Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure

by Dennis Crouch

Various decades in the past, I proposed an Administrative Declare Design Treatment (ACC)— allowing for a patentee or third celebration to ask for a claim-development by the USPTO.  The process would be significantly like an Inter Partes Review (IPR) continuing – even though my proposal would finish the proceedings in advance of truly analyzing whether or not the prior artwork reads upon the claims.

The blend of (1) the USPTO’s new proposed courtroom-like claim-development for IPRs and (2) the Supreme Court’s SAS selection collectively presents some option for a de facto administrative claim development treatment.  It is possible that a significant part of IPR participants will now be centered as significantly on claim development as on the underlying validity arguments them selves.  Though this is already going on to some extent, after the courts and PTO utilize the very same common of law, PTAB claim development determinations could then be taken as determined issues of law (or at the very least highly persuasive authority) handed again for the stayed (or impending) district courtroom litigation.

In his first major action as USPTO Director, Andrei Iancu has proposed modifying the approach to claim development that the Patent Trial and Attraction Board (PTAB) applies in IPR proceedings (as nicely as PRG and CBM proceedings).  Relatively than employing the common evaluation common of “broadest acceptable interpretation,” the proposal would shift to the “ordinary meaning” of claim phrases as used by the courts and exemplified by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and adjusted by Teva Pharms. United states of america, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).

Though the BRI and Everyday Meaning expectations are truly rather near, the courts and PTO have regularly held them to be diverse adequate to steer clear of preclusion or even thought when thinking of a claim development executed by one more judicial entire body.  Thus, the PTO Notice clarifies: “Minimizing variances among claim development expectations utilized in the several fora could guide to higher uniformity and predictability of the patent grant [and] could support boost judicial efficiency total.”  (Take note – the observe does not mention concern preclusion or collateral estoppel).

The place in this article is that claim development executed by the PTAB will now out of the blue have an crucial lawful effect after the case returns to the district courtroom.

In SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that the PTO can’t partly-institute its AIA trials, but relatively, it must address the patentability – and concern a last penned selection – for every single and each and every patent claim challenged in an IPR petition (if the petition is granted).  Less than SAS, weaker patent challenges will now be listened to — for individuals claims, the struggle will possible be mostly about claim development. Though the petitioner has energy in excess of the petition, the patentee also has expanded modification legal rights.  Thus, both of those sides will have the energy to seek out and acquire a last selection that possible includes a claim development of disputed claim phrases.

At this place, it is challenging to know usually if the PTAB ordinary-that means claim constructions will have a tendency to favor the patentee or the accused infringer.  The significant gain, even so, will be higher certainty prior to obtaining deep-into district courtroom litigation.

In Mild of the Prior Art: 1 crucial twist is that the PTAB claim development is be done in perspective of the prior artwork – but ordinarily not with significantly if any thought of the accused infringing actions.  This can make it a lot less possible that the claim development will totally solve the infringement dispute – that’s Okay and how it must be due to the fact infringement is a query for the jury.

 

 

 

 

 

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