings created by the America Invests Act of 2011 (AIA), unexpired patents are given their broadest reasonable interpretation (BRI) in light of the specification. On April 1, 2014, after all matters in an inter partes review (IPR) proceeding titled Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, had been fully briefed, discovery had been concluded, and oral argument was scheduled for May 21, 2014, Tessera filed a terminal disclaimer disclaiming the remainder of the patent term and asked the Board to interpret the challenged claims, not under the BRI standard but as a district court would according to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Citing its authority under 37 C.F.R. § 42.7(b), the Board sua sponte ordered that the terminal disclaimer filed in the patent owner's application for the challenged patent be held in abeyance and that the challenged claims in the instant proceeding continue to be given their broadest reasonable interpretation. The Court cited the resources expended by the parties since the initiation of the inter partes review, the failure of the patent owner to file a terminal disclaimer during the course of reexamination and the potential for abuse if the patent owner’s actions were permitted. “The only remaining task is the oral hearing, during which the parties may not make new arguments. It is not feasible, at this late stage of the proceeding, to change the standard by which the challenged claims will be interpreted, since all of the arguments and evidence we have before us have applied the broadest reasonable interpretation standard. We are persuaded that the most appropriate course of action, given the late stage and particular facts of this proceeding, is to hold the terminal disclaimer in abeyance until the conclusion of the proceeding. Doing so will ensure that this proceeding is completed in a timely and efficient manner that is fair to both parties.”

Amkor Technology, Inc., v. Tessera, Inc., IPR2013000242 (PTAB May 22, 2014) [Arbes (opinion); Turner; DeFranco]