August 04, 2014 Articles

Harmonizing Standards for District Court and PTAB Claim Construction

With the emergence of new AIA post-grant proceedings, the time is right for the Federal Circuit to bring greater uniformity to claim construction

By Robert M. Asher

Claim construction in the United States Patent and Trademark Office (PTO) has long been distinct from the approach used by courts to construe a patent claim. This is one reason the Patent Trial and Appeal Board (PTAB) has the power to invalidate patents found not invalid in district court. "[U]nlike in district courts, in reexamination proceedings claims are given their broadest reasonable interpretation, consistent with the specification . . ." In re Swanson, 540 F.3d 1368, 1377–8 (Fed. Cir. 2008) (internal quotation marks omitted).

The threat of inconsistent results took the judiciary by storm when it learned that an unpatentability ruling in the PTAB could nullify a court's ruling the patent is not invalid, even after that ruling had been approved by the Federal Circuit on appeal. Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330 (Fed. Cir. 2013).

Inconsistent rulings, and particularly, inconsistent claim constructions are undesirable. Claim construction was taken away from juries in order to promote uniformity. The Supreme Court saw "the importance of uniformity in the treatment of a given patent as an independent reason to allocate all issues of construction to the court." Markman v. Westview Instruments, 517 U.S. 370, 390 (1996). The Federal Circuit understands that inconsistent results are not ideal. In re Baxter Int'l, 678 F.3d 1357, 1365 (Fed. Cir. 2012) ("even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion"). It appears that the time is right for the Federal Circuit to bring greater uniformity to claim construction. With the emergence of the new AIA post-grant proceedings, including inter partes reviews, covered business method reviews, and post-grant reviews, the court has an opportunity to discuss claim construction on a clean slate.

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