By Robert Asher. Chair of the Patent Office Litigation Group, Co-Chair of our Patent Practice Group
The America Invents Act of 2012 gave accused infringers a robust set of options for challenging patents before the Patent Trial and Appeal Board (PTAB), an adjudicatory body of the Patent and Trademark Office. These challenges–– inter partes reviews, covered business method reviews, and post-grant reviews–– have raised fears among patent owners, especially because patent claims have frequently been cancelled based upon standards that have stripped patents of their presumption of validity.
A dominant factor in this trend is the PTAB’s policy of applying the “broadest reasonable interpretation” to patent claims. The broader the scope of a claim the more likely it will be deemed invalid for encompassing a subject matter already known in the prior art. Courts, on the other hand, must presume that a patent is valid and apply a construction based on the claim language, the patent specification and the prosecution history. The courts also sometimes consider extrinsic evidence such as expert testimony. These considerations often lead courts to a narrower claim construction, which can reduce a challenger’s opportunity to invalidate a patent.
I have discussed this disparity in claim construction in “Harmonizing Standards for District Court and PTAB Claim Construction.” I explained that, when the Supreme Court took claim construction away from juries in its 1996 decision in Markman v. Westview Instruments, it cited “the importance of uniformity in the treatment of a given patent as an independent reason to allocate all issues of construction to the court.”
The new PTAB proceedings threaten this goal of uniform treatment. The Federal Circuit’s recent decision in Microsoft Corporation v. Proxyconn, Inc. may serve to alleviate these fears somewhat if seen as continuing a trend toward shrinking the differences between claim construction in the district courts and the PTAB.
Microsoft brought an inter partes review against U.S. Patent No. 6,757,717 (the ’717 patent) owned by Proxyconn. The PTAB found all of the challenged claims unpatentable except claim 24. Microsoft appealed the confirmation of claim 24, and Proxyconn appealed the invalidation of the remaining claims. (Read the complete article)
A dominant factor in this trend is the PTAB’s policy of applying the “broadest reasonable interpretation” to patent claims. The broader the scope of a claim the more likely it will be deemed invalid for encompassing a subject matter already known in the prior art. Courts, on the other hand, must presume that a patent is valid and apply a construction based on the claim language, the patent specification and the prosecution history. The courts also sometimes consider extrinsic evidence such as expert testimony. These considerations often lead courts to a narrower claim construction, which can reduce a challenger’s opportunity to invalidate a patent.
I have discussed this disparity in claim construction in “Harmonizing Standards for District Court and PTAB Claim Construction.” I explained that, when the Supreme Court took claim construction away from juries in its 1996 decision in Markman v. Westview Instruments, it cited “the importance of uniformity in the treatment of a given patent as an independent reason to allocate all issues of construction to the court.”
The new PTAB proceedings threaten this goal of uniform treatment. The Federal Circuit’s recent decision in Microsoft Corporation v. Proxyconn, Inc. may serve to alleviate these fears somewhat if seen as continuing a trend toward shrinking the differences between claim construction in the district courts and the PTAB.
Microsoft brought an inter partes review against U.S. Patent No. 6,757,717 (the ’717 patent) owned by Proxyconn. The PTAB found all of the challenged claims unpatentable except claim 24. Microsoft appealed the confirmation of claim 24, and Proxyconn appealed the invalidation of the remaining claims. (Read the complete article)
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