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Claim Construction During Inter Partes Review

By Eugene T. Perez

A petitioner in an inter partes review (“IPR”) may request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under 35 U.S.C. §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publica­tions (not, e.g., ineligible subject matter or an on-sale bar). IPR will be instituted if a petitioner successfully established a “reasonable likelihood that the petitioner will prevail” with respect to at least 1 of the patent claims.

However, once instituted and during the course of an IPR, the Patent Trial and Appeal Board has to give a proper claim construction in using the broadest reasonable interpretation (“BRI”) standard. As stated in Microsoft Corporation v. Proxyconn, Inc., Appeal Nos. 2014-1542, -1543 (Fed. Cir. June 16, 2015), at pages 6-7:

That is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles. As we have explained in other contexts, “[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (“The broadest construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.”). Rather, “claims should always be read in light of the specification and teachings in the underlying patent.” Suitco, 603 F.3d at 1260. The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review. See Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). Even under the broadest reasonable interpretation, the Board’s construction “cannot be divorced from the specification and the record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and “must be consistent with the one that those skilled in the art would reach,” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is “unreasonably broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster. Suitco, 603 F.3d at 1260.

Thus, the use of the BRI cannot be divorced from the specification, cannot be an interpretation that embraces anything remotely related to the claimed invention, and must be consistent with the one that the skilled artisan would reach.  A link to the Federal Circuit decision can be found here: