May 19, 2017Newsletter

This Week at the Board - May 19, 2017

Federal Circuit: Statements Made by a Patent Owner During an IPR Proceeding Can be Relied Upon to Support a Finding of Prosecution Disclaimer During Claim Construction

In Fed. Cir. 2016-1599, the Federal Circuit addressed an issue of first impression: whether statements made by a patent owner during an IPR proceeding ca be relied upon to support a finding of prosecution disclaimer during claim construction. The Court noted that prosecution disclaimer has previously been applied to other post-issuance proceedings, such as reissue proceedings, as well as reexamination proceedings. The appellant argued, however, that statements made during an IPR proceeding are unlike those made during reissue or reexamination proceedings because an IPR proceeding is an adjudicative proceeding. The Court found this argument unpersuasive, noting that In Cuozzo the Supreme Court recognized that an IPR proceeding involves the reexamination of a patent. The appellant also argued that its statements were not part of an IPR proceeding because they were made in a preliminary response before the Board issued it institution decision. The Court also found this argument unpersuasive, noting that a preliminary response filed before institution and a response filed after institution are both publicly available documents wherein the patent owner may define claim terms and otherwise make representations about claim scope. Thus, there is no reason why statements made in a preliminary response should not be considered for purposes of prosecution disclaimer. The Court noted that extending prosecution disclaimer to IPR proceedings will ensure that claims are not argued in one way in order to maintain their patentability and in a different way against accused infringers.     

A link to the Federal Circuit’s decision is provided here.

Federal Circuit: The Board Misconstrued the Term “Aseptic” in IPR Proceeding

In Fed. Cir. 2016-1750, the Federal Circuit addressed whether the Board had properly construed the term “aseptic” in an IPR proceeding between Nestle USA and Steuben Foods, Inc. The Board construed the term “aseptic” to mean “aseptic to any applicable United States FDA standard, and in the absence of any such standard, aseptic assumes its ordinary meaning of free or freed from pathogenic microorganisms.” The Court disagreed with this construction, noting that the specification twice defines the term “aseptic” as the United States “FDA level of aseptic.” The Court noted that while the FDA does not define “aseptic” outright, the FDA does have regulations relating to aseptic processing and packaging, and that the proper construction of the term “aseptic” should incorporate FDA regulations governing “aseptic packaging” as opposed to “any applicable United States FDA standard.” Additionally, in a footnote, the Court noted that the Board improperly used a two-step construction, wherein the Board first appeared to apply the patent owner’s lexicography, but then relied on a plain and ordinary meaning as a default. The Court noted that a patentee may not partially serve as a lexicographer for a claim term. Either the specification includes a binding definition of the term by way of lexicography, or the term should be read consistent with the plain and ordinary meaning. 

A link to the Federal Circuit’s decision is provided here.

PTAB: Prior Art Could Not Have “Reasonably” Been Raised Despite Evidence That an Employee Had Possession of the Prior Art

In a motion to terminate in IPR2016-00130, the Patent Owner asserted that two brochures relied upon by the Petitioner could reasonably have been raised in a previous IPR brought by Petitioner. The Board noted, however, that 35 U.S.C. §315(e)(1) encompasses prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover. In the instant case, there was no evidence that a skilled searcher, in the Petitioner’s shoes, would have uncovered the two brochures. In particular, the Petitioner had in fact hired skilled searchers, who did not uncover the brochures. The Petitioner asserted that one of Petitioner’s employees had possession of the brochures in a hard copy file, and that a diligent search by the hired searchers would have included interviewing the employee and uncovering the brochures. The Board was not persuaded, however, that it is reasonable for a person, an employee, or even a corporate entity itself, to have immediate recollection regarding every bit of information, evidence, documents or other corporate materials that they may have been aware of at some point. There was no evidence that the employee was an employee most likely to have such brochures, or that the searcher had not conducted a diligent search by not interviewing this particular employee and uncovering the evidence of the brochures. For this reason, the Board denied the motion to terminate.   

A link to the PTAB’s decision is provided here.

Federal Circuit Upholds Claim Construction First Offered by the Board During Oral Arguments

In Fed. Cir. 2016-1739, 1740, 1741, the Federal Circuit upheld the Board’s decision invalidating patents owned by Intellectual Ventures directed to wireless communications. Intellectual Ventures had appealed the Board’s decision on the grounds that Intellectual Ventures was denied due process by the Board, because the Board had adopted a claim construction not offered by any of the parties. The adopted construction was first raised by the Board during oral arguments. Because Intellectual Ventures was given a chance to reply to the hypothetical construction during oral arguments, the Court found that Intellectual Ventures had notice and was given the opportunity to be heard, satisfying due process. The Court also noted that Intellectual Ventures could have, but did not, request leave to file a sur-reply or request a rehearing to address the proposed construction. 

A link to the Federal Circuit’s decision is provided here.

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