'; Well-Drafted Patent Specification Critical in Inter-Partes Review

Well-Drafted Patent Specification Critical in Inter-Partes Review

August 10, 2015 Chicago Daily Law Bulletin

Patent infringement disputes between patent owners and accused infringers are among the most expensive and time consuming legal disputes. The America Invents Act (“AIA”) which took effect on September 16, 2011, created new proceedings, such as Inter Partes Review (“IPR”) proceedings, to resolve such disputes more quickly and less expensively than traditional federal court actions.

During patent infringement disputes, IPR proceedings are a valuable tool for the accused infringer to cancel relevant patent claims as invalid in view of prior art patents and publications. By invalidating all relevant patent claims, the accused infringer can avoid liability for patent infringement, as an accused infringer cannot infringe invalid patent claims. Accused infringers typically have new prior art that the U.S. Patent and Trademark Office (“Patent Office”) did not consider during the patent prosecution process, and have successfully invalidated about 80% of patent claims in instituted IPR proceedings. Thus, the accused infringer has significant incentive to use IPR proceedings to challenge any threatening patent.

Faced with the probability that many, if not all, of the patent claims in an IPR proceeding may be cancelled by the Patent Office, the patent owner is allowed to amend the claims. If the motion to amend the patent claims is granted, the scope of the amended claims must be narrower than the issued claims, and patentability of the amended claims over the prior art must be established. Recognizing that this standard is difficult to meet, a six-judge panel of the Patent Trial and Appeal Board (“PTAB”) recently issued an order revising and clarifying its rules regarding claim amendments during IPR proceedings. Masterimage 3D, Inc., et al. v. Reald Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42). In its order, the PTAB clarified the definition of “prior art of record” and further outlined the steps that the patent owner must take to support a Motion to Amend in IPR proceedings.

As part of the rules promulgated by the Patent Office, patent claims are construed during IPR proceedings under the “broadest reasonable construction” standard, which is akin to “broadest reasonable interpretation” used to examine claims during patent prosecution. While “broadest reasonable construction” may result in the same construction as that applied by the District Courts, it often provides a broader construction which is easier to invalidate.

If the IPR is instituted, the patent claims are given the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); In re Cuozzo Speed Technologies, 2014-1301 (Fed. Cir. July 8, 2015). Under recent case law, the PTAB must give weight to the reasonableness of the construction in view of the specification, and will attempt to construe the claims as valid in view of the cited prior art. Microsoft Corp. v. Proxyconn, Inc., __ F.3d __, 2015 WL 3747257, at *3 (Fed. Cir. June 16, 2015). If unable to reasonably construe the claims based upon the specification, prosecution history, and prior art of record, the patent owner will become increasingly vulnerable to an unfavorable claim construction based upon extrinsic evidence, which may include expert testimony, dictionary definitions, and the like. The broader the claim construction, the more likely the claims will be found to be invalid as anticipated by or obvious in view of the prior art. Cf. Microsoft Corp. at *3–7 (reversing PTAB’s broad claim construction, which had invalidated several claims as obvious in view of certain prior art references).

Thus, it is important that the patent owner file and prosecute well-drafted patent applications, particularly for inventions that are likely to become commercially-important products. The patent must identify and thoroughly describe the inventive features of the overall invention. A thorough description explains the general concept of what the invention achieves and should then proceed to describe how the invention goes about achieving the concept. The well-drafted application will claim the invention in a variety of aspects, always with an eye on enforcement. While enforcement has always placed a premium on well-drafted patent claims, IPR proceedings now place a premium on well-drafted patent specifications that support well-drafted patent claims. The well-drafted patent specification will allow the patent’s claims, or at least critical claim terms, to be reasonably construed without reliance on any further evidence.

In prosecuting the patent application, the prospective patent owner should include dependent claims that focus on the inventive aspects and further limit the claimed invention accordingly. The prospective patent owner should consider providing an argument of independent patentability during prosecution to provide support for a motion to amend during an IPR proceeding. Any prospective patent owner must weigh the potential need for a large number of patent claims against the extra costs and fees associated with pursuing “excess” claims, i.e., more than three independent claims or twenty total claims.

In view of developing law, patent owners should consider reviewing their existing patent portfolio related to critical inventions and determine if any issued patent claims adequately cover narrow aspects of the inventions. If issued patents include broad claims without claiming more narrowly the inventive aspect(s) of the invention, the patent owner should consider whether filing a reissue or ex parte reexamination is warranted, which could provide an avenue to honing the claims.

IPR proceedings have successfully invalidated the majority of the patent claims-in-issue. To protect the patents, patent owners must now place a premium on well-drafted patent specifications that support well-drafted patent claims.