By Bruce Sunstein. A member of our Patent Practice Group
The claims of a patent determine its power. Unlicensed activities that fall within the scope of a patent’s claims can be subject to royalties or an injunction, but when claims cover subject matter deemed to be within the prior art, the claims can be invalidated.
How a claim is interpreted can often make the difference between whether it is so narrow that it is not infringed, or broad enough to cover a third party’s activity (so as to give the patent owner damages or an injunction or both) or so broad that it covers prior art (so as to be invalid).
For the patent owner, the claims of an ideal patent are a little like the porridge of Goldilocks and the Three Bears. They should be in the middle between too much and too little—but in this case, we are talking about breadth of claims instead of the temperature of porridge. Ideally for the patent owner, the claims are broad enough to cover any product or method that may be used by a competitor, but narrow enough to avoid covering prior art that would invalidate the claims.
How a patent claim is interpreted, of course, depends on the words used in the claim. But the interpretation of a claim also depends on where the claim is being interpreted. If a claim is interpreted by a court, one set of rules comes into play, but if by the Patent and Trademark Office (the “PTO”), another set of rules comes into play.
The dissimilar impact wrought by these two sets of rules was highlighted in a February 22, 2016 decision by the Federal Circuit Court of Appeals, PPC Broadband, Inc. v. Corning Optical Communications RF, LLC . The case involved appeals from a number of PTO proceedings, called IPRs (Inter Partes Reviews), in which claims of two patents owned by PPC Broadband were attacked by Corning Optical and invalidated on the basis that they covered subject matter in the prior art. (MORE)
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