The submission must identify (1) the forum in which the statement was made; (2) the proceeding designation (case citation or USPTO numerical designation); (3) the specific papers of the proceeding containing the statement of the patent owner; and (4) the portion(s) of the papers that show how the written statement being asserted to constitute a statement of the patent owner under 35 U.S.C. § 301(a)(2) constitutes such a statement. See 37 C.F.R. § 1.501(a)(3). The USPTO is limited to consider such "claim scope statements" only to determine the proper meaning of a patent claim in an ex parte reexamination, inter partes review, or post-grant review that has already been initiated. 35 U.S.C. § 301(d). Consideration of such statements in deciding whether to initiate a USPTO review is prohibited.
Submissions to the U.S. International Trade Commission (ITC) do not come within 35 U.S.C. § 301(a)(2) because the ITC is a federal agency and not a federal court. 77 Fed. Reg. at 46,617.
Why Congress Added 35 U.S.C. § 301(a)(2)
The promulgating comments in the Federal Register regarding 37 C.F.R. § 1.501(a)(2), the USPTO rule that effects 35 U.S.C. § 301(a)(2), made the reasoning behind the revised statute clear:
Section 1.501(a)(2) permits any person to submit to the Office statements of the patent owner that were filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. As long as the statement was filed by the patent owner in the proceeding, the statement is eligible for submission under §1.501(a) (2) even if originally made outside the proceedings. Permitting submission of these claim scope statements is intended to limit a patent owner's ability to put forward different positions with respect to the prior art in different proceedings on the same patent. See H.R. Rep. No. 112-98, Part 1, at page 45 (2011) ("[t]his addition will counteract the ability of patent owners to offer differing interpretations of prior art in different proceedings.").
77 Fed. Reg. at 46,617 (emphasis added).
Plainly, the patent owner is not to be allowed to speak out of both sides of his or her mouth, telling the USPTO one thing while saying quite another thing to a federal trial judge.
How the USPTO was to make use of such statements was further addressed in the comments, especially in comment 18:
Comment 18: Several comments requested clarification of the phrase "proper meaning of a patent claim" as set forth in 35 U.S.C. 301(d) and in §1.510(b)(2) and § 1.552(d). The comments suggested that claim construction of patent claims in post-patent proceedings at the Office should be based on the same standards as patent claim construction in the courts, following Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and Thorner v. Sony Computer Entertainment Inc., 669 F.3d 1362 (Fed. Cir. 2012). These comments also questioned how statements by patent owners will be used to determine the proper meaning of a patent claim.
Response: The Office standard for claim construction, i.e., "the proper meaning of a claim," is the "broadest reasonable interpretation" (BRI) consistent with the specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997), and In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); see also MPEP § 2111. During reexamination, claims of an unexpired patent will be given the broadest reasonable interpretation consistent with the specification. See In re Yamamoto, 740 F.2d at 1571–72 (Fed. Cir. 1984). In a reexamination proceeding involving claims of an expired patent, claim construction is performed pursuant to the principles set forth in Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986); and MPEP § 2258 I.(G) (8th ed. 2001) (Rev. 8, July 2010). Written statements submitted pursuant to 35 U.S.C. 301(a)(2) will not be used when ordering reexamination, but will be used during reexamination to assist in construing the claims. See 35 U.S.C. 301(d).
77 Fed. Reg. at 46,621 (emphasis added). But cf. Comment 5 and Response, 77 Fed. Reg. at 46,619 ("The effect of a patent owner claim scope statement on the merits of an ordered or instituted post-patent proceeding will be addressed on a case-by-case basis.").
The statute, rule, and promulgating comments, then, all appear to leave little if any discretion on the USPTO's part regarding the use of a claim scope statement : It "will be used" to assist in construing the claims.
This "will be used" directive strongly contrasts with the USPTO's prior position, before 35 U.S.C. § 301(a)(2) was added by the AIA, which was set out in MPEP § 2258. F. 1: "The examiner may rely on admissions of the patent owner that are part of the court record." (emphasis added). See also 37 C.F.R. § 1.104(c)(3). The USPTO did not consider itself bound to apply patent owner admissions in court proceedings to claim construction determinations in reexaminations. In fact, the USPTO would often flatly ignore such statements, which, if made in a related federal court proceeding, usually constituted evidentiary admissions. For the disregard of litigation admissions in a merged ex parte/inter partes reexamination as to claim construction, see The J.M. Smucker Co. v. Mack-Ray Inc., No. 2010-011461 (B.P.A.I. Dec. 30, 2010).
The USPTO's Handling of Claim Construction Statements to Date
To date, however, in three Patent Trial and Appeal Board (PTAB) decisions, the USPTO appears to be resisting the letter of 35 U.S.C. § 301(a)(2). In Garmin International Inc. v. Cuozzo Speed Technologies LLC, No. IPR 2012-00001 (JL) (P.T.A.B. Jan. 9, 2013), Decision to Initiate Trial for Inter Partes Review, the board noted that its decision hinged on the meaning of "integrally attached" in independent claims 1 and 10. In addressing the meaning of "integrally attached" the board stated that
Petitioner does not make known its construction of "integrally attached." Instead, Petitioner states that the term has to mean, in this proceeding, what the Patent Owner asserts it means in the infringement suits the Patent Owner has filed against various parties including Petitioner. That argument is without merit. The meaning of claim terms is not governed by what the Patent Owner says they mean in filing an infringement suit based on the '074 Patent. There is no reason to assume that the Patent Owner's litigation position is correct. Litigation positions taken subsequent to issuance of the patent are unreliable. See Philips v. AWH Corp., 415 F.3d at 1318. In any event, the Petition itself does not disclose or discuss the Patent Owner's position and Petitioner even states that the Patent Owner's litigation position in the infringement suits is not necessarily correct. (Petition 18:n.1).
On this record, we construe "integrally attached" as applied to the colored display and the speedometer in the context of the disclosure of the '074 Patent as meaning that the two elements are discrete parts physically joined together as a unit without each part losing its own separate identify.
Slip op. at 7–8 (emphasis added).
Note that the decision does not state, either way, whether the requirements of 35 U.S.C. § 301(a)(2), (c), and 37 C.F.R. § 1.501(a)(2)–(3), (b), were followed by Garmin, the petitioner.
Another panel of the board, in Motorola Mobility LLC v. Arnouse, No. IPR 2013-00010 (MT) (P.T.A.B. Feb 12, 2013), Decision to Institute Trial for Inter Partes Review, noted that Motorola had indicated that the '484 patent in issue was in litigation between itself and Arnouse. Slip op. at 2. The claim term in issue was "the portable computer excludes means for a user to interact directly with the portable computer." In the related district court proceeding, Arnouse construed this limitation as follows:
By itself the portable computer cannot provide information to a user or receive information from a user. . . .
Motorola submitted the same construction. Again, however, the decision was silent on whether the submission was made pursuant to 35 U.S.C. § 301(a)(2), (c), and 37 C.F.R. § 1.501 (a)(2)–(3), (b), or not. In any event, because that construction was also consistent with the specification of the '484 patent and the plain meaning of the claim terms, the board adopted it for the proceeding, but the board made the following observation in a footnote:
Statements made in a related litigation may shed useful light to the meaning of the claim terms. Notably, the Joint Claim Construction and Prehearing Statement submitted by Motorola in Exhibit 1013 indicates how the parties construe the claim terms and where in the specification of the '484 patent provides support for the terms. However, we recognize that statements made in the course of litigation may include some degree of bias and may support an interpretation more narrow that the broadest reasonable interpretation given by the Office. We thus discount any conclusory unsupported statements to the definition of a claim term, and any statements that are contrary to the plain meaning of a term or the written description of the patent.
Slip op. at 7, n.2 (emphasis added).
Most recently, in Research In Motion Corp. v. Wi-Lan USA, Inc., No. IPR 2013-00126 (JL) (P.T.A.B. June 20, 2013), Decision to Institute Inter Partes Review 37 C.F.R. § 42.108, the PTAB addressed RIM's proposed claim construction as to the '088 patent in issue. Wi-Lan argued that the claim interpretation "urged by RIM in its petition is drastically different from and inconsistent with that urged by RIM in the related civil litigation between the parties, i.e., Wi-Lan USA, Inc. et al. v. Research In Motion Ltd., et al., Case No. 12-cv-20232 (S.D. Fla.)." Slip op. at 12. To demonstrate the point, Wi-Lan provided a table in its preliminary response to illustrate. Slip op. at 13.
Administrative Patent Judge (APJ) Lee, in view of the table, found as follows:
The allegation of drastic difference and inconsistency is not explained adequately. For instance, the discussion in the right column does not require the first portion to include a portion of the body of an alphanumeric message. Nothing appears inconsistent. It is not even clear that the discussion in the right column concerns what must be included in the first portion of the message.
Id. (The board's "does not require" language appears to be directed to the "message containing a [first, second] portion" phrase emphasized, particularly the term "containing.").
In what rigorously is dicta, though, the board went on to state:
In any event, the contention is unhelpful that RIM should be estopped from arguing a claim interpretation that is different from what it has urged in parallel civil litigation. Whether or not estoppel applies to RIM, it does not apply to the Board. Thus, the Board may itself interpret a claim term as a matter of law notwithstanding what is or is not argued by a party. The Board's conclusion is not subject to any restriction based on a party's contentions in another proceeding or even this proceeding.
Id.
Irrespective of the apparent lack of any basis for the board's references to an "estoppel" as being the position taken by Wi-Lan (cf. slip op. at 12; Wi-Lan's exact contention is "drastically different from and in consistent with"), this statement arguably appears, yet again, to be some sort of attempt at "nullification" of 35 U.S.C. § 301(a)(2).
The Board Is Aware of Its Obligation to Follow 35 U.S.C. § 301(a)(2)
That the PTAB is fully aware of the existence of 35 U.S.C. § 301(a)(2) is shown by its final written decision in SAP America, Inc. v. Versata Development Group, Inc., No. CBM 2012-00001 (MPT) (P.T.A.B. June 11, 2013), an opinion written by APJ Tierney. In the Analysis section of the opinion, which contains a substantial explanation (slip op. at 7–18) for the board's adoption of the "Office's BRI construction" (slip op. at 7; see In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1987)), the board noted:
The final rules adopted 37 C.F.R. § 42.300(b) as set forth in the proposed rule above and identified the statutory basis for the adoption of the rule, how it was supported by the legislative history,13 and how the rule was consistent with the settled expectations arising from Federal Circuit precedent where a party is afforded an opportunity to amend claims. Id. at 48693.
Slip op. at 15–16.
Footnote 13 quotes Senator Kyl:
This [district court] information should help the Office understand and construe the key claims of a patent. It should also allow the Office to identify inconsistent statements made about claim scope--for example, cases where a patent owner successfully advocated a claim scope in district court that is broader than the "broadest reasonable construction" that he now urges in an inter partes review.
157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (emphasis added).
Slip op. at 16, n.13 (additional citation omitted) (a parenthetical notes that the board intended to emphasize some part of Senator Kyl's statement, but it apparently was lost in the opinion's preparation).
The full text of Senator Kyl's cited statement confirms the board's full knowledge of 35 U.S.C. § 301(a)(2), Congress's intent in putting that provision in the AIA, and the integral part that such a statement is mandated to play in applying the "broadest reasonable interpretation" claim construction standard (cf. slip op. at 7):
Section 5(a) of the 2009 version of the bill, which would amend section 301, has been modified and moved to section 5(g) of the bill. This provision allows written statements of the patent owner regarding claim scope that have been filed in court or in the Office to be made a part of the official file of the patent, and allows those statements to be considered in reexaminations and inter partes and post-grant reviews for purposes of claim construction. This information should help the Office understand and construe the key claims of a patent. It should also allow the Office to identify inconsistent statements made about claim scope—for example, cases where a patent owner successfully advocated a claim scope in district court that is broader than the "broadest reasonable construction" that he now urges in an inter partes review.
157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
The board's juxtaposition of allowing amendments to justify its adoption of the "broadest reasonable interpretation" standard with Senator Kyl's statement on the use of 35 U.S.C. § 301(a)(2)—to identify inconsistent statements regarding claim scope, especially in the context of a successful patent owner claim construction broader than the "broadest reasonable construction" urged in an inter partes review—supports an understanding of the law that mandates board consideration of contradictory district court constructions, particularly successful constructions, when arriving at the legally "broadest reasonable construction."
How to Enforce USPTO Compliance with 35 U.S.C. 301(a)(2)
If the petitioner in each of Garmin International, Motorola Mobility, and Research In Motion was not fully in compliance with 35 U.S.C. § 301(a)(2), (c), and 37 C.F.R. § 1.501 (a)(2)–(3), (b), the board might have noted that circumstance as the reason for viewing patent owner litigation positions as "unreliable" or "including some degree of bias," which in turn might have provided the "basis" for effectively ignoring the claim scope statement otherwise within 35 U.S.C. § 301(a)(2).
But if the submissions were, in fact, in compliance with the statute and the rule, particularly in Motorola Mobility, then the injection of conclusions of purported "unreliability" and "bias" may well reflect the USPTO's continued resistance to what section 301(a)(2) was added to the statute to do: to keep the patent owner "honest," blocking any ability to tell two different claim construction stories to the USPTO and to a federal judge. Whether claim scope statements are supposedly "biased" or "unreliable," the statute and rule mandate their consideration under the broadest reasonable interpretation standard used by the USPTO in such proceedings.
It is suggested that rigorous adherence to 35 U.S.C. § 301(a)(2), (c), and 37 C.F.R. § 1.501 (a)(2)–(3), (b), be practiced by any petitioner in an inter partes review or post-grant review to block any PTAB injection of further conclusory "end-arounds" of Congress's intent to hold the patent owner to a consistent claim construction story before the USPTO.
Should the PTAB continue to present similar statements in inter partes review initiation decisions or later claim construction rulings, however, an immediate petition for review or motion for rehearing before the PTAB should be sought, or the statement should be held out as evidence of reversible error on later Federal Circuit review.
Keywords: litigation, intellectual property, claim scope statement, ex parte reexamination, inter partes review, post-grant review, Patent and Trademark Office, USPTO, Patent Trial and Appeal Board, PTAB, broadest reasonable interpretation