Bottom line: For parties accused of patent infringement an IPR (inter partes review) for the reasons below is an attractive alternative to full blown litigation for attacking the validity of a patent.
- Amendments to the claims are limited to one with any further amendments being only by petition. The patent owner must show why the amended claims are patentable over the cited references regardless of when the reference was brought to light by the patent owner. Microsoft v. Proxyconn (Fed. Cir. 2015). These explanations provide potential means of avoiding patent infringement by redesigning products.
- Claims during an IPR are given their broadest reasonable interpretations, not so in litigation. The broader the interpretation, the more likely the patent will be deemed not patentable.
- The burden of proving invalidity is by a preponderance of the evidence, just over 50% whereas in court the patent is presumed valid unless shown otherwise by clear and convincing evidence.
- Costs are far less expensive than a lawsuit.
In Proxyconn, Microsoft (MSFT) instituted an IPR challenging Proxyconn’s patent. The Patent Trademark Appeal Board (PTAB) construed certain claim limitations based on the broadest reasonable interpretation standard. However, the Court held that the PTAB’s constructions of the claim language were unreasonably broad. The court reiterated that the broadest reasonable interpretation may be broad but it does have its limits.
Under the broadest reasonable interpretation, the definition given a term or phrase cannot be legally incorrect or divorced from the specification. In this case, the Court looked to the claims and the specification to define the terms at issue. The claims themselves and the specification indicate the meaning that the claim terms and phrases should have. One cannot stray away from the context in which a claim term or phrase is used and label that the broadest reasonable interpretation. Despite the narrowing of the broadest reasonable interpretation rule, IPRs are still an attractive option than litigation.
To provide context to the broadest reasonable interpretation standard, it is good to know how this standard is treated during prosecution. During patent prosecution, when claim terms and phrases are given their broadest reasonable interpretation, it is common to not argue with the interpretation ascribed by the examiner but to rephrase the claim language to avoid such broad interpretations.
The reason is that the PTAB has given great deference to examiners because inventors and patent applicants are given an unlimited number of opportunities to amend the claims for clarification, at least during patent prosecution. If the term or phrase in a claim could be understood to have the broad meaning given it by the examiner, then the courts and the PTAB generally require the patent applicant to clear up the claims language through an amendment during prosecution of the patent.
But IPRs are different. An IPR is a proceeding at the Patent Office before the PTAB wherein a third party challenges the validity of the patent based on a prior art printed reference. The patent owner is given a single (1) opportunity to amend the claims to maintain patentability of the claims being challenged. After that, the patent owner carries a burden of proof to establish that it is entitled to any further amendments to the claims. The patent applicant is not given an unfettered right to amend the claims.
Not only that, the PTAB has further required the patent owner to show that the amendments if granted is patentable (i.e., novel and non obvious) over the prior art printed references for any reference known to the patent owner regardless of when the patent owner became aware of the prior art printed reference. The burden is not on the petitioner of the IPR to show unpatentability of the proposed new claims. Idle Free Systems Inc. v. Bergstrom, Inc., IPR2012-00027, 2013 WL 5947697 (PTAB June 11, 2013). Generally speaking, the more the patent applicant discusses the prior art to prove patentability, the more the claims are being limited since the patent applicant must distinguish the claims from the cited prior art. Each argument that the patent owner provides to distinguish the prior art is one more way that the defendant might use to avoid patent infringement by redesigning their product or by argument. This is another factor in favor of IPRs.
In Proxyconn, MSFT was successful in requesting the patent owner to grant the petition to institute the IPR with one or more prior art printed references, not including the DPR reference. The DRP reference was introduced to the record after the initial request. Proxyconn requested amendments to the claims but the amendments were denied because Proxyconn failed to carry its burden of proving patentability over the DRP reference. Proxyconn had provided conclusory statements that the claim amendments were patentable over the prior art. But this didn’t cut it for the PTAB, nor the Federal Circuit. The patent owner must provide an explanation of why the claims are patentable over the DRP reference rather than merely provide conclusory statements so the PTAB and Court can evaluate whether the claims are in fact patentable over that reference. Had Proxyconn provided reasons, these explanations could have allowed the PTAB to grant the petition to amend the claims a second time, but these explanations could also be used by the defendant to redesign its accused infringing product(s) to avoid patent infringement. It is a double edged sword.
I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.